ew  York  City, 
shone  752  Cort. 


UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


THE  FIXED  LAW  OF  PATENTS 


THE    FIXED    LAW 
OF    PATENTS 


AS  ESTABLISHED  BY  THE  SUPREME  COURT  OF 

THE  UNITED  STATES  AND  THE  NINE 

CIRCUIT  COURTS  OF  APPEALS 


By 
WILLIAM  MACOMBER 

COUNSEL  IN  PATENT  CAUSES 


BOSTON 

LITTLE,    BROWN,    AND   COMPANY 

1909 


Copyright.,  1909 
By  Little,  Brown,  and  Company. 

All  rights  reserved. 


) 

I 


Bleetrotyped  and  Printed  by 
THE  COLONIAL  PRESS 
C.  H.  Simonds  &  Co.,  Boston,  U.S. A 


TO 

ADELBERT  MOOT,  Esq., 

DEAN   OF   THE    BUFFALO    LAW    SCHOOL,    MEMBER    OF   THE    NEW    YORK 
BOARD    OF    STATUTORY    CONSOLIDATION,    ETC. 

THIS    BOOK    IS    DEDICATED    BY    HIS    ERSTWHILE    PUPIL    AND 
LIFELONG     FRIEND. 


PREFACE 

In  other  days,  an  introduction  was  called  an  "  advertisement." 
It  advertised  what  the  book  contained  —  what  it  stood  for.  The 
writer  reverts  to  this  ancient  custom,  and  here  proceeds  to  indicate 
the  character  and  scope  of  this  work,  the  plan  of  construction, 
and  how  it  may  be  used. 

The  first  fact  to  be  advertised  is  that  this  book  is  written  primarily 
and  chiefly  for  the  general  practitioner  —  for  the  lawyer  looking 
for  general  principles.  Questions  of  patent  law,  which  are  both 
simple  and  settled,  arise  from  day  to  day  in  general  practice.  To 
put  the  answers  to  those  questions  between  the  thumb  and  finger 
of  the  busy  lawyer  is  my  prime  object. 

Nevertheless,  since  the  book  gathers  up,  in  the  language  of  the 
decisions,  the  appellate  law,  it  should  be  of  interest  to  the  specialist 
who,  unless  he  has  digested  the  law  for  himself,  will  hardly  have 
such  a  compilation. 

It  is  an  orderly  statement  of  the  fixed  law  of  patents  in  the 
exact  language  of  the  court,  except  in  minor  instances  where 
such  course  is  not  possible.  It  is,  therefore,  absolutely  authori- 
tative, because  it  is  what  the  courts  have  said,  and  not  what  I, 
or  anyone  else,  may  think  they  have  said. 

The  fixed  law  of  patents  comprises  the  decisions  of  the  Supreme 
Court  of  the  United  States,  the  decisions  of  the  nine  Circuit  Courts 
of  Appeals,  and  the  Patent  Statute.  Nothing  else  can  be  regarded 
as  fixed  law. 

The  book  does  not  cover  pleading,  practice,  or  procedure, 
except  as  to  matters  peculiar  to  patent  law;  it  does  not  cover 
patent  soliciting;   it  does  not  cover  trade-marks  or  copyrights. 

The  entire  work  is  founded  upon  the  principle  that  a  patent  is 
a  monopoly  created  in  contravention  of  the  common-law,  and  that 
every  decision  must,  therefore,  root  back  in  a  statute.  Every  main 
proposition  is  accordingly  worked  out  from  the  statute.  No  other 
plan  can  be  in  harmony  with  the  facts. 

No  one  of  the  two  thousand  appellate  decisions  relating  strictly 


viii  PREFACE 

to  patents,  stating  or  reiterating  any  principle  or  rule,  has  been 
intentionally  omitted;  and  in  many  cases  the  principle  or  rule 
has  been  restated  and  reiterated  with  seeming  prolixity.  But  it 
is  not  wise  to  omit  any.  Each  case  differs  from  every  other;  and 
what  is  seeming  repetition  is  but  a  repeated  application  of  a  prin- 
ciple to  varying  facts  and  conditions.  And  yet,  quite  a  number  of 
appellate  decisions  yield  no  quotation  in  this  work.  This  is  so 
because  those  cases  turned  upon  questions  of  fact  or  claim  con- 
struction. 

No  rule  is  stated  upon  the  authority  of  a  court  of  original  juris- 
diction. No  matter  what  the  rule  may  be,  or  how  long  or  how  much 
respected,  a  rule  of  a  circuit  court  is  not  fixed  law.  A  remarkable 
example  of  this  is  seen  in  Mayor  v.  American,  60  Fed.  1016;  9 
C.  C.  A.  336,  where  a  rule  established  in  Brooks  v.  Jenkins,  3 
McLean,  432;  Fed.  Cas.  1953,  was  reversed  in  the  Second  Circuit 
after  more  than  fifty  years  of  general  and  unquestioning  following. 
And  while  the  consequent  omission  of  many  familiar  rules  renders 
the  work  incomplete,  in  a  sense,  it  places  it  without  the  pale  of 
flux  and  gives  it  the  character  of  a  code,  rather  than  the  detail  of 
a  digest.  Here  it  is  also  to  be  remarked  that  I  have  declined  to 
quote  as  fixed  law  a  statement  of  a  judge  sitting  in  circuit  even  when 
such  statement  has  been  quoted  verbatim  and  approved  by  the 
appellate  court.  I  do  not  believe  that  law  by  adoption  is  fixed 
law,  and  it  would  seem  that  I  am  following  high  authority  in 
taking  this  position.  (Westinghouse  v.  Stanley,  138  Fed.  823; 
71  C.  C.  A.  189). 

In  the  preparation  of  the  material  for  this  work,  I  have  per- 
sonally read  and  excerpted  from  every  appellate  patent  decision 
containing  any  point  of  law.  No  reliance  whatever  has  been 
placed  upon  syllabus  of  court  or  reporter.  This  has  been  necessary 
for  many  reasons,  but  chiefly  three:  First,  the  syllabi  of  reported 
patent  decisions,  by  reason  of  the  abstruse  and  technical  subject- 
matter,  are  often  vague  and  unreliable,  and  in  some  cases  abso- 
lutely misleading.  Second,  all  of  the  questions  passed  upon  in  a 
given  case  are  rarely  included  in  the  syllabus;  and  this  is  as  true 
when  the  notes  are  made  by  the  court  as  when  they  are  made  by 
the  reporter,  for  the  court  views  the  opinion  from  the  cause  itself, 
and  often  regards  unessential  a  holding  of  importance  because 
the  case  itself  did  not  hinge  directly  thereon.  Third,  most  rules 
are  founded  upon  authorities  cited  in  direct  connection  with  the 
statement  of  the  rule;  and  as  the  authority  for  the  rule  is  well- 
nigh  as  important  as  the  rule  itself,  the  collection  of  such  authori- 


PKEFACE  jx 

ties  to  accompany  the  statement  of  the  rule  has  made  a  detailed 
study  and  analysis  of  every  opinion  indispensable. 

In  addition  to  such  a  study  of  the  entire  text  of  every  decision, 
this  work  has  necessitated,  —  (1)  Making  a  condensed  statement 
of  every  point  of  law  in  the  exact  language  of  the  decision,  wherever 
possible.  (2)  Classifying  these  quotations  under  titles  and  section 
headings.  (3)  Appending  to  each  quotation  the  authorities,  if  any, 
upon  which  the  ruling  was  founded.  (4)  Repeating  the  ruling  as 
necessary  to  bring  it  under  all  necessary  titles  to  prevent  over- 
looking a  decision  by  going  to  a  wrong  title.  (5)  Making  a  cor- 
responding analysis  of  the  patent  laws  so  that  each  title  may  read 
out  from  the  statute.  (6)  Tabulating  and  cross-referencing  the 
titles  and  section-headings  so  that  the  general  practitioner,  without 
detailed  familiarity  with  patent  law  terminology,  may  at  once 
find  all  the  fixed  law  on  any  subject.  (7)  Appending  a  table  of 
cases  quoted  from  with  section  references;  the  name  of  the  judge 
writing  the  opinion;  whether  affirming  or  reversing  the  court 
below,  with  reference  to  the  opinion  below  if  reported;  names  of 
dissenting  judges,  if  any;  and  in  C.  C.  A.  decisions  the  circuit, 
and  the  names  of  the  judges  sitting;  also,  in  many  cases,  memoranda 
of  other  cases  bearing  upon  the  patent  under  review.  (8)  Preparing 
a  table  of  cases  cited  by  the  courts  as  authority  for  rulings  made. 
(9)  Giving  with  each  case  the  volume  and  page  of  all  standard 
reports  containing  the  case. 

At  the  solicitation  of  lawyers  whose  opinions  I  value  I  have 
preceded  the  main  body  of  the  work  with  a  chapter  entitled 
"  A  Brief  Survey  of  the  Fixed  Law  of  Patents."  This  was  not 
a  part  of  the  original  conception;  it  is  supplemental  —  written 
in  the  freedom  of  personal  expression  —  and  stands  in  contrast 
with  the  fixed,  authoritative  character  of  the  body  of  the  work. 

I  have  not  hesitated,  in  some  instances,  to  express  my  opinion 
upon  certain  rulings;  but  these  are  always  appended  in  such  form 
as  to  be  readily  distinguishable  from  the  law. 

The  method  of  citing  cases  is  an  innovation.  Titles  have  been 
curtailed.  Life  is  too  short  to  give  descriptive  titles.  It  is  sufficient 
to  say  "  National  v.  Interchangeable,"  rather  than  "  The  National 
Hollow  Brake  Beam  Company  v.  The  Interchangeable  Brake  Beam 
Company."  The  time  has  gone  by  when  learned  judge  or  lawyer 
may  give  from  memory  the  titles  of  the  leading  cases. 

A  labor  of  this  character,  growing  out  of  the  necessities  of  my 
practice,  cannot  be  free  from  faults.  Years  teach  consciousness 
of  one's  own  frailty,  and  a  deeper  respect  for  the  greatness  of  great 


X  PREFACE 

minds.  Yet  great  minds  are  fallible,  and  from  time  to  time  I  have 
not  hesitated  to  dissent  from  a  rule  or  holding,  knowing  that 
criticism  founded  on  conviction  born  of  experience,  is  never  un- 
welcome to  a  broad  mind. 

In  dedicating  this  book  to  my  preceptor,  counselor,  and  friend, 
Adelbert  Moot,  Esq.,  I  am  but  recognizing  the  fact  that  it  is  not 
ourselves  alone,  but  contact  with  lofty  minds,  that  inspires  us  to 
our  best  work. 

William  Macomber. 
Buffalo,  August,  1909. 


CONTENTS 

PAGE 

Preface .       .  vii 

Table  of  Cases  Excerpted xiii 

Table  of  Cases  Cited   .              xcv 

A  Brief  Survey  of  the  Fixed  Law  of  Patents     .       .  1 

The  Fixed   Law .  73 

The  Patent  Statutes   Digested 849 

Index 909 


TABLE  OF  CASES  EXCERPTED 

WITH    ANNOTATIONS 

The  annotations  give  generally:  (1)  volume  and  page  of  each  case  in  all 
standard  reports ;  (2)  affirmance,  reversal  or  other  disposition  of  the  case  below, 
with  volume  and  page  of  opinion,  if  reported  ;  (3)  name  of  judge  or  justice  writing 
the  opinion,  in  small  capitals;  (4)  name  of  judges  or  justices  dissenting, 
and  name  of  writer  of  dissenting  opinion,  in  small  capitals;  (5)  the  circuit, 
and  names  of  judges  sitting  in  C.  C.  A.  cases ;  (6)  references  to  other  cases  related 
by  subject-matter  or  patents  involved. 

Acme  v.  Cary,  101  Fed.  269;  41  C.  C.  A.  338 74,  79,  620 

Affg.  99  Fed.  500;  96  Fed.  344. 

Second;  Wallace,  Lacombe,  Shipman. 
Adam  v.  Folger,  120  Fed.  260;  56  C.  C.  A.  540  . .  .438,  459,  473,  554,  794,  929 

Seventh;  Jenkins,  Grosscup,  Baker. 
Adams  v.  Bellaire,  141  U.  S.  539;  35  L.  Ed.  849;  12  S.  Ct.  66..  .90,  596,  635 

Field. 
Adams  v.  Burks,  84  U.  S.  453;  21  L.  Ed.  700 763,  769,  927 

Miller;   dissenting:    Bradley,  Swayne,  Strong. 
Adams  v.  Lindell,  77  Fed.  432;  23  C.  C.  A.  223. .  .204,  223,  441,  473,  507,  674 
Affg.  63  Fed.  986. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Adams  v.  Tannage,  81  Fed.  178;   26  C.  C.  A.  326 561,  796 

Affg.  77  Fed.  191. 

Third;  Dallas,  Butler,  Buffington. 

Adee  v.  Mott,  55  Fed.  876;  5  C.  C.  A.  288 903 

Affg.  46  Fed.  77. 

Second;  Per  Curiam;  Lacombe,  Wheeler. 

Adriance  v.  National,  121  Fed.  827;   58  C.  C.  A.  163 516,  924 

Revg. Ill  Fed.  637. 

Second;  Wallace,  Lacombe. 

Aeolian  v.  Juelg,  155  Fed.  119;  86  C.  C.  A.  205 478,  579 

Affg.  149  Fed.  939. 

Second;  Per  Curiam;  Wallace,  Lacombe,  Coxe. 
Agawam  v.  Jordan,  74  U.  S.  583;   19  L.  Ed.  177. . .  .6,  144,  267,  318,  319, 

Clifford.                                      321,  368,  369,  487,  503,  795,  850,  861 
Ager  v.  Murray,  105  U.  S.  126;  26  L.  Ed.  942 151,  157 

Gray. 
Ajax  v.  Pettibone,  125  Fed.  748;  60  C.  C.  A.  516 207 

Seventh;   Jenkins,  Baker,  Bunn. 

Albany  v.  Worthington,  79  Fed.  966;  25  C.  C.  A.  258 187,  200,  341 

Affg.  73  Fed.  825. 

Second;  Lacombe,  Shipman. 
Albright  v.  Teas,  106  U.  S.  613;   27  L.  Ed.  295;   1  S.  Ct.  550. .  .  .714,  724 

Woods. 


xiv  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Allen  v.  Culp,  166  U.  S.  501 ;  41  L.  Ed.  1093;  17  S.  Ct.  644 887 

Affg.  166  Pa.  St.  286. 
Brown. 

Allen  v.  Riley,  203  U.  S.  347;  51  L.  Ed.  216;  27  S.  Ct.  95 920 

Affg.  71  Kan.  378. 

Peckham;  dissenting,  White,  Day. 

Allington  v.  Booth,  78  Fed.  878;  24  C.  C.  A.  378 551,  556,  562 

Affg.  72  Fed.  772;  see  61  Fed.  297. 
Second;  Wallace,  Lacombe,  Shipman. 

American  v.  American,  128  Fed.  709;  63  C.  C.  A.  307 398,  447,  674 

Fifth;  McCormick,  Shelby,  Parlange. 
American  v.  Buckskin,  72  Fed.  508;   18  C.  C.  A.  662. . .  .111,  324,  325,  327 
Revg.  69  Fed.  247; 

Distinguishing  Locomotive  v.  Medart,  158  U.  S.  68,  from  Cochrane  v. 

Deener,  94  U.  S.  780. 
Sixth;  Taft,  Lurton,  Hammond. 

American  v.  Bullivant,  117  Fed.  255;  54  C.  C.  A.  287 131,  404,  636 

Ninth;  Gilbert,  Hawley,  DeHaven. 

American  v.  Carter-Crume,  150  Fed.  333;  80  C.  C.  A.  339 107 

Revg.  145  Fed .  939. 

Second;  Lacombe,  Townsend,  Coxe. 

American  v.  Choate,  159  Fed.  140;   86  C.  C.  A.  330 626,  667 

Seventh;   Grosscup,  Baker,  Kohlsaat. 

American  v.  Choate,  159  Fed.  429;  86  C.  C.  A.  409 490 

Seventh;   Grosscup,  Baker,  Kohlsaat. 

American  v.  Cimiotti,  118  Fed.  838;  55  C.  C.  A.  513 543,  546 

Affg.  117  Fed.  623. 

Third;  Acheson,  Dallas,  Gray. 

American  v.  Cimiotti,  123  Fed.  869;  59  C.  C.  A.  357 232,  473,  502 

Revg.  120  Fed.  672. 
Third;  Acheson,  Dallas,  Buffington. 
American  v.  Cleveland,  158  Fed.  978;  86  C.  C.  A.  182. . .  .32,  195,  207,  208, 

398,  515,  903 
Revg.  157  Fed.  562. 

Sixth;  Lurton,  Severens,  Richards. 

American  v.  Crosman,  61  Fed.  888;  10  C.  C.  A.  146 847 

Affg.  57  Fed.  1021,  except  as  to  terms  of  decree. 
First;   Per  Curiam;  Colt,  Nelson,  Webb. 
American  v.  DeGrasse,  157  Fed.  660;   87  C.  C.  A.  260.... 411,  447,  629, 
Revg.  151  Fed.  47.  706,  807 

Second;  Lacombe,  Coxe,  Noves. 

American  v.  Driggs-Seabury,  109  Fed.  83;  48  C.  C.  A.  241 665 

Affg.  99  Fed.  982. 
Second;  Lacombe,  Shipman. 

American  v.  Driggs-Seabury,  114  Fed.  936;  52  C.  C.  A.  556 602 

Affg.  99  Fed.  996. 

Second;  Wallace,  Lacombe,  Shipman. 
American  v.  Fiber,  90  U.  S.  566;  23  L.  Ed.  31 ...  .78,  204,  380,  818,  822,  871 
Strong. 

American  v.  Helmstetter,  142  Fed.  978;  74  C.  C.  A.  240 603,  637,  754 

Affg.  in  part  129  Fed.  919. 

Second;   Wallace,  Lacombe,  Townsend. 
American  v.  Hickmott,  142  Fed.  141;  73  C.  C.  A.  359. . .  .380,  435,  936,  937 
Revg.  137  Fed.  86. 
Ninth;   Gilbert,  Ross,  Hawley. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  XV 

[References  are  to  sections] 

American  v.  Howland,  80  Fed.  395;  25  C.  C.  A.  500. . .  .223,  380,  689,  865, 
Revg.  70  Fed.  986.  915,  938 

First;  Colt,  Webb,  Aldrich. 

American  v.  Johnston,  52  Fed.  228;  3  C.  C.  A.  53 871 

Revg.  48  Fed.  446. 
Third;    Dallas,  Butler,  Green. 

American  v.  Jones,  142  Fed.  974;  74  C.  C.  A.  236 764 

Revg.  122  Fed.  803. 

Second;  Wallace,  Townsend,  Coxe. 

American  v.  Mills,  149  Fed.  743;  79  C.  C.  A.  449 61,  456,  624,  851 

Revg.  138  Fed.  142. 

Third;  Dallas,  Gray,  Archbald. 

American  v.  Mills,  162  Fed.  147 ;  89  C.  C.  A.  171 338,  777 

Modfg.  149  Fed.  743. 

Third;  Dallas,  Gray,  Archbald. 

American  v.  Morris,  142  Fed.  166;  73  C.  C.  A.  384 103,  666 

Seventh;    Baker,  Seaman,  Anderson. 

American  v.  National,  119  Fed.  893;  56  C.  C.  A.  423 690 

First;  Colt,  Putnam,  Aldrich. 

American  v.  National,  51  Fed.  229;  2  C.  C.  A.  165 118,  541 

Affg.  48  Fed.  913;  approving,  41  Fed.  139. 
Second;   Wallace,  Shipman. 

American  v.  Newgold,  113  Fed.  877;  51  C.  C.  A.  501 332 

Affg.  99  Fed.  567. 

Second;  Wallace,  Townsend. 
American  v.  Pennock,  164  U.  S.  26;  41  L.  Ed.  337;  17  S.  Ct.  1  .  . .  .207,  592 
Affg.  45  Fed.  252.  • 

Fuller. 
American  v.  Phoenix,  113  Fed.  629;  51  C.  C.  A.  339.  . .  .118,  271,  305,  386, 
Fourth;  Simonton,  Purnell,  Waddill.  546,  572,  929 

American  v.  Port  Huron,  72  Fed.  516;  18  C.  C.  A.  670 411,  627 

Sixth;    Taft,  Lurton,  Hammond. 

American  v.  Pungs,  141  Fed.  923;  73  C.  C.  A.  157 160,  744 

Seventh;  Grosscup. 

American  v.  Sample,  130  Fed.  145;  64  C.  C.  A.  497 630 

Revg.  126  Fed.  760. 

Third;   Acheson,  Gray,  Kirkpatrick. 

American  v.  Sample,  136  Fed.  857 ;  70  C.  C.  A.  415 138 

See  126  Fed.  760;   130  Fed.  145. 
Third ;  Acheson.  Dallas,  Gray. 

American  v.  Sexton,  139  Fed  564;  71  G  C.  A.  548 196,  459,  468 

Sixth;  Lurton,  Severens,  Richards. 
American  v.  Simmons,  106  U.  S.  89;  27  L.  Ed.  79;  1  S.  Ct.  52. . .  .523,  524 

Blatchford. 
American  v.  Steward,  155  Fed.  731 ;  84  C.  C.  A.  157. . .  .56,  309,  780,  817,  904 
Refusing  to  follow  decision  of  C.  C.  A.  2d  Circ.  in  same  pat.    See  Kirch- 
berger  v.  American,  128  Fed.  599. 
Sixth;   Lurton,  Severens,  Richards. 
American  v.  Streat,  83  Fed.  700;  28  C.  C.  A.  18. . .  .234,  473,  525,  674,  771 
Fourth;  Goff,  Simonton,  Brawley. 

American  v.  Swietusch,  85  Fed.  968;  29  C.  C.  A.  506 876,  889 

Affg.  75  Fed.  573;  dist.  Gaskill  v.  Myers,  81  Fed.  854. 
Seventh;  Woods,  Jenkins,  Showalter,  Per  Curiam. 

American  v.  Talking  Machine,  98  Fed.  729;  39  C.  C.  A.  249 569 

Seventh;  Woods,  Bunn,  Seaman. 


XVI  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

American  v.  United  States,  68  Fed.  542;  15  C.  C.  A.  569.  .26,  57,  361,  727,  7&> 
Revg.  65  Fed.  86. 

First;  Colt,  Putnam,  Nelson. 

American  v.  Universal,  151  Fed.  595;  81  C.  C.  A.  139 626,  648 

Revg.  145  Fed.  636,  643. 

Second;   Wallace,  Lacombe,  Townsend. 

American  v.  Van  Nortwick,  52  Fed.  752;  3  C.  C.  A.  274 752,  753,  764 

Seventh;    Harlan,  Woods,  Jenkins. 

American  v.  Vaught,  108  Fed.  571 ;  47  C.  C.  A.  496 542 

Seventh;   Woods,  Jenkins,  Grosscup.     Per  Curiam. 

American  v.  Wagner,  151  Fed.  576;  81  C.  C.  A.  120 72,  226,  413 

Affg.  138  Fed.  108. 

Second;  Lacombe,  Townsend,  Coxe. 

American  v.  Warren,  141  Fed.  655;  72  C  C  A.  649 59 

Seventh;   Grosscup,  Baker,  Seaman. 

American  v.  Weston,  59  Fed.  147;  8  C.  C.  A.  56 74,  103,  380 

Affg.  51  Fed.  237. 

Sixth;   Taft,  Lurton,  Severens. 

American  v.  Wyeth,  139  Fed.  389;  71  C.  C.  A.  485 452,  563,  665 

Sixth;  Lurton,  Severens,  Richards. 
Anderson  v.  CoUins,  122  Fed.  451;   58  C.  C.  A.  669. . .  .96,  223,  349,  409, 
Eighth;  Caldwell,  Sanborn,  Thayer.  441,468,609 

Anderson  v.  Eiler,  50  Fed.  775 ;  1  C.  C.  A.  659 754,  756 

Affg.  46  Fed.  777. 

Third;   Acheson,  Butler,  Green. 

Anderson  v.  Miller,  129  U.  S.  70;  32  L.  Ed.  635;  9  S.  Ct.  224 103,  795 

Lamar.' 

Anderson  v.  Potts,  108  Fed.  379;  47  C.  C.  A.  409 31,  190,  220 

Seventh;  Woods,  Jenkins,  Bunn. 

Andrews  v.  Hovey,  123  U.  S.  267;  31  L.  Ed.  160;  8  S.  Ct.  101 857 

Affg.  5  McCrary,  181;   Rehearing   124  U.  S.  694;   Eames  v.  Andrews, 
122  U.  S.  40;  Beedle  v.  Bennett,  id.  71. 
Blatchford. 
Andrews  v.  Hovey,  124  U.  S.  694;  31  L.  Ed.  557;  8  S.  Ct.  676. .  .  .30,  770, 

857,  895,  923 
Rehearing  and  Affg.  123  U.  S.  267;  8  Ct.  101. 
Blatchford. 

Andrews  v.  Thum,  67  Fed.  911 ;   15  C.  C.  A.  67 137,  636,  775 

Revg.  53  Fed.  84. 

First;  Colt,  Webb,  Aldrich. 

Andrews  v.  Thum,  72  Fed.  290;  18  C.  C  A.  566 138 

See  64  Fed.  149;  see  67  Fed.  911;  see  70  Fed.  65;  see  71  Fed.  763. 
First;  Colt,  Webb,  Aldrich.    Per  Curiam. 
Ansonia  v.  Electrical,  144  U.  S.  11;   36  L.  Ed.  327;    12  S.  Ct.  601 .. .  .63, 
Affg.  32  Fed.  81 ;  35  Fed.  68.  654,  660,  666,  671 

Brown  ;  dissenting,  Field. 

Anthony  v.  Gennert,  108  Fed.  396 ;  47  C.  C.  A.  426 938 

Third;  Acheson,  Dallas,  Buffington. 
Antisdel  v.  Chicago,  89  Fed.  308;  32  C.  C.  A.  216. . .  .46,  381,  385,  387,  567 
Seventh;   Woods,  Showalter,  Baker. 

Appleton  v.  Bacon,  67  U.  S.  699;  17  L.  Ed.  338 25,  151,  884 

Nelson. 

Appleton  v.  Star,  60  Fed.  411 ;  9  C.  C.  A.  42 670,  817 

Affg.  51  Fed.  284. 

Seventh;  Woods,  Jenkins,  Bunn. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  xvii 

[References  are  to  sections] 

I  iquarama  v.  Old  Mill,  115  Fed.  806;  53  C.  C.  A.  376 563,  564 

Second;  Wallace,  Lacombe,  Townsend. 

Arey  v.  DeLoriea,  55  Fed.  323;  5  C.  C.  A.  116 736 

Revg.  (at  law)    See  same  pat.  in  suit  McDonald  v.  Whitney,  24  Fed.  600. 
First;  Colt,  Putnam,  Nelson. 

Arlington y.  Celluloid,  97  Fed.  91 ;  318  C.  C.  A.  60 685 

Third;   Dallas,  Buffington,  Bradford. 
Armat  v.  Edison,  125  Fed.  939;  60  C.  C.  A.  380. . .  544  ^71 

Revg.  121  Fed.  559.  ' 

Second;  Wallace,  Townsend,  Coxe. 
Aron  v.  Manhattan,  132  U.  S.  84;    33  L.  Ed.  272;    10  S.  Ct.  24        671 
Affg.  26  Fed.  314.  672',  673 

Blatchford. 

Ashcroft  v.  Boston,  97  U.  S.  189;   24  L.  Ed.  982 216  344 

Clifford. 

Ashton  v.  Coale,  52  Fed.  314;  3  C  C.  A.  98 Ill,  202,  203,  612,  809 

Affg.  50  Fed.  100.  ' 

Fourth;  Goff,  Hughes,  Simonton. 
Atherton  v.  Atwood-Morrison,  102  Fed.  949;   43  C.  C.  A.  72        721    801 
Revg.  99  Fed.  113.  "  806,807 

Third;  Acheson,  Dallas,  Gray. 

Atkins  v.  Parke,  61  Fed.  953;    10  C.  C.  A.  189 176,  449,  450,  765 

Sixth;  Taft,  Lurton,  Ricks. 
Atlantic  v.  Brady,  107  U.  S.  192;  27  L.  Ed.  438;  2  S.  Ct.  225. . .  .96,  638  679 
Bradley. 

Atlas  v.  Simonds,  102  Fed.  643;  42  C.  C.  A.  398 420,  421,  424,  743 

Third;   Acheson,  Dallas,  Gray. 
Austin  v.  American,  121  Fed.  76;   57  C.  C.  A.  330. . .  .136,  230   459   544 
Affg.  98  Fed.  992.  56i,  634 

Seventh;   Jenkins,  Baker,  Seaman. 
Automatic  v.  Cutler-Hammer,  147  Fed.  250;  77  C.  C.  A.  176  21    170 

Revg.  139  Fed.  870.  "  '  *     ' 

Second,  Wallace,  Lacombe,  Coxe.    Per  Curiam. 

Avery  v.  Case,  148  Fed.  214;  78  C.  C.  A.  110 247  673 

Revg.  139  Fed.  878.  "  "       ' 

Seventh;  Baker,  Seaman,  Kohlsaat. 
Babcock  v.  Clarkson,  63  Fed.  607 ;  11  C.  C.  A.  351 .. .  W 

Affg.  58  Fed.  581.  

First;  Colt,  Putnam,  Nelson. 

Badische  v.  Kalle,  104  Fed.  802 ;  44  C.  C.  A.  201 79  105  106 

Affg.  94  Fed.  163.  '        ' 

Second;   Wallace,  Lacombe,  Shipman. 

Bagley  v.  Empire,  58  Fed.  212 ;  7  C.  C.  A.  191 596,  615,  674 

Second;   Lacombe,  Shipman. 

Baker  v.  Crane,  138  Fed.  60;  70  C.  C.  A.  486 843  892 

See  125  Fed.  1.  ' 

Seventh;  Jenkins,  Grosscup,  Baker. 

Baker  v.  Duncombe,  146  Fed.  744;  77  C.  C.  A.  234 616,  646,  706 

Eighth;  Sanborn,  Hook,  Adams. 

Baldwin  v.  Kresl,  76  Fed.  823;  22  C.  C.  A.  593 389,  600,  636,  646,  656 

Seventh;  Woods,  Jenkins,  Seaman. 

Ball  v.  Langles,  102  U.  S,  128;  26  L.  Ed.  104 871   880 

Strong. 

B.  &  S.  Fastener  v.  B.  G.  Fastener,  58  Fed.  818;   7  C.  C.  A.  498 207, 

311,  507,  719,  915 


XV111  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Revg.  36  Fed.  309;  39  Fed.  790;  53  Fed.  245.    Rehearing  60  Fed.  399. 
First;   Putnam,  Nelson,  Webb. 
B.  &  S.  Fastener  v.  Edgarton,  96  Fed.  489;  37  C.  C.  A.  523..  .635,637,  919 

First;   Colt,  Putnam,  Webb. 
B.  &  S.  Fastener  v.  Kraetzer,  150  U.  S.  Ill;  37  L.  Ed.  1019;   14  S.  Ct.  48 
Affg.  39  Fed.  700.  ....  135,  275,  532 

'       Brown. 

Ballard  v.  Searles,  130  U.  S.  50;  32  L.  Ed.  846;  9  S.  Ct.  418 790 

Bradley. 

Bannerman  v.  Sanford,  99  Fed.  294;   39  C.  C.  A.  534 88,  704 

Affg.  85  Fed.  488. 

Second,  Wallace,  Lacombe,  Shipman. 

Bantz  v.  Frantz,  105  U.  S.  160;  26  L.  Ed.  1013 871 

Woods. 

Barber  v.  National,  129  Fed.  370;  64  C.  C.  A.  40 756,  800 

Sixth;  Lurton,  Severens,  Richards. 

Barnes  v.  Walworth,  60  Fed.  605 ;  9  C.  C.  A.  154 59,  532,  646 

Affg.  51  Fed.  88. 

Seventh;  Woods,  Jenkins,  Bunn. 

Barr  v.  Chicago,  110  Fed.  972;  49  C.  C.  A.  194 20,  629 

Seventh;   Woods,  Jenkins,  Grosscup. 

Bartholomew  v.  Union,  113  Fed.  289;   51  C.  C.  A.  250 543 

Seventh;   Jenkins,  Grosscup,  Bunn.     Per  Curiam. 
Bate  v.  Hammond,  129  U.  S.  151;  32  L.  Ed.  645;  9  S.  Ct.  225. . .  .420,  421 
Construed  in  Pohl  v.  Anchor,  134  U.  S.  381. 

Bate  v.  Sulzberger,  157  U.  S.  1 ;  39  L.  Ed.  601 ;  15  S.  Ct.  508. . .  .420, 421, 923 

Affg.  Edison  v.  U.  S.  35  Fed.  134;   Bate  v.  Hammond,  35  F.  R.  151; 

Bate  v.  Gillett,  31   Fed.  809;   Accumulator  v.  Julien,   57   Fed. 

838;    Gramme  v.  Arnoux,  17  Fed.  838;    Approving  Andrews  v. 

Hovey,  124  U.  S.  694.  Harlan. 

Bates  v.  Coe,  98  U.  S.  31;  25  L.  Ed.  68. ..  .67,  111,  187,  201,  320,  322,  383, 

Clifford.  498,  604,  629,  795,  804,  855,  883,  905 

Bates  v.  Excelsior,  89  Fed.  498;  32  C.  C.  A.  267 593 

Seventh;  Woods,  Showalter,  Bunn. 

Bates  v.  Force,  149  Fed.  220;   79  C.  C.  A.  178 598 

Revg.  145  Fed.  529. 

Second;   Wallace,  Townsend,  Coxe.    Per  Curiam. 

Battin  v.  Taggart,  58  U.  S.  77;  15  L.  Ed.  37 874 

McLean. 

Beach  v.  Hobbs,  92  Fed.  146;  34  C.  C.  A.  248 254,  378,  380,  605,  880 

Revg.  82  Fed.  916. 

First ;  Colt,  Brown,  Lowell. 
Beecher  v.  Atwater,  114  U.  S.  523;  29  L.  Ed.  232;  5  S.  Ct.  1007. . .  .594,871 

Gray. 
Beedle  v.  Bennett,  122  U.  S.  71 ;  30  L.  Ed.  1074;  7  S.  Ct.  1090  ..  .20,  532,  717 
Affg.  Patent  held  void  substantially  reversing  this  case  and  Eames  v. 
Andrews,  122  U.  S.  40  in  Andrews  v.  Hovey,  123  U.  S.  267. 
Matthews;  dissenting  —  Bradley,  Field,  Grav. 
Beer  v.  Walbridge,  100  Fed.  465;  40  C.  C.  A.  496. . . .  '326,  443,  626,  629,  709 

Second;   Wallace,  Lacombe,  Shipman. 

Belding  v.  Challenge,  152  U.  S.  100;  38  L.  Ed.  370;  14  S.  Ct.  492. . .  .601, 

Shiras.  655 

Belknap  v.  Sthild,  161  U.  S.  10;    16  L.  Ed.  599;    16  S.  Ct.  443. . .  .429, 

Gray,  Dissenting  opinion  Harlan.  498,  515,  553,  837 


CASES   EXCERPTED,    WITH   ANNOTATIONS  XIX 

[References  are  to  sections] 

Bell  v.  MacKinnon,  149  Fed.  205 ;  79  C.  C.  A.  163 390 

Second;   Lacombe,  Townsend,  Coxe. 
Bement  v.  National,  186  U.  S.  70;  46  L.  Ed.  1058;  22  S.  Ct.  747 744 

Peckham. 
Bene  v.  Jeantet,  129  U.  S.  683;  32  L.  Ed.  803;  9  S.  Ct.  428. .. .  197,  398,  494 

Lamar. 

Benjamin  v.  Chambers,  59  Fed.  151 ;  8  C.  C.  A.  61 225,  601 

Affg.  51  Fed.  902. 

Third;   Dallas,  Butler,  Green. 

Benjamin  v.  Dale,  158  Fed.  617;  85  C.  C.  A.  439 348,  350,  506 

Revg.  141  Fed.  989. 

Second;   Lacombe,  Coxe,  Ward;  Per  Curiam. 
Bennett  v.  Fowler,  75  U.  S.  445;  19  L.  Ed.  431 348 

Nelson. 
Berlinger  v.  Seaman,  113  Fed.  750;  51  C.  C.  A.  440. . .  .137,  542,  576,  789 
Affg.  108  Fed.  714;  See  110  Fed.  30. 

Fourth;   Simonton,  Jackson,  Purnell. 

Berry  v.  Wynkoop,  84  Fed.  646;  28  C.  C.  A.  505 698 

Affg.  77  Fed.  833. 

Second;   Wallace,  Lacombe,  Shipman. 
Bettendorf  v.  Little,  123  Fed.  433;  59  C.  C.  A.  473 74,  646 

Seventh;  Jenkins,  Grosscup,  Ba^er. 
Bibb  v.  Bowers,  142  Fed.  137;  73  C.  C.  A.  355 198 

Fifth;  Pardee,  Shelby,  Maxey. 
Birdsall  v.  Coolidge,  93  U.  S.  64;  23  L.  Ed.  802 282,  285,  292,  294 

Birdsall  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed.  768;  5  S.  Ct.  244. . .  .299,  338, 
Gray.  764,  767,  796,  798 

Birmingham  v.  Gates,  78  Fed.  350;  24  C.  C.  A.  132 359,  601,  610,  615, 

657 
Following  Gates  v.  Fraser,  153  U.  S.  332.    See  42  Fed.  49. 
Fifth;  Pardee,  McCormick,  Boardman. 
Bissell  v.  Goshen,  72  Fed.  545;   19  C.  C.  A.  25. . .  .116,  119,  120,  128,  142, 

539,  544,  545,  549 
See  72  Fed.  67.    Following  Richmond  v.  Atwood,  52  Fed.  10;  Marden 
v.  Mfg.  Co.  67  Fed.  809.  Overruling  Watch  Co.  v.  Robbins,  52  Fed. 
337  on  question  of  appeal. 
Sixth;  Taft,  Lurton,  Hammond. 
Black  v.  Thorne,  111  U.  S.  122;  28  L.  Ed.  372;  4  S.  Ct.  326. . .  .292,  293,  298 
Affg.  12  Blatch.  20. 
Field. 
Black  Diamond  v.  Excelsior,  156  U.  S.  611;  39  L.  Ed.  553;   15  S.  Ct.  482 
Brown.  ....404,664,707 

Blackledge  v.  Weir,  108  Fed.  71 ;  47  C.  C.  A.  212 927 

Seventh;   Woods,  Jenkins. 

Blair  v.  Eastman,  64  Fed.  491 ;    12  C  C.  A.  603 305 

Affg.  62  Fed.  400. 

First;  Putnam,  Nelson,  Webb;  Per  Curiam. 
Blake  v.  San  Francisco,  113  U.  S.  679;  28  L.  Ed.  1070;  5  S.  Ct.  692.  .. .  198, 
Woods.  473,  671,  858 

Blakey  v.  National,  95  Fed.  136;  37  C.  C.  A.  27 567 

Third;  Acheson,  Dallas,  Bradford. 
Blanchard  v.  Putnam,  75  U.  S.  420;   19  L.  Ed.  433.  ..  .311,  320,  411,  494, 
Revg.  2  Bond.  84.  629,  795 

Clifford;  dissenting  opinion,  Swayne,  also  Grier  and  Miller. 


XX  CASES    EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Blauvelt  v.  Interior,  80  Fed.  906;  26  C.  C.  A.  243 366 

Second;    Lacombe,  Shipman. 

Bliss  v.  Reed,  106  Fed.  314;  45  C.  C.  A.  304 164,  674,  805 

Affg.  102  Fed.  903. 

Third;  Dallas,  Gray,  Buffington. 
Bloomer  v.  McQuewan,  14  How.  539;  14  L.  Ed.  532 418 

Taney,  Nelson.    Dissenting  opinion  McLean. 
Bloomer  v.  Millinger,  68  U.  S.  340;  17  L.  Ed.  581 769 

C    T  TFFORD 

Blount  v.  Societe,  53  Fed.  98;  3  C.  C.  A.  455. . .  .544,  554,  555,  560,  561,  562 
See  same  patent  52  Fed.  146;  51  Fed.  610. 
Sixth;   Jackson,  Taft. 

Blumenthal  v.  Burrill,  53  Fed.  105;  3  C.  C.  A.  462 649 

Affg.  43  Fed.  667. 

Second;  Shipman,  Lacombe. 
Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787;   10  S.  Ct.  378. . .  .138,  153, 
Revg.  33  Fed.  279.    See  50  Fed.  660.  Fuller.  288,  505,  836 

Bonnell  v.  Stoll,  61  Fed.  767;  10  C.  C.  A.  48 667 

Affg.  57  Fed.  396. 

Third;  Dallas,  Wales,  Green. 

Bonnette  v.  Koehler,  82  Fed.  428;  27  C.  C.  A.  200 221,  443,  486 

Sixth;  Taft,  Lurton,  Severens. 

Bonsack  v.  Elliott,  69  Fed.  335;  16  C.  C.  A.  250 63,  411,  608 

Revg.  in  part;  affg.  in  part,  63  Fed.  835. 
Second;   Brown,  Lacombe,  Shipman. 

Bonsack  v.  Hulse,  65  Fed.  864;  13  C.  C.  A.  180 365 

Affg.  57  Fed.  519. 

Fourth;  Simonton,  Morris,  Brawley. 

Boston  v.  Allen,  91  Fed.  248;  33  C.  C.  A.  485 293,  756,  903 

First;   Putnam,  Webb,  Brown. 

Boston  v.  Bemis,  80  Fed.  287;  25  C.  C.  A.  420 378,  527 

Affg.  75  Fed.  403. 

First;  Putnam,  Webb,  Aldrich. 

Boston  v.  Bemis,  98  Fed.  121;  38  C.  C.  A.  661 790 

Denying  petition. 

First;  Putnam,  Aldrich,  Brown. 

Boston  v.  Woodward,  82  Fed.  97;  27  C.  C.  A.  69 198,  380,  384 

Affg.  75  Fed.  272. 

First;  Colt,  Putnam,  Webb. 

Bothe  v.  Paddock,  50  Fed.  536;  1  C.  C.  A.  575 592 

Eighth;  Caldwell,  Sanborn,  Shiras. 

Bowers  v.  Lake  Superior,  149  Fed.  983;  79  C.  C.  A.  493 40,  751,  759 

Eighth;   Sanborn,  Hook,  Adams. 
Boyd  v.  Janesville,  158  U.  S.  260;   39  L.  Ed.  973;    15  S.  Ct.  837. . .  .217, 
Affg.  37  Fed.  887.                           Shiras.  629,  680 

Boyden  v.  Burke,  14  How.  575;   14  L.  Ed.  548 181,  262,  410 

(rflTFR 

Boyden  v.  Westinghouse,  70  Fed.  816;    17  C.  C.  A.  430. . .  .197,  229,  257, 
Revg.  66  Fed.  997.  377,  380,  426,  785,  893 

Fourth;   Goff,  Simonton,  Hughes. 

Boyer  v.  Keller,  127  Fed.  130;  62  C.  C.  A.  244 180,  214,  612 

Revg.  110  Fed.  217. 

Third;   Acheson,  Gray,  Archbald. 
Boynton  v.  Morris,  87  Fed.  225;  30  C.  C.  A.  617. . .  .50,  222,  223,  240,  606, 
Affg.  82  Fed.  440.  706,  937 

Third;  Acheson,  Dallas,  Bradford. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  XXI 

[References  are  to  sections] 

Braddock  v.  Macbeth,  64  Fed.  118;   12  C.  C.  A.  70 334,  548 

Affg.  54  Fed.  173.    See  same  patent  54  Fed.  167;  54  Fed.  169;  54  Fed. 
171. 
Third;   Dallas,  Wales. 

Bradford  v.  Belknap,  115  Fed.  711 ;  53  C.  C.  A.  293 696 

Affg.  105  Fed.  63. 

First;   Colt,  Aldrich,  Brown. 

Bradford  v.  Expanded,  146  Fed.  984;  77  C.  C.  A.  230 682 

Revg.  136  Fed.  870. 

Third;   Dallas,  Gray,  McPherson. 

Bradford  v.  Kisinger-Ison,  113  Fed.  811 ;  51  C.  C.  A.  483 327,  385,  764 

Sixth;  Lurton,  Severens,  Wanty. 

Bradley  v.  Eagle,  57  Fed.  980;  6  C.  C.  A.  661 411,  807,  894 

Affg.  50  Fed.  193. 

Seventh ;  Gresham,  Woods,  Jenkins. 

Bradley  v.  Eagle,  58  Fed.  721 ;  7  C.  C.  A.  442 315,  803 

Rehearing  57  Fed.  980. 
Seventh;  Jenkins. 

Bradley  v.  Eccles,  126  Fed.  945;  61  C.  C.  A.  669 124,  335,  442,  600 

Affg.  and  revg.  in  part  122  Fed.  867. 
Second;   Lacombe,  Townsend,  Coxe. 

Bradley  v.  Eccles,  139  Fed.  447;  71  C.  C.  A.  291 706 

Revg.  133  Fed.  308. 

Second;   Lacombe,  Townsend,  Coxe. 

Bradley  v.  Eccles,  143  Fed.  521 ;  74  C.  C.  A.  478 661 

Revg.  138  Fed.  916. 
Second ;  Wallace,  Lacombe,  Townsend.    Per  Curiam. 

Brady  v.  Ajax,  160  Fed.  84 ;  87  C.  C.  A.  240 823 

Revg.  155  Fed.  409. 

Third;  Gray,  McPherson,  Cross. 

Bragg  v.  Fitch,  121  U.  S.  478;  30  L.  Ed.  1008;  7  S.  Ct.  978 198 

Revg.  16  Fed.  243.  Bradley. 

Brammer  v.  Schroeder,  106  Fed.  918;  46  C.  C.  A.  41. . .  .203,  223,  232,  374, 
Affg.  98  Fed.  880  and  886.  464,  468,  472,  495 

Eighth;   Caldwell,  Sanborn,  Adams. 

Brammer  v.  Witte,  159  Fed.  726;  86  C.  C.  A.  207 226,  457,  473 

Eighth;   Sanborn,  Adams,  Philips. 

Brennan  v.  Dowagiac,  162  Fed.  472;  89  C.  C.  A.  392 837,  841,  845 

See  127  Fed.  143;  101  Fed.  716;  162  Fed.  479. 
Sixth;   Lurton,  Severens,  Richards. 
Bresnahan  v.  Tripp,  72  Fed.  920;    19  C  C.  A.  237. . .  .34,  229,  375,  541, 

545   561 

Affg.  70  Fed.  982.     Following  Electric  v.  Edison,  60  Fed.  276;'  See 

National  v.  American,  53  Fed.  367 ;  approving  Cutcheon  v.  Herrick, 

52  Fed.  147;   applying  Davis  v.  Edison,  60  Fed.  276;   approving 

Herrick  v.  Tripp,  60  Fed.  80. 

First;    Putnam,  Nelson,  Webb. 

Bresnahan  v.  Tripp,  99  Fed.  280;   39  C.  C.  A.  508 35,  37,  386,  891 

Affg.  92  Fed.  391. 

First;  Putnam,  Webb,  Aldrich. 

Bresnahan  v.  Tripp,  102  Fed.  899;  43  C.  C.  A.  48 189 

First;    Putnam,  Webb,  Aldrich. 

Brickill  v.  Mayor,  60  Fed.  98;  8  C.  C.  A.  500 287 

See  opinion  on  demurrer,  etc.,  50  Fed.  274;  52  Fed.  737. 
Fourth;  Goff,  Seymour,  Simonton. 


XX11  CASES    EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Brickill  v.  Mayor,  112  Fed.  65;  50  C.  C.  A.  1 220,  635,  674,  756,  846 

Revg.  as  to  profits,  98  Fed.  113. 

Second;    Wallace,  Brown,  Thomas. 

Bridge  v.  Excelsior,  105  U.  S.  618;  26  L.  Ed.  1190 507 

Field. 

Briggs  v.  Central,  60  Fed.  87;  8  C.  C.  A.  480 672 

Affg.  54  Fed.  376. 

Second ;  Wallace,  Lacombe,  Shipman. 

Briggs  v.  Duell,  93  Fed.  972;  36  C.  C.  A.  38 672 

Affg.  87  Fed.  479. 
Second;   Wallace,  Lacombe,  Shipman. 

Brigham  v.  Coffin,  149  U.  S.  557;  37  L.  Ed.  845;  13  S.  Ct.  939 775 

Affg.  37  Fed.  688. 
Brown. 

Brill  v.  Peckham,  108  Fed.  267;  47  C.  C.  A.  315 216,  226,  540 

See  Brill  v.  R.  R.  103  Fed.  289;   Rev.  in  189  U.  S.  57. 
Second;  Wallace,  Wheeler,  Thomas. 
Brill  v.  Peckham,  189  U.  S.  57;  47  L.  Ed.  706;  23  S.  Ct.  562. . .  .122,  251 
Affg.  103  Fed.  289;  105  Fed.  626.   Revg.  108  Fed.  267;  110  Fed.  377. 
Fuller. 

Brill  v.  St.  Louis,  90  Fed.  666;  33  C.  C.  A.  213 207,  214 

Eighth;   Sanborn,  Thayer,  Shiras. 

Brinkerhoff  v.  Aloe,  146  U.  S.  515;  36  L.  Ed.  1068;  13  S.  Ct.  221 47,  607 

Affg.  37  Fed.  92.  Fuller. 

Brinton  v.  Paxton,  134  Fed.  78 ;  67  C.  C.  A.  204 843,  845 

See  107  Fed.  137. 
Third;  Acheson,  Gray,  Holland. 

Brookfield  v.  Elmer,  154  Fed.  197;  83  C.  C.  A.  180 219 

Affg.  144  Fed.  418. 

Third;  Dallas,  Gray,  Buffington. 

Brooks  v.  Fiske,  15  How.  212;  14  L.  Ed.  665 223,  473 

Catron.    Dissent.    Wayne,  Nelson,  McLean. 

Brooks  v.  Sacks,  81  Fed.  403 ;  26  C.  C.  A.  456 71,  74,  349,  587 

First;   Colt,  Putnam,  Webb. 

Brown  v.  Crane,  133  Fed.  235;  66  C.  C.  A.  676 614 

Affg.  125  Fed.  34. 

Seventh;  Jenkins,  Grosscup,  Baker. 
Brown  v.  Davis,  116  U.  S.  237;  29  L.  Ed.  659;  6  S.  Ct.  379. . .  .380,  876,  937 
Revg.  19  Blatchf.  263. 
Blatchford. 
Brown  v.  District  of  Columbia,  130  U.  S.  87;  32  L.  Ed.  863;  9  S.  Ct.  437 
Affg.  3  Mackey,  502.  ....652,696 

Fuller. 

Brown  v.  Duchesne,  60  U.  S.  183;   15  L.  Ed.  595 532 

Taney. 
Brown  v.  Guild,  90  U.  S.  181;  23  L.  Ed.  161. .  .  .62,  66,  216,  222,  223,  225, 

391,  473,  674,  690,  880,  913,  937 
Bradley.    Dissent,  opinion  Clifford;  also  Miller  and  Davis. 

Brown  v.  Huntington,  134  Fed.  735;   67  C.  C  A.  639 694 

Affg.  131  Fed.  273. 

Second;   Lacombe,  Townsend,  Coxe. 
Brown  v.  King,  107  Fed.  498;   46  C.  C.  A.  432. ..... .  .380,  442,  657,  675 

Sixth;    Lurton,  Day,  Severens. 

Brown  v.  Lanyon,  148  Fed.  838;  78  C.  C.  A.  528 285 

Eighth;  Van  Devanter,  Adams,  Philips. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  XX111 

[References  are  to  sections] 
Brown  v.  Piper,  91  U.  S.  37;  23  L.  Ed.  200 389,  687,  706,  712,  746,  795 

SWAYNE. 

Brown  v.  Stilwell,  57  Fed.  731 ;  6  C.  C.  A.  528 245,  377,  473 

Affg.  49  Fed.  738. 

Sixth;   Jackson,  Taft,  Hammond. 

Brown  v.  Stonemetz,  58  Fed.  571 ;  7  C.  C.  A.  374 812 

Affg.  57  Fed.  601. 

Third;   Dallas,  Butler,  Green. 

Browning  v.  Colorado,  61  Fed.  845;    10  C.  C.  A.  112 637,672 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Brunswick  v.  Klumpp,  131  Fed.  255;  65  C.  C.  A.  447 326,  341 

Affg.  126  Fed.  765.    See  111  Fed.  904. 
Second;  Lacombe,  Townsend,  Coxe. 

Brunswick  v.  Phelan,  79  Fed.  85;  24  C.  C  A.  451 655 

Affg.  76  Fed.  978. 

Second;  Wallace,  Shipman,  Lacombe. 

Brunswick  v.  Thum,  111  Fed.  904;  50  C.  C.  A.  61 626 

See  this  case  reversed  subsequently  on  new  evidence. 
Second;    Wallace,  Lacombe. 

Brusie  v.  Peck,  54  Fed.  820;   4  C.  C.  A.  597 760,  893 

Second;   Lacombe,  Shipman. 

Brush  v.  California,  51  Fed.  557;   2  C.  C.  A.  373 116 

Affg.  49  Fed.  73. 

Ninth ;  McKenna,  Ross,  Knowles. 
Brush  v.  California,  52  Fed.  945;    3  C.  C.  A.  368....  152,  277,  761,  763, 

764,  765,  766,  927 
Affg.  49  Fed.  73;  App.  48  Fed.  224. 
See  51  Fed.  557. 

Ninth;   McKenna,  Gilbert,  Knowles. 
Brush  v.  Condit,  132  U.  S.  39;  33  L.  Ed.  251;  10  S.  Ct.  1. . .  .89,  104,  854 
Affg.  20  Fed.  826. 

Brush  v.  Western,  76  Fed.  761 ;  22  C.  C.  A.  543 207,  504,   690,  893 

Affg.  69  Fed.  240. 

See  same  patent,  40  Fed.  826; 
"      "  "        44  Fed.  284; 

"      "  "        43  Fed.  533; 

"      "  "        46  Fed.  79; 

"      "  "    '     52  Fed.  965. 

Seventh;  Woods,  Jenkins,  Bunn. 

Bryce  v.  National,  116  Fed.  186;  53  C.  C.  A.  611 468 

Third;   Acheson,  Dallas,  Gray. 

Buchanan  v.  Perkins,  135  Fed.  90;  67  C.  C.  A.  564 614,  632,  693 

Affg.  129  Fed.  134. 

Third;    Dallas,  Gray,  Bradford. 

Bumngton's  v.  Eustis,  65  Fed.  804;   13  C.  C.  A.  143 222,  597 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Bullock  v.  General,  149  Fed.  409;  79  C.  C.  A.  229 599,  654,  908 

Revg.  146  Fed.  549. 

Sixth;   Lurton,  Severens,  Richards. 

Bullock  v.  General,  162  Fed.  28;  89  C.  C.  A.  68 63,  672 

Revg.  in  part  155  Fed.  740. 

Third;   Dallas,  Gray,  Buffington. 
Bullock  v.   Westinghouse,  129  Fed.  105;  63  C.  C.  A.  607. . .  .477,  505,  536, 
Sixth;  Lurton,  Severens,  Richards.  537,  538,  576,  577 


XXIV  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Bundy  v.  Columbian,  64  Fed.  851 ;  12  C.  C.  A.  442 222,  375,  532 

Affg.  59  Fed.  293. 

Second;    Wallace,  Lacombe,  Shipman. 
Bundy  v.  Detroit,  94  Fed.  524;  36  C.  C.  A.  375. . .  .208,  376,  380,  459,  485,  529 

Sixth;   Taft,  Lurton,  Clark. 
Burdell  v.  Denig,  92  U.  S.  716;  23  L.  Ed.  764 285,  289,  290,  404,  753 

TVTtt  t  ttr 
Burnham  v.  Union,  110  Fed.  765;  49  C.  C.  A.  163 45 

Sixth;   Lurton,  Day,  Severens. 
Burns  v.  Meyer,  100  U.  S.  671 ;  25  L.  Ed.  738 195 

Bradley. 
Burns  v.  Mills,  143  Fed.  325;  74  C.  C.  A.  525 627 

Seventh;  Grosscup,  Baker,  Seaman. 
Burr  v.  Duryee,  68  U.  S.  531;    17  L.  Ed.  750. . .  .347,  380,  432,  500,  683, 

Grier.                                                                                         768, 874 
Burr  v.  Duryee,  68  U.  S.  579;    17  L.  Ed.  660 871 

Burt  v.  Evory,  133  U.  S.  349;  33  L.  Ed.  647;  10  S.  Ct.  349. . .  .440,  647,  671 
Revg.  15  Fed.  112;   2  Fed.  542. 
Lamar. 
Busch  v.  Jones,  184  U.  S.  598;   46  L.  Ed.  707;   22  S.  Ct.  511.... 71,  77, 
Revg.  in  part  16  App.  D.  C.  23.  91,  688,  717 

McKenna. 
Busell  v.  Stevens,  137  U.  S.  423;  34  L.  Ed.  719;  11  S.  Ct.  150. . .  .437,  593, 
Affg.  28  Fed.  575.  596,  612,  618 

Lamar. 

Buser  v.  Novelty,  151  Fed.  478;  81  C.  C.  A.  16 10,  20,  74,  312 

Sixth;   Lurton,  Severens,  Cochran. 

Bussey  v.  Excelsior,  110  U.  S.  131;  28  L.  Ed.  95;  4  S.  Ct.  38 661 

Revg.  1  Fed.  640. 

TiT  ATPHFORD 

Butler  v.  Steckel,  137  U.  S.  21 ;  34  L.  Ed.  582;  11  S.  Ct.  25. . .  .591,  627,  668 
Affg.  27  Fed.  219. 

Ti T  ATPHPORT) 

Butte  City  v.  Pacific,  60  Fed.  90;  8  C.  C.  A.  484 603 

Affg.  52  Fed.  863. 

Ninth;   McKenna,  Gilbert,  Ross. 

Butte  City  v.  Pacific,  60  Fed.  410;  9  C.  C.  A.  41 652 

Revg.  55  Fed.  760. 

Ninth;   McKenna,  Gilbert,  Ross. 
Butterworth  v.  Hill,  114  U.  S.  128;  29  L.  Ed.  119;  5  S.  Ct.  796. . .  .25,  723 

Waite. 
Butterworth  v.  Hoe,  112  U.  S.  50;  28  L.  Ed.  656;  5  S.  Ct.  25.  .25,  114,  261,  741 
Matthews. 

Byram  v.  Friedberger,  100  Fed.  963;  41  C.  C.  A.  121 330 

Affg.  87  Fed.  559. 
Third;   Acheson,  Gray,  Kirkpatrick. 

Caldwell  v.  Powell,  73  Fed.  488;   19  C.  C.  A.  592 327,  335 

Revg.  71  Fed.  970. 

Third;   Acheson,  Wales,  Green. 
California  v.  Molitor,  113  U.  S.  609;  28  L.  Ed.  1106;  5  S.  Ct.  618. . .  .113, 
Dismissing  certification  from  Circuit  Court.  496,  577 

Bradley. 

California  v.  Schalicke,  119  U.  S.  401 ;  30  L.  Ed.  471 ;  7  S.  Ct.  391 456 

Vide  same  pat.  Schillinger  v.  Gunther    14  Blatchf.  152;    Schillinger 


CASES  EXCERPTED,  WITH  ANNOTATIONS      XXV 

[References  are  to  sections] 

,v.  Gunther,  17  Blatchf.  66;    California  v.  Monitor,  7  Sawy.  190; 
California  v.  Freeborn,  8  Sawy.  443;  Schillinger  v.  Greenway,  21 
Blatchf.  383;   Kuhl  v.  Mueller,  21  Fed.  510. 
Blatchford. 

Cambria  v.  Carnegie,  96  Fed.  850;  37  C.  C.  A.  593 344 

Revg.  89  Fed.  721 ;  Rev.  in  185  U.  S.  403. 
Third;   Acheson,  Dallas,  Kirkpatrick. 

Cameron  v.  Saratoga,  159  Fed.  453;  86  C.  C.  A.  483 105,  639,  819 

Revg.  in  part  151  Fed.  242. 

Second;   Lacombe,  Coxe,  Ward. 

Campbell  v.  Bayley,  63  Fed.  463;  11  C.  C.  A.  284 774,  775 

Affg.  45  Fed.  564. 

Seventh;  Woods,  Bunn,  Seaman. 

Campbell  v.  Duplex,  101  Fed.  282;  41  C.  C.  A.  351 207,  637,  675 

See  69  Fed.  250. 

Sixth;   Taft,  Lurton,  Severens. 

Campbell  v.  Miehle,  102  Fed.  159;  42  C.  C.  A.  235 684 

Affg.  and  rev.  in  part  96  Fed.  226. 
Seventh;  Woods,  Jenkins,  Bunn. 

Campbell  v.  Richardson,  76  Fed.  976;  22  C.  C.  A.  669 214 

Revg.  72  Fed.  525. 
Third;  Dallas,  Butler,  Wales. 

Cammeyer  v.  Newton,  94  U.  S.  225;  24  L.  Ed.  72 399,  498,  746 

Clifford. 

Campbell  v.  Haverhill,  155  U.  S.  610;  39  L.  Ed.  280;  15  S.  Ct.  217. . .  .127, 

Brown.  921 

Canda  v.  Michigan,  124  Fed.  486;   61  C.  C.  A.  194.... 97,  155,  195,  223, 

Sixth;   Lurton,  Severens,  Wanty.  476,  494,  598,  630,  782,  926 

Canda  v.  Michigan,  152  Fed.  178;  81  C.  C.  A.  420 298,  827,  829,  843 

Sixth;   Lurton,  Severens,  Richards. 
Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017;  6  S.  Ct.  970. . .  .71,  320, 
Woods.  322,  440,  647 

Capital  v.  Kinnear,  87  Fed.  333;  31  C.  C.  A.  3 656 

Revg.  81  Fed.  491. 
Sixth;  Taft,  Lurton,  Severens. 

Capital  v.  National,  70  Fed.  709;  17  C.  C.  A.  355 485 

Approving  53  Fed.  367. 

Second;   Wallace,  Lacombe,  Shipman.     Per  Curiam. 

Card  v.  Colby,  64  Fed.  594;  12  C.  C.  A.  319 212 

Revg.  63  Fed.  462. 
Seventh;  Woods,  Jenkins,  Bunn. 

Carlton  v.  Bokee,  84  U.  S.  463 ;  21  L.  Ed.  517 186,  248,  871 

Bradley. 

Carnegie  v.  Brislin,  124  Fed.  213;   59  C.  C.  A.  651 207,  214 

Revg.  118  Fed.  579. 

Third;   Acheson,  Dallas,  Gray. 
Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698.  .  .  .100, 
Revg.  96  Fed.  850.  105,  343,  344,  411,  508,  520,  631,  693,  822,  903 

Brown. 

Carpenter  v.  Searle,  60  Fed.  82;  8  C.  C.  A.  476 871 

Affg.  52  Fed.  809. 

Second;  Wallace,  Lacombe,  Shipman. 

Carroll  v.  Goldschmidt,  83  Fed.  508;   27  C.  C.  A.  566 36,  927 

Revg.  80  Fed.  520. 

Second;  Wallace,  Lacombe,  Shipman. 


XXVI  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Carter  v.  Hanes,  78  Fed.  346;    24  C.  C.  A.  128 473,  605 

Fourth ;  Goff,  Simonton,  Morris. 

Carver  v.  Hyde,  16  Pet.  513;    10  L.  Ed.  1051 531,  589 

Taney. 

Cary  v.  Acme,  108  Fed.  873;   48  C.  C.  A.  118 577,  578 

Affg.  101  Fed.  269;  see  99  Fed.  500. 

Second;  Wallace,  Shipman.    Per  Curiam. 

Cary  v.  DeHaven,  139  Fed.  262;  71  C.  C.  A.  388 846 

Affg.  88  Fed.  698. 

Second;   Wallace,  Lacombe,  Townsend. 

Cary  v.  Neal,  98  Fed.  617;  39  C.  C.  A.  189 332 

Affg.  90  Fed.  725. 
Second;  Shipman. 
Case  v.  Brown,  69  U.  S.  320;   17  L.  Ed.  817 469,  871 

Cayuta  v.  Kennedy,  135  Fed.  537;  68  C.  C.  A.  563 277 

Revg.  in  part  127  Fed.  355. 

Second;   Wallace,  Lacombe,  Townsend. 

Cazier  v.  Mackie-Lovejoy,  138  Fed.  654;  71  C.  C.  A.  104 314,  458, 

481 

Seventh;  Jenkins,  Grosscup,  Baker. 

Celluloid  v.  Arlington,  52  Fed.  740;  3  C.  C.  A.  269 245 

Affg.  44  Fed.  81 ;  31  Fed.  904. 

Third;  Acheson,  Dallas,  Wales. 
Centaur  v.  Heinsfurter,  84  Fed.  955;   28  C.  C.  A.  581 928 

Eighth;   Brewer,  Sanborn,  Riner. 
Central  v.  Coughlin,  141  Fed.  91 ;   72  C.  C.  A.  93 373,  473 

Fifth;  Pardee,  Shelby,  Maxey. 
Cerealine  v.  Bates,  101  Fed.  272;  41  C.  C.  A.  341 242,  649,  914 

Seventh ;  Woods,  Jenkins,  Grosscup. 
Chaffee  v.  Boston,  63  U.  S.  217;  16  L.  Ed.  240 769 

C^J  TFKOR.D 

Chapin  v.  Friedberger,  158  Fed.  409;  85  C.  C.  A.  519 550 

Dismissing  appeal  151  Fed.  264. 
Third;  Dallas,  Bufhngton,  Cross. 

Chauche  v.  Pare,  75  Fed.  283;  21  C.  C.  A.  329 171,  765 

Ninth;   Gilbert,  Ross,  Morrow. 

Chemical  v.  Raymond,  71  Fed.  179;   18  C.  C.  A.  31 243,  814 

Affg.  68  Fed.  570. 

Third;  Acheson,  Butler,  Green. 

Chicago  v.  Cleveland,  159  Fed.  143;  86  C.  C.  A.  51 507 

Affg.  154  Fed.  953. 

Third;   Gray,  Holland,  Cross. 

Chicago  v.  Miller,  133  Fed.  541 ;   66  C.  C  A.  517 303,  435 

Seventh;  Jenkins,  Grosscup,  Baker. 

Chicago  v.  Pope,  84  Fed.  977;  28  C.  C  A.  594 819 

Revg.  79  Fed.  957. 

Seventh;  Woods,  Jenkins,  Showalter. 

Chicago  v.  Sayles,  97  U.  S.  554;  24  L.  Ed.  1053 199,  640 

Bradley. 

Chinnock  v.  Paterson,  112  Fed.  531 ;  50  C.  C.  A.  384 325,  550 

Revg.  110  Fed.  199. 

Third;  Acheson,  Dallas,  Kirkpatrick. 

Christensen,  In  re,  194  U.  S.  458;  48  L.  Ed.  1072;  24  S.  Ct.  729 538 

Fuller. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  XXVli 

[References  are  to  sections] 

Christensen  v.  Westinghouse,  129  Fed.  96;  63  C.  C.  A.  598 537 

See  123  Fed.  632;  126  Fed.  764. 

Second;   Wallace,  Townsend,  Coxe. 
Christensen  v.  Westinghouse,  135  Fed.  774;  68  C.  C.  A.  476.  .537,  577,  578 
See  121  Fed.  562;    128  Fed.  749. 
Second;  Wallace,  Townsend,  Coxe. 

Christie  v.  Seybold,  55  Fed.  69;  5  C.  C.  A.  33 584,  811,  861,  867 

See  interference  proceeding,  s.  c.  54  O.  G.  957. 
Sixth;   Jackson,  Taft,  Hammond. 

Christy  v.  Hygea,  93  Fed.  965;  36  C.  C.  A.  31 635 

Affg.  87  Fed.  902. 

Fourth;  Goff,  Brawley,  Waddill. 

Chuse  v.  Ide,  89  Fed.  491 ;  32  C.  C.  A.  260 195,  233,  398 

Seventh;  Woods,  Showalter,  Bunn. 
Cimiotti  v.  American,  198  U.  S.  399;  49  L.  Ed.  1100;  25  S.  Ct.  697 .  .204,  375, 
Affg.  123  Fed.  869.  456,  526,  699 

See  120  Fed.  672. 
"      95    "      474. 
.       "    115    "      498. 
"    115    "      507. 
Day. 
Cimiotti  v.  American,  115  Fed.  498;  53  C.  C.  A.  230. . .  .78,  230,  453,  607,  608 
Affg.  98  Fed.  297. 

Second;  Wallace,  Coxe,  Hazel. 

Cimiotti  v.  Bowsky,  143  Fed.  508;  74  C.  C.  A.  617 508,  831 

See  113  Fed.  698. 

"      95      "    474. 

"    108      "      82. 

"    198  U.  S.  399. 

Second;  Wallace,  Coxe,  Thomas. 

Cincinnati  v.  American,  143  Fed.  322;  74  C.  C.  A.  522 219 

Sixth;  Lurton,  Severens,  Richards. 

Clancey  v.  Troy,  157  Fed.  554;  85  CCA.  314 277,  721,  754 

Revg.  152  Fed.  188. 

Second;   Lacombe,  Coxe,  Ward. 

Clark  v.  Bonsfield,  77  U.  S.  133;  19  L.  Ed.  862 231,  337 

Nelson. 

Clark  v.  Deere,  80  Fed.  534;  25  C.  C.  A.  619 Ill 

Seventh;   Woods,  Jenkins,  Showalter. 

Clark  v.  Ferguson,  119  U.  S.  335;  30  L.  Ed.  406;  7  S.  Ct.  382 662,  667 

Affg.  21  Blatchf.  376. 

Clark  v.  Willimantic,  140  U.  S.  481;  35  L.  Ed.  521;   11  S.  Ct.  846. . .  .65, 

96,  217,  397,  411,  483,  809,  862 
Revg.  27  Fed.  865. 
Bradley. 
Clark  v.  Wooster,  119  U.  S.  322;  30  L.  Ed.  392;  7  S.  Ct.  217. . .  .292,  717,  725 
Bradley. 

Clements  v.  Odorless,  109  U.  S.  641 ;  27  L.  Ed.  1060;  3  S.  Ct.  525 871 

Blatchford. 

Clerk  v.  Tannage,  84  Fed.  643;   28  C  C  A.  501 518,  532 

Third;   Acheson,  Butler,  Kirkpatrick. 

Cleveland  v.  Chicago,  135  Fed.  783;  68  C  C  A.  485 525 

See  127  Fed.  130. 

Third;    Acheson,  Dallas,  Gray. 


XXV111  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Cleveland  v.  Detroit,  131  Fed.  853;  68  C.  C.  A.  233 54,  277,  349,  916 

Sixth;   Lurton,  Severens,  Richards. 

Cleveland  v.  Kauffman,  135  Fed.  360 ;  68  C.  C.  A.  658 638,  673 

Revg.  126  Fed.  658. 
Third;  Acheson,  Dallas,  Gray. 

Clinton  v.  Hendrick,  86  Fed.  137;  29  C.  C.  A.  612 456,  635 

Revg.  78  Fed.  632. 
Third;  Acheson,  Dallas,  Bradford. 

Clisby  v.  Reese,  88  Fed.  645;  32  C.  C.  A.  80 48,  60 

Seventh;  Woods,  Showalter,  Bunn. 
Clough  v.  Gilbert,  106  U.  S.  178;  27  L.  Ed.  138;   1  S.  Ct.  198. . .  .71,  89, 
Blatchford.  375,  468,  635 

Coates  v.  Boker,  119  Fed.  358;  56  CCA.   94 675 

Revg.  115  Fed.  637. 

Second;   Lacombe,  Townsend,  Coxe. 

Coburn  v.  Chandler,  97  Fed.  333 ;  38  C  C  A.  201 208 

Affg.  91  Fed.  260. 

First;  Colt,  Putnam,  Webb. 
Cochrane  v.  Badische,  111  U.  S.  293;  28  L.  Ed.  433;  4  S.  Ct.  455. .  .-.77, 
Revg.  3  B.  &  A.  235.  519,  823,  871,  914 

"      15  Blatchf.  290. 
"       16        "         155. 

Cochrane  v.  Deener,  94  U.  S.  780;   24  L.  Ed.  139 423,  436,  468,  815 

Bradley.    Dissenting,  Clifford,  Strong. 

Codman  v.  Amia,  74  Fed.  634;  20  C  C  A.  566 626 

Affg.  70  Fed.  710. 

First;   Colt,  Putnam,  Webb. 

Coffin  v.  Ogden,  85  U.  S.  120;  21  L.  Ed.  821 71,  391 

Swayne. 

Cohn  v.  Stephenson,  142  Fed.  467;  73  C  C  A.  583 561 

Third;   Acheson,  Dallas,  Gray. 

Cohn  v.  United  States,  93  U.  S.  366 ;  23  L.  Ed.  907 105 

Strong.    Dissenting  opinion,  Clifford. 

Collins  v.  Coes,  130  U.  S.  56;  32  L.  Ed.  858;  9  S.  Ct.  514 344 

Revg.  3  Fed.  225;  Affg.  21  Fed.  38. 
Fuller. 

Colt  v.  Wesson,  127  Fed.  333;  62  C  C  A.  167 85 

Affg.  122  Fed.  90. 

First;   Putnam,  Aldrich,  Lowell. 
Columbia  v.  Kokomo,  143  Fed.  116;    74  C.  C  A.  310.  ..  .434,  435,  453, 
Revg.  139  Fed.  578.  456,  506,  528 

Seventh;  Grosscup,  Baker,  Seaman. 
Columbus  v.  Robbins,  148  U.  S.  266;  37  L.  Ed.  445;  13  S.  Ct.  594. . .  .113, 143 
See  52  Fed.  337. 
Fuller. 

Columbus  v.  Robbins,  52  Fed.  337 ;  3  C  C  A.  103 130 

Overruled  in  Bissell  v.  Goshen,  72  Fed.  545.    See  148  U.  S.  266. 
Sixth;   Jackson,  Taft,  Hammond. 
Columbus  v.  Robbins,  64  Fed.  384;   12  C  C  A.  174. . .  .229,  608,  626,  674 
Affg.  50  Fed.  545. 
See  52  Fed.  337. 
"    148  U.  S.  266. 
"    52  Fed.  215. 
Sixth;  Taft,  Lurton,  Ricks. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  xxix 

[References  are  to  sections] 

Columbus  v.  Standard,  148  Fed.  622;  78  C.  C.  A.  394 80,  81,  90 

Affg.  145  Fed.  186. 

Sixth;   Lurton,  Severens,  Cochran. 

Commercial  v.  Avery,    159  Fed.  935;  87  C.  C.  A.   206 702 

Affg.  152  Fed.  642. 

Seventh;  Baker,  Seaman,  Sanborn.    Per  Curiam. 
Commercial  v.  Fairbank,  135  U.  S.  176;  34  L.  Ed.  88;  10  S.  Ct.  972.  . .  .398, 
Affg.  27  Fed.  78.  420,  531,  687,  889 

Blatchford. 

Comptograph  v.  Mechanical,  145  Fed.  331;   76  C.  C.  A.  205 448,  452, 

Revg.  140  Fed.  136.  651,  673 

First;   Colt,  Putnam,  Lowell. 

Computing  v.  Automatic,  204  U.  S.  609;  51  L.  Ed.  645;  27  S.  Ct.  307 207, 

Affg.  26  App.  D.  C.  238.  Day.  633,  675 

Confectioner's  v.  Panoualias,  134  Fed.  393;  67  C.  C.  A.  391 897 

Second;   Lacombe,  Townsend,  Coxe. 

Consolidated  v.  Adams,  161  Fed.  343;  88  C.  C.  A.  355 65,  71,  867 

Revg.  153  Fed.  193. 

Seventh;   Grosscup,  Baker,  Seaman. 

Consolidated  v.  Accumulator,  55  Fed.  485;  5  C.  C.  A.  202 561 

Affg.  53  Fed.  796. 

See  same  pat.  38  Fed.  117. 
"       "      "    39  Fed.  490. 
"       "      "    40  Fed.  328. 
Third;  Acheson,  Butler,  Wales. 
Consolidated  v.  Barnard,  156  U.  S.  261;    39  L.  Ed.  417;    15  S.  Ct.  333 
Brown.  ...230,640 

Consolidated  v.  Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct.  513. . .  .626, 

635,  690,  862,  905 
Revg.  7  Fed.  768.  See  Ashcroft  v.  R.  R.  5  O.  G.  725.  Aff.  in  97  U.  S.  189. 

Consolidated  v.  Crosby,  141  U.  S.  441;  35  L.  Ed.  809;  12  S.  Ct.  49. . .  .284, 

828,  835,  837,  842 
Affg.  44  Fed.  66;  see  113  U.  S.  157;  see  7  Fed.  768. 
Blatchford. 

Consolidated  v.  Diamond,  157  Fed.  677;  85  C.  C.  A.  349 31,  561,  564 

Second;   Lacombe,  Ward,  Noyes. 

Consolidated  v.  Diamond,  162  Fed.  892;  89  C.  C.  A.  582 573,  625,  893 

See  151  Fed.  237. 
"    157  Fed.  677. 
Second;  Lacombe,  Coxe,  Noyes. 

Consolidated  v.  Firestone,  151  Fed.  237 ;  80  C.  C.  A.  589 622 

Affg.  147  Fed.  739. 

Second;   Lacombe,  Townsend,  Coxe. 

Consolidated  v.  Hays,  100  Fed.  984;  41  C.  C.  A.  142 35,  391,  457,  539,  561 

Second;    Lacombe,  Shipman. 
Consolidated  v.  Holtzer,  67  Fed.  907;   15  C.  C.  A.  63.  .  .  .444,  627,  667,  672 
Revg.  60  Fed.  748. 

First;   Putnam,  Nelson,  Webb. 

Consolidated  v.  Landers,  160  Fed.  79;  87  C.  C.  A.  235 456 

Affg.  151  Fed.  775. 

Second;  Lacombe,  Ward,  Noyes. 

Consolidated  v.  Littauer,  84  Fed.  164;  28  C.  C.  A.  133 192,  541 

Affg.  79  Fed.  795. 

Second;   Wallace,  Lacombe,  Shipman.  ' 


XXX  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Consolidated  v.  Metropolitan,  60  Fed.  93;  8  C.  C.  A.  485 192,  235 

Revg.  46  Fed.  288. 

Disapproving  Consolidated  v.  Woerle,  29  Fed.  449. 
Second;  Wallace,  Lacombe,  Shipman. 

Consolidated  v.  Pacific,  53  Fed.  385;  3  C.  C.  A.  570 118,  465,  468 

Ninth;  McKenna,  Ross,  Knowles. 

Consolidated  v.  Pacific,  58  Fed.  226;  7  C.  C.  A.  195 118 

See  53  Fed.  385. 
"    53      "    382. 
Ninth,  McKenna,  Gilbert. 

Consolidated  v.  Seybold,  105  Fed.  978 ;  45  C.  C.  A.  152 195 

Affg.  100  Fed.  299. 

Seventh ;  Woods,  Jenkins,  Grosscup. 
Consolidated  v.  Walker,  138  U.  S.  124;  34  L.  Ed.  920;  11  S.  Ct.  292. . .  .224, 
Affg.  43  Fed.  575.  646,  654,  671 

Blatchpord. 
Consolidated  v.  West  End,  85  Fed.  662;   29  C.  C.  A.  386. . .  .85,  133,  189, 
Modifying  82  Fed.  993.  241,  635 

First;   Colt,  Webb,  Aldrich. 

Consolidated  v.  Wright,  94  U.  S.  92;  24  L.  Ed.  68 6,  856 

Swayne. 

Consumers  v.  Danville,  50  Fed.  778;  1  C.  C.  A.  663 311,  322 

Affg.  47  Fed.  43. 

Third;  Acheson,  Butler,  Green. 
Continental  v.  Eastern,  210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748.  . . .  129, 

212,  223,  378,  427,  453,  594,  745 
Affg.  150  Fed.  741. 
McKenna. 

Continental  v.  Eastern,  150  Fed.  741 ;  80  C.  C.  A.  407 548,  552 

Affg.  142  Fed.  479.    Affd.  in  210  U.  S.  405. 

First;  Colt,  Lowell,  Aldrich.    Dissenting,  Aldrich. 

Continuous  v.  Schmertz,  153  Fed.  577;  82  C.  C.  A.  587 543 

Third;   Gray,  Holland,  Lanning. 

Cook  v.  Sandusky,  28  L.  Ed.  124 103,  525 

Waite. 

Cook  v.  Sterling,  150  Fed.  766;   80  C.  C.  A.  502    168,  759 

Affg.  118  Fed.  45. 

Seventh;   Grosscup,  Seaman,  Kohlsaat. 

Coon  v.  Wilson,  113  U.  S.  268;  28  L.  Ed.  963;  5  S.  Ct.  537 871 

Revg.  18  Blatchf.  532. 

Co-Operating  v.  Hallock,  128  Fed.  596;  64  C.  C.  A.  104 118,  546 

Sixth;   Lurton,  Severens,  Richards. 
Corbin  v.  Eagle,  150  U.  S.  38;   37  L.  Ed.  989;    14  S.  Ct.  28. . .  .207,  661, 
Affg.  37  Fed.  338.  871,  873 

Jackson. 
Cornell  v.  Weidner,  127  U.  S.  261 ;  32  L.  Ed.  148;  8  S.  Ct.  1152 872 

Gray. 
Corning  v.  Burden,  15  How.  252;    14  L.  Ed.  683.... 245,  398,  411,  426, 

Grier.                                                           484,  629,  690,  768,  815,  819 
Corning  v.  Troy,  15  How.  451;   14  L.  Ed.  768 115,  116,  134,  140 

(iRIFK* 

Cornley  v.  Marckwold,  131  U.  S.  159;  33  L.  Ed.  117;  9  S.  Ct.  744 842 

Affg.  23  Blatchf.  163. 
Blatchford. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  XXXI 

[References  are  to  sections] 

Cortelyou  v.  Johnson,  207  U.  S.  196;  52  L.  Ed.  167 ;  28  S.  Ct.  105 478 

Affg.  145  Fed.  933. 

Cortelyou  v.  Johnson,  145  Fed.  933;  76  C>  C.  A.  455 257,  477,  478 

Revg.  138  Fed.  110. 

Second;   Coxe,  Townsend,  Holt.    Dissenting  in  part,  Townsend. 
Coupe  v.  Royer,  155  U.  S.  565;  39  L.  Ed.  263;   15  S.  Ct.  199. . .  .226,  285, 
Shiras.  404,  777,  837 

Covel  v.  Rich,  142  Fed.  468;  73  C.  C.  A.  584 616 

Seventh;  Grosscup,  Baker,  Seaman. 
Cowles  v.  Lowrey,  79  Fed.  331 ;  24  C.  C.  A.  616 .. .  .519,  639, 640, 691,  753, 816 
Revg.  68  Fed.  354. 

Sixth;   Lurton,  Severens,  Hammond. 

Craig  v.  Michigan,  81  Fed.  870;  26  C.  C.  A.  659 207 

Affg.  72  Fed.  173. 

Sixth;  Taft,  Lurton,  Sage. 

Cramer  v.  Singer,  93  Fed.  636;  35  C.  C.  A.  508 386 

Ninth;   Gilbert,  Ross,  Hawley. 

Cramer  v.  Singer,  147  Fed.  917;  78  C.  C.  A.  53 37 

Ninth;   Gilbert,  Ross,  Morrow. 

Crawford  v.  Heysinger,  123  U.  S.  589 ;  31  L.  Ed.  269 ;  8  S.  Ct.  399 889 

Blatchford. 

Crosby  v.  Ashton,  94  Fed.  516;  36  C.  C.  A.  335 118 

First;   Colt,  Putnam,  Webb. 

Crouch  v.  Roemer,  103  U.  S.  797;  26  L.  Ed.  426 592 

Waite. 
Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. .  .  .3,  7,  10,  30,  57,  219, 
314,  363,  371,  434,  444,  453,  532,  626,  631,  636,  702,  848,  871,  873, 
875,  878 
Revg.  100  Fed.  849. 

Fourth;  Goff,  Simonton,  Brawley. 

Crown  v.  Baltimore,  136  Fed.  184;  69  C.  C.  A.  519 133 

See  136  Fed.  199. 

Second;  Wallace,  Coxe.    Per  Curiam. 

Crown  v.  Standard,  136  Fed.  841 ;  69  C.  C.  A.  200 359,  626,  906,  919 

See  Imperial  v.  Crown,  139  Fed.  312. 
Third  Circuit  holding  this  patent  good. 
Second;  Wallace,  Lacombe,  Coxe.    Dissenting  in  part,  Coxe. 

Cumming  v.  Baker,  144  Fed.  395 ;  75  C.  C.  A.  373 198 

Ninth;   Gilbert,  Ross,  Hawley. 

Curtis  v.  Overman,  58  Fed.  784;  7  C.  C.  A.  493 541 

Revg.  53  Fed.  247. 

Also  revg.  Mfg.  Co.  v.  Clark,  46  Fed.  789. 
Second;   Wallace,  Lacombe,  Shipman. 
Cushman  v.  Goddard,  95  Fed.  664;  37  C.  C.  A.  221 ..  .  .222,  385,  436,  616,  711 
Affg.  90  Fed.  727. 

First;   Putnam,  Webb,  Aldrich. 

Cutler-Hammer  v.  Automatic,  159  Fed.  447;  86  C.  C.  A.  477 591 

Affg.  153  Fed.  197. 

Second;   Lacombe,  Ward,  Noyes. 

Dable  v.  Flint,  137  U.  S.  41 ;  34  L.  Ed.  618;  11  S.  Ct.  8 366,  532,  933 

Affg.  42  Fed.  686. 
Gray. 

Dalton  v.  Jennings,  93  U.  S.  271 ;  23  L.  Ed.  925 601 

Miller. 


xxxii  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Dalzell  v.  Dueber,  149  U.  S.  315;   37  L.  Ed.  749;    13  S.  Ct.  886....  168, 
Revg.  38  Fed.  597.  174,  368,  800 

Gray.    Dissenting,  Brewer. 

Dane  v.  Chicago,  131  U.  S.  cxxvi  app. ;  23  L.  Ed.  82 103,  608,  669 

Bradley. 

D'Arcy  v.  Staples,  161  Fed.  733 ;  88  C.  C.  A.  606 31,  496,  615 

See  148  Fed.  19. 

Sixth;   Lurton,  Severens,  Richards. 

Dashiell  v.  Grosvenor,  162  U.  S.  425;  40  L.  Ed.  1025;  16  S.  Ct.  805 782 

Revg.  62  Fed.  584;   Affg.  66  Fed.  334. 
Brown. 

Dashiell  v.  Grosvenor,  66  Fed.  334;  13  C.  C.  A.  593 372,  425,  498,  553 

Revg.  62  Fed.  584. 

Fourth;  Goff,  Simonton,  Brawley. 

Davey  v.  Prouty,  107  Fed.  505;  46  C.  C.  A.  439 458,  486,  506 

Affg.  96  Fed.  336. 

First;  Putnam,  Webb,  Aldrich. 

Davis  v.  Edison,  60  Fed.  276;  8  C.  C.  A.  615 523,  524,  539 

Affg.  58  Fed.  878. 

Distinguished  in  Thomson  v.  Kelsey,  75  Fed.  1005. 
First;   Putnam,  Nelson,  Webb. 

Davis  v.  Morris,  81  Fed.  407;  26  C.  C.  A.  460 95 

Revg.  78  Fed.  129. 
Third;  Acheson,  Dallas,  Buffington. 
Davis  v  Parkman,  71  Fed.  961 ;  18  C.  C.  A.  398. .  .  .44,  229,  273,  601,  626,  630 
Affg.  45  Fed.  693. 

First;   Putnam,  Nelson,  Webb. 

Davis  v.  Perry,  120  Fed.  941 ;  57  C.  C.  A.  231 527 

Revg.  115  Fed.  333. 

Second;  Wallace,  Townsend,  Coxe. 

Davis  v.  Tagliabue,  159  Fed.  712;  86  C.  C.  A.  466 162,  166 

Revg.  148  Fed.  705. 
"       150  Fed.  372. 
Second;  Lacombe,  Ward,  Noyes. 
Day  v.  Fair  Haven,  132  U.  S.  98;  33  L.  Ed.  265;  10  S.  Ct.  11 . . .  .207,  220,  661 
Affg.  23  Fed.  189. 
Fuller. 

Daylight  v.  American,  142  Fed.  454;  73  C.  C.  A.  570 93,  224,  623,  686 

Revg.  140  Fed.  174. 
Third;  Dallas,  Gray,  Buffington. 
Dayton  v.  Westinghouse,  118  Fed.  562;  55  C.  C.  A.  390. . .  .351,  353,  631, 
Affg.  106  Fed.  724.  667,  688,  817 

Sixth;  Lurton,  Day,  Severens. 

Dean  v.  Mason,  61  U.  S.  198;  15  L.  Ed.  876 299,  789,  839 

McLean. 

DeBeaumont  v.  Williames,  80  Fed.  995;  26  C.  C.  A.  298 217 

Affg.  71  Fed.  812. 

Third;  Acheson,  Butler,  Buffington. 
Dececo  v.  Gilchrist,  125  Fed.  293;    60  C.  C.  A.  207.... 92,  98,  193,  398, 
First;  Colt,  Putnam,  Aldrich.  626,  692 

Dederick  v.  Seigmund,  51  Fed.  233;  2  C.  C.  A.  169 641 

Affg.  42  Fed.  842. 

Second;  Lacombe,  Shipman. 

Deere  v.  Dowagiac,  153  Fed.  177;  82  C.  C.  A.  351 312,  548 

Eighth;  Sanborn,  Hook,  Adams. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  XXXlll 

[References  are  to  sections] 

Deere  v.  Case,  56  Fed.  841 ;  6  C.  C.  A.  157 612 

Seventh;    Gresham,    Woods,    Bunn. 

Deere  v.  Rock  Island,  84  Fed.  171 ;  28  C.  C.  A.  308 674 

Seventh ;  Woods,  Jenkins,  Showalter. 

Deering  v.  Kelly,  103  Fed.  261 ;  43  C.  C.  A.  225 836,  927 

Sixth;   Lurton,  Day,  Severens. 
Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. . .  .12,  61, 

95,  201,  224,  230,  408,  493,  590,  651 
Revg.  40  Fed.  236. 
Brown. 

DeLamar  v.  DeLamar,  117  Fed.  240;  54  C.  C.  A.  272 198,  676,  904 

Affg.    110   Fed.   538. 

Ninth;   Gilbert,  Ross,  Morrow. 

DeLamater  v.  Heath,  58  Fed.  414 ;  7  C.  C.  A.  279 212,  853,  856 

Second;  Lacombe,  Shipman. 

DeLaval  v.  Vermont,  135  Fed.  772;  68  C.  C.  A.  474 80,  411,  704 

Affg.  126  Fed.  536. 

Second;   Wallace,  Lacombe,  Townsend. 
DeLaVergne  v.  Featherstone,  147  U.  S.  209;  37  L.  Ed.  138; 

13  S.  Ct.  283 39,  300 

Revg.  49  Fed.  916. 
Fuller. 

DeLaVergne  v.  Valentine,  66  Fed.  765 ;  14  C.  C.  A.  77 239 

Seventh;  Woods,  Baker,  Grosscup. 

Delaware  v.  Shelby,  160  Fed.  928 ;  88  C.  C.  A.  110 154,  208,  459 

Affg.  151  Fed.  64. 

Third;   Dallas,  Gray,  Burlington. 
DeLoriea  v.  Whitney,  63  Fed.  611 ;  11  C.  C.  A.  355. . .  .403,  468,  623,  734,  737 
First;  Putnam,  Nelson,  Webb. 

Denning  v.  Bray,  61  Fed.  651 ;  10  C.  C.  A.  6 155,  270,  764 

Affg.  56  Fed.  1019. 
Second;  Wallace,  Lacombe,  Shipman. 
Densmore  v.  Scofield,  102  U.  S.  375;  26  L.  Ed.  214 746 

S  WAYNE. 

Derby  v.  Thompson,  146  U.  S.  476;  36  L.  Ed.  1051;  13  S.  Ct.  181. . .  .246, 
Revg.  32  Fed.  830.  456 

Brown. 

Devlin  v.  Paynter,  64  Fed.  398;  12  C.  C.  A.  188 457 

Affg.  63  Fed.  122. 

Third;  Acheson,  Dallas,  Wales. 

Dey  v.  Syracuse,  161  Fed.  Ill ;  88  C.  C.  A.  275 202,  206 

Affg.  152  Fed.  440. 

Second;   Lacombe,  Coxe,  Ward. 
Diamond  v.  Goldie,  84  Fed.  972;  28  C.  C.  A.  589.  . .  .89,  380,  486,  635,  643 
Affg.  81  Fed.  173. 

Third;  Dallas,  Butler,  Kirkpatrick. 

Diamond  v.  Westinghouse,  152  Fed.  704;  81  C.  C.  A.  630 679 

Seventh;  Grosscup,  Baker,  Seaman. 

Dickerson  v.  Matheson,  57  Fed.  524;  6  C.  C.  A.  466 505 

Affg.  50  Fed.  73. 

Second;   Lacombe,  Shipman. 

Dickerson  v.  Sheldon,  98  Fed.  621 ;  39  C.  C.  A.  191 505 

Second;   Wallace,  Lacombe,  Shipman. 

Dickerson  v.  Tinling,  84  Fed.  192;  28  C.  C.  A.  139 505 

Eighth;  Sanborn,  Thayer,  Riner. 


XXXIV  CASES    EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Dixon- Woods  v.  Pfeifer,  55  Fed.  390;  5  C.  C.  A.  148 916 

Affg.  51  Fed.  292. 
Affg.  same  pat.  28  Fed.  561. 
"       "       37  Fed.  333. 
Second;   Lacombe,  Shipman. 
Dobson  v.  Cubley,  149  U.  S.  117;  37  L.  Ed.  671;  13  S.  Ct.  796. . .  .503,  530 
Affg.  39  Fed.  276. 
Shiras. 
Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct.  946  .. .  .231,  247, 

290,  295,  298,  331,  334,  496 
See  Dobson  v.  Hartford,  114  U.  S.  439. 

Dobson  v.  Hartford,  114  U.  S.  439;   29  L.  Ed.  177;   5  S.  Ct.  945. . .  .229 
•Revg.  10  Fed.  385.  298,  337 

Blatchford.    Dissenting  Bradley. 

Dobson  v.  Lees,  137  U.  S.  258;  34  L.  Ed.  652;  11  S.  Ct.  71 178,  871 

Affg.  30  Fed.  625. 
Fuller. 

Dodge  v.  Fulton,  92  Fed.  995;  35  C.  C.  A.  140 570 

Second;  Wallace,  Lacombe,  Shipman. 

Dodge  v.  Jones,  159  Fed.  715;   86  C.  C.  A.  191 411,  859 

Affg.  153  Fed.  186. 

Third;   Dallas,  Gray,  Buffington. 

Dodge  v.  New  York,  150  Fed.  738;  80  C.  C.  A.  404 596 

Affg.  139  Fed.  976. 

Second;  Wallace,  Lacombe,  Townsend. 

Doig  v.  Morgan,  122  Fed.  460;  59  C.  C.  A.  616 70,  624,  633 

Affg.  117  Fed.  305. 

Second;  Wallace,  Lacombe,  Coxe. 

Donallan  v.  Tannage,  79  Fed.  385;  24  C.  C.  A.  647 123 

See  75  Fed.  287. 

Dismissed  on  appeal  but  not  on  merits. 
First;  Putnam,  Aldrich,  Brown. 

Doten  v.  City  of  Boston,  138  Fed.  406;   70  C.  C.  A.  308 827,  837 

First;  Colt,  Putnam,  Lowell. 
Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  27  L.  Ed.  877;  3  S.  Ct.  105 

Dougherty  v.  Doyle,  63  Fed.  475;  11  C.  C.  A.  298 .'.207 

Affg.  59  Fed.  470. 

Second;  Lacombe,  Shipman.    Per  Curiam. 

Dowagiac  v.  Brennan,  127  Fed.  143;   62  C.  C.  A.  257 374 

Revg.  118  Fed.  143. 
See  101  Fed.  716. 
"    118    "    136. 
"    187  U.  S.  644. 
"    108  Fed.  67. 
"    121     "    988. 
Sixth;   Lurton,  Severens,  Richards. 
Dowagiac  v.  Minnesota,  118  Fed.  136;   55  C.  C.  A.  86.... 376,  456,  459, 
Eighth;   Sanborn,  Thayer,  Carland.  506,  531,  622,  674 

Dowagiac  v.  Minnesota,  124  Fed.  735;   61  C.  C.  A.  57 536 

Affg.  118  Fed.  136. 

Eighth;  Sanborn,  VanDevanter,  Shiras. 
Dowagiac  v.  Superior,  115  Fed.  886;  53  C.  C.  A.  36. . .  .207,  459,  461,  598, 
Sixth;   Lurton,  Day,  Severens.  267,  674,  917 


CASES    EXCERPTED,    WITH    ANNOTATIONS  XXXV 

[References  are  to  sections] 

Dowagiac  v.  Superior,  162  Fed.  479 ;  89  C.  C.  A.  399 837   841 

See  115  Fed.  886. 
"     162    "     472. 
Sixth;   Lurton,  Severens,  Richards. 

Downes  v.  Teter-Heany,  150  Fed.  122;   80  C.  C.  A.  76 820   822 

Affg.  144  Fed.  106.  ' '       ' 

Third;   Gray,  Buffington,  Lanning. 
Downton  v.  Yaeger,  108  U.  S.  466;  27  L.  Ed.  789;  3  S.  Ct.  10. .  106 

Affg.  1  Fed.  199. 
Woods. 

Doze  v.  Smith,  69  Fed.  1002;   16  C.  C.  A.  581 144   376 

Affg.  66  Fed.  327.  ' 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Drake  v.  Brownell,  123  Fed.  86;  59  C.  C.  A.  216 325,  696,  697 

Sixth;   Lurton,  Severens,  Wanty. 

Draper  v.  American,  161  Fed.  728;   88  C.  C.  A.  588 94,  481,  484,  550, 

First;  Colt,  Putnam,  Aldrich.  634  937 

Drewson  v.  Hartje,  131  Fed.  734;   65  C.  C.  A.  548 396'  613 

Sixth;  Lurton,  Severens,  Richards. 

Dreyfus  v.  Searle,  124  U.  S.  60;  31  L.  Ed.  352;  8  S.  Ct.  390 669,  819 

Blatchford. 
Dryfoos  v.  Wiese,  124  U.  S.  32;   31  L.  Ed.  362;  8  S.  Ct.  354. . .  .217,  376, 
Affg.  22  Blatchf.  19.  426,  871 

Blatchford. 
DuBois  v.  Kirk,  158  U.  S.  58;  39  L.  Ed.  895;   15  S.  Ct.  729. . .  .273,  277, 
Affg.  33  Fed.  252;  46  Fed.  486.  348,  495,  531,  562,  585 

Brown.     Dissenting,  Field. 

Dueber  v.  Robbins,  75  Fed.  17;  21  C.  C.  A.  198 285,  598  626 

Revg.  71  Fed.  186. 
See  64  Fed.  384. 

Sixth;  Taft,  Lurton,  Hammond. 
Duer  v.  Corbin,  149  U.  S.  216;  37  L.  Ed.  707;  13  S.  Ct.  850. . .  .88,  224,  636 
Affg.  37  Fed.  338. 
Brown. 

Duff  v.  Forgie,  59  Fed.  772 ;  8  C.  C.  A.  261 204,  373,  504 

Affg.  57  Fed.  748. 

Third;  Dallas,  Butler,  Green. 

Duff  v.  Gilliland,  139  Fed.  16;  71  C.  C.  A.  428 176 

Revg.  135  Fed.  581. 
Third;   Acheson,  Dallas,  Gray. 

Duff  v.  Sterling,  107  U.  S.  636;  27  L.  Ed.  517;  2  S.  Ct.  487 224,  507 

Blatchford. 

Dunbar  v.  Eastern,  81  Fed.  201 ;  26  C.  C.  A.  330 48  768 

Revg.  75  Fed.  567. 

Second;  Wallace,  Lacombe,  Shipman. 
Dunbar  v.  Meyers,  94  U.  S.  187;  24  L.  Ed.  34. .  .  .341,  343,  389,  400,  473, 
Clifford.  599,  667,  676,  679,  696,  706 

Dunham  v.  Dennison,  154  U.  S.  103;  38  L.  Ed.  924;   14  S.  Ct.  986 871 

Affg.  40  Fed.  667. 
Gray. 
Dunlap  v.  Schofield,  152  U.  S.  244;  38 L.Ed.  428;  14  S.  Ct.  576..  .281,  337,  516 
Revg.  42  Fed.  323. 
Gray. 

Dunlap  v.  Willbrandt,  151  Fed.  223;  80  C.  C.  A.  575 245,  485 

Eighth;   Sanborn,  VanDevanter,  Hook.    Dissenting,  Sanborn. 


XXXVI  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Duplex  v.  Campbell,  69  Fed.  250;  16  C.  C.  A.  220. . .  .252,  534,  543,  546,  561 
See  64  Fed.  782. 

Sixth;  Taft,  Lurton,  Severens. 

Durand  v.  Schulze,  61  Fed.  819;   10  C.  C.  A.  97 222,  244,  820,  821 

Affg.  60  Fed.  392. 

Third;  Acheson,  Butler,  Wales. 

Durham  v.  Sevmour,  161  U.  S.  235;  40  L.  Ed.  682;  16  S.  Ct.  452 143 

Affg.  23  Wash.  L.  Rep.  273. 
Fuller. 
Eachus  v.  Broomall,  115  U.  S.  429;  28  L.  Ed.  419;  6  S.  Ct.  229. . .  .322,  389, 
Matthews.  881 

Eagle  v.  Corbin,  64  Fed.  789;  12  C.  C.  A.  418 225 

Revg.  52  Fed.  980. 

Second;  Wallace,  Lacombe,  Shipman. 
Eagleton  v.  West,  111  U.  S.  490;  28  L.  Ed.  493;  4  S.  Ct.  593. . .  .56,  181,  300 
Affg.  18  Blatchf.  218.     Distinguished  147  U.  S.  209. 
Blatchford. 
Eames  v.  Andrews,  122  U.  S.  40;   30  L.  Ed.  1064;   7  S.  Ct.  1073. . .  .320, 
Affg.  15  Fed.  109.  625,  873,  916 

See  Andrews  v.  Hovey,  123  U.  S.  267. 
"    Andrews  v.  Carrman,  13  Blatchf.  307. 
"    Andrews  v.  Wright,  13  O.  G.  969. 
"    Andrews  v.  Cross  19  Blatchf.  294. 
"    Green  v.  French,  11  Fed.  591. 
"    Andrews  v.  Creegan,  19  Blatchf.  113. 
"    Andrews  v.  Long,  2  McCrary,  577. 
"    Andrews  v.  Cone,  Andrews  v.  Hovey,  5  McCrary,  181. 
Matthews.    Dissenting  Bradley,  Field,  Gray. 

Eames  v.  Godfrey,  68  U.  S.  78;   17  L.  Ed.  547 456,  473 

Davis. 

Eames  v.  Worcester,  123  Fed.  67;  60  C.  C.  A.  37 86,  431,  501,  600, 

601,612 
Ninth;   Gilbert,  Ross,  Hawley.     Dissenting  Hawley. 

Eastman  v.  Getz,  84  Fed.  458;   28  C.  C.  A.  459 411,  672,  676 

Affg.  77  Fed.  412. 

Second;   Wallace,  Lacombe,  Shipman. 
Eastman  v.  Mayor,  134  Fed.  844;  69  C.  C.  A.  628.  . .  .  178,  412,  415,  853,  858 
Revg.  105  Fed.  631. 
See  9  Fed.  500;  35  Fed.  504;  36  Fed.  261 ;  45  Fed.  243;  47  Fed.  515; 

81  Fed.  182. 
Second;   Wallace,  Townsend,  Coxe. 
Eby  v.  King,  158  U.  S.  366;   39  L.  Ed.  1018;    15  S.  Ct.  972. . .  .532,  871, 
Brown.  874,  880,  885,  887 

Ecaubert  v.  Appleton,  67  Fed.  917;    15  C.  C.  A.  73. . .  .21,  170,  275,  389, 
Modifying  62  Fed.  742.  396,  411,  811,  895 

See  52  O.  G.  2107. 
Second;  Wallace,  Lacombe,  Shipman. 

Eccles  v.  Bradley,  158  Fed.  98;  85  C.  C.  A.  566 459 

Second;   Coxe,  Ward,  Noyes.    Per  Curiam. 
Eclipse  v.  Farrow,  199  U.  S.  581;   50  L.  Ed.  317;   26  S.  Ct.  150. .  .  .760, 
Revg.  24  App.  D.  C.  311.  761,  897 

Holmes. 

Economy  v.  Lamprey,  65  Fed.  1000;    13  C.  C.  A.  271 787 

Affg.  62  Fed.  590. 

First;  Colt,  Putnam,  Nelson.    Per  Curiam. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  xxxvil 

[References  are  to  sections] 

Eddy  v.  Dennis,  95  U.  S.  560;  24  L.  Ed.  363 635 

Hunt. 

Edison  v.  American,  114  Fed.  926;  52  C.  C.  A.  546 87,  640,  823 

Revg.  110  Fed.  660,  664. 

Second;  Wallace,  Lacombe,  Townsend. 

Edison  v.  Crouse,  152  Fed.  437;  81  C.  C.  A.  579 225,  903 

Revg.  146  Fed.  539. 

Second;  Lacombe,  Townsend,  Coxe. 

Edison  v.  Electric,  66  Fed.  309;  13  C  C.  A.  487 89 

Affg.  60  Fed.  401. 

Second;   Wallace,  Lacombe,  Shipman. 

Edison  v.  Mt.  Morris,  58  Fed.  572;  7  C.  C.  A.  375 565,  573 

Modifying  as  to  injunction  order,  57  Fed.  642. 
See  47  Fed.  454;  52  Fed.  300. 
Second;  Wallace,  Shipman. 

Edison  v.  Peninsular,  101  Fed.  831 ;   43  C  C.  A.  479 477,  756 

Affg.  95  Fed.  669. 

Sixth;  Lurton,  Day,  Clark. 
Edison  v.  Sawyer-Mann,  53  Fed.  592;   3  C.  C.  A.  605. . .  .381,  573,  579,  729 

Second;   Wallace,  Lacombe,  Shipman.    Per  Curiam. 
Edison  v.  United  States,  52  Fed.  300;  3  C.  C  A.  83. . .  .23,  230,  421,  635, 
Affg.  47  Fed.  454.  697,  742,  914 

Second;  Lacombe,  Shipman. 

Edison  v.  United  States,  59  Fed.  501 ;  8  C.  C.  A.  200 573 

See  52  Fed.  300. 

Second;  Lacombe,  Shipman.    Per  Curiam. 

Egbert  v.  Lippmann,  104  U.  S.  333;   26  L.  Ed.  755 854,  856 

Woods.    Dissenting  opinion  Miller. 

Eldred  v.  Kirkland,  130  Fed.  342;  64  C.  C.  A.  588 633,  647 

See  106  Fed.  509. 

Second;  Wallace,  Lacombe,  Coxe. 
Electric  v.  Boston,  139  U.  S.  481 ;  35  L.  Ed.  250;   11  S.  Ct.  586.  .  .  .12,  203, 

871,  876,  885,  889 
Affg.  29  Fed.  455;  approving  21  id.  568;  23  id.  195. 
Blatchford. 

Electric  v.  Brush,  52  Fed.  130;  2  C.  C.  A.  682 9,  17,  19,  84,  105,  222, 

Modifying  and  affg.  47  Fed.  48.  344,  358,  361,  812 

See  same  pat,  38  Fed.  117;  41  Fed.  679. 
Second;  Lacombe,  Shipman. 

Electric  v.  Carborundum,  102  Fed.  618;  42  C.  C  A.  537 223,  584,  914 

Revg.  83  Fed.  492. 

Third ;  Dallas,  Grav,  Bradford. 
Electric  v.  Edison,  61  Fed.  834;    10  C.  C.  A.  106. .  .  .29,  77,  544,  561,  570 
Affg.  57  Fed.  616. 

Seventh;  Woods,  Jenkins,  Bunn. 

Electric  v.  Fuller,  59  Fed.  1003:  8  C.  C.  A.  442 502 

Affg.  55  Fed.  64.  First;  Colt,  Putnam,  Nelson. 

Electric  v.  Gould,  158  Fed.  610;  85  C.  C.  A.  432 226 

Affg.  148  Fed.  695. 

Second;  Lacombe,  Townsend,  Coxe.    Per  Curiam. 

Electric  v.  Hall,  114  Fed.  87;  29  L.  Ed.  96;  5.  S.  Ct.  1069 503,  612 

Matthews. 

Electric  v.  Pittsburg,  125  Fed.  926;  60  C.  C.  A.  636 197,  441,  782,  905 

Affg.  and  revg.  in  part,  111  Fed.  742. 
Second;  Wallace,  Lacombe,  Coxe. 


XXXV111        CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Elgin  v.  Creamery,  80  Fed.  293;  25  C.  C.  A.  426 363,  385 

Seventh;  Woods,  Jenkins,  Showalter. 

Elgin  v.  Nichols,  65  Fed.  215 ;   12  C.  C.  A.  578 . . . '. 722,  764 

Seventh ;  Harlan,  Woods,  Bunn. 

Elgin  v.  Nichols,  105  Fed.  780;   45  C.  C.  A.  49 298,  299 

Seventh;  Woods,  Grosscup,  Bunn. 

Elite  v.  Dececo,  150  Fed.  581 ;  80  C.  C.  A.  567 546 

Third;   Gray,  Buffington. 

Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000 3,  6,  7,  83,  296, 

413,  414,  669,  833,  837,  838,  842,  847,  851,  853 
Bradley. 

Emerson  v.  Nimocks,  99  Fed.  737;    40  C.  C.  A.  87 691,  912 

Fourth;   Goff,  Morris,  Waddill. 

Empire  v.  American,  74  Fed.  864;   21  C.  C.  A.  152 894 

Revg.  71  Fed.  588. 

First;    Putnam,  Nelson. 

Empire  v.  Cleveland,  102  Fed.  354;  42  C.  C.  A.  393 77 

Revg.  in  part  97  Fed.  44. 
Third ;  Acheson,  Dallas,  McPherson. 

Empire  v.  Sears,  160  Fed.  668 ;   87  C.  C.  A.  556 487 

Modifying  157  Fed.  238. 

Second:  Lacombe,  Coxe,  Noyes. 

Eppler  v.  Campbell,  86  Fed.  141 ;  29  C.  C.  A.  616 90,  207,  490 

Revg.  83  Fed.  208. 

First;  Putnam,  Aldrich,  Lowell. 

Erie  v.  American,  70  Fed.  58;    16  C.  C.  A.  632 195,  207,  374,  468 

Revg.  66  Fed.  558. 

Third;   Acheson,  Dallas,  Wales. 

Ertel  v.  Stahl,  65  Fed.  517;  13  C.  C.  A.  29 567 

Seventh;  Woods,  Jenkins,  Baker. 

Ertel  v.  Stahl,  65  Fed.  519;    13  C.  C.  A.  31 563,  572 

Seventh;  Woods,  Jenkins,  Baker. 

Estey  v.  Burdett,  109  U.  S.  633;  27  L.  Ed.  1058;  3  S.  Ct.  531 601 

Blatchford. 

Eunson  v.  Dodge,  85  U.  S.  414;  21  L.  Ed.  766 311,  418,  484 

Hunt. 

Eureka  v.  Bailey,  78  U.  S.  488 ;  20  L.  Ed.  209 310,  484,  795 

Miller. 
Evans  v.  Eaton,  3  Wheat.  454;    4  L.  Ed.  433. . .  .58,  440,  441,  908,  918 
See  S.  C.  7  Wheat,  356. 
Marshall. 
Evans  v.  Eaton,  7  Wheat.  356;   5  L.  Ed.  472. .  .  .197,  204,  411,  440,  506, 

600,  915 
See  S.  C.  3  Wheat.  454;  affg.  3  Wash.  443. 
Story.    Dissenting  opinion  Livingston.     Johnson  and  Dewell  also 
dissenting. 

Evans  v.  Hittich,  7  Wheat.  453;    5  L.  Ed.  496 393,  395 

See  Evans  v.  Eaton,  7  Wheat.  356. 
Affg.  3  Wash.  408. 
Story. 

Evansv.  Rood,  99  Fed.  990;  40 C.  C.  A.  209 105 

Third;  Acheson,  Gray,  Kirkpatrick. 

Evans  v.  Suess,  83  Fed.  706 ;  28  C.  C.  A.  24 Ill 

Affg.  81  Fed.  198. 

Seventh;  Woods,  Jenkins,  Showalter. 


CASES    EXCERPTED,    WITH   ANNOTATIONS  xxxix 

[References  are  to  sections] 

Evans  v.  Suess,  86  Fed.  779;   30  C.  C.  A.  367. 685 

Affg.  83  Fed.  706. 

Seventh ;   Woods,  Jenkins,  Showalter.    Dissenting  Showalter. 

Excelsior  v.  Allen,  104  Fed.  553;  44  C.  C.  A.  30. 769 

Ninth;   Gilbert,  Ross,  Hawley. 
Excelsior  v.  City  of  Seattle,  117  Fed.  140;   55  C.  C.  A.  156....  134,  765, 
Ninth ;  Gilbert,  Ross,  Hawley.  798,  807 

Excelsior  v.  Foote,  79  Fed.  442;  24  C.  C.  A.  673 659 

Affg.  74  Fed.  792. 

Second;    Lacombe,  Shipman. 

Excelsior  v.  Morse-Keefer,  101  Fed.  448;   41  C.  C.  A.  448. 227,  701 

Affg.  97  Fed.  627. 

Second;  Wallace,  Lacombe,  Shipman. 

Expanded  v.  Board,  111  Fed.  395;  49  C.  C.  A.  406 212 

Affg.  103  Fed.  287. 

Eighth;   Sanborn,  Thayer,  Lochren. 

Fairbanks  v.  Stickney,  123  Fed.  79;  59  C.  C.  A.  209 274,  608,  630 

Revg.  115  Fed.  720. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Falk  v.  Missouri,  103  Fed.  295;   43  C.  C.  A.  240 635 

Affg.  91  Fed.  155. 

Eighth;   Caldwell,  Thayer,  Rogers. 

Faries  v.  Brown,  102  Fed.  508;  42  C.  C.  A.  483 326 

Seventh ;  Woods,  Grosscup,  Seaman.    Per  Curiam. 

Faries  v.  Brown,  121  Fed.  547;  57  C.  C.  A.  609 .635 

See  102  Fed.  508. 

Seventh;  Jenkins,  Grosscup,  Baker. 
Farmer's  v.  Challenge,  128  U.  S.  506;  32  L.  Ed.  529;  9  S.  Ct.  146. ....  .871 

Affg.  23  Fed.  42. 
Gray. 
Farmer's  v.  Spruks,  127  Fed-  691;   62  C.  C.  A.  447.... 78,  506,  635,  673, 

692,  693,  699 
Revg.  119  Fed.  594. 

Fourth;  Goff,  Simonton,  Brawley. 

Farquhar  v.  National,  102  Fed.  714;   42  C.  C.  A.  600 924 

Revg.  99  Fed.  160. 

Third;  Acheson,  Dallas,  Bradford. 

Fassett  v.  Ewart,  62  Fed.  404 ;  10  C.  C.  A.  441 356,  383 

Affg.  58  Fed.  360. 

Seventh;   Jenkins,  Baker. 

Faulkner  v.  Empire,  67  Fed.  913;   15  C.  C.  A.  69 166 

Affg.  55  Fed.  819. 

Second;  Wallace,  Lacombe,  Shipman. 

Fay  v.  Cordesman,  109  U.  S.  408;  27  L.  Ed.  979;  3  S.  Ct.  236 187,  466 

Blatchford. 

Fay  v.  Mason,  127  Fed.  325;  62  C.  C.  A.  159 398,  628 

Revg.  120  Fed.  506. 

Second;    Lacombe,  Townsend. 

Featherstone  v.  Bidwell,  57  Fed.  631;   6  C.  C.  A.  487 871,  885 

Revg.  53  Fed.  113. 
Second;  Wallace,  Lacombe,  Shipman. 

Ferguson  v.  Roos,  71  Fed.  416;   18  C.  C.  A.  162 503,  600 

Seventh;  Woods,  Jenkins,  Showalter. 

Fielding  v.  Crouse,  154  Fed.  377;  83  C.  C.  A.  331 623 

Second;  Wallace,  Lacombe,  Townsend.    Per  Curiam. 


xl  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Fisher  v.  American,  71  Fed.  523;  18  C.  C.  A.  235 .671 

Affg.  69  Fed.  331. 

Second;  Wallace,  Lacombe,  Shipman. 
Florsheim  v.  Schilling,  137  U.  S.  64;   34  L.  Ed.  574;   11  S.  Ct.  20.  . .  .591, 
Affg.  26  Fed.  256.  609,  624,  696 

Lamar. 

Flower  v.  Detroit,  127  U.  S.  563;  32  L.  Ed.  175;  8  S.  Ct.  1291 888 

Affg.  22  Fed.  292. 
Blatchford. 
Fond  Du  Lac  v.  May,  137  U.  S.  395;  34  L.  Ed.  714;   11  S.  Ct.  98. . .  .612, 
Revg.  27  Fed.  691.  617,  669,  684,  734 

Blatchford. 

Foos  v.  Springfield,  49  Fed.  641 ;   1  C.  C.  A.  410. 49 

Affg.  44  Fed.  595. 

Sixth;   Brown,  Jackson. 

Force  v.  Sawyer-Boss,  143  Fed.  894;  75  C.  C.  A.  102 .288,  843,  845 

See  131  Fed.  884. 

Second;  Lacombe,  Townsend,  Coxe. 

Ford  v.  Bancroft,  98  Fed.  309;  39  C.  C.  A.  91 497 

Affg.  85  Fed.  457. 

First :  Colt,  Webb,  Aldrich. 

Ford  v.  Tannage,  84  Fed.  644;  28  C.  C.  A.  503 .518,  561 

See  same  patent  70  Fed.  1003;  77  Fed.  191;  81  Fed.  178. 
Third;   Acheson,  Butler,  Kirkpatrick. 

Forgie  v.  Oil  Well,  58  Fed.  871 ;  7  C.  C.  A.  551 392,  409,  638,  682,  684 

Affg.  57  Fed.  742. 

Third;  Dallas,  Butler,  Green. 
Forncrook  v.  Root,  127  U.  S.  176;  32  L.  Ed.  97;  8  S.  Ct.  1247. . .  .217,  468 

Affg.  21  Fed.  328.  Blatchford. 

Forsyth  v.  Garlock,  142  Fed.  461 ;   73  C.  C.  A.  577. ........... .  .390,  410 

First;   Colt,  Putnam,  Aldrich. 
Fowler  v.  City  of  N.  Y.  121  Fed.  747;  58  C.  C.  A.  113. ......... .  .327,  698 

Affg.  110  Fed.  749. 

Fox  v.  Perkins,  52  Fed. '205;  3  C.  C.  A.  32. .  .  .198,  214,  216,  440,  636,  886 
Sixth;  Brown,  Jackson,  Taft. 

Franklin  v.  Illinois,  138  Fed.  58;  70  C.  C.  A.  484 880 

Affg.  128  Fed.  48. 

Seventh;  Jenkins,  Grosscup,  Baker. 

Frazer  v.  Gates,  85  Fed.  441 ;  29  C.  C.  A.  261 229,  592,  593 

Revg.  79  Fed.  75. 

See  same  subject  153  U.  S.  332;   78  Fed.  350. 
Seventh;  Woods,  Jenkins,  Bunn. 

Freeman  v.  Asmus,  145  U.  S.  226;  36  L.  Ed.  685;  12  S.  Ct.  821 871 

Revg.  27  Fed.  684. 
Blatchford. 

Fresno  v.  Fruit,  101  Fed.  826;  42  C.  C.  A.  43 927 

Modifying  94  Fed.  845. 

Ninth;  Gilbert,  Hawley,  DeHaven. 

Frick  v.  Geiser,  100  Fed.  94;  40  C.  C.  A.  291 162 

Revg.  92  Fed.  189. 

Third;  Acheson,  Gray,  Kirkpatrick. 

Frost  v.  Cohn,  119  Fed.  505;  56  C.  C.  A.  185 108,  656,  697 

Affg.  112  Fed.  1009. 

Second;  Wallace,  Townsend. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  xli 

[References  are  to  sections] 

Fry  v.  Rookwood,  101  Fed.  723;  41  C.  C.  A.  634 616 

Affg.  90  Fed.  494. 

Sixth;  Lurton,  Day,  Severens. 

Fuller  v.  Berger,  120  Fed.  274;  56  C.  C.  A.  588 645,  747 

Seventh;  Jenkins,  Grosscup,  Baker.    Dissenting  Grosscup. 

Fuller  v.  Yentzer,  94  U.  S.  288;  24  L.  Ed.  103 223,  472,  473,  683,  771 

Clifford.    Dissenting  Strong,  Waite,  Miller,  Bradley. 

Fuller  v.  Yentzer,  94  U.  S.  299 ;  24  L.  Ed.  107 440,  468,  607 

Clifford.    Dissenting  Waite,  Strong,  Miller,  Bradley. 

Fuller-Warren  v.  Michigan,  86  Fed.  463;   30  C.  C.  A.  193 590 

Revg.  81  Fed.  376. 

Seventh;  Woods,  Jenkins,  Showalter. 
Gage  v.  Herring,  107  U.  S.  640;   27  L.  Ed.  601;  2  S.  Ct.  819. . .  .202,  340, 
Gray.  466,  499,  872,  889 

Gait  v.  Parlin,  60  Fed.  417;  9  C.  C.  A.  49 672 

Affg.  52  Fed.  749. 

Seventh;  Woods,  Jenkins,  Bunn. 

Galvin  v.  City,  115  Fed.  511;  53  C.  C.  A.  165 599,  699 

Sixth;  Lurton,  Day,  Cochran. 

Gamewell,  In  re,  73  Fed.  908;  20  C  C.  A.  Ill 128,  805 

Petition  for  supplemental  bill  in  review  of  52  Fed.  464;  61  Fed.  948. 
First;  Putnam,  Nelson,  Webb. 

Gamewell  v.  Municipal,  61  Fed.  208;  9  C.  C.  A.  450 Ill,  544,  550 

Explaining  Richmond  v.  Atwood,  52  Fed.  10;  see  Lockwood  v.  Wicks, 
75  Fed.  118. 
First;  Putnam,  Nelson,  Webb.     Per  Curiam. 

Gamewell  v.  Municipal,  61  Fed.  949;  10  C.  C.  A.  184 61,  355,  618 

Affg.  52  Fed.  464. 

First;     Putnam,    Nelson,    Webb.      Dissenting    on    second   patent, 
Putnam. 

Gamewell  v.  Municipal,  77  Fed.  490;  23  C.  C.  A.  250 273,  274,  410 

See  s.  c.  52  Fed.  464;  61  Fed.  208. 
First;  Putnam,  Nelson,  Webb. 
Gandy  v.  Main,  143  U.  S.  587;   36  L.  Ed.  272;    12  S.  Ct.  598. .  .  .59,  104, 
Revg.  28  Fed.  570.  Brown.  487,  629,  634,  668 

Gandy  v.  Marble,  122  U.  S.  432;  30  L.  Ed.  1223;  7  S.  Ct,  1290 13 

Blatchford. 
Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158;  6  S.  Ct.  1027.  . .  .322,  636, 
Affg.  20  Blatchf.  538.  Blatchford.  667,  672,  675,  871 

Garratt  v.  Seibert,  131  U.  S.  cxxvi  App.;   21  L.  Ed.  956 473 

Strong. 

Garratt  v.  Seibert,  98  U.  S.  75;  25  L.  Ed.  84 315,  411,  629,  895 

See  Garratt  v .  Seibert,  21  L.  Ed.  956.  Strong. 

Garretson  v.  Clark,  111  U.  S.  120;  28  L.  Ed.  371;  4  S.  Ct.  291 845 

Affg.  15  Blatchf.  70.  Field. 

Gaskill  v.  Myers,  81  Fed.  854;  26  C.  C.  A.  642 337,  873 

Ninth;  Gilbert,  Ross,  Hawley.    Dissenting  Gilbert. 

Gates  v.  Fraser,  153  U.  S.  332;  38  L.  Ed.  734;  14  S.  Ct.  883 463 

Affg.  42  Fed.  49.  Shiras. 

Gates  v.  Fraser,  55  Fed.  409;  5  C.  C.  A.  154 216 

Seventh;  Woods,  Jenkins,  Bunn. 

Gates  v.  Overland,  147  Fed.  700;  78  C.  C.  A.  88 658 

See  Gates  v.  Fraser,  153  U.  S.  332. 
"    Birmingham  v.  Gates,  78  Fed.  350. 
Eighth;  Sanborn,  Van  Devanter,  Philips. 


xlii  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Gay  v.  Camp,  68  Fed.  67;   15  C.  C.  A.  226 836 

Rehearing  of  65  Fed.  794. 
Rehearing  denied. 
Fourth;  Fuller,  Goff,  Simonton. 
Gayler  v.  Wilder,  10  How.  477;    13  L.  Ed.  504. . .  .61,  85,  151,  152,  164, 

169,  175,  590,  765,  926,  934 
Taney.    Dissenting  opinion  McLean.    Dissenting  opinion  Dan- 
iel. 

General  v.  Bullock,  152  Fed.  427;  81  C.  C.  A.  569 673,  919 

Revg.  146  Fed.  552. 
Sixth;  Lurton,  Severens,  Richards. 

General  v.  Corliss,  160  Fed.  672;  87  C.  C.  A.  560 86 

Revg.  154  Fed.  671. 
Second;  Lacombe,  Coxe,  Noyes. 

General  v.  International,  126  Fed.  755;  61  C.  C.  A.  329 223,  937 

Sixth;  Lurton,  Severens,  Richards. 

General  v.  Mailers,  110  Fed.  529;  49  C.  C.  A.  138 223 

Affg.  110  Fed.  528. 

Seventh;  Woods,  Jenkins,  Grosscup. 

General  v.  New  England,  128  Fed.  738;  63  C.  C.  A.  448 548,  800 

Revg.  123  Fed.  310. 

Second;  Lacombe,  Townsend,  Coxe. 

General  v.  Wagner,  130  Fed.  772;  66  C.  C.  A.  82 631 

Affg.  123  Fed.  101. 

Second;  Lacombe,  Townsend,  Coxe. 

General  v.  Webster,  113  Fed.  756;  51  C.  C.  A.  446 195,  229 

First;  Colt,  Putnam,  Aldrich. 

General  v.  Yost,  139  Fed.  568;  71  C.  C.  A.  552 427,  658 

Affg.  131  Fed.  874. 
Second;  Wallace,  Townsend,  Coxe. 

Gerard  v.  Diebold,  54  Fed.  889;  4  C.  C.  A.  644 195 

Affg.  48  Fed.  380;  re-affirmed  61  Fed.  209. 
Fifth ;  McCormick,  Locke,  Billings. 

Gerard  v.  Diebold,  61  Fed.  209;  9  C.  C.  A.  451 247,  598 

Affg.  48  Fed.  380;  54  Fed.  889. 
Fifth;  McCormick,  Locke. 

Germain  v.  Wilgus,  67  Fed.  597;   14  C.  C.  A.  561 567,  718,  720,  801 

Ninth;  Gilbert,  Knowles,  Bellinger. 

Germer  v.  Art,  150  Fed.  141;  80  C.  C.  A.  9 49,  904 

Sixth;  Lurton,  Severens,  Richards. 

Gibbon  v.  Loewer,  79  Fed.  325;   24  C  C.  A.  612 599,  662 

Revg.  74  Fed.  555;  55  Fed.  62. 
Third;  Acheson,  Butler,  Wales. 
Gill  v.  United  States,  160  U.  S.  426;  40  L.  Ed.  488;   16  S.  Ct.  322. . .  .366, 
Affg.  25  Ct.  CI.  415.  387,  429 

Brown. 
Gill  v.  Wells,  89  U.  S.  1;   22  L.  Ed.  699. . .  .374,  377,  468,  604,  605,  612, 
Clifford.  674,  888,  889 

Gillette  v.  Sendelbach,  146  Fed.  758;  77  C.  C.  A.  55 25 

Seventh;    Grosscup,   Baker,   Kohlsaat. 

Gimbel  v.  Hogg,  97  Fed.  791 ;  38  C.  C.  A.  419 336 

Revg.  94  Fed.  518. 
Third;  Acheson,  Dallas,  Gray. 

Glendale  v.  Smith,  100  U.  S.  110;  25  L.  Ed.  547 141 

Waite. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  xliti 

[References  are  to  sections] 

Globe-Wernicke  v.  Brown,  121  Fed.  90;  57  C.  C.  A.  344 721 

Seventh;  Jenkins,  Baker,  Seaman. 
Globe-Wernicke  v.  Macey,  199  Fed.  696;  56  C.  C.  A.  304. . .  .43,  508,  636,  929 

Sixth;  Lurton,  Day,  Severens. 
Godfrey  v.  Eames,  68  U.  S.  317;   17  L.  Ed.  684 5,  902 

Swayne.     Dissenting,  Clifford. 

Good  Form  v.  White,  160  Fed.  661 630,  631 

Revg.  153  Fed.  759. 

Second;  Coxe,  Ward,  Noyes.    Per  Curiam. 
Goodyear  v.  Davis,  102  U.  S.  222;  26  L.  Ed.  149. . .  .208,  378,  520,  821,  870 
See  Smith  v.  Goodyear,  93  U.  S.  486. 

Strong. 
Goodyear  v.  Jackson,  112  Fed.  146 ;  50  C  C.  A.  159 477,  523, 524 

First;  Colt,  Putnam,  Webb. 
Goodyear  v.  Rubber,  116  Fed.  363;  53  C.  C.  A.  583. . .  .49,  195,  597,  598,  623, 

Sixth;  Lurton,  Day,  Severens.  908 

Goodyear  v.  Spaulding,  110  Fed.  393;  49  C.  C.  A.  88 224,  487 

Affg.  101  Fed.  990. 

First ;  Colt,  Putnam,  Webb. 
Gordon  v.  Warder,  150  U.  S.  47;  37  L.  Ed.  992;   14  S.  Ct.  32. . .  .96,  217, 
Affg.  38  Fed.  592.  Shiras.  484, 532 

Gorham  v.  White,  81  U.  S.  511;  20  L.  Ed.  731 329,  331,  335 

Modified  148  U.  S.  511. 

Strong.     Dissenting  Miller,  Field,  Bradley. 
Gormully  v.  Western,  84  Fed.  968;  28  C.  C.  A.  586 652 

Seventh;  Woods,  Jenkins,  Bunn. 
Goshen  v.  Bissell,  72  Fed.  67;   19  C.  C.  A.  13. . .  .188,  247,  426,  427,  432, 

Sixth;  Taft,  Lurton,  Hammond.                                      486,  545,  679 
Gosling  v.  Roberts,  106  U.  S.  39 ;  27  L.  Ed.  61 ;  1  S.  Ct.  26 230,  871 

Blatchford. 
Goss  v.  Scott,  108  Fed.  253;  47  C.  C.  A.  302. . .  .45,  67,  156,  634,  635,  926 
Revg.  103  Fed.  650;  see  89  Fed.  818. 

Third;  Dallas,  Gray,  Buffington. 

Goss  v.  Scott,  110  Fed.  402 ;  49  C.  C.  A.  97 85,  135 

On  rehearing  affg.  108  Fed.  253.  * 

Third;  Dallas,  Gray,  Buffington. 
Gottfried  v.  Miller,  104  U.  S.  521;  26  L.  Ed.  851 156,  159,  761 

Woods. 

Gould  v.  Sessions,  67  Fed.  163;   14  C.  C.  A.  366 537,  578 

See  49  Fed.  855;  63  Fed.  1001;  60  Fed.  753. 

Second;  Wallace,  Shipman,  Brown. 

Gould  v.  Trojan,  74  Fed.  794;  21  C.  C.  A.  97 230 

Reversing  70  Fed.  622. 

Second;  Wallace,  Lacombe,  Shipman. 
Goulds  v.  Cowing,  105  U.  S.  253;  26  L.  Ed.  987 290,  298,  438 

Waite. 
Graham  v.  Earl,  92  Fed.  155;  34  C.  C.  A.  267 344,  406,  481 

Ninth;  Gilbert,  Hawley,  DeHaven. 
Grant  v.  Raymond,  6  Pet.  218;   8  L.  Ed.  376 312,  889 

"\T  ARGiTT  AT  T 

Grant  v.  Walter,  148  U.  S.  547;  37  L.  Ed.  552;  13  S.  Ct.  699. . .  .244,  344,  616, 
Affg.  38  Fed.  594.  Jackson.  636, 903 

Gray  v.  Grinberg,  159  Fed.  138;  86  C.  C.  A.  328 331,  494,  721 

Affg.  147  Fed.  732. 
Third;  Dallas,  Buffington,  Cross. 


xliv  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Green  v.  American,  78  Fed.  119;  24  C.  C.  A.  41 608 

Revg.  75  Fed.  680;  see  69  Fed.  333. 

Third;  Dallas,  Butler,  Wales. 
Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70. . .  .72,  201,  207,  398,  432, 
Revg.  120  Fed.  952,  955.  469,  507 

Second;  Wallace,  Lacombe,  Townsend. 
Greene  v.  United,  124  Fed.  961 ;  60  C.  C.  A.  93 124,  890 

First;    Putnam,  Aldrich,  Brown. 

Greene  v.  United,  132  Fed.  973;  66  C.  C.  A.  43 216 

Revg.  115  Fed.  155. 

First;  Putnam,  Aldrich,  Brown. 
Greist  v.  Parsons,  125  Fed.  116;  60  C.  C.  A.  34 672 

Seventh;   Jenkins,  Grosscup,  Baker. 
Grier  v.  Wilt,  120  U.  S.  412;  30  L.  Ed.  712;  7  S.  Ct.  718. . .  .224,  380,  390, 
Revg.  5  Fed.  450.  485,  491,  502 

Blatchford. 
Grimes  v.  Allen,  102  Fed.  606;  42  C.  C.  A.  559 443 

Seventh ;  Woods,  Jenkins,  Grosscup. 
Griswold  v.  Harker,  62  Fed.  389;  10  C.  C.  A.  435. . .  .213,  487,  517,  608,  624 
Revg.  55  Fed.  991.    See  same  pat.  held  void  68  Fed.  494. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Griswold  v.  Wagner,  68  Fed.  494;   15  C.  C.  A.  525 616 

Distinguishing  Griswold  v.  Harker,  62  Fed.  389. 

Sixth;    Taft,  Lurton,  Severens. 

Groth  v.  International,  61  Fed.  284;   9  C.  C.  A.  507 201,  222 

Revg.  57  Fed.  658. 

Second;   Wallace,  Lacombe,  Shipman. 
Guggenheim  v.  Kirchhofer,  66  Fed.  755;  14  C.  C.  A.  72 760 

Second;    Wallace,  Lacombe. 
Guidet  v.  Brooklyn,  105  U.  S.  550;  26  L.  Ed.  1106 431,  871 

Waite. 

Gunn  v.  Bridgeport,  152  Fed.  434;  81  C.  C.  A.  576 591 

Revg.  148  Fed.  239. 

Seeond;  Lacombe,  Townsend,  Coxe. 
Haberman,  In  re,  147  U.  S.  525;  37  L.  Ed.  266;  13  S.  Ct.  527 142,  545 

Blatchford. 

Haffcke  v.  Clark,  50  Fed.  531 ;  1  C.  C.  A.  570 270,  668,  762 

Revg.  46  Fed.  770. 

Fourth;  Goff,  Hughes. 
Hailes  v.  Albany,  123  U.  S.  582;  31  L.  Ed.  284;  8  S.  Ct.  262. .  .  .344,  871,  922 

Bradley. 
Hailes  v.  Van  Wormer,  87  U.  S.  353;   22  L.  Ed.  247 212,  249 

Strong. 
Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed.  241;   10  S.  Ct.  876. . .  .207, 

402,  404,  491,  492,  503,  736,  857 

Fuller. 
Hale  v.  World,  127  Fed.  964;  62  C.  C.  A.  596 207 

Sixth;    Lurton,  Severens,  Richards. 
Hall  v.  General,  153  Fed.  907;  82  C.  C.  A.  653 552,  563,  567 

Second;   Wallace,  Lacombe,  Coxe. 
Hall  v.  MacNeale,  107  U.  S.  90;  27  L.  Ed.  367;  2  S.  Ct.  73  . . .  .415,  854,  858 

Blatchford. 

Hamilton  v.  Diamond,  137  Fed.  417;  69  C.  C.  A.  532 578 

Affg.  130  Fed.  893. 

Third;  Acheson,  Dallas,  Gray.    Per  Curiam. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  xlv 

[References  are  to  sections] 

Hammond  v.  Goodyear,  58  Fed.  411 ;  7  C.  C.  A.  276 217 

Revg.   Hammond  v.  Hathaway,  48  Fed.  305;  48  Fed.  834.     See  32  Fed. 
791;  38  Fed.  602-604;  41  Fed.  519;  47  Fed.  452.     See  Hammond 
v.  Weld,  72  Fed.  171. 
Second;  Wallace,  Lacombe. 
Hammond  v.  Mason,  92  U.  S.  724;  23  L.  Ed.  767 152,  753,  800,  931 

Hammond  v.  Stockton,  70  Fed.  716;   17  C.  C.  A.  356 334 

Ninth;   Gilbert,  Ross,  Hawley. 

Hammond  v.  Weld,  72  Fed.  171 ;   18  C.  C.  A.  502 253 

See  Hammond  v.  Goodyear,  58  Fed.  41 1 ;   Hammond  v.  Hathaway,  48 
Fed.  305. 
First;  Putnam,  Nelson,  Webb. 
Hanifen  v.  Godshalk,  84  Fed.  649;   28  C.  C.  A.  507. . .  .85,  398,  850,  903 
Revg.  78  Fed.  811. 
Third;  Shiras,  Acheson,  Butler.    Dissenting  Butler. 

Hanifen  v.  Lupton,  101  Fed.  462;  41  C.  C.  A.  462 311 

Revg.  95  Fed.  465. 

Third;   Acheson,  Dallas,  Kirkpatrick. 

Hanifen  v.  Price,  102  Fed.  509 ;  42  C.  C.  A.  484 256 

See  78  Fed.  811;  84  Fed.  649. 

Second;   Wallace,  Lacombe,  Shipman. 

Hanks  v.  International,  194  U.  S.  303;  48  L.  Ed.  989;  24  S.  Ct.  700 395 

Fuller. 

Hanks  v.  International,  122  Fed.  74;  58  C.  C.  A.  180 896 

See  194  U.  S.  303. 

Second;   Wallace,  Coxe. 
Hapgood  v.  Hewitt,  119  U.  S.  226;   30  L.  Ed.  369;   7  S.  Ct.  193. . .  .271, 
Affg.  11  Biss.  184.  Blatchford.  366,  367,  372,  756 

Harder  v.  United  States,  160  Fed.  463;  87  C.  C.  A.  447 203,  601 

Affg.  149  Fed.  434. 

Seventh;  Grosscup,  Baker,  Seaman. 

Hardison  v.  Brinkman,  156  Fed.  962;  87  C.  C.  A.  8 202,  373,  374,  496 

Ninth;   Gilbert,  Ross,  Hunt. 

Harper  v.  Wilgus,  56  Fed.  587;  6  C.  C.  A.  45 131,  141,  638 

Ninth;   McKenna,  Gilbert,  Hawley. 

Hart  v.  Anchor,  92  Fed.  657;  34  C.  C  A.  606 67,  70,  547,  777,  889 

Revg.  82  Fed.  911. 

First;  Colt,  Brown,  Lowell. 

Hartell  v.  Tilghman,  99  U.  S.  547;  25  L.  Ed.  357 714 

Miller.    Dissenting  opinion  Bradley,  Swayne. 
Hartshorn  v.  Saginaw,  119  U.  S.  664;  30  L.  Ed.  539;  7  S.  Ct.  421. . .  .12, 
Matthews.  309,  871,  885,  889 

Hartz  v.  Cleveland,  95  Fed.  681 ;  37  C  C.  A.  227 141,  162,  800 

Sixth;   Taft,  Lurton,  Clark. 
Hatch  v.  Electric,  100  Fed.  975;  41  C.  C.  A.  133. . .  .67,  230,  305,  561,  566, 
First;  Putnam,  Aldrich,  Brown.  570,  938 

Haughey  v.  Lee,  151  U.  S.  282;  38  L.  Ed.  162;  14  S.  Ct.  331 387,  437 

Shiras. 

Hay  v.  Heath,  71  Fed.  411 ;  18  C.  C.  A.  157 593,  594,  610 

Revg.  67  Fed.  246. 

Seventh;   Woods,  Jenkins,  Showalter. 

Hayes- Young  v.  St.  Louis,  137  Fed.  80;  70  C.  C.  A.  1 13,  807 

Affg.  130  Fed.  900. 

Eighth;   Sanborn,  Philips,  Riner. 


Xlvi  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Hayward  v.  Andrews,  106  U.  S.  672;  27  L.  Ed.  271 ;  1  S.  Ct.  544 720 

Matthews. 

Heald  v.  Rice,  104  U.  S.  737;  26  L.  Ed.  910 646,  881,  888 

Matthews. 

Heap  v.  Greene,  91  Fed.  792;  34  C.  C.  A.  86 208,  532 

Revg.  75  Fed.  405. 

First;   Putnam,  Brown,  Lowell. 
Heap  v.  Tremont,  82  Fed.  449;  27  C.  C.  A.  316. . .  .68,  230,  378,  424,  454, 

616,  621 
Revg.  75  Fed.  406. 

First;    Putnam,  Webb,  Aldrich. 
Heaton  v.  Eureka.  77  Fed.  288;  25  C.  C.  A.  267. . .  .476,  532,  720,  746,  899 
Revg.  65  Fed.  619. 

Sixth;  Taft,  Lurton,  Hammond. 

Heaton  v.  Schlochtermeyer,  72  Fed.  520;   18  C.  C.  A.  674 324 

Affg.  69  Fed.  592. 

Sixth;  Taft,  Lurton,  Hammond. 
Hecker  v.  Fowler,  69  U.  S.  123;  17  L.  Ed.  759 807 

Hedges  v.  Seibert,  50  Fed.  643;   1  C.  C  A.  594 134 

See  35  Fed.  509. 
Third;    Acheson,  Butler. 
Heekin  v.  Baker,  138  Fed.  63;   70  C.  C.  A.  559. . .  .376,  476,  527,  635,  675 
Revg.  127  Fed.  828. 

Eighth;  Sanborn,  Van  DeVanter,  Amidon. 

Hemolin  v.  Hardway,  138  Fed.  54;  70  C.  C.  A.  480 914 

Affg.  131  Fed.  483. 

Second;  Wallace,  Lacombe,  Townsend. 

Hendey  v.  Prentice,  162  Fed.  481 ;  89  C.  C.  A.  401 378 

Affg.  155  Fed.  133. 

First;  Colt,  Putnam,  Lowell. 
Hendrie  v.  Sayles,  98  U.  S.  546;  25  L.  Ed.  176 152,  418 

i   T  TFTT'ORD 

Hendy  v.  Golden,  127  U.  S.  370;  32  L.  Ed.  207;  8  S.  Ct.  1275. . .  .202,  313, 
Affg.  8  Sawy.  468.  380,  664,  799 

Herrick  v.  Giant,  60  Fed.  80;  8  C.  C.  A.  475 141 

Affg.  52  Fed.  147. 

First;   Putnam,  Nelson,  Webb.    Per  Curiam. 

Hickory  v.  Frazier,  100  Fed.  99;   40  C.  C.  A.  296 600,  690 

Affg.  89  Fed.  202. 

Seventh;   Woods,  Bunn,  Allen. 

Hicks  v.  Kelsey,  85  U.  S.  670;  21  L.  Ed.  852 696 

Bradley. 

Higgin  v.  Scherer,  100  Fed.  459;  40  C.  C.  A.  491 326 

Sixth;    Taft,  Lurton,  Day. 

Hildreth  v.  Norton,  159  Fed.  428;  86  C.  C.  A.  408 567,  575 

Affg.  154  Fed.  82. 

Second;  Lacombe,  Coxe,  Noyes. 
Hill  v.  Wooster,  132  U.  S.  693;  33  L.  Ed.  502;  10  S.  Ct.  228. . .  .25,  582,  667 
Revg.  22  Fed.  830. 
Blatchford. 

Hillard  v.  Fisher,  159  Fed.  439;  86  C.  C.  A.  469 66,  93,  352,  459,  634 

Affg.  151  Fed.  34. 

Second;  Lacombe,  Coxe,  Noyes. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  xlvii 

[References  are  to  sections] 

Hillborn  v.  Hale,  69  Fed.  958;  16  C.  C.  A.  569. . .  .208,  277,  341,  656,  673,  876 
Third;  Shiras,  Acheson,  Dallas. 

Hobbie  v.  Jennison,  149  U.  S.  355;  37  L.  Ed.  766;  13  S.  Ct.  879 512,  763 

Affg.  40  Fed.  887. 
Blatchford. 
Hobbs  v.  Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct.  409. . .  .255,  422, 

423,  501,  635,  670,  884,  937 
Affg.  92  Fed.  146;  Revg.  82  Fed.  916. 
Brown. 

Hobbs  v.  Gooding,  111  Fed.  403;  49  C.  C.  A.  414 376,  631,  635,  792 

First;   Colt,  Putnam,  Aldrich. 

Hobbs  v.  Gooding,  113  Fed.  615;  51  C.  C.  A.  335 578 

First;   Colt,  Putnam,  Aldrich. 

Hocke  v.  New  York  Central,  122  Fed.  467;  58  C.  C.  A.  627 698 

Affg.  117  Fed.  320. 

Second;    Wallace,  Lacombe. 

Hoe  v.  Miehle,  149  Fed.  213;  79  C.  C.  A.  171 526 

Affg.  141  Fed.  112. 

Second ;  Lacombe,  Townsend,  Coxe. 

Hoff  v.  Iron  Clad,  139  U.  S.  326;  35  L.  Ed.  179;  11  S.  Ct.  580 483,  696 

Affg.  31  Fed.  45;   revg.  27  Fed.  301. 
Brown. 

Hogan  v.  Westmoreland,  154  Fed.  66;  83  C.  C.  A.  178 326 

Revg.  145  Fed.  199. 

Third;  Gray,  Buffington,  Lanning. 
Hogg  v.  Emerson,  6  How.  437;   12  L.  Ed.  505. . .  .111,  205,  222,  242,  266, 

740,  905,  913,  915 
Affg.  2  Blatchf.  1. 
Woodbury. 

Hogg  v.  Emerson,  11  How.  587;   13  L.  Ed.  824 .285,  289,  291,  918 

Woodbury.    Dissenting  Taney,    Daniel,   Grier;    dissenting 
opinion  Catron. 

Hohorst  v.  Hamburg-American,  91  Fed.  655;  34  C.  C.  A.  39 295,  728,  840 

Affg.  84  Fed.  354. 

Second;  Wallace,  Lacombe,  Shipman. 
Hollister  v.  Benedict,  113  U.  S.  59;   28  L.  Ed.  901;   5  S.  Ct.  717. .  .  .636, 
Matthews.  657,  715,  747 

Holloway  v.  Whiteley,  71  U.  S.  522;   18  L.  Ed.  335 25,  262,  889,  927 

Swayne. 

Holman  v.  Jones,  61  Fed.  105;  9  C.  C.  A.  385 216 

Revg.  58  Fed.  973. 

Third ;  Acheson,  Butler,  Green. 

Holmes  v.  Kirkpatrick,  133  Fed.  232 ;  66  C.  C.  A.  286 411 

Ninth;   Gilbert,  Ross,  Hawley. 

Holmes  v.  McGill,  108  Fed.  238;  47  C.  C.  A.  296 764,  897 

Second;   Wallace,  Shipman. 

Holmes  v.  Truman,  67  Fed.  542;  14  C.  C.  A.  517 298,  411,  736 

Ninth;  Gilbert,  Hawley,  Hanford. 

Hopkins  v.  Corbin,  103  U.  S.  786;  26  L.  Ed.  610 871 

Woods. 

Horn  v.  Pelzer,  91  Fed.  665;  34  C.  C.  A.  45 254,  878 

Revg.  87  Fed.  869. 

Third;   Acheson,  Butler,  Kirkpatrick,  dissenting,  Butler. 
Hoskin  v.  Fisher,  125  U.  S.  217;  31  L.  Ed.  759;  8  S.  Ct.  834. . .  .871,  875, 
Blatchford.  877,  879 


xlviii  CASES    EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Hoskin  v.  Matthes,  108  Fed.  404;  47  C.  C.  A.  434 266,  691 

Seventh;   Woods,  Jenkins,  Grosscup. 

Hotchkiss  v.  Greenwood,  11  How.  248;  13  L.  Ed.  683 592,  652,  696 

Nelson;    dissenting  opinion  Woodbury. 

Hotel  v.  Lorraine,  160  Fed.  467;  87  C.  C.  A.  451 148,  698 

Affg.  155  Fed.  298. 

Second;  Lacombe,  Coxe,  Ward. 

Houghton  v.  Whitin,  153  Fed.  740;  83  C.  C.  A.  84 624,  648,  697,  873 

First;   Colt,  Putnam,  Aldrich. 

Houston  v.  Stern,  74  Fed.  636;   20  C.  C.  A.  636 297,  404 

Fifth;  Pardee,  McCormick,  Speer. 

Howard  v.  Gibbs,  157  Fed.  676;  85  C.  C.  A.  348. 545 

Revg.  and  affg.  153  Fed.  291. 
First;  Colt,  Putnam,  Lowell. 
Howe  v.  National,  134  U.  S.  388;  33  L.  Ed.  963;  10  S.  Ct.  570. . .  .222,  671, 
Affg.  21  Fed.  630.  672,  903 

Fuller. 
Hoyt  v.  Home,  145  U.  S.  302;  36  L.  Ed.  713;  12  S.  Ct.  922. . .  .453,  487,  626 
Revg.  35  Fed.  830. 
Brown. 
Hubbell  v.  United  States,  171  U.  S.  203;  43  L.  Ed.  136;   18  S.  Ct.  828 
Rehearing  denied  179  U.  S.  86.  ....  387,  894 

Affg.  20  Ct.  CI.  354. 
Brown. 
Hubbell  v.  United  States,  179  U.  S.  77;  45  L.  Ed.  95;  21  S.  Ct.  24. . .  .207,  208 
Affg.  20  Ct.  CI.  354;  see  31  Ct.  CI.  464;  see  171  U.  S.  203. 
Shiras. 

Huber  v.  Mott,  125  Fed.  944;  60  C.  C.  A.  182 215 

Affg.  113  Fed.  599. 

Second;   Wallace,  Lacombe,  Townsend. 

Huber  v.  Nelson,  148  U.  S.  270;  37  L.  Ed.  447;   13  S.  Ct.  603. 6,  420, 

Affg.  38  Fed.  830.  871,  872 

Blatchford. 
Hunt  v.  Cassidy,  53  Fed.  257;  3  C.  C.  A.  252. . .  .208,  292,  297,  298,  380, 

393,  404,  407,  409,  411 
Ninth;   McKenna,  Ross,  Knowles. 

Hunt  v.  Cassidy,  64  Fed.  585;  12  C.  C.  A.  316. .287 

Ninth;    Gilbert,  Morrow. 

Hunt  v.  Wilwaukee,  148  Fed.  220;  78  C.  C.  A.  116. .  , 144,  441 

Seventh;  Baker,  Seaman,  Kohlsaat. 
Hurlbut  v.  Schillinger,  130  U.  S.  456 ;  32  L.  Ed.  101 1 ;  9  S.  Ct.  584 ... .  290, 882 
Blatchford. 

Hurlbut  v.  United  States,  124  Fed.  66 ;  59  C  C.  A.  626 681 

Affg.  119  Fed.  188. 
Second;  Wallace,  Lacombe,  Coxe.    Per  Curiam. 
Hutter  v.  De  Q.  Bottle,  128  Fed.  283 ;  62  C.  C.  A.  652 ........ .  .494,  602,  797 

Revg.  in  part  119  Fed.  190. 

Second;  Wallace,  Lacombe,  Coxe. 

Hygienic  v.  Way,  137  Fed.  592;  70  C.  C.  A.  553 928 

Revg.  133  Fed.  245. 
Third;  Acheson,  Dallas,  Gray. 
Hyndman  v.  Roots,  97  U.  S.  224;  24  L.  Ed.  975 459 

SWAYNE. 

Ide  v.  Trorlicht,  115  Fed.  137;  53  C.  C.  A.  341 2,  12,  273,  350,  441 

Eighth;  Caldwell,  Sanborn,  Thayer.  459,  558,  609,  871 


CASES    EXCERPTED,    WITH   ANNOTATIONS  xlix 

[References  are  to  sections] 

Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436 .. .  .68. 69,  92,  222,  322,  398,  622 
Affg.  123  Fed.  666;  see  108  Fed.  847. 
Fourth;  Goff,  Brawley,  Purnell. 

Illinois  v.  Robbins,  52  Fed.  215;  3  C.  C.  A.  42 473 

Affg.  50  Fed.  542. 

Seventh;    Harlan,  Woods,  Jenkins. 
Imhauser  v.  Buerk,  101  U.  S.  647;  25  L.  Ed.  945. ..... .  .320,  373,  468,  494 

Affg.  14  Blatchf.  19. 
Clifford. 
Imperial  v.  Crown,  139  Fed.  312;  71  C.-C.  A.  442. . .  .67,  213,  253,  503,  631, 

Revg.  123  Fed.  669.  656 

See  C.  C.  A.    2nd.  Cir.  in  disagreement  with  4th  Cir.  136  Fed.  841. 
Fourth;    Goff,  Pritchard,  Brawley.     Dissenting  Goff. 

Imperial  v.  Stein,  77  Fed.  612;  23  C.  C.  A.  353 322,  732 

Revg.  69  Fed.  616. 

Second;   Wallace,  Lacombe,  Shipman.    Per  Curiam. 
Incandescent  Lamp  Patent,  159  U.  S.  465;   40  L.  Ed.  221;    16  S.  Ct.  75 
Affg.  40  Fed.  21.  ....245,915 

Brown. 

Indiana  v.  Case,  154  Fed.  365;  83  C.  C.  A.  343. 510,  744,  767,  807 

Revg.  148  Fed.  21. 

Seventh;   Grosscup,  Baker,  Kohlsaat. 

Indiana  v.  Crocker,  103  Fed.  496;  43  C.  C.  A.  287 .690 

Affg.  90  Fed.  488. 

Seventh;  Woods,  Jenkins,  Grosscup. 

Industrial  v.  Wilcox,  112  Fed.  535;  50  C.  C.  A.  387. .355 

Revg.  110  Fed.  210. 
Third;  Acheson,  Dallas,  Kirkpatrick. 
Inman  v.  Beach,  71  Fed.  420;   18  C.  C.  A.  165. ........... .  .635,  673,  777 

Affg.  63  Fed.  597. 

Second;  Wallace,  Lacombe,  Shipman. 

Insurance  Co.  v.  Eggleston,  96  U.  S.  572;  24  L.  Ed.  2 841 

Bradley. 

International  v.  Bennett,  77  Fed.  313;  23  C.  C.  A.  179. 245 

Affg.  72  Fed.  169;  revg.  30  Fed.  775. 
Second;  Lacombe,  Townsend.    Per  Curiam. 

International  v.  Brammer,  138  Fed.  396;  71  C.  C.  A.  633 468 

Eighth;    Sanborn,  Philips,  Riner. 

International  v.  Bundy,  159  Fed.  464;  86  C  C.  A.  494 457,  506 

Revg.  152  Fed.  717. 
Second;   Lacombe,  Ward,  Noyes. 
International  v.  Dey,  142  Fed.  736;  74  C.  C.  A.  68. . .  .500,  603,  674,  700,  909 

Second;   Lacombe,  Townsend,  Coxe. 

International  v.  Gaylord,  140  U.  S.  55;  35  L.  Ed.  347;  11  S.  Ct.  716. . .  .18, 

Brown.  414,  437,  660 

Ironclad  v.  Dairyman's,  143  Fed.  512;    74  C.  C.  A.  372.... 98,  207,  222, 

Revg.  138  Fed.  123.  496,  938 

Second;   Wallace,  Townsend,  Coxe. 

Irwin  v.  Hasselman,  97  Fed.  964;  38  C.  C.  A.  587 207,  671 

Seventh;  Jenkins,  Grosscup,  Seaman. 

Ives  v.  Hamilton,  92  U.  S.  426;  23  L.  Ed.  494 379,  380,  919 

Bradley. 
Ives  v.  Sargent,  119  U.  S.  652;  30  L.  Ed.  544;  7  S.  Ct.  436. . .  .871,  876,  877 
Affg.  21  Blatchf.  417. 
Matthews. 


1        CASES  EXCERPTED,  WITH  ANNOTATIONS 

[References  are  to  sections] 

Jackes-Evans  v.  Hemp,  140  Fed.  254;  71  C.  C.  A.  646 326 

Eighth;   Van  Devanter,  Hook,  Lochren. 

Jackson  v.  Birmingham,  79  Fed.  801 ;  25  C.  C.  A.  196 200,  245,  344 

Affg.   72   Fed.   269. 

Second;  Wallace,  Lacombe,  Shipman. 
Jacobs  v.  Baker,  74  U.  S.  295;  19  L.  Ed.  200. ... . 337,  614,  684 

(iRTFR 

James  v.  Campbell,  104  U.  S.  356;   26  L.  Ed.  786.... 356,  429,  715,  721, 

815,  823,  885,  886 
Bradley.    Dissenting  opinion  Miller. 

Janowitz  v.  Levison,  82  Fed.  63;  27  C.  C  A.  61 616,  646 

Revg.  80  Fed.  731. 

Second;   Wallace,  Lacombe,  Shipman.     Per  Curiam. 

Jefferson  v.  Westinghouse,  134  Fed.  392;  67  C.  C.  A.  189 564 

Revg.  128  Fed.  751. 

Third ;  Acheson,  Dallas,  Gray.    Per  Curiam. 

Jefferson  v.  Westinghouse,  139  Fed.  385 ;  71  C.  C.  A.  481 893 

Affg.  135  Fed.  365.    See  121  Fed.  831;  see  134  Fed.  392. 
Third;  Acheson,  Dallas,  Gray. 

Jeffrey  v.  Independent,  83  Fed.  191 ;  27  C.  C.  A.  512 376 

Revg.  76  Fed.  981. 

Sixth;   Taft,  Lurton,  Severens. 

Jenner  v.  Bowen,  139  Fed.  556;  71  C.  C.  A.  540 727,  851,  855 

Sixth;  Lurton,  Severens. 

Jensen  v.  Norton,  67  Fed.  236;  14  C.  C.  A.  383 374 

Ninth;  Ross,  Hanford,  Morrow. 

Jewell  v.  Jackson,  140  Fed.  340;  72  C.  C.  A.  304 222,  462,  937 

Eighth;  Sanborn,  Van  Devanter,  Hook. 

Johns  v.  Robertson,  77  Fed.  985 ;  23  C.  C.  A.  601 379 

Affg.  60  Fed.  900. 

Second;   Lacombe,  Shipman. 

Johnson  v.  Flushing,  105  U.  S.  539;  26  L.  Ed.  1162 , 638,  731,  871 

Woods. 
Johnson  v.  Foos,  141  Fed.  73;   72  C.  C.  A.  105. . .  .101,  273,  277,  342,  476, 
Sixth;  Lurton,  Severens,  Richards.  548,  569,  686,  817 

Johnson  v.  Chisholm,  115  Fed.  625;  53  C.  C.  A.  123 100 

Revg.  84  Fed.  384;   106  Fed.  191. 
Third;  Acheson,  Dallas,  Gray.   Dissenting  Gray. 

Johnson  v.  McCurdy,  108  Fed.  671 ;  47  C.  C.  A.  577 691 

Seventh ;  Woods,  Jenkins,  Grosscup.   Dissenting  Woods. 

Johnson  v.  Powers,  85  Fed.  863;  29  C.  C.  A.  459 211 

Affg.  81  Fed.  626. 

Seventh ;  Woods,  Jenkins,  Bunn.    Per  Curiam. 

Johnson  v.  Seaman,  108  Fed.  951 ;    48  C.  C.  A.  158 579 

Revg.  106  Fed.  915. 
Third;    Acheson,  Dallas,  Bufnngton. 

Johnson  v.  Toledo,  119  Fed.  885;   56  C.  C.  A.  415 656,  672 

Affg.  116  Fed.  490. 

Sixth;  Lurton,  Day,  Severens. 

Johnson  v.  Union,  55  Fed.  487;  5  C.  C.  A.  204 579 

Revg.  52  Fed.  867. 
Third ;  Acheson,  Butler,  Wales. 

Jones  v.  Cyphers,  126  Fed.  753;  62  C.  C.  A.  21 616,  795 

Affg.  115  Fed.  324. 

Second ;  Lacombe,  Townsend,  Coxe. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  li 

[References  are  to  sections] 

Jones  v.  Davis,  138  Fed.  62;  70  C.  C.  A.  558 219 

Revg.  133  Fed.  550. 

Third;  Acheson,  Dallas,  Gray. 

Jones  v.  Morehead,  68  U.  S.  155;   17  L.  Ed.  662 532,  789 

Miller. 

Jones  v.  Munger,  49  Fed.  61 ;   1  C.  C.  A.  158 223,  377,  469,  674 

Fifth;   Pardee,  Locke,  Bruce. 

Jones  v.  Munger,  50  Fed.  785;  1  C.  C.  A.  668 117 

Rehearing  49  Fed.  61. 

Fifth;  Pardee,  Locke,  Bruce. 

Judd  v.  Fowler,  61  Fed.  821 ;  10  C.  C.  A.  100 499 

Second;  Wallace,  Lacombe,  Shipman. 

Justi  v.  Clark,  108  Fed.  659;  47  C.  C.  A.  565 * 638,  691,  889 

Seventh ;  Woods,  Jenkins,  Grosscup. 

Kahn  v.  Starrels,  135  Fed.  532;  68  C.  C.  A.  82 485 

Revg.  131  Fed.  464. 

Third;    Acheson,  Dallas,  Gray. 

Kahn  v.  Starrels,  136  Fed.  597;  69  C.  C.  A.  371 273 

See  131  Fed.  464. 

Third;  Acheson,  Dallas,  Gray.    Per  Curiam. 

Kalamazoo  v.  Duff,  113  Fed.  264;  51  CCA.  221 191,485,622 

Sixth;    Lurton,  Day,  Clark. 

Kansas  City  v.  Devol,  81  Fed.  726;  26  C  C  A.  578 72,  804,  926 

Revg.  72  Fed.  717. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Keasby  v.  American,  143  Fed.  490;  74  C  C  A.  510 400,  644 

Revg.  137  Fed.  602. 
Third;   Acheson,  Dallas,  Gray. 
Keeler  v.  Standard,  157  U.  S.  659;   39  L.  Ed.  848;   15  S.  Ct.  738.  . .  .450, 
Revg.  37  Fed.  693;  41  Fed.  51.  763,  927 

Shiras.  Dissenting  opinion  Brown,  Fuller,  Field. 

Keene  v.  Barratt,  100  Fed.  590;  40  C  C  A.  571 131,  735,  752,  927 

Seventh;  Woods,  Jenkins,  Bunn. 

Kelley  v.  Diamond,  123  Fed.  882;  59  C  C  A.  370 208 

Affg.  120  Fed.  282. 

Third;  Acheson,  Dallas,  Buffington.  Dissenting  Acheson. 

Kelley  v.  Diamond,  136  Fed.  855;  69  C  C.  A.  599 891 

See  132  Fed.  978;  131  Fed.  89;  130  Fed.  893;  129  Fed.  756;  120  Fed. 
282;  123  Fed.  882. 
Third;  Acheson,  Dallas,  Gray. 

Kelly  v.  Clow,  89  Fed.  297;  32  C  C  A.  205 95,  207,  608,  612 

Seventh;  Woods,  Showalter,  Baker. 

Kelly  v.  Springfield,  92  Fed.  614;  34  C  C  A.  570 87 

Affg.  81  Fed.  617. 

Sixth;  Taft,  Lurton,  Severens. 

Kendall  v.  Windsor,  62  U.  S.  322;  16  L.  Ed.  165 2,  6,  11,  934 

Daniel. 

Kenney  v.   Bent,  97  Fed.  337;  38  C  C  A.  205 627,  694 

Affg.  91  Fed.  259. 

First;  Colt,  Putnam,  Brown. 
Kennedy  v.  Hazelton,  128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct.  202. ..  .151, 
Affg.  33  Fed.  293.  629,  779,  847,  931 

Gray;  dissenting  Fuller,  Bradley. 

Keplinger  v.  De  Young,  10  Wheat.  358;'  6  L.  Ed.  341 521 

Washington. 


Hi  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Kessler  v.  Eldred,  206  U.  S.  285;  51  L.  Ed.  1065;  27  S.  Ct.  611 31,  33 

Moody. 
Kessler  v.  Inks,  108  Fed.  412;  47  C.  C.  A.  442 601 

Seventh;  Woods,  Jenkins,  Grosscup. 
Keyes  v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;  15  S.  Ct.  772.  .  .  .366,  568, 
AfTg.  45  Fed.  199.  720,  721,  730,  760 

Fuller. 
Keyes  v.  Grant,  118  U.  S.  25;  30  L.  Ed.  54;  6  S.  Ct.  974 402,  734 

Matthews. 
Keystone  v.  Adams,  151  U.  S.  139;   38  L.  Ed.  103;    14  S.  Ct.  295. .  .  .293, 
Revg.  35  Fed.  579;  41  Fed.  595.  298,  299,  626,  842,  844 

Shiras. 
Keystone  v.  Phoenix,«95  U.  S.  274;  24  L.  Ed.  344 207,  226,  230,  392 

Bradley. 

Keystone  v.  Spear,  136  Fed.  595;  69  C.  C.  A.  369 473 

Revg.  131  Fed.  879. 

Third;  Acheson,  Dallas,  McPherson. 
Kibbe  v.  Jennings,  122  U.  S.  640;  30  L.  Ed.  861 331 

Waite. 

Kilbourne  v.  Bingham,  50  Fed.  697;   1  C.  C.  A.  617 649,  696 

Affg.  47  Fed.  57. 

Sixth;   Jackson,  Swan. 
Kilburn  v.  Holmes,  121  Fed.  750;   58  C.  C.  A.  116 532 

Ninth;    Gilbert,  Ross,  DeHaven. 

Kilmer  v.  Griswold,  67  Fed.  1017;  15  C.  C.  A.  161 115 

Revg.  62  Fed.  119. 

Second;    Wallace,  Lacombe,  Shipman.    Dissenting  Shipman. 
King  v.  Gallun,  109  U.  S.  99;  27  L.  Ed.  870;  3  S.  Ct.  202 47,  593,  708 

Woods. 

King  v.  Hubbard,  97  Fed.  795;  38  C  C.  A.  423 378,  454 

AfTg.  89  Fed.  713. 

Sixth;  Taft,  Lurton,  Severens. 
Kinloch  v.  Electric,  113  Fed.  652;   51  C.  C.  A.  362....  12,  129,  377,  459, 
Affg.  Ill  Fed.  175.  468,  499 

Eighth;   Caldwell,  Sanborn,  Thayer. 
Kinloch  v.  Western,  113  Fed.  659;  51  C.  C.  A.  369 441,  612,  626,  656 

Eighth;  Caldwell,  Sanborn,  Thayer. 
Kinnear  v.  Wilson,  142  Fed.  970;  74  C.  C.  A.  232 207,  349,  634 

Second;   Wallace,  Townsend,  Coxe. 
Kinsman  v.  Parkhurst,  59  U.  S.  289;  15  L.  Ed.  385 125,  270,  847 

(    TTRTTCi 

Kinzel  v.  Luttrell,  67  Fed.  926;  15  C.  C.  A.  82 473 

Sixth;  Taft,  Lurton,  Severens. 
Kirchberger  v.  American,  128  Fed.  599;    64  C.  C.  A.  107.... 54,  71,  85, 
Affg.  124  Fed.  764.  98,  411,  821 

Second;  Lacombe,  Townsend,  Coxe. 
Kirk  v.  United  States,  163  U.  S.  49;   41  L.  Ed.  66;   16  S.  Ct.  911.  . .  .126, 

Brown.  532,  756 

Kisinger-Ison  v.  Bradford,  97  Fed.  502;   38  C.  C.  A.  300.  . .  .443,  447,  656 

Sixth;  Taft,  Lurton,  Ricks. 
Kisinger-Ison  v.  Bradford,  123  Fed.  91;   59  C.  C  A.  221 ..  .  .277,  283,  299, 

Sixth;  Lurton,  Severens,  Richards.  828,  833,  847,  890,  891 

Kitselman  v.  Kokomo,  108  Fed.  632;    47  C.  C.  A.  538 506,  641 

Rev.  in  189  U.  S.  8. 

Seventh ;  Woods,  Grosscup,  Seaman.  Dissenting,  Woods. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  liii 

[References  are  to  sections] 

Klein  v.  Russell,  86  U.  S.  433;  22  L.  Ed.  116 141,  260,  613,  734 

Swayne.    Dissenting  Field,  Hunt. 

Klein  v.  Seattle,  77  Fed.  200;  23  C.  C.  A.  114 129,  636,  655,  679 

Affg.  63  Fed.  702. 

Ninth;  Gilbert,  Ross,  Hawley. 

Kleinart  v.  Stein,  133  Fed.  228;  66  C.  C.  A.  282 591 

Affg.  125  Fed.  19. 

Seventh;   Jenkins,  Grosscup,  Baker. 
Knapp  v.  Morss,  150  U.  S.  221;  37  L.  Ed.  1059;   14  S.  Ct.  81. . .  .86,  202, 

207,  525,  605,  617,  651,  662,  663 
Revg.  37  Fed.  351. 

Jackson.    Dissenting  Brown,  Shiras. 
Koenan  v.  Drake,  101  Fed.  466;  41  C.  C.  A.  466 334 

First;  Colt,  Putnam,  Webb. 
Kokomo  v.  Kitselman,  189  U.  S.  8;  47  L.  Ed.  689;  23  S.  Ct.  521 ..  .  .197, 
Revg.  108  Fed.  632.  207,  680 

Fuller. 
Krajeuski  v.  Pharr,  105  Fed.  514;  44  C.  C.  A.  572 215,  219,  459,  622 

Fifth;   Pardee,  Shelby,  Maxey.   Dissenting  Pardee. 
Krementz  v.  Cottle,  148  U.  S.  556;  37  L.  Ed.  558;  13  S.  Ct.  719. . .  .622,  656 
Revg.  39  Fed.  323. 

Shiras. 
Kuhlman  v.  General,  147  Fed.  709;  78  C.  C.  A.  97 598 

Seventh;  Grosscup,  Baker,  Seaman. 
Kurtz  v.  Straus,  106  Fed.  414;  45  C.  C.  A.  366 714 

Third;    Dallas,  Gray,  Bradford. 

Lackawanna  v.  Davis-Colby,  131  Fed.  68;  65  C.  C.  A.  306 937 

Affg.  128  Fed.  453. 

Third;   Acheson,  Dallas,  Gray. 
Lafferty  v.  Acme,  138  Fed.  729;  71  C.  C.  A.  285 696 

Seventh;   Jenkins,  Grosscup,  Baker. 

Lafferty  v.  Acme,  143  Fed.  321 ;   74  C.  C.  A.  521 891 

Affg.  138  Fed.  729. 

Seventh;   Grosscup,  Baker. 
Lake  Shore  v.  National,  110  U.  S.  229;  28  L.  Ed.  129;  4  S.  Ct.  33. . .  .136, 

Blatchford.  230,  499 

Lalance  v.  Haberman,  59  Fed.  143;  8  C.  C.  A.  53 224 

Affg.  54  Fed.  517. 

Second ;   Wallace,  Lacombe,  Shipman. 
Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247.  .  .  .  136,  223,  344,  481,  634,  824 

Sixth;  Lurton,  Day,  Severens. 

Lambert  v.  Lidgerwood,  154  Fed.  372;  83  C.  C.  A.  350 380 

Revg.  and  modifying  150  Fed.  364. 

Third;  Dallas,  Gray,  Buffington. 
Lamson  v.  Godehard,  59  Fed.  776;   8  C.  C.  A.  265 212,  224 

Eighth;    Caldwell,  Thayer. 
Lamson  v.  Hillman,  123  Fed.  416;  59  C.  C.  A.  510 6C,  190,  375,  668 

Seventh;    Jenkins,  Grosscup,  Baker. 
Lane  v.  Lock,  150  U.  S.  193;   37  L.  Ed.  1049;    14  S.  Ct.  78. . .  .366,  729, 
Revg.  35  Fed.  289.  732,  751,  758 

Shiras. 
Lane  v.  Welds.  99  Fed.  286;   39  C.  C.  A.  528 386,  636 

Sixth;  Taft,  Lurton,  Day. 
Lanyon  v.  Brown,  115  Fed.  150;   53  C.  C.  A.  354 159,  579 

Eighth;  Caldwell,  Sanborn,  Thayer. 


liv  CASES    EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Lanyon  v.  Brown,  129  Fed.  912;  64  C.  C.  A.  344 226 

Eighth;   Sanborn,  Thayer. 

Lattimore  v.  Hardsocg,  121  Fed.  986;  58  C.  C.  A.  287 846 

Eighth;   Caldwell,  Sanborn,  Thayer. 

Lauman  v.  Urschel,  136  Fed.  190;  69  C.  C.  A.  206. 819 

Sixth ;  Lurton,  Severens,  Richards.    Per  Curiam. 
Lawther  v.  Hamilton,  124  U.  S.  1;   31  L.  Ed.  325;  8  S.  Ct.  342. . .  .194, 
Revg.  21  Fed.  811.  636,  756,  819 

Bradley. 

Lay  v.  Indianapolis,  120  Fed.  831 ;  57  C.  C.  A.  313 5,  178 

Seventh;  Jenkins,  Grosscup,  Bunn. 

Lee  v.  Penberthy,  109  Fed.  964;  48  C.  C.  A.  760 274 

Sixth;  Lurton,  Severens,  Clark. 

Leeds  v.  Victor,  154  Fed.  58 ;  83  C.  C.  A.  170 476,  477,  523 

See  146  Fed.  534;    148  Fed.  1022. 
Second;  Wallace,  Coxe,  Hough.    Dissenting  Wallace. 

Leggett  v.  Avery,  101  U.  S.  256;  25  L.  Ed.  865 871 

Bradley. 
Leggett  v.  Standard,  149  U.  S.  287;  37  L.  Ed.  737;   13  S.  Ct.  902. . .  .387, 
Affg.  38  Fed.  842.  522,  728,  729,  871,  889,  921 

Jackson. 

Lehigh  v.  Kearney,  158  U.  S.  461 ;  39  L.  Ed.  1055;  15  S.  Ct.  871 207 

Revg.  32  Fed.  320. 
Fuller. 

Lehigh  v.  Mellon,  104  U.  S.  112;  26  L.  Ed.  639 207,  399,  494 

Woods. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  26  L.  Ed.  939 629 

Woods. 

Leicester  v.  Macon,  116  Fed.  196;  53  C.  C.  A.  621 767 

Affg.  113  Fed.  844. 

Third;  Acheson,  Dallas,  Gray. 

Lein  v.  Myers,  105  Fed.  962;  45  C.  C.  A.  148 76,  391 

Revg.  97  Fed.  607. 

Second;    Lacombe,  Shipman. 

Lepper  v.  Randall,  113  Fed.  627;  51  C.  C.  A.  337 374 

Revg.  105  Fed.  975. 

Third;   Acheson,  Dallas,  Gray. 
LeRoy  v.  Tatham,  14  How.  156;   14  L.  Ed.  367.  . .  .639,  683,  685,  689,  690 
McLean.   Dissenting  Wayne,  Grier;   opinion  Nelson. 

LeRoy  v.  Tatham,  63  U.  S.  132;   16  L.  Ed.  366 866 

See  s.  c.  14  How.  156. 
McLean. 

Leslie  v.  Standard,  98  Fed.  827;  39  C.  C.  A.  314 132,  737 

Seventh;  Woods,  Bunn,  Allen. 

Letson  v.  Alaska,  130  Fed.  129;   64  C.  C.  A.  463 448,  642 

Modifying  119  Fed.  599. 

Ninth;   Gilbert,  Ross,  Morrow. 

Lewis  v.  Pennsylvania,  59  Fed.  129;  8  C.  C.  A.  41 202,  441 

Affg.  55  Fed.  877. 

Third;   Acheson,  Butler,  Green. 

Library  Bureau  v.  Macey,  148  Fed.  380;  78  C.  C.  A.  194 .698 

Revg.  in  part  134  Fed.  886. 

First;    Putnam,  Lowell,  Brown. 

Library  Bureau  v.  Yawman,  147  Fed.  245 ;  77  C.  C.  A.  387 120 

First;   Colt,  Putnam,  Aldrich.     Per  Curiam. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  lv 

[References  are  to  sections] 

Lincoln  v.  McWhirter,  142  Fed.  967;  74  C.  C.  A.  229 61,  88,  657 

Affg.  131  Fed.  860. 

Second;  Wallace,  Townsend,  Coxe. 

Littlefield  v.  Perry,  88  U.  S.  205;   22  L.  Ed.  577....  152,  153,  154,  160, 

Waite.  164,  167,  171,  173,  284,  290,  511,  721,  722,  765,  846 

Livingston  v.  Woodworth,  15  How.  546;   14  L.  Ed.  809. . .  .282,  305,  372, 

Daniel.  798,  837 

Lobel  v.  Cossey,  157  Fed.  664;   85  C.  C.  A.  142 585,  720 

Second;  Coxe,  Ward,  Noyes. 

Locklin  v.  Buck,  159  Fed.  434;   86  C.  C.  A.  414 623 

Affg.  148  Fed.  715. 

Second;   Lacombe,  Ward,  Noyes. 

Lockwood  v.  Wicks,  75  Fed.  118;  21  C.  C.  A.  257 116,  120,  550 

Appeal  from  order  dismissed. 

See  Gamewell  v.  Municipal,  61  Fed.  208. 
Eighth;  Caldwell,  Sanborn,  Thayer. 

Loew  v.  German-American,  107  Fed.  949;  47  C.  C.  A.  94 77,  476,  544,  546 

Affg.  103,  Fed.  303. 

Sixth;   Lurton,  Severens,  Clark. 

Loew  v.  Miller,  138  Fed.  886;    71  C.  C.  A.  266 441,  648 

Seventh;  Jenkins,  Grosscup,  Baker. 

Long  v.  Pope,  75  Fed.  835;  21  C.  C.  A.  533 212,  222,  601,  626 

Affg.  70  Fed.  855. 

First;   Colt,  Putnam,  Nelson. 

Look  v.  Smith,  148  Fed.  12;  78  C.  C.  A.  180 734 

Sixth;  Lurton,  Severens,  Richards. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. . .  .230,  317,  322,  398, 

Bradley.  410,  595,  634,  635,  807,  809,  812,  905,  907 

Los  Angeles  v.  Aeolian,  143  Fed.  880;    75  C.  C.  A.  88. .  .  .197,  372,  501, 

Ninth;   Gilbert,  Morrow,  Hawley.  629,  640 

Lourie  v.  Lenhart,  130  Fed.  122;  64  C.  C.  A.  456 373,  453,  459,  531 

Eighth;  Sanborn,  Thayer,  Hook. 
Lovell  v.  Cary,  147  U.  S.  623;  37  L.  Ed.  307;   13  S.  Ct.  472. . .  .617,  635, 
Revg.  37  Fed.  654.  654,  671,  818 

See  same  matter  24  Fed.  139;  24  Fed.  141;  27  Fed.  38;  31  Fed.  344. 
Blatchford. 

Lovell  v.  Johnson,  91  Fed.  160;  33  C.  C.  A.  426 207 

Affg.  82  Fed.  206. 

First;    Colt,  Webb,  Aldrich. 

Lowell  v.  Saco,  122  Fed.  632;  58  C  C.  A.  324 651 

Affg.  114  Fed.  497. 

First;  Colt,  Putnam,  Aldrich. 
Lowden  v.  Janesville,  148  Fed.  686;  78  C.  C.  A.  548. . .  .211,  223,  229,  671 
Affg.  141  Fed.  975. 

Seventh;  Grosscup,  Baker,  Seaman. 

Lowry  v.  Allen,  203  U.  S.  476;  51  L.  Ed.  281 ;  27  S.  Ct.  141 583 

Affg.  26  App.  D.  C.  8. 

McKenna.    Dissenting  Peckham,  Day. 

Lubin  v.  Stewart,  77  Fed.  303;  23  C.  C.  A.  176 89 

Revg.  75  Fed.  294. 

Third;   Dallas,  Butler,  Wales. 

Ludington  v.  Leonard,  127  Fed.  155;  62  C.  C.  A.  269. 827 

Affg.  119  Fed.  937.    See  106  Fed.  168. 
Second;  Lacombe,  Coxe,  Hazel. 

Lyons  v.  Drucker,  106  Fed.  416;  45  C.  C.  A.  368 201,  327,  903 

Second;  Wallace,  Lacombe. 


lvi  CASES    EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

MacColl  v.  Crampton,  95  Fed.  987;  37  C.  C.  A.  351 507 

Affg.  87  Fed.  731. 

First;    Colt,  Webb,  Aldrich. 

MacColl  v.  Knowles,  95  Fed.  982;  37  C.  C.  A.  346 . .  .903 

Affg.  87  Fed.  727. 

First ;  Colt,  Webb,  Aldrich. 

Magic  v.  Economy,  97  Fed.  87;   38  C.  C.  A.  56 207,  377,  690 

Seventh;  Brown,  Woods,  Jenkins. 

Maginn  v.  Standard,  150  Fed.  139;  80  C.  C.  A.  15 176,  305 

Seventh;   Baker,  Seaman,  Quarles. 
Magowan  v.  New  York,  141  U.  S.  332;  35  L.  Ed.  781;   12  S.  Ct,  62. .  .614, 
Affg.  27  Fed.  362.  626 

Blatchford. 

Mahler  v.  Animarium,  111  Fed.  530;  49  C.  C.  A.  431 116,  425,  645 

Eighth;   Sanborn,  Thayer,  Adams. 
Mahn  v.  Harwood,  112  U.  S.  354:   28  L.  Ed.  665;   5  S.  Ct,  174;   6  S.  Ct. 

451 • 308,  310,  313,  871,  877 

Bradley.   Dissenting  opinion  Miller. 

Mahoney  v.  Jenkins,  138  Fed.  404;  70  C.  C  A.  662 .468 

Revg.  135  Fed.  550. 

Third;  Acheson,  Dallas,  Gray. 

Mahoney  v.  Malcom,  143  Fed.  124;   74  C.  C.  A.  318 614,  631 

Seventh;  Grosscup,  Baker,  Seaman. 

Maitland  v.  Goetz,  86  Fed.  124;  29  C.  C.  A.  607 631,  875,  884 

Second;  Wallace,  Lacombe,  Shipman. 

Mallon  v.  Gregg,  137  Fed.  68;  69  C.  C.  A.  48 .378,  441,  473,  671,  672 

Affg.  126  Fed.  377. 

Eighth;  Sanborn,  Philips,  Riner. 

Mann  v.  Hoffman,  104  Fed.  245;  43  C.  C.  A.  514 441,  496,  527 

Affg.  96  Fed.  237. 

Seventh;  Woods,  Grosscup,  Seaman. 
Manning  v.  Cape  Ann,  108  U.  S.  462;  27  L.  Ed.  793;  2  S.  Ct,  860.  ..  .  .855, 
Woods.  857 

Marbury  v.  Madison,  1  Cranch.  137;  2  L.  Ed.  60 .748 

Marshall. 

Marchand  v.  Emken,  132  U.  S.  195;   33  L.  Ed.  332;    10  S.  Ct,  65.  . .  .186, 

Affg.  26  Fed.  629.  Blatchford.  682,  691 

Marden  v.  Campbell,  67  Fed.  809;    15  C.  C.  A.  26....  115,  116,  118,  138, 

See  64  Fed.  782.  139,  545 

First;  Colt,  Putnam,  Nelson. 

Marden  v.  Campbell,  79  Fed.  653;   25  C.  C.  A.  142 532,  579,  807 

See  64  Fed.  782;  revg.  70  Fed.  339. 
First;   Colt,  Putnam,  Nelson. 

Market  v.  Rowley,  155  U.  S.  621 ;  39  L.  Ed.  284;  15  S.  Ct,  224 734 

Shiras.    Dissenting  Brown. 
Marsh  v.  Nichols,  128  U.  S.  605;  32  L.  Ed.  538;  9  S.  Ct.  168. .. .  159,  742,  827 

Field. 
Marsh  v.  Seymour,  97  U.  S.  348;  24  L.  Ed.  963. .  .  .282,  409,  411,  455,  883 
Clifford. 

Martin  v.  Martin,  67  Fed.  786;    14  C.  C.  A.  642 384,  394 

Affg.  62  Fed.  272. 

First;  Colt,  Putnam,  Nelson. 

Martin  v.  Martin,  71  Fed.  519;   18  C.  C.  A.  234 789 

Affg.  and  app.  62  Fed.  272;  67  Fed.  786. 
First;   Colt,  Putnam,  Nelson.    Per  Curiam. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  Ivii 

[References  are  to  sections] 

Marvel  v.  Pearl,  133  Fed.  160;    66  C.'C.  A.  226 934 

Second;   Wallace,  Townsend,  Coxe. 

Mason  v.  Graham,  90  U.  S.  261 ;    23  L.  Ed.  86 290,  296 

Strong. 

Masseth  v.  Larkin,  119  Fed.  171 ;  56  C.  C.  A.  167 490 

Affg.  Ill  Fed.  409. 

Third;  Acheson,  Bradford. 

Mast  v.  Dempster,  82  Fed.  327;    27  C  C.  A.  191 2,  11,  18,  74,  190, 

Revg.  71  Fed.  701.  220,  316,  473,  629,  635,  655 

Eighth;  Caldwell,  Sanborn,  Thayer.   Dissenting  Thayer. 

Mast  v.  Iowa,  76  Fed.  816;  22  C.  C.  A.  586 877 

Affg.  68  Fed.  213. 

Eighth;   Caldwell,  Sanborn,  Thayer. 

Mast  v.  Rude,  53  Fed.  120;  3  C.  C.  A.  477 .600 

Seventh;    Gresham,  Jenkins,  Blodgett. 
Mast  v.  Stover,  177  U.  S.  485;   44  L.  Ed.  856;   20  3.  Ct.  708. .  .  .95,  250, 
Affg.  89  Fed.  333.  256,  257,  544,  617 

Discrediting  Mast  v.  Dempster,  82  Fed.  327. 
Brown. 
Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. . .  .112,  126,  286,  289,  292, 
Affg.  former  opinion  s.  c.  115  Fed.  886.  295,  298,  842 

Sixth;    Lurton,  Severens,  Richards. 
Matheson  v.  Campbell,  78  Fed.  910;  24  C.  C.  A.  284. . .  .238,  245,  519,  822, 
Revg.  69  Fed.  597 ;   77  Fed.  280.  904,  914 

Second;  Wallace,  Lacombe,  Shipman. 

Matthews  v.  Boston,  105  U.  S.  54;    26  L.  Ed.  1022 871,  872 

Bradley. 
Matthews  v.  Iron  Clad,  124  U.  S.  347;  31  L.  Ed.  477;  8  S.  Ct.  639. . .  .872,  876 
Affg.  22  Blatchf.  427. 
Gray. 

Maurer  v.  Dickerson,  113  Fed.  870;  51  C.  C.  A.  494 397,  821,  824,  903 

Affg.  108  Fed.  233. 

Third;  Acheson,  Dallas,  Gray. 
May  v.  Juneau,  137  U.  S.  408;  34  L.  Ed.  729;  11  S.  Ct.  102. . .  .213,  734,  799 
Affg.  30  Fed.  241. 
Blatchford. 

Mayo  v.  Jenckes,  133  Fed.  527;  66  C.  C.  A.  503 54 

Affg.  121  Fed.  110. 

First;  Colt,  Putnam,  Aldrich. 

Mayor  v.  American,  60  Fed.  1016;  9  C.  C  A.  336 158 

Revg.  56  Fed.  149;  see  s.  c.  70  Fed.  853,  which  reversed  68  Fed.  227. 
Revg.  on  question  of  evidence  of  title,  Brooks  v.  Jenkins,  3  McLean, 
432;  Parker  v.  Haworth,  4  McLean,  370;   Lee  v.  Blandy,  1  Bond. 
361;  Dederick  v.  Agricultural,  26  Fed.  763;  National  v.  American, 
55  Fed.  488. 
Second;  Wallace,  Lacombe,  Shipman. 

Mayor  v.  American,  70  Fed.  853;   17  C.  C.  A.  467 672 

Revg.  56  Fed.  419;   see  60  Fed.  1016;  revg.  68  Fed.  227. 
Second;   Wallace,  Lacombe,  Shipman. 

Mayor  v.  Holmquist,  145  Fed.  179;  76  C.  C.  A.  149 436 

Seventh;   Baker,  Seaman,  Bethea. 

Mayor  v.  Ransom,  64  U.  S.  487;    16  L.  Ed.  515 280,  297 

Grier. 
McAleer  v.  United  States,  150 U.  S.  424;  37  L.  Ed.  1130;  14  S.  Ct.  160. . .  .756 
Affg.  25  Ct.  CI.  238.  Fuller. 


lviii  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

McBride  v.  Kingman,  97  Fed.  217 ;  38  C.  C.  A.  123 9,  195,  376 

Affg.  72  Fed.  908. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

McCafferty  v.  Celluloid,  104  Fed.  305;  43  C.  C.  A.  540 121 

Second.    Per  Curiam. 
McCarty  v.  Lehigh,  160  U.  S.  110;   40  L.  Ed.  358;    16  S.  Ct.  240. . .  .195, 
Brown.  206,  207,  383 

McClain  v.  Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800;   12  S.  Ct.  76. . .  .12, 

228,  244,  614,  635,  656 
Affg.  33  Fed.  284. 
Brown. 

McClurg  v.  Kingsland,  1  How.  202;  11  L.  Ed.  102 7,  166,  268,  368,  815 

Baldwin. 
McCormick  v.  Aultman,  69  Fed.  371;    16  C.  C.  A.  259....  197,  221,  247, 
Revg.  58  Fed.  773.  375,  497,  754,  911 

Sixth;  Taft,  Lurton,  Severens. 
McCormick  v.  Aultman,  169  U.  S.  606;  42  L.  Ed.  875;  18  S.  Ct.  443. . .  .26, 
Revg.  58  Fed.  778.  848,  880,  883,  887 

Brown. 

McCormick  v.  Talcott,  61  U.  S.  402;   15  L.  Ed.  930 395,  434,  473 

Grier.  Dissenting  opinion  Daniel. 

McCoy  v.  Nelson,  121  U.  S.  484;   30  L.  Ed.  1017;   7  S.  Ct.  1000. . .  .562, 

Blatchforb.  791, 807 

McCreary    v.   Pennsylvania,  141  U.  S.  459;   35  L.  Ed.  817;    12  S.  Ct.  40 

Affg.  5  Fed.  367.  . . .  .298,  356,  842,  845,  846 

Brown. 

McCune  v.  Baltimore,  154  Fed.  63;  83  C.  C.  A.  175 285 

Third;  Dallas,  Gray,  Buffington. 

McDowell  v.  Kurtz,  77  Fed.  206;   23  C.  C.  A.  119 459,  562,  716 

Third;  Acheson,  Dallas,  Wales. 

McDuffee  v.  Hestonville,  162  Fed.  36;   89  C.  C.  A.  76 154,  927 

Revg.  158  Fed.  827. 
Third;  Dallas,  Grey,  Buffington. 

McKay  v.  Dizer,  61  Fed.  102;   9  C.  C.  A.  382 380,  635 

Revg.  58  Fed.  353. 

First;  Colt,  Nelson,  Webb. 

McMichael  v.  Ruth,  128  Fed.  706;    63  C.  C.  A.  304 73,  469 

Revg.  123  Fed.  888. 

Third;  Acheson,  Dallas,  Grav. 
McMurray  v.  Mallory,  111  U.  S.  97;"  28  L.  Ed.  365;  4  S.  Ct.  375. . .  .473, 
Woods.  871,   882 

McNeely  v.  Williames,  96  Fed.  978;  37  C.  C.  A.  641 .. .  .59,  252,  292,  342,  727 
Revg.  64  Fed.  766. 
Third;  Acheson,  Buffington,  Bradford. 

McSherry  v.  Dowagiac,  101  Fed.  716;  41  C.  C.  A.  627 376 

Sixth;  Taft,  Lurton,  Day. 
McSherry  v.  Dowagiac,  160  Fed.  948;  89  C.  C.  A.  26. . .  .283,  481,  837,  843 
See  101  Fed.  716;  127  Fed.  143;  118  Fed.  136;  121  Fed.  988;  155  Fed. 
524;  162  Fed.  472;  162  Fed.  479. 
Sixth;  Lurton,  Richards,  Cochran.   Dissenting,  Richards. 

Mellon  v.  D.  L.  &  W.  154  U.  S.  673;  26  L.  Ed.  929;  14  S.  Ct.  1194 158, 

Woods.  394 

Menasha  v.  Dodge,  85  Fed.  971 ;  29  C.  C.  A.  508 564 

See  Dodge  v.  Post,  76  Fed.  807. 
Seventh;  Woods,  Jenkins,  Showalter. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  lix 

[References  are  to  sections] 

Merrill  v.  Yeomans,  94  U.  S.  568;  24  L.  Ed.  235 247,  772,  822,  905 

Miller.    Dissenting  Clifford. 

Merrill-Soule  v.  Star,  159  Fed.  142;  86  C.  C.  A.  332 672 

Affg.  153  Fed.  762. 

Second;  Lacombe,  Coxe,  Ward. 
Metallic  v.  Brown,  104  Fed.  345;    43  C.  C.  A.  568 118,  226 

Eighth;  Caldwell,  Sanborn,  Thayer. 
Metallic  v.  Brown,  110  Fed.  664;   49  C.  C.  A.  147 195,  273 

Eighth;  Sanborn,  Thayer. 
Metropolitan  v.  Providence,  87  U.  S.  342;   22  L.  Ed.  303 668 

Strong. 
Mevs  v.  Conover,  131  U.  S.  cxlii,  app.;  23  L.  Ed.  1008 840,  887 

Strong. 
Meyer  v.  Pritchard,  131  U.  S.  ccix,  app. ;  23  L.  Ed.  961 887 

Waite. 
Michigan  v.  Consolidated,  67  Fed.  121 ;  14  C.  C.  A.  232 55,  809,  812,  903 

Sixth;  Taft,  Lurton,  Severens. 
Millard  v.  Chase,  108  Fed.  399;   47  C.  C.  A.  429 207,  681,  705 

First;  Colt,  Putnam,  Webb. 
Miller  v.  Brass  Co.  104  U.  S.  350;  26  L.  Ed.  783. . .  .12,  873,  883,  884,  885 

Bradley. 
Miller  v.  Eagle,  151  U.  S.  186;   38  L.  Ed.  121;   14  S.  Ct.  310. . .  .86,  348, 

356,  378,  525,  528,  651,  680,  771 
Revg.  41  Fed.  351. 

Jackson. 
Miller  v.  Foree,  116  U.  S.  22;  29  L.  Ed.  552;  6  S.  Ct.  204 676 

Bradley. 

Miller  v.  Mawhinney,  105  Fed.  523;  44  C.  C.  A.  581 78,  908 

Affg.  98  Fed.  248. 

First;  Colt,  Putnam,  Webb. 

Millheim  v.  Western,  95  Fed.  152;  37  C.  C.  A.  38 438 

Affg.  88  Fed.  505. 

Third;   Acheson,  Dallas,  Kirkpatrick. 
Milligan  v.  Upton,  97  U.  S.  3;  24  L.  Ed.  985 775 

Field. 

Milloy  v.  Thomson-Houston,  148  Fed.  843;  78  C.  C.  A.  533 871,  876 

See  71  Fed.  192;  78  Fed.  363;  78  Fed.  139;  80  Fed.  712; 
82  Fed.  461;   101  Fed.  121;  135  Fed.  759. 

Sixth;  Lurton,  Severens,  Cochran. 

Mills  v.  Russell,  144  Fed.  700;  75  C.  C  A.  516 600 

Affg.  136  Fed.  874. 

Second;   Lacombe,  Coxe.    Per  Curiam. 

Mills  v.  Whitehurst,  72  Fed.  496;   19  C.  C.  A.  130 166,  167 

Affg.  65  Fed.  996.    See  56  Fed.  589. 

Sixth;  Taft,  Lurton,  Hammond. 
Milner  v.  Yesbera,  111  Fed.  386;  49  C.  C.  A.  397 323 

Sixth;   Lurton,  Day,  Severens. 

Milner  v.  Yesbera,  133  Fed.  916;  67  C.  C.  A.  210 459,  634 

See  111  Fed.  386. 

Sixth;   Lurton,  Severens,  Richards. 
Milwaukee  v.  Brunswick-Balke,  126  Fed.  171;  61  C.  C.  A.  175.  . .  .68,  163, 

468,  603,  680,  926 

Seventh;  Jenkins,  Baker,  Seaman. 
Minnesota  v.  Dowagiac,  126  Fed.  747;  61  C.  C.  A.  352 115,  538 

Eighth;  Sanborn,  Van  Devanter. 


lx  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Mississippi  v.  Franzen,  143  Fed.  501;  74  C.  C.  A.  135 365,  411,  682 

Revg.  138  Fed.  924. 

Third;   Acheson,  Dallas,  Gray. 

Mitchell  v.  Ewart,  81  Fed.  390;  26  C.  C.  A.  443 454 

Affg.  78  Fed.  485. 

Third;  Acheson,  Butler,  Buffington. 
Mitchell  v.  Hawley,  83  U.  S.  544;  21  L.  Ed.  322. . .  .418,  757,  769,  926,  927 

Mitchell  v.  Tilghman,  86  U.  S.  287;   22  L.  Ed.  125.  .  .  .222,  229,  230,  261, 

488,  489,  500,  501,  629,  641,  679,  702 
Revg.  9  Blatchf.  1 ;  s.  c.  4  Fish.  P.  C  599;  reversed  on  merits  102  U.  S. 
708. 
Clifford.   Dissenting  Swayne,  Strong,  Bradley. 

Moffitt  v.  Garr,  66  U.  S.  273;  17  L.  Ed.  207 887,  889 

Nelson. 

Moffitt  v.  Rogers,  106  U.  S.  423;  27  L.  Ed.  76;  1  S.  Ct.  70 871 

Woods. 

Monroe  v.  Anderson,  58  Fed.  398;  7  C.  C.  A.  272 281,  330,  331 

Revg.  55  Fed.  398. 
Third;  Shiras,  Acheson,  Dallas. 

Moore  v.  Eggers,  107  Fed.  491 ;   46  C  C.  A.  425 211,  241 

Sixth;   Lurton,  Severens,  Clark. 
Moore  v.  Marsh,  74  U.  S.  515;  19  L.  Ed.  37 164,  169,  796 

IT  TT^T^ORT) 

Morey  v.  Lockwood,  75  U.  S.  230;   19  L.  Ed.  339 459,  884 

Nelson. 
Morgan  v.  Albanv,  152  U.  S.  425;   38  L.  Ed.  500;    14  S.  Ct,  627. . .  .207, 
Affg.  40  Fed.  577.  477,  515,  524,  769,  771,  871 

Brown. 
Morgan  v.  Daniels,  153  U.  S.  120;   38  L.  Ed.  657;    14  S.  Ct.  772.  .  .  .584, 
Revg.. 42  Fed.  451.  78"),  810 

Brewer. 

Morgan  v.  Pennsylvania,  126  Fed.  952;  62  C.  C.  A.  126 207 

Third;  Acheson,  Dallas,  Gray. 
Morley  v.  Lancaster,  129  U.  S.  263;    32  L.  Ed.  715;   9  S.  Ct.  299.  .  .  .230, 
Revg.  23  Fed.  344.  373,  375,  436,  497,  506,  768,  815 

Blatchford. 

Morrill  v.  Hardware,  142  Fed.  756;  74  C.  C.  A.  18 398 

Affg.  131  Fed.  882. 

Second;  Lacombe,  Townsend,  Coxe. 

Morrin  v.  Lawler,  99  Fed.  977;   40  C.  C.  A.  204 356 

Modifying  90  Fed.  285. 

Second;   Wallace,  Lacombe,  Shipman. 

Morrin  v.  White,  143  Fed.  519;  74  C.  C.  A.  466 523,  524,  573 

Modifying  138  Fed.  68;   see  90  Fed.  285;  99  Fed.  977. 
Second;   Wallace,  Townsend,  Coxe. 

Morris  v.  McMillin,  112  U.  S.  244;  28  L.  Ed.  702;  5  S.  Ct.  218 596 

Woods. 

Morton  v.  American,  129  Fed.  916;    64  C.  C.  A.  367 792 

Third;   Acheson,  Dallas,  Grav. 
Mosher  v.  Joyce,  51  Fed.  441;   2  C.  C.  A.  322.  .  .  .290,  297,  298,  844,  846 
Affg.  45  Fed.  205;  31  Fed.  557. 
Sixth;   Brown,  Jackson,  Taft. 
Mosler  v.  Mosler,  127  U.  S.  354;  32  L.  Ed.  182;  8  S.  Ct.  1148. . .  .601,  773,  822 
Affe.  22  Fed.  901.  Blatchford. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxi 

[References  are  to  sections] 

Mossberg  v.  Nutter,  124  Fed.  966;  60  C.  C.  A.  98. 890 

See  118  Fed.  168. 

First;   Colt,  Putnam,  Aldrich. 

Mossberg  v.  Nutter,  135  Fed.  95;   68  C.  J.  A.  257 223 

Affg.  128  Fed.  55. 

First;  Colt,  Putnam,  Aldrich. 

Mott  v.  Standard,  53  Fed.  819;   4  C.  C.  A.  28 207,  442,  595 

Affg.  51  Fed.  81;  see  48  Fed.  345. 
Third;  Dallas,  Butler,  Wales. 

Mott  v.  Standard,  159  Fed.  135;  86  C.  C.  A.  325 631,  693 

Affg.  152  Fed.  635. 

Third;  Dallas,  Gray,  Buffington. 

Motsinger  v.  Hendricks,  149  Fed.  995;   79  C.  C.  A.  505 442 

Seventh;  Grosscup,  Baker,  Seaman. 

Mowry  v.  Whitney,  81  U.  S.  434;  20  L.  Ed.  858 , 26 

Miller. 

Mowry  v.  Whitney,  81  U.  S.  620;    20  L.  Ed.  860. .  .  .230,  284,  290,  298, 

Strong.  519,  683,  815,  847,  914,  915 

Muller  v.  Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. . .  .211,  245,  376,  525,  596, 

Affg.  69  Fed.  738.  598,  663,  674 

Sixth;  Taft,  Lurton,  Hammond. 

Municipal  v.  National,  107  Fed.  284;  46  C.  C.  A.  270 354 

Revg.  and  affg.  97  Fed.  810:  99  Fed.  569.  ' 
Second;   Wallace,  Lacombe,  Shipman. 

Munson  v.  Mayor,  124  U.  S.  601;  31  L.  Ed.  586;  8  S.  Ct.  622 591 

Revg.  18  Blatchf.  237;  21  Blatchf.  342. 
Gray. 
Murphy  v.  Excelsior,  76  Fed.  965;  22  C.  C.  A.  658. . .  .224,  376,  473,  517,  608 
Affg.  70  Fed.  491. 

Eighth;   Caldwell,  Sanborn,  Thayer. 

Murrav  v.  Continental,  149  Fed.  989;   79  C.  C.  A.  499 159,  615 

Revg.  126  Fed.  533. 

Third;  Dallas,  Gray,  Cross. 

Murray  v.  Orr,  153  Fed.  369;  82  C.  C.  A.  445 283,  805,  827 

Seventh;   Grosscup,  Baker,  Seaman.    Per  Curiam. 

Myers  v.  Sternheim,  97  Fed.  625;   38  C.  C.  A.  345 332 

Ninth;   Gilbert,  Ross,  Hawley. 

Nassau  v.  Sprague,  95  Fed.  415;  37  C.  C.  A.  146 537 

Affg.  91  Fed.  786. 

Second;  Wallace,  Shipman.    Per  Curiam. 

Nathan  v.  D.  L.  &  W.,  157  Fed.  685;  85  C.  C.  A.  453 91 

Revg.  146  Fed.  252. 

Second ;  Lacombe,  Ward,  Noyes.    Per  Curiam. 

Nathan  v.  Howard,  143  Fed.  889;   75  C.  C.  A.  97 460,  485 

Sixth;  Lurton,  Severens,  Richards. 

National  v.  American,  53  Fed.  367;  3  C.  C.  A.  559 252,  379,  468, 

608,  641 
Revg.  47  Fed.  212;    disapproving  National  v.  Boston, 

45  Fed.  481;  approved  in  Capitol  v.  National,  70  Fed.  709. 
Third;  Dallas,  Wales,  Buffington. 

National  v.  Automatic,  105  Fed.  670;  44  C.  C.  A.  664 542 

First;   Colt,  Putnam,  Webb.    Per  Curiam. 

National  v.  Belcher,  71  Fed.  876;    18  C.  C.  A.  375 78,  398 

Modifying  68  Fed.  665. 

Third;   Acheson,  Butler,  Wales. 


hdi  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

National  v.  Boston,  156  U.  S.  502;  39  L.  Ed.  511;  15  S.  Ct.  434. . .  .651,  671 
Brown. 

National  v.  Elkhart,  123  Fed.  431 ;  59  C.  C.  A.  471 447 

Revg.  115  Fed.  328. 

Seventh;   Jenkins,  Grosscup,  Bunn. 

National  v.  Elsas,  86  Fed.  917;  30  C.  C.  A.  487 283,  674,  777,  830 

Affg.  65  Fed.  1001 ;  81  Fed.  197. 
Second;    Wallace,  Shipman. 
National,  Ex  parte,  201  U.  S.  156;  26  S.  Ct.  404. . .  .115,  116,  304,  540,  544 
Brewer. 

National  v.  General,  159  Fed.  934;  87  C.  C.  A.  462 622 

Revg.  145  Fed.  193. 

Seventh;   Baker,  Kohlsaat,  Anderson.    Per  Curiam. 

National  v.  Grobet,  153  Fed.  905;  82  C.  C.  A.  651 478 

Revg.  148  Fed.  385. 

Second;   Wallace,  Lacombe,  Townsend. 
National  v.  Hedden,  148  U.  S.  482;   37  L.  Ed.  529;   13  S.  Ct.  680. . .  .239, 
Affg.  36  Fed.  317.  606,  624,  635 

Brown. 

National  v.  Hench,  83  Fed.  36;  27  C.  C.  A.  349 744 

Third;   Dallas,  Butler,  Kirkpatrick. 

National  v.  Interchangeable,   106  Fed.  693;    45  C.  C.  A.  544 74,  94, 

207,  222,  228,  234,  374,  378,  426,  443,  459,  468,  473,  507,  602, 

629,  631,  635,  636,  674,  741,  919 
Affg.  and  revg.  in  part  99  Fed.  758;  99  Fed.  777. 
Eighth;  Caldwell,  Sanborn,  Thaver. 

National  v.  Lambert,  142  Fed.  164;  73  C.  C.  A.  382 851 

Affg.  125  Fed.  388. 

Seventh;  Grosscup,  Baker,  Seaman. 

National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372 132,  401,  406,  481 

First;  Putnam,  Brown,  Lowell. 

National  v.  Merrill,  49  Fed.  157;  1  C.  C.  A.  214 696 

Sixth;  Brown,  Jackson,  Sage. 

National  v.  New  Columbus,  129  Fed.  114;    63  C.  C.  A.  616....  161,  166, 

Sixth;  Lurton,  Severens,  Richards.  167,  179 

National  v.  New  England,  151  Fed.  19;   80  C.  C.  A.  485. . .  .195,  227,  240, 

Revg.  139  Fed.  643.  631,  676,  775 

Second;  Wallace,  Coxe,  Holt. 

National  v.  New  England,  153  Fed.  184;  82  C.  C.  A.  359 816 

Second;  Wallace,  Coxe,  Holt. 

National  v.  Polk,  121  Fed.  742;  58  C.  C.  A.  24 496,  797 

Ninth;   Gilbert,  Ross,  Morrow. 

National  v.  Powers,  160  Fed.  460;  87  C.  C.  A.  444 596 

Revg.  152  Fed.  984. 

Seventh;  Grosscup,  Baker,  Seaman. 

National  v.  Quick,  74  Fed.  236;  20  C.  C.  A.  410 90,  256 

Affg.  67  Fed.  130.    See  Reed  v.  Smith,  40  Fed.  882. 
Seventh;   Woods,  Jenkins,  Showalter. 

National  v.  Robertson,  104  Fed.  552;   44  C.  C.  A.  29 550 

Second;   Lacombe,  Shipman.    Per  Curiam. 

National  v.  Roebling's,  158  Fed.  99;  85  C.  C.  A.  567 207,  496 

Second;  Lacombe,  Coxe,  Noves.    Per  Curiam. 

National  v.  Schlegel,  128  Fed.  733;  "64  C.  C.  A.  594 513,  722,  899 

Revg.  117  Fed.  624. 

Eighth;   Sanborn,  Thayer,  Van  Devanter. 


CASES    EXCERPTED,    WITH   ANNOTATIONS  lxiii 

[References  are  to  sections] 

National  v.  Stecher,  81  Fed.  395;   26  C.  C.  A.  448 344,  345 

Affg.  77  Fed.  828. 

Second;  Wallace,  Lacombe,  Shipman. 

National  v.  Stolts,  135  Fed.  534;   68  C.  C.  A.  84 480,  890 

Affg.  127  Fed.  158. 

Second;  Wallace,  Lacombe,  Townsend. 

National  v.  Stolts,  157  Fed.  392;  85  C.  C.  A.  300 74 

Revg.  153  Fed.  765. 

Second;  Lacombe,  Coxe,  Ward. 

National  v.  Swift,  104  Fed.  87;  43  C.  C.  A.  421 92,  822,  824 

Affg.  100  Fed.  451. 

Seventh;  Woods,  Grosscup,  Seaman. 

National  v.  Wheeler,  79  Fed.  432;   24  C.  C.  A.  663 895 

Revg.  72  Fed.  185. 

Second;    Wallace,  Lacombe,  Shipman. 

National  v.  Willcox,  74  Fed.  557;  20  C.  C.  A.  654 760 

Third:  Acheson,  Wales,  Green. 

Nelson  v.  Farmer,  95  Fed.  145;  37  C.  C.  A.  32 357 

Modifying  91  Fed.  418. 

Second;  Wallace,  Lacombe,  Shipman. 

Neptune  v.  National,  127  Fed.  563;  62  C.  C.  A.  345 437,  676,  908 

Revg.  122  Fed.  75. 
Third;  Acheson,  Gray,  McPherson. 

Newark  v.  Ryan,  102  Fed.  693;  42  C.  C.  A.  594 207,  360,  387,  592,  807 

Revg.  96  Fed.  100. 

Third;   Acheson,  Dallas,  Gray. 

New  Departure  v.  Bevin,  73  Fed.  469;   19  C.  C.  A.  534 85,  672 

Revg.  64  Fed.  859. 

Second;  Wallace,  Lacombe,  Shipman. 

New  Departure  v.  Sargent,  127  Fed.  152;  62  C.  C.  A.  266 929 

Affg.  118  Fed.  41;  see  73  Fed.  469. 
Second;  Lacombe,  Coxe,  Holt. 

New  England  v.  Sturtevant,  150  Fed.  131 ;  80  C.  C.  A.  85 65 

Revg.  140  Fed.  866. 

Second;  Lacombe,  Townsend,  Coxe. 

Newhall  v.  McCabe,  125  Fed.  919;  60  C.  C.  A.  629 567 

Revg.  117  Fed.  621. 

Second;  Wallace,  Lacombe,  Townsend. 
New  Process  v.  Maus,  122  U.  S.  413;  30  L.  Ed.  1193;  7  S.  Ct.  1304. . . .  148, 
Revg.  20  Fed.  725.  Blatchford.  626,  638,  819 

Newton  v.  Buck,  77  Fed.  614;  23  C.  C.  A.  355 151 

Revg.  72  Fed.  777. 

Second;  Lacombe,  Shipman.    Per  Curiam. 
Newton  v.  Furst,  119  U.  S.  373;  30  L.  Ed.  442;  7  S.  Ct.  369. . .  .224,  375,  871 
Affg.  11  Biss.  405.  Blatchford. 

New  York  v.  Hollingsworth,  56  Fed.  224;   5  C.  C.  A.  490 574,  637 

Affg.  48  Fed.  562. 

First;  Colt,  Putnam,  Webb. 

New  York  v.  New  Jersey,  53  Fed.  810;   4  C.  C.  A.  21 331,  337 

Revg.  48  Fed.  556;  see  30  Fed.  785;  see  New  York  v.  New  Jersey,  137 
U.  S.  445. 
Second;   Lacombe,  Shipman. 
New  York  v.  New  Jersey,  137  U.  S.  445 ;  34  L.  Ed.  741 ;  11  S.  Ct.  193 ... .  329, 
Revg.  30  Fed.  785.  707,  791 

Bradley. 


lxiv  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

New  York  v.  Niagara,  80  Fed.  924;  26  C.  C.  A.  252 35 

Affg.  77  Fed.  900. 

Second;   Wallace,  Lacombe,  Shipman.     Dissenting  Wallace. 

New  York  v.  Sierer,  158  Fed.  819;  86  C.  C.  A.  79 88,  636 

Affg.  149  Fed.  756. 

Second;   Lacombe,  Ward,  Noyes. 

Ney  v.  Ney,  69  Fed.  405;  16  C.  C.  A.  293 680 

Sixth;   Taft,  Lurton,  Severens. 

Nicholson  v.  Jenkins,  81  U.  S.  452;    20  L.  Ed.  777 154,   173 

Davies. 

Noonan  v.  Chester,  99  Fed.  90;    39  C.  C.  A.  426 376,  385 

Sixth;  Taft,  Lurton,  Dav. 

North  Jersey  v.  Brill,  134  Fed/ 580;    67  C.  C.  A.  380 695,  812 

Revg.  124  Fed.  778;  see  125  Fed.  526. 
Third;   Acheson,  Dallas,  Gray. 
Norton  v.  Jensen,  49  Fed.  859;   1  C.  C.  A.  452.  .  .  .223,  374,  398,  459,  497, 

506,  643,  865 
See   Norton  v.   Can   Co.   45   Fed.   637;  modified   in   Wheaton  v. 
Norton,  70  Fed.  833. 
Ninth;  Hanford,  Hawley  and  Morrow. 
Norton  v.  Jensen,  90  Fed.  415;  33  C,  C.  A.  141 .. .  .207,  354,  375,  473,  893 
Ninth;  Ross,  Morrow,  Hawley. 

Norton  v.  San  Jose,  79  Fed.  793;  25  C.  C.  A.  194 532,  893 

See  70  Fed.  833. 

Ninth;   Ross,  Hawley,  Morrow. 

Norton  v.  San  Jose,  83  Fed.  512;  27  C.  C.  A.  576 31 

Ninth;   Ross,  Morrow,  Hawley. 

Nutter  v.  Brown,  98  Fed.  892;    39  C.  C.  A.  332 627,  904 

First;   Colt,  Putnam,  Webb. 

O'Brien  v.  Foster,  159  Fed.  710;   86  C.  C.  A.  464 91,  253 

Affg.  153  Fed.  585. 

First;  Colt,  Putnam,  Aldrich. 
Office  v.  Fenton,  174  U.  S.  492;  43  L.  Ed.  1058;   19  S.  Ct.  641. . .  .597,  710 
Affg.  Mfg.  Co.  v.  Chose,  73  Fed.  831;   84  Fed.  893. 
Revg.  12  App.  D.  C.  201. 
Brown. 

O'Leary  v.  Utica,  144  Fed.  399;   75  C.  C.  A.  377 496,  700 

Modifying  139  Fed.  330. 

Second;   Lacombe,  Townsend,  Coxe. 

Olin  v.  Timkin,  155  U.  S.  141 ;  39  L.  Ed.  100;   15  S.  Ct.  49 871 

Revg.  37  Fed.  205.  Fuller. 

Oliver  v.  Rumford,  109  U.  S.  75;  27  L.  Ed.  862;  3  S.  Ct.  61. . .  .41,  165,  751 
Blatchford. 

Olmsted  v.  Andrews,  77  Fed.  835;  23  C.  C.  A.  488 207,  601,  623,  624,  636 

Seventh;  Jenkins,  Bunn,  Grosscup. 

Oregon  v.  Excelsior,  132  U.  S.  215;  33  L.  Ed.  344;   10  S.  Ct.  54 888 

Blatchford. 
O'Reilly  v.  Morse,  15  How.  62;   14  L.  Ed.  601 .. .  .82,  88,  245,  342,  344,  423, 
424,  434,  439,  459,  639,  683,  690,  795,  811,  902,  915 
Taney.    Dissenting  Wavne,  Nelson,  Grier. 
O'Rourke  v.  McMullen,  160  Fed.  933;   88  C.  C.  A.  115....  107,  190,  222, 
Revg.  150  Fed.  338.  635,  792 

Second;   Lacombe,  Coxe,  Ward. 

Ward  writing  opinion   on   first   hearing,   affg.   court   below.      Coxe 
writing  opinion  on  rehearing,  revg.  court  below. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxv 

[References  are  to  sections] 

Osgood  v.  Metropolitan,  75  Fed.  670;  21  C.  C.  A.  491 .. .  .398,  595,  638,  706 
Affg.  69  Fed.  620. 

First;  Colt,  Putnam,  Nelson. 

Otis  v.  Portland,  127  Fed.  557;  62  C.  C.  A.  339 357,  358,  361 

Affg.  119  Fed.  928. 

First;  Colt,  Aldrich,  Brown. 
Overweight  v.  Improved,  94  Fed.  155;    36  C.  C.  A.  125....  12,  378,  397, 
Affg.  86  Fed.  338.  398,  406,  411,  473,  734 

Ninth;  Gilbert,  Ross,  Hawley. 

Overweight  v.  Vogt,  102  Fed.  957;  43  C.  C.  A.  80 675 

Sixth;   Lurton,  Day,  Severens. 

Pacific  v.  Alaska,  100  Fed.  462;  40  C.  C.  A.  494 523,  532,  544,  556,  557 

Affg.  93  Fed.  672. 

Ninth;  Gilbert,  Ross,  Hawley. 
Packard  v.  Lacing,  70  Fed.  66;    16  C.  C.  A.  639. . .  .20,  67,  629,  636,  782 
Mod.  67  Fed.  115. 

First;  Colt,  Putnam,  Nelson. 

Packet  v.  Sickels,  65  U.  S.  333;   16  L.  Ed.  650 315,  893,  894 

Campbell. 

Packet  v.  Sickels,  72  U.  S.  580;  18  L.  Ed.  550 921 

Nelson.   Dissenting,  Miller. 

Packet  v.  Sickels,  86  U.  S.  61 1 ;  22  L.  Ed.  203 283,  287,  292 

IYTtt  t  ttt? 

Packing  Company  Cases,  105  U.  S.  566;  26  L.  Ed.  1172 667 

Woods. 

Paine  v.  Snowden,  50  Fed.  776;  1  C.  C.  A.  122 334 

Affg.  46  Fed.  189. 

Third;  Acheson,  Wales,  Green. 

Paine  v.  Trask,  56  Fed.  233;  5  C.  C.  A.  497 396 

Affg.  56  Fed.  231. 

First;   Putnam,  Nelson,  Webb. 

Palmer  v.  Brown,  92  Fed.  925;  35  C.  C.  A.  86 353,  354 

Revg.  84  Fed.  454. 

First;  Colt,  Brown,  Lowell. 

Palmer  v.  Corning,  156  U.  S.  342;  39  L.  Ed.  445;  15  S.  Ct.  381 608,  629 

Waite. 

Palmer  v.  Lozier,  90  Fed.  732;  33  C.  C.  A.  255 353,  355,  587 

Revg.  84  Fed.  659. 
Sixth;  Taft,  Severens,  Clark. 

Palmer  v.  McDermaid,  54  Fed.  509;'4  C.  C.  A.  489 646 

Seventh;  Gresham,  Woods,  Bunn.    Per  Curiam. 
Panzl  v.  Battle  Island,  138  Fed.  48;  70  C.  C.  A.  474. .  .  .398,  484,  892,  905, 
Revg.  in  part  132  Fed.  607.  909,  914 

Second ;  Wallace,  Townsend,  Coxe. 

Paper  Bag  Cases,  105  U.  S.  766;  26  L.  Ed.  959 273,  418,  764,  765,  796 

Waite. 

Pardy  v.  Hooker,  148  Fed.  631 ;  78  C.  C.  A.  403 369 

Ninth;  Gilbert,  Ross,  DeHaven. 

Park  v.  Hartman,  153  Fed.  24;  82  C.  C.  A.  158 714,  744,  767,  898 

Revg.  145  Fed.  358. 

Sixth;  Lurton,  Severens,  Richards. 

Parker  v.  Yale,  123  U.  S.  87;  31  L.  Ed.  100;  8  S.  Ct.  38 871,  878,  886 

Affg.  21  Blatchf.  485.  Blatchford. 

Parks  v.  Booth,  102  U.  S.  96;   26.  L.  Ed.  54. .  .  .245,  276,  284,  484,  576, 
Clifford.  611,629,855,917 


lxvi  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Parlin  v.  Moline,  89  Fed.  329;   32  C.  C.  A.  221 77,  103 

Revg.  84  Fed.  349. 

Seventh;  Woods,  Showalter,  Bunn. 

Parramore  v.  Siegel-Cooper,  143  Fed.  516;  74  C.  C.  A.  386 86,  398,  460 

See  114  Fed.  97;    186  U.  S.  484;    116  Fed.  1022;    133  Fed.  230; 
196  U.  S.  641. 
Second ;  Wallace,  Coxe,  Holt. 

Parramore  v.  Taylor,  114  Fed.  97;  52  C.  C.  A.  45 638 

Revg.  105  Fed.  965. 

Second;  Wallace,  Lacombe,  Shipman. 

Parsons  v.  New  Home,  134  Fed.  394;  67  C.  C.  A.  392 277 

Affg.  125  Fed.  386. 

Seventh;  Jenkins,  Grosscup,  Baker. 

Parsons  v.  Seelye,  100  Fed.  452;  40  C.  C.  A.  484 320,  389,  709,  789 

See  92  Fed.  1005. 

First;  Colt,  Putnam,  Aldrich. 

Parsons  v.  Seelve,  100  Fed.  455;  40  C.  C.  A.  486 246,  598,  635 

Revg.  92  Fed.  1005. 

First;   Colt,  Putnam,  Aldrich. 

Patent  v.  Glover,  141  U.  S.  560;  35  L.  Ed.  858;  12  S.  Ct.  79 592 

Affg.  31  Fed.  816. 
Brewer. 

Pattee  v.  Kingman,  129  U.  S.  294;  32  L.  Ed.  700;  9  S.  Ct.  389 665,  871 

See  9  Fed.  821. 
Fuller. 

Patterson  v.  Commonwealth,  97  U.  S.  501 ;  24  L.  Ed.  1115 920 

Harlan. 

Paulus  v.  Buck,  129  Fed.  594;  64  C  C.  A.  162 150,  167,  764 

Eighth;  Sanborn,  Thayer,  Hook. 

Pearce  v.  Mulford,  102  U.  S.  112;  26  L.  Ed.  93 647 

Strong. 

Peck  v.  Collins,  103  U.  S.  660;  26  L.  Ed.  512 887 

Bradley. 

Peerless  v.  White,  118  Fed.  827;  55  C.  C.  A.  502 470,  525 

Revg.  Ill  Fed.  190. 
Third;  Acheson,  Gray,  Bradford.     Dissent.  Acheson. 

Peifer  v.  Brown,  112  Fed.  435;  50  C.  C.  A.  331 207 

Affg.  106  Fed.  938. 

Third;   Dallas,  Gray,  Kirkpatrick. 

Pelouze  v.  American,  102  Fed.  916;  43  C.  C.  A.  52 329 

Seventh;  Woods,  Grosscup,  Seaman. 

Pelzer  v.  Binghamton,  95  Fed.  823;   37  C.  C.  A.  288 510,  547 

Second;  Wallace,  Lacombe,  Shipman. 

Penfield  v.  Chambers,  92  Fed.  630;  34  C.  C.  A.  579 378,  454,  506,  701 

Sixth;  Taft,  Lurton,  Clark. 

Penfield  v.  Potts,  126  Fed.  475;  61  C.  C.  A.  371 195,  257,  298,  305,  386 

Revg.  in  part  109  Fed.  323. 
See  155  U.  S.  597;  97  Fed.  78;  108  Fed.  379. 
Sixth;  Lurton,  Severens,  Richards. 

Penn  v.  Columbia,  132  Fed.  808;  66  C.  C.  A.  127 124 

Third;   Acheson,  Gray,  Kirkpatrick. 

Penn  v.  Conroy,  159  Fed.  943;  87  C.  C.  A.  149 414,  417,  819,  850 

Third;  Dallas,  Gray,  Cross. 

Pennock  v.  Dialogue,  2  Pet.  1;.  7  L.  Ed.  327 2,  16,  135,  853 

Story. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxvii 

[References  are  to  sections] 

Pennsylvania  v.  Locomotive    110  U.  S.  490;   28  L.  Ed.  222; 

4  S.  Ct.  220 671,  676 

Revg.  1  Bann.  &  A.  470;  6  Fish.  P.  C.  187;  10  Blatchf.  292. 
Gray. 

Peoria  v.  Cleveland,  58  Fed.  227;  7  C.  C.  A.  197 873,  885 

Affg.  47  Fed.  728. 

Sixth;  Taft,  Barr,  Sage. 

Peters  v.  Active,  129  U.  S.  530;  32  L.  Ed.  738;  9  S.  Ct.  389 87,  671 

Affg.  21  Fed.  319. 
Blatchford. 

Peters  v.  Hanger,  127  Fed.  820;  62  C.  C.  A.  498 322 

Fourth;   Goff,  Simonton,  McDowell. 

Peters  v.  Hanger,  134  Fed.  586;  67  C.  C.  A.  386 532,  807 

See  127  Fed.  820. 

Fourth;  Brawley,  Purnell,  McDowell. 

Peters  v.  Hanson,  129  U.  S.  541;  32  L.  Ed.  742;  9  S.  Ct.  393 592,  671 

Blatchford. 

Philadelphia  v.  Edison,  65  Fed.  551;  13  C.  C.  A.  40 299,  562,  579 

Affg.  60  Fed.  397. 

See  suits  on  same  patent,  47  Fed.  454;  52  Fed.  300;  53  Fed.  592; 

54  Fed.  678;  56  Fed.  496;  57  Fed.  616;  61  Fed.  834. 
Third;  Dallas,  Butler,  Wales. 

Philadelphia  v.  Weeks,  61  Fed.  405 ;  9  C.  C.  A.  555 606 

Affg.  52  Fed.  816. 

Second;   Wallace,  Lacombe,  Shipman. 

Philip  v.  Nock,  80  U.  S.  185 ;  20  L.  Ed.  567 .725 

Chase. 
Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679. . .  .280,  290,  294,  297,  298,  299 

SWAYNE. 

Phillips  v.  Detroit,  111  U.  S.  604;    28  L.  Ed.  532;    4  S.  Ct.  580. . .  .656, 

Woods.  657,  667,  707 

Phillips  v.  Page,  65  U.  S.  164;  16  L.  Ed.  639 230,  672,  795 

Nelson. 
Phoenix  v.  Lanier,  95  U.  S.  171 ;  24  L.  Ed.  383 126 

Strong. 

Phoenix  v.  Spiegel,  133  U.  S.  360;  33  L.  Ed.  663;  10  S.  Ct,  409 207 

Affg.  26  Fed.  272.  Blatchford. 

Piaget  v.  Headley,  10S  Fed.  870;  48  C.  C.  A.  116 385,  451 

Affg.  107  Fed.  134. 

Second;  Wallace,  Lacombe,  Shipman. 
Pickering  v.  McCullough,  104  U.  S.  310;  26  L.  Ed.  749 47,  320,  596 

Matthews. 

Pieper  v.  Electro-Dental,  160  Fed.  930;  88  C.  C.  A.  112 654,  668 

Affg.  156  Fed.  672. 

Second;  Lacombe,  Coxe,  Ward. 
Pittsburg  v.  Pittsburg,  109  Fed.  644;    48  C.  C.  A.  580....  195,  473,  490, 

Third;  Acheson,  Dallas,  Gray.  528,  644 

Pittsburg  v.  Roberts,  71  Fed.  706;   18  C.  C  A.  302 691,  891 

Affg.  69  Fed.  624,  applying  Loom  Co.  v.  Higgins,  105  U.  S.  591. 

Third;  Dallas,  Butler,  Wales. 
Piatt  v.  Fire  Extinguisher,  59  Fed.  897;  8  C.  C.  A.  357. . .  .153,  385,  513,  755 
See  Northwestern  v.  Philadelphia,  1  Ban.  &  A.  177. 

Third;  Dallas,  Wales,  Green. 
Plotts  v.  Central,  143  Fed.  901 ;  75  C.  C.  A.  7 513 

Ninth;   Gilbert,  Ross,  Morrow. 


lxviii  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Plummer  v.  Sargent,  120  U.  S.  442;   30  L.  Ed.  737;   7  S.  Ct.  640.  . .  .380, 

502,  821,  822,  881 
Affg.  Tucker  v.  Sargent,  19  Blatchf.  538.    See  same 
patent  Tucker  v.  Tucker,  4  Cliff.  397 ;   Tucker  v. 
Burditt,  5  Fed.  808;  Tucker  v.  Dana,  7  Fed.  213. 
Matthews. 
Pohl  v.  Anchor,  134  U.  S.  381 ;  33  L.  Ed.  953;  10  S.  Ct.  577.  . .  .420,  421,  422 
Revg.  39  Fed.  782. 
Construing  129  U.  S.  151. 
Blatchford. 
Pope  v.  Gormully,  144  U.  S.  238;   36  L.  Ed.  420;    12  S.  Ct.  637.  . .  .150, 
Affg.  34  Fed.  885.  164,  169,  216,  499,  680,  752 

Brown. 

Pope  v.  Gormully,  144  U.  S.  248;  36  L.  Ed.  423;  12  S.  Ct.  641 214 

Affg.  34  Fed.  893. 
Brown. 

Pope  v.  Gormully,  144  U.  S.  254;  36  L.  Ed.  426 ;  12  S.  Ct.  643 684 

Affg.  34  Fed.  896. 
Brown. 
Portland  v.  Hermann,  160  Fed.  91 ;  87  C.  C.  A.  247. . .  .47,  285,  378,  456,  525 
Eighth;   Sanborn,  Van  Devanter,  Philips. 

Potts  v.  Creager,  97  Fed.  78;   38  C.  C.  A.  47 64,  96,  868 

Sixth;   Taft,  Lurton,  Thompson. 

Potts  v.  Creager,  155  U.  S.  597;  39  L.  Ed.  275;  15  S.  Ct.  194 617,  671,  696 

Revg.  44  Fed.  680. 
Brown. 
Powder  v.  Powder,  98  U.  S.  126;  25  L.  Ed.  77 327,  821,  871,  883 

Press  v.  Westinghouse,  135  Fed.  767;  68  C.  C.  A.  469 305 

Revg.  127  Fed.  822. 
Third;  Acheson,  Dallas,  Gray. 

Pressed  Steel  v.  Hanson,  137  Fed.  403;  71  C.  C.  A.  207 129,  151,  368 

Affg.  128  Fed.  444. 

Third;  Acheson,  Dallas,  Gray.  Dissenting,  Acheson. 

Preston  v.  Manard,  116  U.  S.  661 ;  29  L.  Ed.  763;  6  S.  Ct.  695 669 

Gray. 

Prieth  v.  Campbell,  80  Fed.  539;  35  C.  C.  A.  624 570 

Revg.  77  Fed.  976. 
Third;  Acheson,  Dallas,  Bufrington. 

Price  v.  Kelly,  154  U.  S.  669;  26  L.  Ed.  634;  14  S.  Ct.  1208 399,  488 

Waite. 

Propfe  v.  Coddington,  108  Fed.  86;  47  C.  C.  A.  218 463 

Affg.  105  Fed.  951. 

Third ;  Acheson,  Dallas,  Gray. 

Prouty  v.  Ruggles,  16  Pet.  336;   10  L.  Ed.  985 473 

Revg.  1  Story,  568.                                Taney. 
Providence  v.  Goodyear,  76  U.  S.  805;  19  L.  Ed.  828 891 

SWAYNE. 

Prudential  v.  Westinghouse,  158  Fed.  985;   86  C.  C.  A.  189 674 

Affg.  155  Fed.  749. 

Third;  Dallas,  Gray,  Buffington. 
Quincy  v.  Krause   151  Fed.  1012;  81  C.  C.  A.  290 704 

Sixth;  Lurton,  Severens,  Richards. 
Rahley  v.  Columbia,  122  Fed.  623;  58  C.  C.  A.  639 543,  714 

Fourth;  Goff,  Simonton,  McDowell. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxix 

[References  are  to  sections] 

Railroads  Dubois,  79  U.  S.  47;  20  L.  Ed.  265. .  .  .317,  320,  387,  611,  770,  937 

Strong. 
Railroad  v.  Stimpson,  14  Pet.  448;    10  L.  Ed.  535.... 260,  261,  614,  629, 

Story.                                                                                    638,  740,  795 
Railroad  v.  Trimble,  77  U.  S.  367;    19  L.  Ed.  949 154,  176 

SwAYNE. 

Railroad  v.  Turrill,  94  U.  S.  695;  24  L.  Ed.  238 .*. . .  .290,  532 

(Cawood  Patent.) 
Strong.   Dissenting,  Field,  Swayne. 

Railroad  v.  Turrill,  101  U.  S.  836;  25  L.  Ed.  1009 284,  712 

Waite. 
Railroad  v.  Turrill,  110  U.  S.  301 ;  28  L.  Ed.  154;  4  S.  Ct.  5. . .  .22,  835,  842 

Railroad  v.  Winans,  58  U.  S.  31 ;   15  L.  Ed.  27 271,  482 

Campbell. 

Railway  v.  Monroe,  147  Fed.  241 ;  77  C.  C.  A.  383 312 

Affg.  145  Fed.  646. 

Seventh;   Baker,  Seaman,  Quarles. 

Rainear  v.  Western,  159  Fed.  431 ;  86  C.  C.  A.  411 697 

Affg.  156  Fed.  49. 

Third;  Dallas,  Buffington,  Cross. 

Ransome  v.  Hyatt,  69  Fed.  148;  16  C.  C.  A.  185 680 

Reversing   Blanchard  v.  Putnam,  8   Wall.    420,    which   overruled 

Corning  v.  Burden,  15  How.  265. 
Revg.  Norton  v.  Can  Co.  59  Fed.  137. 
Ninth;  Gilbert,  Knowles,  Bellinger. 

Rawson  v.  Hunt,  147  Fed.  239;  77  C.  C.  A.  381 874 

Revg.  140  Fed.  716. 

Second;   Wallace,  Lacombe,  Townsend. 

Rawson  v.  Western,  118  Fed.  575;  55  C.  C.  A.  403 31 

See  81  Fed.  198;  83  Fed.  706;  86  Fed.  779;  171  U.  S.  687. 
Seventh;  Jenkins,  Grosscup,  Baker. 

Raymond  v.  Keystone,  134  Fed.  866;  67  C  C.  A.  492 495 

Affg.  132  Fed.  30. 

Third;   Acheson,  Dallas,  Gray. 

Reckendorfer  v.  Faber,  92  U.  S.  347;  23  L.  Ed.  719 104,  261,  313,  596, 

Hunt,  Dissenting,  Strong,  Davis,  Bradley.  617,  629,  656,  674 

Red  Jacket  v.  Davis,  82  Fed.  432;  27  C.  C  A.  204 397,  411,  476,  903 

Seventh;  Woods,  Jenkins,  Showalter. 

Reece  v.  Fenwick,   140  Fed.  287;    72  C.  C.  A.  39 160,  163 

First;  Colt,  Putnam,  Aldrich. 
Reece  v.  Globe,  61  Fed.  958;  10  C.  C.  A.  194.  .  .  .54,  214,  215,  222,  223,  375, 

598 
Revg.  54  Fed.  884.     Following  Winans  v.  Denmead,  15  How.  330. 
First;   Colt,  Putnam,  Nelson. 

Reed  v.  Frew,  162  Fed.  887;  89  C.  C.  A.  577 176,  928 

Modifying  158  Fed.  552. 

Second;  Lacombe,  Coxe,  Noyes. 

Reed  v.  Smith,  107  Fed.  719;  46  C.  C.  A.  601 566,  567,  570 

Affg.  103  Fed.  796. 

Second;    Lacombe,  Shipman. 

Reed  v.  Smith,  123  Fed.  878 ;  59  C.  C.  A.  366 208 

See  103  Fed.  796;   107  Fed.  719. 
Second;  Wallace,  Lacombe,  Coxe. 

Reedy  v.  Scott,  80  U.  S.  352;  23  L.  Ed.  109 145,  411,  887,  889 

Clifford. 


lxx  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Reedy  v.  Western,  83  Fed.  709;  28  C.  C.  A.  27 717,  720 

Affg.  66  Fed.  163. 

Sixth;   Taft,  Lurton,  Clark. 

Rees  v.  Gould,  82  U.  S.  187;  21  L.  Ed.  39 468,  473 

Clifford. 

Regan  v.  Pacific,  49  Fed.  68;  1  C.  C.  A.  169 160,  161,  163,  172 

Revg.  4?  Fed.  511. 

Ninth;  Deady,  Hanford,  Morrow. 

Regensburg  v.  Portuondo,  142  Fed.  160;  73  C.  C.  A.  378 593 

Affg.  136  Fed.  866. 

Third;   Acheson,  Dallas,  Gray. 
Regent  v.  Penn,  121  Fed.  80;  57  C.  C.  A.  334. . .  .208,  385,  579,  604,  635,  693 
Eighth;  Jenkins,  Baker,  Seaman. 

Reineke  v.  Dixon- Woods,  102  Fed.  349;  42  C.  C.  A.  388 207,  246 

Third;   Acheson,  Dallas,  Gray. 

Reynolds  v.  Buzzell,  96  Fed.  997;  37  C.  C.  A.  656 673 

First;  Colt,  Putnam,  Webb. 

Reynolds  v.  Standard,  68  Fed.  483;  15  C  C.  A.  516 358 

Affg.  43  Fed.  304;  revg.  65  Fed.  509. 
Third;   Acheson,  Wales,  Buffington. 

Rich  v.  Baldwin,  133  Fed.  920;  66  C.  C.  A.  464 378,  507,  695 

Sixth;  Lurton,  Severens,  Richards. 
Richards  v.  Chase,  158  U.  S.  299;  39  L.  Ed.  991 ;  15  S.  Ct.  831 .. .  .313,  323, 
Affg.  40  Fed.  165.  Brown.  325,  594,  669,  708 

Richards  v.  Chase,  159  U.  S.  477;  40  L.  Ed.  225;  16  S.  Ct.  53. . .  .240,  672,  678 
Affg.  158  U.  S.  299. 
Brown. 

Richardson  v.  Osborne,  93  Fed.  828;  36  C.  C.  A.  610 732 

Affg.  82  Fed.  95. 

Second;  Wallace,  Lacombe,  Shipman. 

Richmond  v.  Atwood,  48  Fed.  910;  1  C.  C.  A.  144 630 

Revg.  47  Fed.  219. 

First;   Colt,  Carpenter,  Aldrich. 
Richmond  v.  Atwood,  52  Fed.  10;   2  C.  C.  A.  596....  118,  139,  141,  303, 
Rehearing  s.  c.  48  Fed.  910.  304,  371,  545 

Revg.  47  Fed.  219;  followed  in  72  Fed.  545;  explained 
61  Fed.  208;  see  75  Fed.  118,  disapproving  in  part, 
Jones  v.  Hunger,  50  Fed.  785. 
First;  Colt,  Carpenter,  Aldrich. 

Rickard  v.  DuBon,  103  Fed.  868 ;  43  C.  C.  A.  360 702 

Second;  Wallace,  Lacombe,  Shipman. 

Ries  v.  Barth,  136  Fed.  850;  69  C.  C.  A.  528 506,  507,  674,  690 

Seventh;   Jenkins,  Grosscup,  Baker. 
Risdon  v.  Medart,  158  U.  S.  68;  39  L.  Ed.  899;   15  S.  Ct.  745.  . .  .431,  649 
Brown.  688,  690,  770,  775,  819 

Ritchie  v.  Obdvke,  65  Fed.  224;  12  C.  C.  A.  583 635 

Affg.  65  Fed.  222. 

Third;  Acheson,  Butler,  Wales. 

Robbins  v.  Illinois,  81  Fed.  957;   27  C.  C.  A.  21 842,  844 

Affg.  78  Fed.  124. 

Seventh;   Woods,  Jenkins. 

Roberts  v.  Bennett,  136  Fed.  193;  69  C.  C.  A.  533 335,  712 

Second;  Wallace,  Lacombe,  Townsend. 

Roberts  v.  Ryer,  91  U.  S.  150;  23  L.  Ed.  267 598,  599,  672 

Waite. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxxi 

[References  are  to  sections] 

Robertson  v.  Blake,  94  U.  S.  728;  24  L.  Ed.  245 297,  298,  506 

S  WAYNE. 

Robins  v.  American,  145  Fed.  923;  76  C.  C.  A.  461 93,  223,  453,  635 

Affg.  142  Fed.  221. 

Third;  Dallas,  Grav,  Cross. 

Robinson  v.  Chicago,  118  Fed.  438 ;  55  C.  C.  A.  254 12,  305 

Seventh;   Jenkins,  Grosscup.    Per  Curiam. 

Robinson  v.  American,  135  Fed.  693;  68  C.  C.  A.  331 312,  802,  803 

Affg.  132  Fed.  165. 

Seventh;  Jenkins,  Grosscup,  Baker. 

Robinson  v.  American,  150  Fed.  331 ;   80  C.  C.  A.  127 893,  894 

Revg.  142  Fed.  170. 

Seventh;  Grosscup,  Baker,  Seaman. 

Robinson  v.  American,  159  Fed.  131 ;  86  C.  C.  A.  321 894 

See  150  Fed.  331. 

Seventh;   Grosscup,  Baker,  Seaman. 

Rodwell  v.  Tuchfarber,  127  Fed.  138;  62  C.  C.  A.  252 408 

Sixth;    Lurton,  Severens,  Richards. 

Roehr  v.  Bliss,  102  Fed.  692;  42  C.  C  A.  593 615 

Affg.  82  Fed.  98;  98  Fed.  120. 

Second ;  Wallace,  Lacombe.    Per  Curiam. 
Roemer  v.  Neumann,  132  U.  S.  103;  33  L.  Ed.  277;  10  S.  Ct.  12. . .  .345,  868 
Affg.  26  Fed.  102.  Gray. 

Roemer  v.  Peddie,  78  Fed.  117;  24  C.  C.  A.  39 217,  378 

Affg.  71  Fed.  407. 

Third;  Dallas,  Butler,  Wales. 

Roemer  v.  Peddie,  81  Fed.  380 ;  26  C.  C.  A.  440 51 

Third;  Acheson,  Dallas,  Bufnngton. 

Roemer  v.  Peddie,  132  U.  S.  313;  33  L.  Ed.  382;  10  S.  Ct.  98 207 

Affg.  27  Fed.  702. 
Blatchford. 
Roemer  v.  Simon,  95  U.  S.  214;  24  L.  Ed.  384.  . .  .77,  321,  667,  789,  795,  852 
Clifford. 

Rogers  v.  Fitch,  81  Fed.  959;  27  C.  C.  A.  23 65,  616,  630 

Revg.  77  Fed.  885. 

Second;  Wallace,  Lacombe,  Shipman. 

Rogers  v.  Mergenthaler,  64  Fed.  799;  12  C.  C.  A.  422 459,  482,  607 

Affg.  57  Fed.  502;  see  58  Fed.  693. 

Third;  Acheson,  Dallas,  Butler. 

Root  v.  Railway,  105  U.  S.  189;  26  L.  Ed.  975. . .  .283,  290,  291,  296,  371, 

Matthews.  576,  718,  839 

Root  v.  Third  Avenue,  146  U.  S.  210;  36  L.  Ed.  946;  13  S.  Ct.  100.  .  .  .416, 

Affg.  37  Fed.  673.  851,  853,  856,  857 

Rose  v.  Hirsch,  77  Fed.  469;   23  C.  C.  A.  246 453,  531,  634,  679 

Revg.  71  Fed.  881. 
Third;   Acheson,  Butler,  Wales.    Dissenting,  Acheson. 

Rose  v.  Hirsh,  94  Fed.  177;  36  C.  C.  A.  132 288 

Revg.  91  Fed.  149. 

Third;   Acheson,  Kirkpatrick,  Buffington. 

Rose  v.  Dowden,  157  Fed.  681 ;   85  C.  C.  A.  449 214,  591 

Eighth ;  Van  Devanter,  Adams,  Riner. 

Ross  v.  Fort  Wayne,  63  Fed.  466;   11  C.  C.  A.  288 717,  720 

Revg.  58  Fed.  404. 

Seventh;  Woods,  Jenkins,  Seaman. 


lxxii  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Ross-Moyer  v.  Randall,  104  Fed.  355;  43  C.  C.  A.  578 221,  905 

Sixth;  Lurton,  Day,  Severens. 

Rousseau  v.  Peck,  78  Fed.  113;   24  C.  C.  A.  7 229 

Affg.  66  Fed.  759. 

Second;   Lacombe,  Shipman. 

Rowe  v.  Blodgett,  112  Fed.  61 ;  50  C.  C.  A.  120 337,  928 

Affg.  103  Fed.  873. 

Second;  Wallace,  Lacombe.    Per  Curiam. 
Rowell  v.  Lindsay,  113  U.  S.  97;  28  L.  Ed.  906;  5  S.  Ct.  507. .  .468,  573,  609 
Affg.  6  Fed.  290.  Woods. 

Royer  v.  Coupe,  146  U.  S.  524;  36  L.  Ed.  1073;   13  S.  Ct.  166 297, 

Affg.  38  Fed.  113.  497,  520,  685,  814 

Blatchford. 
Royer  v.  Roth,  132  U.  S.  201 ;  33  L.  Ed.  322;  10  S.  Ct.  58 609,  672 

Blatchford. 

Royer  v.  Schultz,  135  U.  S.  319;  34  L.  Ed.  214;  10  S.  Ct.  833 492 

Revg.  28  Fed.  850;  29  Fed.  281. 

Blatchford. 
Rubber  v.  Goodyear,  76  U.  S.  788;   19  L.  Ed.  566.  . .  .26,  41,  222,  770,  789 

Swayne.                       807,  823,  830,  832,  833,  834,  839,  843,  847,  873 
Rubber  v.  Welling,  97  U.  S.  7;  24  L.  Ed.  942 47 

Hunt. 
Rubber  Tip  v.  Howard,  87  U.  S.  498;  22  L.  Ed.  410.  . .  .649,  672,  683,  775 

Waite. 
Rubber  Tire  v.  Milwaukee,  154  Fed.  358;  83  C.  C.  A.  336. . .  .29,  744,  745, 
Revg.  142  Fed.  531.  764,  920 

Seventh;  Grosscup,  Baker,  Kohlsaat. 
Rubber  Tire  v.  Victor,  123  Fed.  85;  59  C.  C.  A.  215 31 

Sixth;   Lurton,  Severens,  Richards. 
Rubens  v.  Wheatfield,  93  Fed.  677;  35  C.  C.  A.  537 540 

Seventh;   Woods,  Jenkins,  Showalter. 
Rude  v.  Westcott,  130  U.  S.  152;  32  L.  Ed.  888;  9  S.  Ct.  463. .. .  153,  292,  295 

Field. 
Rumford  v.  Hygienic,  159  Fed.  436;  86  C.  C.  A.  416 474,  711,  894 

Second;   Lacombe,  Coxe,  Noyes. 

Rumford  v.  New  York,  134  Fed.  385;   67  C.  C.  A.  367 314,  700 

Revg.  in  part  125  Fed.  231. 

Second;   Wallace,  Townsend,  Coxe. 
Rupp  v.  Elliott,  131  Fed.  730;  65  C.  C.  A.  544 474,  477,  559,  714 

Sixth;   Lurton,  Severens,  Richards. 
Russell  v.  Dodge,  93  U.  S.  460;  23  L.  Ed.  973 260,  871 

Field. 

Russell  v.  Kern,  69  Fed.  94;   16  C.  C.  A.  154 Ill,  356,  717,  719,  810 

Affg.  64  Fed.  581. 

Seventh;   Woods,  Jenkins,  Showalter. 

Ryan  v.  Hard,  145  U.  S.  241 ;  36  L.  Ed.  691 ;    12  S.  Ct.  919 696 

Affg.  35  Fed.  831.  Blatchford. 

Ryan  v.  Metropolitan,  144  Fed.  697;   75  C.  C.  A.  513 219 

Affg.  139  Fed.  579. 

Second;  Townsend,  Coxe. 
Ryan  v.  Runyon,  93  Fed.  970;  36  C.  C.  A.  36 213 

Third;  Acheson,  Dallas,  Burlington. 

Ryder  v.  Schlichter,  126  Fed.  487;  61  C.  C.  A.  469 219,  223,  506 

Revg.  121  Fed.  98. 

Third;  Acheson,  Gray,  McPherson. 


CASES   EXCERPTED,    WITH   ANNOTATIONS  lxxiil 

[References  are  to  sections] 

St.  Germain  v.  Brunswick,  135  U.  S.  227;  34  L.  Ed.  122;  10  S.  Ct.  822.  .  .671 
Fuller. 

St.  Louis  v.  American,  156  Fed.  574;  84  C.  C.  A.  340 68,  207,  433,  525, 

Eighth;  Sanborn,  Hook,  Adams.  635,  673 

St.  Louis  v.  National,  87  Fed.  885;  31  C.  C.  A.  265 216,  376,  473,  610,  680 

Affg.  81  Fed.  706. 

Sixth ;  Lurton,  Severens,  Clark. 
St.  Louis  v.  Sanitary,  161  Fed.  725;  88  C.  C.  A.  585. . .  .384,  552,  571,  714 

Eighth;   Hook,  Adams,  Garland. 
St.  Paul  v.  Starling,  140  U.  S.  184;   35  L.  Ed.  404;    11  S.  Ct.  803. . .  .131, 

392,  399,  638,  735,  762,  763,  809 
Affg.  29  Fed.  790;  32  Fed.  290. 
Blatchford. 

Samson  v.  Donaldson,  69  Fed.  621 ;  16  C.  C.  A.  342 657 

Affg.  62  Fed.  275. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Sander  v.  Rose,  121  Fed.  835;  58  C.  C.  A.  171 442 

Eighth;   Caldwell,  Sanborn,  Thayer. 
Sanders  v.  Hancock,  128  Fed.  424;  63  C.  C.  A.  166. . .  .95,  603,  631,  634,  937 
Sixth;   Lurton,  Severens,  Richards. 

San  Francisco  v.  Keating,  68  Fed.  351 ;   15  C.  C.  A.  476 603 

Ninth;  Gilbert,  Hanford,  Hawley. 

Sanitary  v.  Sprickerhoff,  139  Fed.  801 ;  71  C.  C.  A.  565 919 

Revg.  131  Fed.  868. 

Second;  Wallace,  Lacombe,  Coxe.     Dissenting,  Wallace. 

Sanitas  v.  Voigt,  139  Fed.  551 ;  71  C.  C.  A.  535 821,  823 

Sixth;  Lurton,  Severens,  Evans. 

Santa  Clara  v.  Prescott,  102  Fed.  501 ;  42  C.  C.  A.  477 195 

Ninth;  Gilbert,  Ross,  Hawley. 

Sargent  v.  Hall,  114  U.  S.  63;  29  L.  Ed.  67;  5  S.  Ct.  1021 207 

Blatchford. 

Saunders  v.  Allen,  60  Fed.  610;  9  C.  C.  A.  157 75,  636 

Affg.  53  Fed.  109. 

Second;   Wallace,  Lacombe,  Shipman. 

Sawyer  v.  Carpenter,  143  Fed.  976;  75  C.  C.  A.  162 420 

Affg.  133  Fed.  238. 

First;  Colt,  Putnam,  Lowell. 

Sayre  v.  Scott,  55  Fed.  971 ;  5  C.  C.  A.  366 503,  635,  828,  837 

Third;   Acheson,  Butler,  Wales. 

Schenck  v.  Diamond,  77  Fed.  208;   23  C.  C.  A.  122 78,  634 

Affg.  71  Fed.  521. 

Third;    Acheson,  Butler,  Wales. 

Schenck  v.  Singer,  77  Fed.  841 ;  23  C.  C.  A.  494 246,  606,  626 

Affg.  68  Fed.  191. 

Second;   Wallace,  Lacombe,  Shipman. 
Schillinger  v.  United  States,  155  U.  S.  163;   39  L.  Ed.  108;    15  S.  Ct.  85 

....429,  498 
Affg.  24  Ct.  CI.  278. 

Brewer;  dissenting  opinion  Harlan,  Shiras. 

Schmitt  v.  Nelson,  125  Fed.  754;  60  C.  C.  A.  522 176 

Affg.  121  Fed.  93. 

Third;    Acheson,  Gray,  McPherson.    Dissenting,  Acheson. 

Schock  v.  Olsen,  147  Fed.  229;   77  C.  C.  A.  371 207 

Affg.  145  Fed.  633. 

Seventh;  Grosscup,  Baker,  Seaman. 


lxxiv  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Schreiber  v.  Adams,  117  Fed.  830;  54  C.  C.  A.  128 203 

Revg.  Ill  Fed.  182. 

Eighth;  Sanborn,  Thayer,  Lochren. 

Schreiber  v.  Grimm,  72  Fed.  671 ;    19  C.  C.  A.  67 363,  672 

Affg.  65  Fed.  220;    distinguishing  Potts  v.  Creager,  155  U.  S.  597; 
Electric  v.  LaRue,  139  U.  S.  601. 
Sixth;  Taft,  Lurton,  Severens. 
Schumacher  v.  Cornell,  96  U.  S.  549;  24  L.  Ed.  676 473,  604 

SWAYNE. 

Schuyler  v.  Electric,  66  Fed.  313;  13  C.  C.  A.  491 212 

Affg.  62  Fed.  588. 

Second;  Wallace,  Lacombe. 

Schwarzalder  v.  New  York,  66  Fed.  152;  13  C.  C.  A.  380 200,  341,  822 

Affg.  61  Fed.  840;  see  62  Fed.  582. 

Second ;  Wallace,  Lacombe,  Coxe.  - 
Schweichler  v.  Levison,  147  Fed.  704 ;  78  C.  C.  A.  92 207 

Seventh;  Grosscup,  Baker,  Seaman. 
Scofield  v.  Browne,  158  Fed.  305;  85  C.  C.  A.  556 331 

Third;  Dallas,  Gray,  Buffington. 
Scott  v.  Fisher,  145  Fed.  915;  76  C.  C.  A.  447. . . .  241,  481,  631,  644,  782,  911 
Revg.  139  Fed.  137. 

Second;   Lacombe,  Townsend,  Coxe.    Per  Curiam. 

Scott  v.  Hoe,  70  Fed.  781 ;  17  C.  C.  A.  410 503 

Affg.  65  Fed.  606. 

Third;  Dallas,  Butler,  Wales. 
Scott  v.  Lazell,  160  Fed.  472 ;  87  C.  C.  A.  456 389,  496 

Second;  Lacombe,  Coxe,  Ward. 
Scott  v.  Laas,  150  Fed.  764;  80  C.  C.  A.  500 561,  895 

Seventh;  Grosscup,  Baker,  Seaman. 
Seabury  v.  Am  Ende,  152  U.  S.  561;  38  L.  Ed.  553;   14  S.  Ct.  683. . .  .816, 
Affg.  43  Fed.  672.  832,  833,  917 

Shiras. 
Seal  v.  Bookkeeper,  130  Fed.  449;  64  C.  C.  A.  651 762 

Sixth;   Lurton,  Severens,  Richards. 
Seattle  v.  McNamara,  81  Fed.  863;  26  C.  C.  A.  652 287 

Ninth;  Gilbert,  Ross,  Hawley. 
Seiler  v.  Fuller,  102  Fed.  344 ;  42  C.  C.  A.  386 . . . 546,  557,  579 

Ninth;  Gilbert,  Ross,  Hawley.   Dissenting,  Ross. 
Seiler  v.  Fuller,  121  Fed.  85 ;  57  C.  C.  A.  339 223,  616,  679 

Seventh;  Jenkins,  Grosscup,  Baker. 

Sessions  v.  Gould,  63  Fed.  1001 ;  11  C.  C.  A.  550 537 

Affg.  49  Fed.  855;  60  Fed.  753. 

Second;  Brown,  Wallace,  Shipman.    Per  Curiam. 
Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;   12  S.  Ct.  799. . .  .183, 
Revg.  21  Fed.  124.  197,  290,  344,  532,  626,  777,  846,  927 

Brown. 
Sewall  v.  Jones,  91  U.  S.  171;   23  L.  Ed.  275. . .  .459,  499,  503,  529,  667, 

Hunt.     Dissenting,  Clifford.  904,  906,  910 

Seymour  v.  McCormick,  16  How.  480;  14  L.  Ed.  1024. . .  .280,  290,  292,  298 

Revg.  2  Blatchf.  240.                            Grier. 
Seymour  v.  McCormick,  60  U.  S.  96;   15  L.  Ed.  557 105 

Nelson.     Dissenting,  Grier. 
Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33.  .  .  .11,  198,  230,  263,  317, 
320,  374,  416,  433,  440,  472,  494,  526,  674,  745,  746,  748,  779, 

Clifford.  795,  804,  807,  811,  862,  871,  880,  888,  889,  937 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxxv 

[References  are  to  sections] 

Sharp  v.  Reissner,  119  U.  S.  631;  30  L.  Ed.  507;  7  S.  Ct.  417 230 

Affg.  15  Fed.  919.                              Blatchford. 
Shaw  v.  American,  108  Fed.  842;  48  C.  C.  A.  68 723,  807 

Fifth;  Pardee,  McCormick,  Shelby. 
Shaw  v.  Cooper,  7  Pet.  292;  8  L.  Ed.  689 16,  744,  858,  889 

McLean. 

Shaw  v.  Shriver,  86  Fed.  466;  30  C.  C.  A.  196 696 

See  77  Fed.  992. 

Second;   Wallace,  Lacombe,  Shipman.     Per  Curiam. 
Shepard  v.  Carrigan,  116  U.  S.  593;  29  L.  Ed.  723;  6  S.  Ct.  493 207 

Woods. 
Shepard  v.  Kinnear,  86  Fed.  638;  30  C.  C.  A.  315 752 

Second;  Wallace,  Lacombe,  Shipman. 

Shickle  v.  St.  Louis,  77  Fed.  739;  23  C.  C.  A.  433 476,  524 

Revg.  70  Fed.  783. 

Eighth;  Caldwell,  Sanborn,  Thayer. 

Shoemaker  v.  Merrow,  61  Fed.  945;  10  C.  C.  A.  181 14,  207,  584,  810 

Revg.  59  Fed.  120. 

Third;   Acheson,  Butler,  Wales. 

Shute  v.  Morley,  64  Fed.  368;  12  C.  C.  A.  356 305 

Modifying  62  Fed.  291 ;  as  to  scope  of  decree  entered,  only. 

First;  Putnam,  Nelson,  Webb.    Per  Curiam. 
Sichler  v.  Deere,  113  Fed.  285;  51  C.  C.  A.  242 164,  165,  798 

Seventh;   Jenkins,  Grosscup,  Bunn. 
Siemens  v.  Sellers,  123  U.  S.  276;  31  L.  Ed.  153;  8  S.  Ct.  117 423 

Bradley. 
Siemens-Halske  v.  Duncan,  142  Fed.  157;    73  C.  C.  A.  375.... 213,  451, 

Seventh;  Grosscup,  Baker,  Seaman.                                         797,  935 
Sigafus  v.  Porter,  85  Fed.  689 ;  29  C.  C.  A.  391 143 

Second;  Lacombe,  Shipman.    Per  Curiam. 
Silsby  v.  Foote,  14  How.  218;   14  L.  Ed.  394 411,  492,  734,  737,  795 

Curtis.  Dissenting,  McLean. 
Silsby  v.  Foote,  61  U.  S.  378;  15  L.  Ed.  953 274,  284 

Nelson.   Dissenting,  Grier,  Daniel. 

Simonds  v.  Hathorn,  93  Fed.  958;  36  C.  C.  A.  24 59,  214,  797 

Modifying  90  Fed.  201. 

First;   Colt,  Webb,  Aldrich. 
Simplex  v.  Wands,  1 15  Fed.  517;  53  C.  C.  A.  171 587 

Eighth;  Caldwell,  Sanborn,  Thayer. 
Simpson  v.  Wilson,  4  How.  709;  11  L.  Ed.  1169 175 

Nelson. 
Singer  v.  Brill,  54  Fed.  380;  4  C.  C.  A.  374 131,  404,  471,  629,  635 

Ninth;   McKenna,  Gilbert,  Knowles. 
Singer  v.  Cramer,  192  U.  S.  265;  48  L.  Ed.  437;  24  S.  Ct.  291. . .  .207,  214, 
Revg.  109  Fed.  652.  White.  496,  938 

Singer  v.  Cramer,  109  Fed.  652;  48  C.  C.  A.  588 55,  295,  435,  894 

Rev.  in  192  U.  S.  265. 

Ninth;   Gilbert,  Ross,  Hawley. 

Singer  v.  June,  163  U.  S.  169;  41  L.  Ed.  118;  16  S.  Ct.  1002 928 

Revg.  41  Fed.  208. 

(See  grounds  stated  and  form  of  decree  ordered.) 

White. 

Sipp  v.  Atwood-Morrison,  142  Fed.  149;  73  C.  C.  A.  367 74 

Revg.  136  Fed.  859. 

Third;  Acheson,  Dallas,  Gray. 


lxxvi  CASES   EXCERPTED,    WITH   ANNOTATIONS 

[References  are  to  sections] 

Sizer  v.  Many,  16  How.  98;  14  L.  Ed.  861 130,  140,  276 

Taney. 

Slawson  v.  Grand,  107  U.  S.  649;  27  L.  Ed.  576;  2  S.  Ct.  663 653,  708 

Woods. 

Sloan  v.  Portland,  139  Fed.  23;  71  C.  C.  A.  460 380,  437 

Eighth;   Sanborn,  Hook,  Lochren. 

Smead  v.  Fuller,  57  Fed.  626;  6  C.  C.  A.  481 222 

See  same  patent  44  Fed.  614. 
Second;  Lacombe,  Shipman. 

Smeeth  v.  Perkins,  125  Fed.  285;  60  C.  C.  A.  199 223 

Third;  Acheson,  Dallas,  Kirkpatrick. 

Smidth  v.  Bonneville,  114  Fed.  262;  52  C.  C.  A.  148 630 

Affg.  106  Fed.  930. 

Third;   Acheson,  Dallas,  Gray. 

Smith  v.  Ely,  15  How.  137;   12  L.  Ed.  634 807 

Referred  back  on  authority  of  O'Reilly  v.  Morse,  15  How.  62. 
Taney. 

Smith  v.  Goodyear,  93  U.  S.  486;    23  L.  Ed.  952 6,  626,  629,  667, 

677,  889 
Strong  ;  dissenting  Bradley  ;  also  Miller  and  Field. 

Smith  v.  Macbeth,  67  Fed.  137;  14  C.  C.  A.  241 67,  207 

Revg.  64  Fed.  797. 

Second;  Wallace,  Lacombe,  Shipman. 
Smith  v.  Nichols,  88  U.  S.  112;  22  L.  Ed.  566. . .  .343,  431,  440,  506,  614,  867 

SWAYNE. 

Smith  v.  Ridgley,  103  Fed.  875;  43  C.  C.  A.  365 198,  384,  663,  765 

Sixth;   Lurton,  Day,  Severens. 
Smith  v.  Sprague,  123  U.S.  249;  31  L.  Ed.  141;  8  S.  Ct.  122. . .  .416,  851,  863 
Revg.  12  Fed.  721. 
Matthews. 

Smith  v.  Whitman,  148  U.  S.  674;  37  L.  Ed.  606;   13  S.  Ct.  768 332, 

334,  337,  635 
Revg.  38  Fed.  414.    Discriminating  81  U.  S.  511. 
Fuller. 

Smith  &  Davis  v.  Mellon,  58  Fed.  705;   7  C.  C.  A.  439 18,  321 

Affg.  52  Fed.  149. 

Eighth;   Brewer,  Sanborn. 

Smyth  v.  Sheridan,  149  Fed.  208;   79  C.  C.  A.  166 397,  591 

Second;  Lacombe,  Townsend,  Coxe.    Per  Curiam. 

Snow  v.  Railway,  121  U.  S.  617 ;  30  L.  Ed.  1004 ;  7  S.  Ct.  1343 212,  223 

Affg.  18  Fed.  602. 
Matthews. 

Societe  v.  Allen,  90  Fed.  815;  33  C.  C.  A.  282 544,  555 

Affg.  84  Fed.  812. 

Sixth;  Taft,  Lurton,  Clark. 

Societe  v.  Lueders,  142  Fed.  753;  74  C.  C.  A.  15 341,  505 

Affg.  135  Fed.  102. 

Second;   Lacombe,  Townsend,  Coxe.    Per  Curiam. 

Soehner  v.  Favorite,  84  Fed.  182;   28  C.  C.  A.  317. . .  .223,  331,  335,  337, 

Sixth ;  Taft,  Lurton,  Severens.  646,  649 

Solomons  v.  United  States,  137  U.  S.  342;  34  L.  Ed.  667;  11  S.  Ct.  88. . .  .366, 

Affg.  21  Ct.  CI.  479.  429 

Brewer. 

Solvay  v.  Michigan,  90  Fed.  818;  33  C.  C.  A.  285 661,  672 

Sixth;  Taft,  Lurton,  Clark. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxxvii 

[References  are  to  sections] 

Southern  v.  Earl,  82  Fed.  690;  27  C.  C.  A.  185 544,  549,  561,  579 

Ninth;  Gilbert,  Hawley,  DeHaven. 

Spear  v.  Kelsey,  158  Fed.  622;  85  C.  C.  A.  444 48,  606 

Revg.  155  Fed.  976. 

Third;   Dallas,  Gray,  Buffington. 
Sprague  v.  Nassau,  95  Fed.  821 ;  37  C.  C.  A.  286 570 

Second;  Wallace,  Shipman.    Per  Curiam. 

Sprague  v.  Nassau,  102  Fed.  761 ;  42  C.  C.  A.  612 195 

See  88  Fed.  82:  77  Fed.  432;  95  Fed.  821;  88  Fed.  82. 

Second;  Wallace,  Lacombe,  Shipman. 

Sproull  v.  Pratt  &  Whitney,  108  Fed.  963;  48  C.  C.  A.  167 305,  760 

Affg.  101  Fed.  265. 

Second;  Lacombe,  Shipman. 
Standard  v.  Arrott,  135  Fed.  750;   68  C.  C.  A.  388.  .  .  .381,  382,  387,  752, 
Affg.  131  Fed.  457.  764,  807 

Third;  Dallas,  Gray,  Bradford. 
Standard  v.  Caster,  113  Fed.  162;  51  C.  C.  A.  109 461,  615,  672 

Sixth;   Lurton,  Day,  Severens. 
Standard  v.  Computing,  126  Fed.  639;  61  C.  C.  A.  541 .  .  .  .437,  475,  591,  704 

Sixth;  Lurton,  Severens,  Cochran. 
Standard  v.  Computing,  145  Fed.  627;  76  C.  C.  A.  384 137 

Sixth;  Per  Curiam. 
Standard  v.  Crane,  56  Fed.  718;  6  C.  C.  A.  100 398,  562,  565 

Seventh;  Gresham,  Woods,  Jenkins. 
Standard  v.  Crane,  76  Fed.  767;    22  C.  C.  A.  549....  Ill,  116,  117,  158, 

301,  327,  827 

Seventh;  Woods,  Show  alter,  Bunn.  Dissenting  Woods. 
Standard  v.  Fairbanks,  125  Fed.  4;  60  C.  C.  A.  91 628 

Third;   Acheson,  Dallas,  Kirkpatrick. 
Standard  v.  Leslie,  78  Fed.  325;  24  C.  C.  A.  107 753,  761 

Seventh;   Woods,  Jenkins,  Showalter. 

Standard  v.  Osgood,  58  Fed.  583 ;  7  C.  C.  A.  382 468 

Revg.  51  Fed.  675. 

First;   Colt,  Webb,  Carpenter. 

Standard  v.  Peters,  77  Fed.  630;   23  C.  C.  A.  367 72,  582,  682,  811 

Affg.  69  Fed.  408. 

Sixth;  Taft,  Lurton,  Hammond. 

Standard  v.  Ramsey,  143  Fed.  972;  75  C.  C.  A.  158 86,  507 

Affg.  139  Fed.  28. 

Third;  Acheson,  Dallas,  Gray. 

Standard  v.  Southern,  54  Fed.  521 ;  4  C.  C.  A.  491 479,  595,  596,  798 

Affg.  48  Fed.  109;  42  Fed.  295. 

Ninth;   McKenna,  Gilbert,  Morrow. 
Staples  v.  Lord,  148  Fed.  15;  78  C.  C.  A.  106 544 

First;  Colt,  Putnam,  Aldrich.    Per  Curiam. 
Star  v.  General,  111  Fed.  398;  49  C.  C.  A.  409 631,  635 

Sixth;   Lurton,  Day,  Severens. 

Star  v.  General,  129  Fed.  102;  63  C.  C.  A.  604 545 

See  109  Fed.  950. 

Sixth;  Lurton,  Severens,  Richards. 

Starrett  v.  Stevens,  100  Fed.  93 ;  40  C.  C.  A.  289 217 

Affg.  96  Fed.  244. 

First;  Putnam,  Webb,  Aldrich. 
Stearns-Roger  v.  Brown,  114  Fed.  939;   52  C.  C.  A.  559. . .  .539,  542,  543, 

Eighth;  Caldwell,  Sanborn,  Thayer.  544,  551,  568 


lxxviii         CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Stearns  v.  Russell,  85  Fed.  218;   29  C.  C.  A.  121 216,  672,  770 

Sixth;  Taft,  Lurton,  Severens. 

Steiner  v.  Adrian,  59  Fed.  132;  8  C.  C.  A.  44 672 

Affg.  52  Fed.  731. 

Sixth;   Brown,  Taft,  Severens. 
Steinmetz  v.  Allen,  192  U.  S.  543;   48  L.  Ed.  555;   24  S.  Ct.  416. . .  .348, 

McKenna.  383,  770,  784,  786 

Stephens  v.  Cady,  14  How.  528;    14  L.  Ed.  528 157 

See  Stevens  w.  Gladding,  58  U.  S.  447.  Nelson. 

Stephenson  v.  Brooklyn,  114  U.  S.  149;  29  L.  Ed.  58;  5  S.  Ct.  777.  . .  .607, 

Woods.  654, 672 

Stevens  v.  Gladding,  58  U.  S.  447;   15  L.  Ed.  155 829 

See  Stephens  v.  Cady,  14  How.  528.            Curtis. 
Stevenson  v.  McFassell,  90  Fed.  707 ;  33  C.  C.  A.  249 635 

Third;  Acheson,  Butler,  Kirkpatrick. 

Stewart  v.  Smith,  58  Fed.  580;   7  C.  C.  A.  380 334 

Affg.  55  Fed.  481. 

Third;  Acheson,  Dallas,  Wales. 
Stillwell-Bierce  v.  Eufaula,  117  Fed.  410;  54  C.  C.  A.  584. .  .  .223,  666,  673, 

Sixth;    Lurton,   Day,   Severens.  911 

Stimpson  v.  Railroad,  4  How.  380;   11  L.  Ed.  1020 522 

McLean. 
Stimpson  v.  Railroad,  10  How.  329;   13  L.  Ed.  441 136,  473 

Daniel. 
Stimpson  v.  Stimpson,  104  Fed.  893;  44  C.  C.  A.  241 .. .  .385,  746,  764,  928 

Sixth;   Lurton,  Day,  Severens. 
Stimpson  v.  Woodman,  77  U.  S.  117;   19  L.  Ed.  866. . .  .597,  661,  672,  675 

Nelson.     Dissenting,  Clifford. 

Stirrat  v.  Excelsior,  61  Fed.  980;   10  C.  C.  A.  216 211,  216,  224,  380 

Affg.  60  Fed.  607. 

Eighth;  Caldwell,  Sanborn. 
Stohlmann  v.  Parker,  53  Fed.  925;  4  C.  C.  A.  109 440 

Second;  Wallace,  Lacombe,  Shipman. 

Stokes  v.  Heller,  101  Fed.  266;  41  C.  C.  A.  335 211 

Affg.  96  Fed.  104. 

Third;  Acheson,  Dallas,  Gray. 

Stover  v.  Mast,  89  Fed.  333;  32  C.  C.  A.  231 539,  633 

Revg.  85  Fed.  782. 

Seventh;  Woods,  Showalter,  Bunn. 
Stow  v.  Chicago,  104  U.  S.  547;  26  L.  Ed.  816 188,  197 

Woods. 
Streator  v.  Wire  Glass,  97  Fed.  950;  38  C.  C.  A.  573. . .  .85,  496,  629,  632, 

Seventh;   Brown,  Woods,  Jenkins,    dissenting  Woods.         635,  819 
Streit  v.  Kaiper,  143  Fed.  981 ;   75  C.  C.  A.  167 665 

Sixth;   Lurton,  Severens,  Richards. 

Strom  v.  Weir,  83  Fed.  170;  27  C.  C.  A.  502 326,  696,  774 

Affg.  75  Fed.  279. 

Sixth;  Taft,  Lurton,  Severens. 
Stromberg-Carlson  v.  American,  127  Fed.  704;  62  C.  C.  A.  460 548 

Seventh;  Jenkins,  Grosscup,  Baker. 

Stuart  v.  Auger,  149  Fed.  748;  79  C.  C.  A.  60 79 

Affg.  139  Fed.  935. 

Third;  Dallas,  Gray,  Bradford. 
Suffolk  v.  Hayden,  70  U.  S.  315;  18  L.  Ed.  76 5,  287,  356 

Nelson. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  Ixxix 

[References  are  to  sections] 

Sullivan  v.  Railroad,  94  U.  S.  806;  24  L.  Ed.  324 719,  793 

SWAYNE. 

Sutter  v.  Robinson,  119  U.  S.  530;  30  L.  Ed.  492;  7  S.  Ct.  376 207,  216 

Revg.  8  Fed.  828;  11  Fed.  798. 
Matthews. 

Swain  v.  Holyoke,  109  Fed.  154;  48  C.  C.  A.  265 851,  853,  856 

Affg.  102  Fed.  910. 

First;  Colt,  Putnam,  Webb. 

Swain  v.  Holyoke,  111  Fed.  408;  49  C.  C.  A.  419 74 

See  109  Fed.  154. 

First;  Colt,  Putnam,  Webb. 

Swain  v.  Ladd,  102  U.  S.  408;  26  L.  Ed.  184 871 

Bradley. 

Talbot  v.  Fear,  89  Fed.  197 ;  32  C.  C.  A.  186 639 

Seventh;  Woods,  Showalter,  Bunn. 

Tannage  v.  Zahn,  70  Fed.  1003;  17  C  C.  A.  552 618 

Revg.  66  Fed.  986.    Following  Potts  v.  Creager,  155  U.  S.  606. 
Third;   Acheson,  Dallas,  Butler. 

Taylor  v.  Sawyer,  75  Fed.  301 ;  22  C.  C.  A.  203 245,  568,  673 

Affg.  69  Fed.  837. 

Third;   Acheson,  Wales,  Green. 

Teese  v.  Huntington,  23  How.  2;  16  L.  Ed.  479 795 

Clifford. 
Telephone  Cases,  126  U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778.  . .  .59,  147,  148, 

347,  424,  589,  639,  643,  81 1,  819,  865,  906 
Affg.  15  Fed.  448;  17  Fed.  604;  affg.  in  part,  32  Fed.  214;  affg.  22  Fed. 
309;  25  Fed.  725;  see  31  Fed.  729;  27  Fed.  663. 
Waite;  dissenting  opinion  Bradley,  Field,  Harlan. 

Temple  v.  Goss,  58  Fed.  196;  7  C.  C.  A.  174 207,  211,  598 

Seventh;    Woods,  Jenkins,  Baker. 

Terhune  v.  Phillips,  99  U.  S.  592;  25  L.  Ed.  293 696,  710 

Field. 

Thatcher  v.  Burtis,  121  U.  S.  286;  30  L.  Ed.  942;  7  S.  Ct.  1034 596 

Affg.  12  Fed.  569. 
Matthews. 

Thomas  v.  Rocker,  77  Fed.  420;  23  C.  C.  A.  211 207,  209,  224,  592 

Revg.  68  Fed.  196. 
Sixth;  Taft,  Lurton,  Hammond. 

Thomas  v.  St.  Louis,  149  Fed.  753;  79  C.  C.  A.  89 325 

Sixth;  Lurton,  Severens,  Richards. 

Thomasson  v.  Bumpass,  78  Fed.  491 ;  24  C.  C.  A.  180 202,  592 

Affg.  74  Fed.  243. 

Fourth;   Simonton,  Morris,  Brawley. 

Thompson  v.  Boisselier,  114  U.  S.  1 ;  29  L.  Ed.  76;  5  S.  Ct.  1042 679 

Revg.  19  Blatchf.  73. 

r>T  A  TT^T-TT^OR  D 

Thompson  v.  Bushnell,  96  Fed.  238;  37  C.  C.  A.  456. .  .  .340,  344,  508,  701 
See  66  Fed.  57. 

Second;  Wallace,  Lacombe,  Shipman.   Dissenting  Wallace. 

Thompson  v.  Chestnut,  127  Fed.  698;  62  C.  C.  A.  454 44,  411 

Affg.  119  Fed.  359. 

Third;   Acheson,  Dallas,  Gray. 

Thompson  v.  Second  Ave.  93  Fed.  824;  35  C.  C.  A.  620 229,  459 

Revg.  89  Fed.  321. 

Third;  Acheson,  Dallas,  McPherson. 


lxxx  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Thomson  v.  Wooster,  114  U.  S.  104;   29  L.  Ed.  105;  5  S.  Ct.  788. . .  .296, 
Bradley.  305,  322,  790,  S07,  844 

Thomson-Houston  v.  Black  River,  135  Fed.  759;  68  C.  C.  A.  461 9, 

225   263  611   889 
Revg.  124  Fed.  495;  see  86  Fed.  636;  101  Fed.  121. 
Second;  Wallace,  Wheeler,  Hazel. 
Thomson-Houston  v.  Elmira,  71  Fed.  396;  18  C.  C.  A.  145. .  .  .12,  222,  348, 
Revg.  and  affg.  in  part  69  Fed.  257.  356,  631,  768 

Second;  Wallace,  Lacombe,  Shipman. 
Thomson-Houston  v.  Hoosick,  82  Fed.  461;   27  C.  C.  A.  419. . .  .236,  357, 
Second;  Wallace,  Lacombe,  Shipman.  360,  544,  561 

Thomson-Houston  v.  Illinois,  152  Fed.  631 ;  81  C.  C.  A.  473 756 

Affg.  143  Fed.  534. 

Seventh;  Grosscup,  Baker,  Seaman. 

Thomson-Houston  v.  Jeffrey,  101  Fed.  121 ;  41  C.  C.  A.  247 360 

Sixth;   Taft,    Lurton,    Day. 

Thomson-Houston  v.  Kelsey,  75  Fed.  1005;  22  C.  C.  A.  1 476,  523,  524 

Modifying  72  Fed.  1016.      Following  Wilson  v.  Simpson,  9  How. 
109;  distg.  Davis  v.  Edison,  60  Fed.  276;  see  71  Fed.  192. 
Second;  Wallace,  Lacombe,  Shipman. 

Thomson-Houston  v.  Lorain,  107  Fed.  711 ;  46  C.  C.  A.  593 213 

Revg.  103  Fed.  641. 

Second;    Wallace,  Lacombe. 

Thomson-Houston  v.  Lorain,  117  Fed.  249;  54  C.  C.  A.  281 437,  851 

Affg.  110  Fed.  654. 

Second;   Wallace,  Townsend. 

Thomson-Houston  v.  McLean,  153  Fed.  883;  82  C.  C.  A.  629 421 

First;    Putnam,  Aldrich,  Hale. 

Thomson-Houston  v.  Nassau,  107  Fed.  277;  46  C.  C.  A.  263 616,  691 

Affg.  and  revg.  in  part  101  Fed.  587. 
Second;  Wallace,  Lacombe,  Shipman. 

Thomson-Houston  v.  National,  65  Fed.  427;  12  C.  C.  A.  671 499,  598,  674 

Third;  Acheson,  Butler,  Wales. 
Thomson-Houston  v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107. . .  .252,  350,475, 
Sixth;  Taft,  Lurton,  Clark.  476,  477,  506,  544,  561 

Thomson-Houston  v.  Union,  86  Fed.  636;  30  C.  C.  A.  313 195,  236 

Revg.  78  Fed.  363. 
Second;  Wallace,  Shipman.    Per  Curiam. 

Thomson-Houston  v.  Western,  70  Fed.  69;  16  C.  C.  A.  642 496,  683 

Affg.  65  Fed.  615. 

Seventh;  Woods,  Jenkins,  Showalter. 

Thomson-Houston  v.  Western,  72  Fed.  530;  19  C.  C.  A.  1 222,  503,  614 

Affg.  70  Fed.  69,  which  affirmed  65  Fed.  615. 
Seventh;   Woods,  Jenkins,  Showalter. 
Thomson-Houston  v.  Western,  158  Fed.  813;  86  C.  C.  A.  73. . .  .360,  361, 
Second ;  Coxe,  Ward,  Noyes.    Per  Curiam.  544,  798 

Thomson-Houston  v.  Western,  158   Fed.  813;     86  C.  C.  A.  73    (2nd 

case)  Second;  Coxe,  Ward,  Noyes.  541,  872,  876 

Thorn  v.  Washburn,  159  U.  S.  423;  40  L.  Ed.  205;  16  S.  Ct.  94 897 

Shir  as. 

Tiemann  v.  Kraatz,  85  Fed.  437;  29  C.  C.  A.  257 212,  444,  614 

Revg.  79  Fed.  322. 

Eighth;   Sanborn,  Thayer,  Philips. 

Tileson  v.  Vaughan,  149  Fed.  999 ;  79  C.  C.  A.  509 652 

Seventh;  Grosscup,  Baker,  Seaman. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxxxi 

[References  are  to  sections] 

Tilghman  v.  Proctor,  102  U.  S.  707;   26  L.  Ed.  279. . .  .107,  197,  510,  520, 

765,  802,  815,  819,  822 
Overruling  Mitchell  v.  Tilghman,  86  U.  S.  287. 

Bradley. 
Tilghman  v.  Proctor,  125  U.  S.  136;   31  L.  Ed.  664;   8  S.  Ct.  894. . .  .282, 

Gray.    Dissenting,  Waite.                                   292,  836,  837,  839,  847 
Timolat  v.  Franklin,  122  Fed.  69;  58  C.  C.  A.  405 568 

Second;  Wallace,  Lacombe. 

Timoney  v.  Buck,  84  Fed.  887;  28  C.  C.  A.  561 754 

Affg.  78  Fed.  487. 

Second;  Wallace,  Lacombe,  Shipman.    Per  Curiam. 

Tompkins  v.  New  York,  159  Fed.  133;  86  C.  C.  A.  323 337 

Revg.  154  Fed.  669. 

Second;  Lacombe,  Coxe,  Noyes. 
Topliff  v.  Topliff,  145  U.  S.  156;  36  L.  Ed.  658;   12  S.  Ct.  825. . .  .91,  125, 

Brown.                                                       283,  619,  626,  836,  877,  883 
Torrent  v.  Rodgers,  112  U.  S.  659;  28  L.  Ed.  842;  5  S.  Ct.  501 877 

Woods. 

Tower  v.  Eagle,  94  Fed.  361 ;  36  C.  C.  A.  294 436 

Revg.  90  Fed.  662. 

Second;  Wallace,  Lacombe,  Shipman. 
Tremaine  v.  Hitchcock,  90  U.  S.  518;  23  L.  Ed.  97 289,  789,  831 

Strong. 

Trent  v.  Risdon,  102  Fed.  635;  42  C.  C.  A.  529 478,  674 

Modifying  92  Fed.  375. 

Ninth;  Gilbert,  Ross,  Hawley. 

Troy  v.  Adams,  73  Fed.  301 ;  19  C.  C.  A.  505 207 

Approving  Troy  v.  Sharp,  54  Fed.  712. 

Second;   Wallace,  Lacombe,  Shipman.     Per  Curiam. 
Troy  v.  Corning,  14  How.  193;   14  L.  Ed.  383 160,  165 

Wayne;  dissenting,  Taney,  Nelson. 
Troy  v.  Odiorne,  58  U.  S.  73;  15  L.  Ed.  37 514,  867 

Catron. 
Truman  v.  Holmes,  87  Fed.  742;  31  C.  C.  A.  215 207,  719 

Ninth;   Gilbert,  Ross,  Hawley. 
Tucker  v.  Spalding,  80  U.  S.  453;   20  L.  Ed.  515 404,  617 

IVTtt  t  fr 
Turner  v.  Dover,  111  U.  S.  319;  28  L.  Ed.  442;  4  S.  Ct.  401 871 

Matthews. 
Turrill  v.  Railroad,  68  U.  S.  491;    17  L.  Ed.  668 223,  228,  404 

Tuttle  v.  Claflin,'76  Fed.  227;  22  C.  C.  A.  138. . .  .282,  289,  290,  298,  435,  777 
Affg.  19  Fed.  599.    Approving  Elm  City  v.  Wooster,  Fed.  Cas.  4,415. 

Second;  Peckham,  Lacombe,  Shipman. 
Tuttle  v.  Claflin,  82  Fed.  744;  27  C.  C.  A.  255 116 

Second;  Wallace,  Lacombe,  Shipman. 
Tyler  v.  Boston,  74  U.  S.  327;  19  L.  Ed.  93 373,  404,  914 

(tRTTTR 

Underwood  v.  Gerber,  149  U.  S.  224;  37  L.  Ed.  710;   13  S.  Ct.  854.  . .  .12, 
Affg.  37  Fed.  682.  266,  773 

Blatchford. 
Union  v.  Battle  Creek,  104  Fed.  337;  43  C.  C.  A.  560. . .  .195,  382,  459,  651 

Sixth;   Lurton,  Day,  Severens. 
Union  v.  Desper,  101  U.  S.  332;  25  L.  Ed.  1024 219,  473 

Bradley.  » 


lxxxii  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Union  v.  Diamond,  162  Fed.  148;  89  C.  C.  A.  172. . .  .202,  378,  426,  456, 
Eighth;  Hook,  Adams,  Philips.  680,  936 

Union  v.  Johnson,  61  Fed.  940;   10  C.  C.  A.  176 171,  753,  764,  897 

See  43  Fed.  331 ;  51  Fed.  85;  affg.  59  Fed.  20. 
Third;   Dallas,  Butler,  Green. 
Union  v.  Keith,  139  U.  S.  530;  35  L.  Ed.  261 ;  11  S.  Ct.  621 .. .  .426,  596,  911 
Affg.  31  Fed.  46,  which  reversed  28  id.  715. 
Brown. 
Union  v.  Murphy,  97  U.  S.  120;  24  L.  Ed.  935 379,  526 

\   T  TTTTTORD 

Union  v.  Peters,  125  Fed.  601 ;  60  C.  C.  A.  337 636 

Revg.  120  Fed.  679. 

Eighth;  Sanborn,  Thayer,  Van  Devanter. 

Union  v.  Smith,  69  Fed.  827;  16  C.  C.  A.  451 652 

Revg.  64  Fed.  583. 

Eighth;  Caldwell,  Sanborn,  Thayer. 
Union  v.  United  States,  112  U.  S.  624;  28  L.  Ed.  828;  5  S.  Ct.  475. . .  .344, 
Revg.  7  Fed.  344.  889 

Blatchford. 

Union  v.  VanDeusen,  90  U.  S.  530;  23  L.  Ed.  128 367,  775,  874,  880 

Affg.  10  Blatchf.  119. 
Clifford. 

United  v.  Beattie,  149  Fed.  736;  79  C.  C.  A.  442 72,  408,  603,  699,  704 

Affg.  138  Fed.  136. 

Second;  Wallace,  Lacombe,  Coxe. 

United  v.  Duplessis,  155  Fed.  842;  84  C.  C.  A.  76 411,  424,  923 

Affg.  148  Fed.  31. 

First;  Colt,  Putnam,  Brown. 

United  v.  Greenman,  146  Fed.  759;  77  C.  C.  A.  22 207 

First;   Colt,  Putnam,  Brown. 

United  v.  Greenman,  153  Fed.  283 ;  82  C.  C.  A.  581 60 

Affg.  145  Fed.  538. 

First;  Colt,  Putnam,  Aldrich. 

United  v.  Silver,  128  Fed.  925;  63  C.  C  A.  110 544 

Second;   Lacombe,  Townsend,  Coxe.    Per  Curiam. 
United  States  v.  Am.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. . .  .26, 
Revg.  32  Fed.  591.  31,  317,  425,  745,  748,  804,  807,  894 

Miller. 
United  States  v.  Am.  Bell,  159  U.  S.  548;  40  L.  Ed.  255;  16  S.  Ct.  69. . .  .725 
See  68  Fed.  542  revg.  65  Fed.  86. 
Fuller. 
United  States  v.  Am.  Bell,  167  U.  S.  224;  42  L.  Ed.  144;  17  S.  Ct.  809. . .  .26, 
Affg.  68  Fed.  542.  143,  703,  727,  740,  745,  787 

Brewer;  dis.  Harlan. 
United  States  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530;  15  S.  Ct.  420. . .  .464, 
Brewer.  715,  812,  840,  842,  847,  921 

United  States  v.  Burns,  79  U.  S.  246;  20  L.  Ed.  388 498 

Field. 
United  States  v.  Goodyear,  76  U.  S.  811 ;  19  L.  Ed.  786 26 

United  States  v.  Harvey,  196  U.  S.  310;  49  L.  Ed.  492;  25  S.  Ct.  240. . .  .385, 
Affg.  38  Ct.  CI.  662.  754,  762 

Holmes. 

United  States  v.  Palmer,  128  U.  S.  262;  32  L.  Ed.  442;  9  S.  Ct.  104. . .  .714, 
Affg.  20  Ct.  CI.  432.  Bradley.  715 


CASES    EXCERPTED,    WITH    ANNOTATIONS         lxxxiii 
[References  are  to  sections] 

United  States  v.  Seymour,  153  U.  S.  353 ;  38  L.  Ed.  742 ;  14  S.  Ct.  849 ... .  725 
Gray.. 

United  States  v.  Whitney,  118  U.  S.  22;  30  L.  Ed.  53;  6  S.  Ct.  950 3, 

8    13    261 

U.  S.  Cons.  v.  Griffin,  126  Fed.  364;  61  C.  C.  A.  334 744,  753,  920 

Ninth;  Gilbert,  Ross,  Hawley. 

U.  S.  Credit  v.  American,  59  Fed.  139;  8  C.  C.  A.  49 225,  687,  698 

Affg.  53  Fed.  818. 

Second;   Wallace,  Lacombe,  Shipman. 

U.  S.  Envelope  v.  Sherman,  122  Fed.  464;  58  C.  C.  A.  624 507,  529 

Affg.  116  Fed.  200. 

First;  Putnam,  Aldrich,  Brown. 

U.  S.  Fastener  v.  Bradley,  149  Fed.  222;  79  C.  C.  A.  180 314,  692 

Affg.  143  Fed.  523. 

Second;   Lacombe,  Townsend,  Coxe. 

U.  S.  Glass  v.  Atlas,  90  Fed.  724;  33  C.  C.  A.  254 519 

Affg.  88  Fed.  493. 

Third;  Acheson,  Dallas,  Butler. 

U.  S.  Gramophone  v.  Seaman,  113  Fed.  745;  51  C.  C.  A.  419 535,  543 

Fourth;  Simonton,  Purnell,  Waddill. 

U.  S.  Hog  v.  North,  158  Fed.  818;  86  C.  C.  A.  78 380 

First;  Colt,  Putnam,  Aldrich. 

U.  S.  Mineral  v.  Manville,  125  Fed.  770;  60  C.  C.  A.  288 854 

Affg.  101  Fed.  145. 

Seventh;  Jenkins,  Grosscup,  Baker. 

U.  S.  Mitis  v.  Detroit,  122  Fed.  863;  59  C.  C.  A.  589 717,  729,  792 

Sixth;  Lurton,  Severens,  Richards. 
U.  S.  Peg  Wood  v.  Sturtevant,  125  Fed.  378;  60  C.  C.  A.  244.  .  .  .661,  694,  919 

Affg.  122  Fed.  470.  First;  Colt,  Putnam,  Aldrich. 

U.  S.  Peg-Wood  v.  Sturtevant,  125  Fed.  382;  60  C.  C.  A.  248.  .  .  .  194,  207,  210 
Affg.  122  Fed.  476. 

First;   Colt,  Putnam,  Aldrich. 

U.  S.  Repair  v.  Standard,  95  Fed.  137;  37  C.  C  A.  28 77,  218,  819 

Affg.  87  Fed.  339. 

Second;  Wallace,  Lacombe,  Shipman. 

U.  S.  Repair  v.  Assyrian,  100  Fed.  965 ;  41  C.  C.  A.  123 100,  195,  207 

Affg.  96  Fed.  235;  see  87  Fed.  339;  95  Fed.  137. 
Seventh;  Woods,  Jenkins,  Bunn. 

Universal  v.  Comptograph,  146  Fed.  981;  77  C.  C.  A.  227 57 

Revg.  142  Fed.  539. 

Seventh;  Grosscup,  Baker,  Seaman. 

Universal  v.  Sonn,  154  Fed.  665;  83  C.  C.  A.  422 219,  431,  456 

Revg.  146  Fed.  517. 

Second;  Lacombe,  Townsend,  Coxe. 

Untermeyer  v.  Freund,  58  Fed.  205;   7  C.  C  A.  183. .  .,65,  74,  281,  335, 

Affg.  50  Fed.  77.  336,  827,  838,  846 

Second;  Wallace,  Lacombe,  Shipman. 

Vance  v.  Campbell,  66  U.  S.  427;  17  L:  Ed.  168. . .  .237,  389,  405,  466,  473, 

Nelson.  604 

VanEpps  v.  United,  143  Fed.  869;  75  C.  C.  A.  77 92,  207,  431,  916 

Revg.  137  Fed.  418. 

Second,  Wallace,  Lacombe,  Townsend. 

Vermont  v.  Gibson,  56  Fed.  143;  5  C.  C.  A.  451 393,  513 

Affg.  46  Fed.  488;  50  Fed.  423. 

Second;  Wallace,  Lacombe,  Shipman. 


lxxxiv         CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Victor  v.  American,  145  Fed.  350;  76  C.  C.  A.  180 9,  349,  350 

Affg.  140  Fed.  860. 

Second ;  Lacombe,  Townsend,  Coxe.    Per  Curiam. 

Victor  v.  The  Fair,  123  Fed.  424;  61  C.  C.  A.  58 714,  761 

Seventh;   Jenkins,  Grosscup,  Baker. 

Vinton  v.  Hamilton,  104  U.  S.  485;   26  L.  Ed.  807 666 

Woods. 

Voightmann  v.  Perkinson,  138  Fed.  56;  70  C.  C.  A.  482 616,  683 

Affg.  133  Fed.  934. 

Seventh;  Jenkins,  Grosscup,  Baker. 

Volkmann  v.  Dohnhoff,  77  Fed.  978;  23  C.  C.  A.  599 224 

Second;   Lacombe,  Shipman. 

Von  Schmidt  v.  Bowers,  80  Fed.  121;    25  C.  C.  A.  323 76,  108,  375, 

Affg.  63  Fed.  572.  497,  603,  782 

Ninth;   Gilbert,  Ross. 

Voss  v.  Fisher,  113  U.  S.  213;  28  L.  Ed.  975;  5  S.  Ct.  511 473 

Woods. 

Vulcan  v.  Smith,  62  Fed.  444;  10  C.  C.  A.  493 380,  462,  592,  624 

Revg.  57  Fed.  934. 
Ninth;  Gilbert,  Knowles,  Hawley. 
Wade  v.  Metcalf,  129  U.  S.  202;  32  L.  Ed.  661;  9  S.  Ct.  271.  . .  .270,  509, 
Affg.  16  Fed.  130.  756,  757,  932 

Gray. 
Wagner  v.  Wyckoff,  151  Fed.  585;  81  C.  C.  A.  129. .  .  .222,  435,  510,  644 
Affg.  and  revg.  in  part  138  Fed.  108. 
Second;   Lacombe,  Townsend,  Coxe. 

Wales  v.  Waterbury,  101  Fed.  126;  41  C.  C.  A.  250 841,  843,  845,  846 

Modifying  87  Fed.  920. 

Second;   Wallace,  Lacombe,  Shipman. 

Wall  v.  Leek,  66  Fed.  552;  13  C.  C.  A.  630 639,  683 

Affg.  61  Fed.  291. 

Ninth;  McKenna,  Gilbert,  Hawley. 

Walker  v.  Collins,  102  Fed.  689;  42  C.  C.  A.  591 207 

Third;  Dallas,  Gray,  Bradford. 

Wanamaker  v.  Enterprise,  53  Fed.  791 ;  3  C.  C.  A.  672 251,  252 

Affg.  46  Fed.  854.    Approving  Enterprise  v.  Sargent,  28  Fed.  185;  34 
Fed. 134. 
Third;  Dallas,  Wales,  Buffington. 

Warren  v.  Casey,  93  Fed.  963;   36  C.  C.  A.  29 99,  207 

Affg.  91  Fed.  653. 

Third;   Acheson,  Buffington,  Kirkpatrick. 

Warren  v.  Keep,  155  U.  S.  265;  39  L.  Ed.  144;   15  S.  Ct.  83 286,  298, 

Shiras.  299, 830 

Warren  v.  Rosenblatt,  80  Fed.  540;   25  C.  C.  A.  625 601,  629 

Seventh;  Woods,  Jenkins,  Showalter. 
Washburn  v.  Beat  Em.  All,  143  U.  S.  275;  36  L.  Ed.  154;  12  S.  Ct.  443. . .  .61, 

356,  408,  811,  812,  864,  866,  887 
See  33  Fed.  261;  16  Fed.  661;  24  Fed.  23;  revg.  33  Fed.  261. 
Brown  ;  dissenting  Field. 

Waterman  v.  Lockwood,  125  Fed.  497;  60  C.  C.  A.  333 43 

Affg.  123  Fed.  303. 

First;  Colt,  Putnam,  Brown. 

Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334 150, 

Affg.  29  Fed.  316.  153,  164,  165,  176,  745,  750,  752,  765,  778 

Gray. 


CASES    EXCERPTED,    WITH    ANNOTATIONS  lxXXV 

[References  are  to  sections] 

Waterman  v.  Parker,  107  Fed.  141 ;  46  C.  C.  A.  203 110,  723 

Affg.  100  Fed.  544. 

Third;  Gray,  Bradford,  McPherson. 

Waterman  v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371 151,  398,  411,  510, 

Second;  Wallace,  Shipman.  511,  751,  765  778 

Watson  v.  Cincinnati,  132  U.  S.  161;  33  L.  Ed.  295;  10  S.  Ct.  45. . .  .47,  206, 
Affg.  23  Fed.  443.  653 

Fuller. 

Watson  v.  Stevens,  51  Fed.  757;  2  C.  C.  A.  500 635,  668 

Revg.  47  Fed.  117. 

First;  Gray,  Colt,  Putnam. 

Way  v.  McClarin,  96  Fed.  416;  37  C  C.  A.  516 655 

Affg.  91  Fed.  663. 

Third;  Acheson,  Bradford,  Buffington. 

Weatherhead  v.  Coupe,  147  U.  S.  322;  37  L.  Ed.  188;  13  S.  Ct.  312 768 

Revg.  16  Fed.  673;  37  Fed.  16. 

Webber  v.  Virginia,103  U.  S.  344;  26  L.  Ed.  565 920 

Field. 

Webster  v.  General,  115  Fed.  497;  53  C.  C.  A.  229 214 

Affg.  113  Fed.  756. 

First;  Colt,  Putnam,  Aldrich. 

Weierman  v.  Shaw,  157  Fed.  928;  85  C.  C.  A.  222 649 

Revg.  154  Fed.  67. 

Third;   Dallas,  Gray,  Buffington. 

Weissenthanner  v.  Dodge,  161  Fed.  915;   88  C.  C.  A.  388 787 

Affg.  156  Fed.  365. 

Third;  Dallas,  Gray,  Buffington. 
Weld  v.  Johnson,  147  Fed*  234 ;  77  C.  C.  A.  376 435 

First;   Colt,  Putnam,  Brown. 
Wells  v.  Curtis,  66  Fed.  318;    13  C.  C.  A.  494. . .  .86,  200,  245,  374,  375, 

Sixth;   Lurton,  Barr,  Severens.                 468,  598,  605,  606,  654,  908 
Wells  v.  Henderson,  67  Fed.  930;  15  C.  C.  A.  84 3,  817 

Seventh;  Woods,  Bunn,  Seaman. 
Welsbach  v.  American,  98  Fed.  613;  39  C.  C.  A.  185 82 

Second;   Wallace,  Shipman. 

Welsbach  v.  Apollo,  96  Fed.  332;  37  C.  C.  A.  508 520 

Revg.  94  Fed.  1005. 

Second;   Wallace,  Shipman. 

Welsbach  v.  Cosmopolitan,  104  Fed.  83;  43  C.  C.  A.  418 250,  544,  704 

Affg.  100  Fed.  648. 

Seventh;   Woods,  Grosscup,  Bunn. 
Welsbach  v.  Union,  101  Fed.  131 ;  41  C.  C.  A.  255 521 

Second;  Wallace,  Shipman.    Per  Curiam. 
Werner  v.  King,  96  U.  S.  218;  24  L.  Ed.  613 503,  602 

IVTtt  t  p^r 
Wessel  v.  United,  139  Fed.  11 ;  71  C.  C.  A.  423 112,  441 

Sixth;  Lurton,  Severens,  Wanty. 

West  v.  Frank,  149  Fed.  423;  79  C.  C.  A.  359 332 

Affg.  146  Fed.  388. 

Second;  Lacombe,  Townsend,  Coxe.    Per  Curiam. 
Western  v.  American,  131  Fed.  75;  65  C.  C.  A.  313 363,  452 

Seventh;  Jenkins,  Grosscup,  Baker. 
Western  v.  Ansonia,  114  U.  S.  447;   29    L.  Ed.  210;   5  S.  Ct.  447. .  .  .218, 

Woods.  676,  822 


lxxxvi         CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Western  v.  Empire,  136  Fed.  599 15 

Western  v.  Galesburg,  144  Fed.  684;   75  C.  C.  A.  500 659 

Seventh;  Grosscup,  Baker,  Landis. 

Western  v.  LaRue,  139  U.  S.  601 ;  35  L.  Ed.  294;  1  S.  Ct.  670 616,  634 

Affg.  28  Fed.  85;   31  Fed.  80. 

Brown. 

Western  v.  North,  135  Fed.  79;  67  C.  C.  A.  553. .  .  .277,  308,  481,  624,  700, 

Sixth ;  Lurton,  Severens,  Richards.  748,  800 

Western  v.  Robertson,  142  Fed.  471;    73  C.  C.  A.  587.... 496,  510,  641, 

Second;  Wallace,  Lacombe,  Townsend.  761,  767 

Western  v.  Rochester,  145  Fed.  41 ;  75  C.  C.  A.  313 398,  698 

Affg.  132  Fed.  814. 

Second;  Wallace,  Lacombe,  Townsend.    Per  Curiam. 

Western  v.  Sperry,  58  Fed.  186;   7  C.  C.  A.  164 3,  19,  20,  54,  606 

Rehearing  denied  59  Fed.  295. 
Seventh;  Fuller,  Woods,  Jenkins. 

Western  v.  Sperry,  59  Fed.  295;  8  C.  C.  A.  129 361 

Rehearing  s.  c.  58  Fed.  186  approved;  disapproving  Roll  Paper  Co.  v. 
Kopp,  44  Fed.  609. 
Seventh;  Fuller,  Woods,  Jenkins. 

Western  v.  Standard,  84  Fed.  654;  28  C.  C.  A.  512 531,  602 

Affg.  81  Fed.  192. 

Seventh;  Woods,  Jenkins,  Bunn. 
Western  v.  Williams- Abbott,  108  Fed.  952;   48  C.  C.  A.  159....  116,  352, 
Revg.  83  Fed.  842.  353,  542 

Sixth;  Lurton,  Day,  Severens. 

Western  Union  v.  Am.  Bell,  125  Fed.  342;  60  C.  C.  A.  220 897 

Revg.  105  Fed.  684. 

First;  Putnam,  Aldrich,  Brown. 
Westinghouse  v.  Boyden,  170  U.  S.  537;    42  L.  Ed.  1136;    18  S.  Ct.  707 
. . .  .207,  229,  380,  426,  496,  503,  632,  641,  644,  686,  817 
Revg.  and  modifying  66  Fed.  997;  Affg.  70  Fed.  816. 
Brown;   dissenting  Shiras,  Brewer,  Gray,  McKenna. 

Westinghouse  v.  Catskill,  121  Fed.  831 ;  58  C.  C.  A.  167 74,  76 

Revg.  110  Fed.  377. 
Second;  Wallace,  Townsend,  Coxe. 

Westinghouse  v.  Christensen,  104  Fed.  622;  44  C.  C.  A.  92 542 

Second;  Lacombe,  Shipman.    Per  Curiam. 

Westinghouse  v.  Christensen,  128  Fed.  437;  63  C.  C.  A.  179 93 

Revg.  in  part  123  Fed.  306;  see  113  Fed.  594. 
Second;  Wallace,  Townsend,  Coxe. 
Westinghouse  v.  Edison,  63  Fed.  588;    11  C.  C.  A.  342.... 229,  244,  361, 
Revg.  55  Fed.  490.  610,  638,  659 

Third;  Acheson,  Dallas,  Butler. 
Westinghouse  v.  Great  Northern,  88  Fed.  258 ;  31  C.  C.  A.  525 ... .  94,  555,  723 
Second;  Wallace,  Shipman. 

Westinghouse  v.  Hien,  159  Fed.  936;  87  C.  C.  A.  142 584 

Seventh;   Baker,  Seaman,  Sanborn. 

Westinghouse  v.  Montgomery,  139  Fed.  868;  71  C.  C.  A.  582 564 

Revg.  131  Fed.  80. 
Second;  Wallace,  Townsend.    Per  Curiam. 

Westinghouse  v.  Montgomery,  153  Fed.  890;  82  C.  C.  A.  636 691 

See  decisions  on  same  patent,  131  Fed.  86,  reversed  in  139  Fed.  868; 
108  Fed.  221;   113  Fed.  884;   117  Fed.  309;   119  Fed.  365. 
Second;   Wallace,  Townsend,  Holt. 


CASES   EXCERPTED,    WITH   ANNOTATIONS       lxxxvii 

[References  are  to  sections] 

Westinghouse  v.  New  England,  110  Fed.  753;  49  C.  C.  A.  151 87,  88 

Affg.  103  Fed.  951. 

Second;  Wallace,  Lacombe,  Shipman. 
Westinghouse  v.  New  York,  63  Fed.  962;  11  C.  C.  A.  528. . .  .197,  217,  361, 
Affg.  in  part  59  Fed.  581.  375,  380,  440,  606 

Second;  Wallace,  Lacombe,  Shipman. 

Westinghouse  v.  New  York,  96  Fed.  991 ;  37  C.  C.  A.  649 55 

Affg.  87  Fed.  882. 

Second;  Lacombe,  Shipman,  Thomas. 

Westinghouse  v.  New  York,  119  Fed.  874;  56  C.  C.  A.  404 223,  502 

See  59  Fed.  581 ;  63  Fed.  962;  112  Fed.  424. 
Second;  Wallace,  Lacombe,  Townsend. 

Westinghouse  v.  New  York,  140  Fed.  545;  72  C.  C.  A.  61 845 

See  115  Fed.  645;   131  Fed.  607. 

Second;   Wallace,  Lacombe,  Townsend. 

Westinghouse  v.  Prudential,  158  Fed.  987;  86  C.  C.  A.  434 456 

Affg.  155  Fed.  749.      Third;  Dallas,  Gray,  Buffington. 

Westinghouse  v.  Saranac,  113  Fed.  884;  51  C.  C.  A.  514 235,  650,  851 

Affg.  108  Fed.  221. 

Second ;  Wallace,  Lacombe,  Townsend. 
Westinghouse  v.  Stanley,  133  Fed.  167;   68  C.  C.  A.  523. . .  .76,  257,  407, 
Revg.  129  Fed.  140.  598,  620,  641,  691,  937 

See  121  Fed.  831 ;  106  Fed.  724;  118  Fed.  562; 
110  Fed.  377;    129  Fed.  213;    125  Fed.  6; 
133  Fed.  396  ;  128  Fed.  751. 
First;  Putnam,  Aldrich,  Brown. 

Westinghouse  v.  Stanley,  138  Fed.  823;  71  C.  C.  A.  189 257,  421,  790 

See  133  Fed.  167. 

First;  Putnam,  Aldrich,  Brown. 

Westinghouse  v.  Triumph,  97  Fed.  99;   38  C.  C.  A.  65 332,  337 

Sixth;  Taft,  Lurton,  Severens. 

Westinghouse  v.  Union,  117  Fed.  495;  55  C.  C.  A.  230 622 

Affg.  and  revg.  112  Fed.  417. 

Second;  Wallace,  Lacombe,  Townsend. 

Weston  v.  Empire,  136  Fed.  599;  69  C.  C.  A.  329 308 

Affg.  131  Fed.  90. 

Second;  Lacombe,  Townsend,  Coxe.    Per  Curiam. 

Weston  v.  Stevens,  134  Fed.  574;  67  C.  C.  A.  374 871 

Revg.  119  Fed.  181. 

Second;  Wallace,  Lacombe,  Townsend. 

Wheaton  v.  Norton,  70   Fed.  833;  17  C.  C.  A.  447 207,  456 

Revg.  57  Fed.  927.    Modifying  Norton  v.  Jensen,  49  Fed.  859. 
Ninth;  Ross,  Hawley,  Morrow. 

Whippany  v.  United,  87  Fed.  215;  30  C.  C.  A.  615 564 

Revg.  83  Fed.  485. 
Third;  Acheson,  Butler,  Bradford. 

Whitaker  v.  Huntington,  95  Fed.  471 ;  37  C.  C.  A.  151 691 

Third;   Acheson,  Dallas,  Buffington. 
White  v.  Dunbar.  119  U.  S.  47;   30  L.  Ed.  303;   7  S.  Ct.  72. . .  .217,  223, 
Bradley.  679,  871 

Whiteley  v.  Swayne,  74  U.  S.  685;  19  L.  Ed.  199 20,  811,  866 

Nelson. 

Whitlev  v.  Winsor,  127  Fed.  33S;  62  C.  C.  A.  220 195 

Affg.  117  Fed.  851. 

First;  Colt,  Putnam,  Aldrich. 


lxxxviii      CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Whittemore  v.  Reinhardt,  159  Fed.  707;   86  C.  C.  A.  461 201 

Second;   Lacombe,  Coxe,  Ward. 

Wicke  v.  Ostrum,  103  U.  S.  461 ;  26  L.  Ed.  409 466,  468,  607 

Waite. 

Wickelman  v.  Dick,  88  Fed.  264;   31  C.  C.  A.  530 107,  697 

Affg.  74  Fed.  799;  also  80  Fed.  519. 

Second;  Wallace,  Lacombe,  Shipman. 

Wilcox  v.  Sherborne,  123  Fed.  875 ;   59  C.  C.  A.  363 216,  896 

Affg.  119  Fed.  371. 

Third;     Acheson,    Buffington,    Kirkpatrick.     Dissent- 
ing in  part  Kirkpatrick. 

Willcox  v.  Merrow,  93  Fed.  206 ;  35  C.  C.  A.  269 245,  624 

Second;  Wallace,  Lacombe,  Shipman. 

Williams  v.  American,  86  Fed.  641 ;  30  C.  C.  A.  318 64 

Revg.  on  rehearing  84  Fed.  197. 

Seventh;   Woods,  Jenkins,  Showalter. 

Williams  v.  Breitling,  77  Fed.  285;   23  C.  C.  A.  171 551,  567,  579 

Seventh;  Woods,  Jenkins,  Showalter. 

Williams  v.  Goodyear,  54  Fed.  498 ;  4  C.  C.  A.  485 601 

Affg.  49  Fed.  245. 

Second;  Wallace,  Lacombe.    Per  Curiam. 

Williams  v.  Kemmerer,  145  Fed.  928;  76  C.  C.  A.  466 207,  333 

Affg.  136  Fed.  210.        Third;  Dallas,  Gray,  Cross. 

Williams  v.  Wrapper  Co.  84  Fed.  197;  28  C.  C.  A.  325 672 

Affg.  81  Fed.  200. 

Seventh;  Woods,  Jenkins,  Showalter. 

Willis  v.  Miller,  121  Fed.  985;  58  C.  C.  A.  286 404 

Second;   Wallace,  Coxe. 

Wills  v.  Scranton,  153  Fed.  181 ;  82  C.  C.  A.  355 323,  672 

Affg.  147  Fed.  525. 

Third;  Gray,  Buffington,  Lanning. 

Wilson  v.  Ansonia,  54  Fed.  495;  4  C.  C.  A.  484 596 

Revg.  48  Fed.  681. 

Second;   Wallace,  Lacombe,  Shipman.     Per  Curiam. 

Wilson  v.  Barnum,  8  How.  258;  12  L.  Ed.  1070 113 

Taney. 

Wilson  v.  Calculagraph,  144  Fed.  91;  75  C.  C.  A.  249 195,  217 

Revg.  132  Fed.  20. 

First;  Colt,  Putnam,  Aldrich. 
Wilson  v.  Consolidated,  88  Fed.  286;  31  C.  C.  A.  533. . .  .551,  554,  561,  563, 
Revg.  83  Fed.  201.  575,  579 

First;   Putnam,  Brown,  Lowell. 

Wilson  v.  McCormick,  92  Fed.  167;  34  C.  C.  A.  280 195 

Seventh;   Woods,  Jenkins,  Showalter. 

Wilson  v.  Rousseau,  4  How.  646;    11    L.  Ed.  1141 175,  418 

Nelson  ;  dissenting  McLean,  Wayne,  Woodbury. 

Wilson  v.  Sanford,  10  How.  99;  13  L.  Ed.  344 714 

Taney. 

Wilson  v.  Simpson,  9  How.  109;   13  L.  Ed.  66 524 

Wayne. 

Wilson  v.  Townley,  125  Fed.  491 ;  60  C.  C.  A.  327 65,  442,  612 

Eighth;  Sanborn,  Thayer,  VanDevanter. 
Winans  v.  Denmead,  15  How.  330;    14  L.  Ed.  717.  .  .  .222,  229,  459,  530, 

601,602,655,679,903 
Curtis;  dissenting  Taney,  Catron,  Daniel,  Campbell. 


CASES    EXCERPTED,    WITH    ANNOTATIONS         lxxxix 
[References  are  to  sections 

Wing  v.  Anthony,  106  U.  S.  142;  27  L.  Ed.  110;   1  S.  Ct.  93 871 

Woods. 

Wisconsin  v.  American,  125  Fed.  761 ;  60  C.  C.  A.  529 593 

Seventh;  Jenkins,  Grosscup,  Baker. 

Wise  v.  Allis,  76  U.  St  737;  19  L.  Ed.  784 795 

Miller. 

Withington  v.  Kinney,  68  Fed.  500;  15  C.  C.  A.  531 366,  367,  756 

Sixth;  Taft,  Lurton,  Severens. 

Wold  v.  Thayer,  148  Fed.  227 ;    78  C.  C.  A.  350 108,  385 

Affg.  142  Fed.  776. 

Seventh;  Grosscup,  Seaman,  Baker. 

Wolff  v.  Du  Pont,  134  Fed.  862 ;  67  C.  C.  A.  488 620,  917 

Affg.  122  Fed.  944. 
Third;   Acheson,  Dallas,  Lanning. 
Wollensak  v.  Reiher,  115  U.  S.  87;  29  L.  Ed.  355;  5  S.  Ct.  1132. . .  .213,  729 

Matthews. 

Wollensak  v.  Reiher,  115  U.  S.  96;   29  L.  Ed.  350;   5  S.  Ct.  1137. . .  .876, 

Matthews.  877,  879 

Wollensak  v.  Sargent,  151  U.  S.  221;  38  L.  Ed.  137;   14  S.  Ct.  291.  . .  .195, 

Affg.  33  Fed.  840;  41  Fed.  53.  Fuller.  239,  651,  731,  877 

Wood  v.  Underhill,  5  How.  1 ;  12  L.  Ed.  23 266,  914,  917 

Taney. 

Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed.  939 7,  11,  13,  260,  316, 

Strong.  380,  407,  413,  592,  729,  795 

Woodmansee  v.  Williams,  68  Fed.  489;  15  C.  C.  A.  520 271,  719,  729, 

Sixth;  Taft,  Lurton,  Hammond.  732,  793 

Woods  v.  Carl,  203  U.  S.  358 ;  51  L.  Ed.  219 ;  27  S.  Ct.  99 920 

Affg.  75  Ark.  328. 

Peckham;  dissenting  Dav. 

Woodward  v.  Boston,  60  Fed.  283;  8  C.  C.  A.  622 451,  506 

Affg.  53  Fed.  481 ;  rehearing  denied  63  Fed.  609. 
First;   Colt,  Putnam,  Nelson. 

Woodward  v.  Boston,  63  Fed.  609;   11  C.  C.  A.  353 387,  790,  807 

Denying  rehearing  on  60  Fed.  283. 

First;  Colt,  Putnam,  Nelson.    Per  Curiam. 

Woodworth  v.  Wilson,  4  How.  712;   11  L.  Ed.  1171 798 

Nelson. 
Worden  v.  Searles,  121  U.  S.  14;  30  L.  Ed.  853;  7  S.  Ct.  814. . .  .578,  725,  871 
Revg.  13  Fed.  716;  11  Fed.  501.  Blatchford. 

Worley  v.  Loker,  104  U.  S.  340;  26  L.  Ed.  821 369,  857,  858 

Woods. 

Wright  v.  Clinton,  67  Fed.  790;   14  C.  C.  A.  646 215,  673 

Revg.  65  Fed.  425. 

First;  Colt,  Nelson,  Aldrich. 

Wright  v.  Fitz,  133  Fed.  394;  66  CCA.  456 473 

First;   Putnam,  Aldrich,  Brown. 
Wright  v.  Yuengling,  155  U.  S.  47;  39  L.  Ed.  64;  15  S.  Ct.  1 . . .  .201,  202,  596 
Brown. 

Writing  Machine  v.  Elliott,  108  Fed.  628;  47  C  C  A.  536 442 

Affg.  106  Fed.  507.     Second;   Wallace,  Shipman. 

Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;  10  S.  Ct.  884 273,  469, 

473,  869,  871,  875 
Affg.  in  part  17  Fed.  531 ;  revg.  in  part  26  Fed.  104.    Referring  to  38 
Fed.  917;  32  Fed.  167;  6  Fed.  377. 
Blatchford. 


XC  CASES    EXCERPTED,    WITH    ANNOTATIONS 

[References  are  to  sections] 

Yale  v.  Greenleaf,  117  U.  S.  554;  29  L.  Ed.  952;  6  S.  Ct.  846 223,  657,  666 

Woods. 

Yale  v.  James,  125  U.  S.  447;  31  L.  Ed.  807;  8  S.  Ct.  967 870,  871,  885 

Affg.  22  Blatchf.  294. 
Blatchford. 

Yale  v.  Sargent,  117  U.  S.  373;  29  L.  Ed.  950;  6  S.  Ct.  931 473 

Matthews. 

Yale  v.  Sargent,  117  U.  S.  536;   29  L.  Ed.  954;   6  S.  Ct.  934 270,  284, 

Affg.  17  Blatchf.  244;  except  as  to  costs.  287,  288,  342,  883 

Blatchford. 

Yawman  v.  Library,  147  Fed.  246;   77  C.  C.  A.  388 194 

First;   Colt,  Putnam,  Aldrich. 

Yawman  v.  Vetter,  159  Fed.  443;  86  C.  C.  A.  473 612,  632 

Second;  Lacombe,  Coxe,  Ward. 

Young  v.  Wolfe,  130  Fed.  891 ;  65  C.  C.  A.  199 107 

Affg.  120  Fed.  956. 

Second;   Wallace,  Lacombe,  Townsend. 

Zane  v.  Soffe,  110  U.  S.  200;  28  L.  Ed.  119;  3  S.  Ct.  562 389,  391 

Affg.  2  Fed.  229. 
Bradley. 

Zinnser  v.  Krueger,  48  Fed.  296;   1  C.  C.  A.  73 687 

Affg.  45  Fed.  572.    Revg.  39  Fed.  111. 
Third;  Acheson,  Wales. 


ADDENDUM   TO 

TABLE  OF  CASES  EXCERPTED 

WITH  ANNOTATIONS 

American  Mattress  v.  Springfield,  165  Fed.  191 ;  CCA 496 

Seventh;  Grosscup,  Baker,  Landis. 

Automatic  v.  Pneumatic,  166  Fed.  288;  C  C  A 613,  811 

Revg.  158  Fed.  415. 

First;  Colt,  Lowell,  Aldrich. 

Barnard  v.  Gibson,  7  How.  650;   12  L.  Ed.  857 892 

McLean. 

Benbow-Brammer  v.  Straus,  166  Fed.  114;  CCA 378 

Affg.    158  Fed.  627;   see  98  Fed.  880,    106  Fed.  918,    132  Fed.  614, 
144  Fed.  429,  149  Fed.  430,   157  Fed.  559,   159  Fed.  161. 
Second;  Lacombe,  Coxe,  Ward. 

Boston  v.  Pennsylvanian,  164  Fed.  557;  CCA 229,  620 

Affg.  156  Fed.  787. 

First;  Putnam,  Lowell,  Aldrich. 

Carnegie  v.  Colorado,  165  Fed.  195;   CCA 561,  717 

Eighth;  Van  Devanter,  Adams,  Philips. 

Chester  v.  Tindel-Morris,  165  Fed.  899;  C  C  A 562 

Affg.  163  Fed.  304. 

Third;  Dallas,  Lanning. 

Clifford  v.  Capell,  165  Fed.  193;  C  C  A 897 

Third;  Gray,  Buffington,  Archbald. 

Coffield  v.  Fletcher,  167  Fed.  321 ;  C  C  A 887 

Sixth;  Lurton,  Severens,  Richards. 

Delaware  &  A.  Tel.  v.  Delaware,  50  Fed.  677;  2CC.A.1 479 

See  47  Fed.  633. 
Third;  Acheson,  Butler,  Green. 

Diamond  v.  Brown,  166  Fed.  306 ;  C.  C.  A .' .  .834,  836,  842 

Affg.  155  Fed.  753;  see  130  Fed.  896,    137  Fed.  910,    111  Fed.  3S0. 
Second;  Lacombe,  Coxe,  Ward. 

Donner  v.  American,  165  Fed.  199;   CCA 702 

Revg.  160  Fed.  971. 
Third;  Gray,  Buffington,  Cross. 

Dunn  v.  Standard,  163  Fed.  521 ;  C  C  A 208 

Sixth;  Lurton,  Severens,  Richards. 

Edison  v.  Novelty,  167  Fed.  977;  C  C  A 363,  391,  591,  631 

Revg.  161  Fed.  549. 

Third;  Dallas,  Gray,  Archbald. 
Excelsior  v.  Pacific,  185  U.  S.  282;  46  L.  Ed.  910;   22  S.  Ct.  681 .. .  .714, 
See  109  Fed.  497.  718,  722 

Brown. 

Expanded  v.  General,  164  Fed.  849;  CCA 817 

Revg.  157  Fed.  564;  see  Bradford  v.  Expanded,  146  Fed.  984. 
Sixth;  Lurton,  Severens,  Richards. 


xcii  CASES   EXCERPTED,    WITH   ANNOTATIONS 


Fox  v.  Knickerbocker,  165  Fed.  442;  C.  C.  A 283,  322 

Affg.  158  Fed.  422. 

Second;  Lacombe,  Coxe,  Noyes. 

Frasch  v.  Moore,  211  U.  S.  1;  29  S.  Ct.  6;  L.  Ed 143 

Affg.  27  App.  D.  C.  25. 

Fuller;  dissenting,  White,  McKenna. 

Fullerton  v.  Anderson-Barngrover,  166  Fed.  443;  CCA 836,  842 

Ninth;  Gilbert,  Ross,  Morrow;  dissenting,  Ross. 

Goshen  v.  Single  Tube,  166  Fed.  431 ;  CCA 513,  755 

See  142  Fed.  531,  157  Fed.  678. 
Seventh;  Baker,  Seaman,  Sanborn. 

Hartford  v.  Hollander,  163  Fed.  948;  C  C  A 144 

Revg.  158  Fed.  103. 

Second ;  Coxe,  Ward,  Noyes.     Per  Curiam. 

Hemolin  v.  Hardway,  166  Fed.  434;   C  C  A 846 

See  138  Fed.  54. 
Second;  Lacombe,  Ward,  Noyes. 
Holzapfels  v.  Rahtjens,  183  U.  S.  51 ;  46  L.  Ed.  49;  22  S.  Ct.  6. . .  .398,  928 
Revg.  101  Fed.  257.  Peckham. 

Interior  v.  Perkins,  80  Fed.  528;  25  C  C  A.  613 672,  696 

Revg.  51  Fed.  286. 

Seventh;  Woods,  Jenkins,  Bunn. 

Johnson  v.  Mueser,  212  U.  S.  283;  L.  Ed.;  29  S.  Ct,  390 143 

Affg.  29  App.  D.  C  61;  following  Frasch  v.  Moore,  211  U.  S.  1. 
Fuller. 

Kilborn  v.  Liveright,  165  Fed.  902;  CCA 775 

Affg.  159  Fed.  494. 

Third;  Gray,  Buffington,  Cross. 

Kuhn  v.  Lock-Stub,  165  Fed.  445;  CCA 323,  696 

Affg.  157  Fed.  235. 

Second;  Lacombe,  Coxe,  Ward. 

Lewis  v.  Premium,  163  Fed.  950;   CCA 390,  484 

Eighth;  Van  Devanter,  Munger. 

Loew  v.  German-American,  164  Fed.  855;  CCA 390,  817 

Affg.  in  part  155  Fed.  124.    See  Uhlman  v.  Bartholomae,  41  Fed.  132; 
Uhlman   v.  Arnholdt,  53  Fed.  485,    German- American  v.  Erdrich, 
98  Fed.  300. 
Sixth;  Lurton,  Severens,  Richards. 

Maimen  v.  Union,  165  Fed.  440;  C.  C  A 603,  777 

Affg.  161  Fed.  748. 

Third;  Grav,  Buffington,  Cross. 

Manville  v.  Excelsior,  167  Fed.  538;   C  C  A 603 

Affg.  162  Fed.  486. 

Second;  Lacombe,  Coxe,  Ward. 

Marshall  v.  Pettingell- Andrews,  164  Fed.  862;  CCA 201,  636 

Affg.  153  Fed.  579. 

First;  Colt,  Putnam,  Lowell. 

McSherry  v.  Dowagiac,  163  Fed.  34;  89  C  C  A.  512 837 

Rehearing  of  160  Fed.  948  (denied). 
Sixth;  Cochran. 

Mica  Insulator  v.  Commercial,  166  Fed.  440;  C  C  A 821 

Revg.  157  Fed.  90;   see  137  Fed.  928. 
Seventh;  Grosscup,  Baker.  Seaman. 

Morse  Chain  v.  Link-Belt,  164  Fed.  331 ;  C  C  A 358 

Seventh;  Grosscup,  Baker,  Seaman. 


ADDENDUM  xcill 


Morton  v.  Llewellyn,  164  Fed.  693;  C.  C.  A 626,  795 

Ninth;  Gilbert,  Ross,  Morrow. 

National  v.  Aiken,  163  Fed.  254;  CCA 603,  624  654,  673 

Affg.  157  Fed.  691  and  159  Fed.  1023. 
Sixth;  Lurton,  Severens,  Richards. 

Orr  v.  Murray,  163  Fed.  54;  89  C  C  A.  492 838 

Affg.  138  Fed.  564  and  153  Fed.  369. 
Seventh;  Grosscup,  Baker,  Seaman. 

Potts,  In  re,  166  U.  S.  263;  41  L.  Ed.  994;   17  S.  Ct.  520 897 

Revg.  77  Fed.  454;  see  71  Fed.  574. 
Gray. 

Pratt  v.  Paris,  168  U.  S.  255;  42  L.  Ed.  458;   18  S.  Ct.  62 724 

Affg.  40  N.  E.   1032. 
Brown. 

Russell  v.  Place,  94  U.  S.  606;   24  L.  Ed.  214 893 

See  Russell  v.  Dodge,  93  U.  S.  460. 
Field. 

The  Fair  v.  Dover,  166  Fed.  117;  C.  C  A 744 

Seventh;  Grosscup,  Baker,  Seaman. 

Thibodeau  v.  Hildreth,  124  Fed.  892;  60  C.  C  A.  78 368 

Affg.  117  Fed.  146. 

First;  Putnam,  Brown,  Lowell. 

Thomson  v.  Bank,  53  Fed.  250;  3  C  C  A.  518 608,  624,  631,  756 

Eighth;  Caldwell,  Sanborn,  Shiras. 

Warren  v.  Blake,  163  Fed.  263;  C  C  A 598, 608, 631 

Affg.  155  Fed.  285. 

First;  Colt,  Putnam,  Lowell. 

Warren  v.  City,  166  Fed.  309;  CCA 629,  779,  851 

Sixth;  Lurton,  Severens,  Cochran. 

Westmoreland  v.  Hogan,  167  Fed.  327;  C  C  A 598,  926 

Affg.  163  Fed.  289. 

Third;    Dallas,  Gray,  Buffington. 

Wilfley  v.  New  Standard,  164  Fed.  421 ;   CCA 752,  755 

Ninth;  Gilbert,  Ross,  Morrow. 

Winans  v.  N.  Y.  &  Erie  R.  21  How.  88;  16  L.  Ed.  68 398 

Grier. 

Yesbera  v.  Hardesty,  166  Fed.  120;  CCA 283,  841,  845 

See  111  Fed.  386,   133  Fed.  916. 
Sixth;  Lurton,  Severens,  Richards. 


TABLE  OF  CASES  CITED 

With  volume  and  page  in  standard  American  reports 
[References  are  to  sections] 

Accident  v.  Crandal,  120  U.  S.  527;  30  L.  Ed.  740;  7  S.  Ct.  685 407 

Accumulator  v.  Consolidated,  53  Fed.  793 577 

Acker,  In  re,  66  Fed.  290 536,  577 

Ackerman,  Ex  parte,  C.  D.  1869,  75 775 

Acme  v.  Carey,  96  Fed.  344 180 

Adams  v.  Adams,  91  N.  Y.  381    164 

Adams  v.  Bellaire,  141  U.  S.  539;  35  L.  Ed.  849;  12  S.  Ct.  66  .  .  .  380,  600, 

603,  608,  635,  636,  672,  827 

Adams  v.  Bellaire,  28  Fed.  360 9 

Adams  v.  Bellaire,  25  Fed.  270 827 

Adams  v.  Bridgewater,  26  Fed.  324 219,  718 

Adams  v.  Burks,  84  U.  S.  453;   21  L.  Ed.  700  .. .  418,  450,  505,  512,  523, 

524,  576,  757,  763,  899 

Adams,  Ex  parte,  3  O.  G.  150 775 

Adams  v.  Howard,  22  Fed.  656 751 

Adams  v.  Jones,  12  Pet,  207 ;  9  L.  Ed.  205 113 

Adams  v.  Jones,  1  Fish.  527 ;  Fed.  Cas.  57 2,  7,  18 

Adams  v.  Lindell,  77  Fed.  432;  23  C.  C.  A.  223   ...  12,  195,  212,  214,  376, 

378,  437,  441,  468,  473,  507,  671,  937 

Adams  v.  Tannage,  81  Fed.  178;  26  C.  C.  A.  326 561 

Adams  v.  Woods,  6  U.  S.  336;  2  L.  Ed.  334 921 

Adee  v.  Thomas,  41  Fed.  342 213 

Adriance  v.  McCormick,  55  Fed.  287 505,  765 

Adriance  v.  National,  98  Fed.  118    924 

iEtna  v.  Ward,  140  U.  S.  76;  35  L.  Ed.  371 ;  11  S.  Ct.  720 131 

Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed.  177  ..  .  2,  18,  261,  367,  613,  629, 

682,  704,  795,  811,  856 

Ager  v.  Murray,  105  U.  S.  126;  26  L.  Ed.  942 151,  921 

Ah  Know  v.  Nunan,  5  Sawy.  552;  Fed.  Cas.  6546 667,  707,  708 

Aikin  v.  Dolan,  3  Fish.  197;    Fed.  Cas.  110 103,  343,  413,  600 

Aikin  v.  Manchester,  2  Cliff.  435;  Fed.  Cas.  113 523,  524 

Ajax  v.  Pettibone,  125  Fed.  748;  60  C.  C.  A.  516 490 

Alabastine  v.  Payne,  27  Fed.  559    476,  555 

Albany  v.  Felthousen,  20  Fed.  633 273 

Albright  v.  Celluloid,  2  B.  &  A.  629;   Fed.  Cas.  147 629 

Albright  v.  Teas,  106  U.  S.  613;  27  L.  Ed.  295;   1  S.  Ct.  550   ...  714,  724 

Alden  v.  Dewey,  1  Story,  336;  Fed.  Cas.  153 368,  503 

Allen  v.  Baltimore,  114  U.  S.  311 ;  29  L.  Ed.  200;  5  S.  Ct.  925 553 

Allen  v.  Blunt,  3  Story,  742;    Fed.  Cas.  216 880 

Alien  v.  Culp,  166  U.  S.  501 ;  41  'L.  Ed.  1093;   17  S.  Ct.  644 883 

Allen  v.  Deacon,  21  Fed.  122 777 

Allen  v.  Hall,  1  A.  K.  Marsh,  425 386 


XCV1  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Allen  v.  Riley,  203  U.  S.  347;  51  L.  Ed.  216;  27  S.  Ct.  95 920 

Allen  v.  Rawson,  1  M.  G.  &  S.  574 368 

Allington  v.  Booth,  78  Fed.  878;   24  C.  C   A.  378 551 

Allington  v.  Globe,  89  Fed.  865 351 

Alvin  v.  Scharling,  100  Fed.  87 213,  384,  797 

Alywin  v.  Bray,  Y.  &  J.  518 798 

American  v.  Ament,  74  Fed.  789    756 

American  v.  American,  4  Fish.  284;  Fed.  Cas.  302 856,  857 

American  v.  Brown,  58  Fed.  409 717 

American  v.  Buckskin,  72  Fed.  508;  18  C.  C.  A.  662 323,  325, 

326,  709,  817 

American  v.  Bullard,  17  Blatch.  160;  Fed.  Cas.  294 295,  899 

American  v.  Chicago,  41  Fed.  522 568,  717,  730 

American  v.  Crossman,  57  Fed.  1021 510 

American  v.  Crossman,  61  Fed.  888;   10  C.  C.  A.  146 510 

American  v.  Elizabeth,  4  Fish.  189;  Fed.  Cas.  312 567,  629,  680 

American  v.  Fiber,  90  U.  S.  566;  23  L.  Ed.  31 310,  649,  774, 

823,  871,  877 

American  v.  Garrett,  110  U.  S.  288;  28  L.  Ed.  149;  4  S.  Ct.  90 183 

American  v.  Helmstetter,  142  Fed.  978;  74  C.  C.  A.  240 47 

American  v.  Kitsell,  35  Fed.  521 338,  764 

American  v.  Knopp,  44  Fed.  609 361 

American  v.  Laroway,  28  Fed.  141 213,  384 

American  v.  Leeds,  87  Fed.  873 626 

American  v.  Ligowski,  31  Fed.  466    587 

American  v.  McKeesport,  57  Fed.  661    254 

American  v.  Mills,  162  Fed.  440;  89  C.  C.  A.  171    777 

American  v.  National,  51  Fed.  229;  2  C.  C.  A.  165 120,  535,  539, 

541,  544,  561 

American  v.  National,  90  Fed.  824 568 

American  v.  Newton,  82  Fed.  732    228 

American  v.  Pennock,  164  U.  S.  26;  41  L.  Ed.  337;   17  S.  Ct.  1 600 

American  v.  Sexton,  139  Fed.  564;  71  C.  C.  A.  548 817 

American  v.  Simmons,  106  U.  S.  89;  27  L.  Ed.  79;  IS.  Ct.  52   .  .  476,  523, 

524,  717,  899 

American  v.  Southern,  34  Fed.  795 568,  801 

American  v.  Streat,  83  Fed.  700;  28  C.  C.  A.  18  .  . 525 

American  v.  Vail,  15  Blatch.  315;   Fed.  Cas.  308 550 

American  v.  Western,  58  Fed.  410 717 

American  v.  Weston,  59  Fed.  147;  8  C.  C.  A.  56 74,  80,  408 

American  v.  Wyeth,  139  Fed.  389;  71  C.  C.  A.  485 599 

Am.  Bell  Tel.  v.  Dolbear,  15  Fed.  488 688,  770 

Am.  Bell  Tel.  v.  Peoples,  22  Fed.  309 61 

Am.  Bell  Tel.  v.  Spencer,  8  Fed.  509 375 

Am.  Bell  Tel.  v.  United  States,  68  Fed.  542;  15  C.  C.  A.  569 789 

American  Ins.  Co.  v.  Canter,  1  Pet,  511 ;  7  L.  Ed.  242 140 

Ames  v.  Howard,  1  Sumn.  482;    Fed.  Cas.  326 222,  472,  687,  903 

Amorv  v.  Lawrence,  3  Cliff.  523 ;   Fed.  Cas.  336 183 

Ammunition  v.  Nordenfelt,   1   Ch.  630 365 

Amv  v.  Supervisors,  11  Wall.  136;  20  L.  Ed.  101 481 

Anderson  v.  Collins,  122  Fed.  451;   58  C.  C.  A.  669 102,  673 

Anderson  v.  Eiler,  50  Fed.  775;   1  C.  C.  A.  659 759,  764 

Andrea  v.  Redfield,  98  U.  S.  225;  25  L.  Ed.  158 921 

Andres  v.  Lee,  21  N.  C.  319 305 

Andrews  v.  Cross,  8  Fed.  269 916 


TABLE    OF    CASES    CITED  XCV11 

[References  are  to  sections] 

Andrews  v.  Hovey,  123  U.  S.  267;  31  L.  Ed.  160;  8  S.  Ct.  101 18,  20, 

82,  853 
Andrews  v.  Hovey,  124  U.  S.  694;  31  L.  Ed.  557;  8  S.  Ct.  676  .  .     .  74,  82, 

853,  932 

Andrews  v.  National,  76  Fed.  166;  22  C.  C.  A.  110 386,  893 

Andrews  v.  National,  77  Fed.  774;  23  C.  C.  A.  454 112 

Andrews  v.  Pipe,  61  Fed.  782 120,  539 

Andrews  v.  Thum,  67  Fed.  911 ;  15  C.  C.  A.  67 655 

Angier  v.  Eaton,  98  Pa.  594 755 

Animarium  v.  Neiman,  98  Fed.  14 794 

Ansonia  v.  Electrical,  144  U.  S.  11;  36  L.  Ed.  327;  12  S.  Ct.  601   .  .  94,  331, 

431,  440,  599,  635,  656,  662,  671,  672,  676,  689 
Appleton  v.  Star,  60  Fed.  411;    9  C.  C.  A.  42   ...  188,  427,  672,  707,  817 

Arkell,  In  re,  15  Blatch.  437;  Fed.  Cas.  531 671 

Armitage  v.  Mace,  96  N.  Y.  538 164 

Aron  v.  Manhattan,  132  U.  S.  84;   33  L.  Ed.  272;    10  S.  Ct.  24  .  .  .  48,  49, 

88,  213,  591,  608,  616,  617,  624,  635,  646,  651,  654,  656,  657,  662,  669, 

671,  672 

Asay  v.  Lieber,  92  Pa.  St.  377 322 

Ashcroft  v.  Walworth,  1  Holmes,  152;    Fed.  Cas.  580 157,  921 

Ashley  v.  Board,  60  Fed.  55 327 

Ashton  v.  Coale,  52  Fed.  314;  3  C.  C.  A.  98 202 

Ashworth  v.  Roberts,  9  R.  P.  C.  309 384 

Aspden  v.  Nixon,  4  How.  476;   11  L.  Ed.  466 315 

Aspen  v.  Billings,  150  U.  S.  31 ;  37  L.  Ed.  986;  14  S.  Ct.  4 34,  128,  711 

Aspinwall  v.  Gill,  32  Fed.  697 161,  927 

Association  v.  Rogers,  42  Minn.  123 386 

Atherton  v.  Atwood-Morrison,  102  Fed.  949;  43  C.  C.  A.  72 714 

Atlantic  v.  Bradv,  107  U.  S.  192;   27  L.  Ed.  438;   2  S.  Ct.  225  ..  .  20,  47, 

48,  215,  216,  313,  437,  593,  596,  614,  616,  636,  653,  655,  656,  657,  658, 

659,  662,  664,  666,  667,  671,  672,  676,  679,  698,  811 

Atlantic  v.  Parker,  16  Blatch.  281 ;  Fed.  Cas.  625 105 

Atty.  v.  Vernon,  1  Vern.  277 26 

Avery  v.  Case,  148  Fed.  214;  78  C.  C.  A.  110    203 

Ayers,  In  re,  123  U.  S.  443;  31  L.  Ed.  216;  8  S.  Ct,  164 553 

Babcock  v.  Clarkson,  63  Fed.  607;   11  C.  C.  A.  351 213,  384,  385, 

394 

Babcock  v.  Degener,  1  MacArthur,  607;  Fed.  Cas.  698 18 

Badger  v.  Badger,  2  Wall.  87;    17  L.  Ed.  836 729 

Badische  v.  Kalle,  104  Fed.  802;  44  C.  C.  A.  201    390 

Badische  v.  Klipstein,  125  Fed.  543 350 

Badische  v.  Leveinstein,  L.  R.  24,  Ch.  D.  156 230,  768,  815 

Bagnall  v.  Villar,  L.  R.  12  Ch.  D.  812 778 

Bailey  v.  Abrams,  3  B.  &  A.  96;  Fed.  Cas.  752 564 

Bailey  v.  Bailey,  67  Vt.  494 841 

Baker  v.  Duncombe,  146  Fed.  744;  77  C.  C.  A.  234 325 

Baldwin  v.  Sibley,  1  Cliff.  150;  Fed.  Cas.  805 751,  753 

Balkam  v.  Woodstock,  154  U.  S.  177;  38  L.  Ed.  953;  14  S.  Ct.  1010  ...  921 

Ball  v.  Ball,  36  Fed.  309 510 

Ball  v.  Langles,  102  U.  S.  128;  26  L.  Ed.  104 871,  877 

Ballard  v.  McClusky,  58  Fed.  880 480,  485 

Bank  v.  Beedle,  37  Minn.  527 753 

Bank  v.  Mumford,  2  Barb.  Ch.  596 720 

Bank  v.  Patterson,  7  Cranch.  299;  3  L.  Ed.  298 156 

Bank  v.  Robinson,  57  Cal.  520    157 


XCV111  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Bank  v.  Widner,  11  Paige  Ch.  533 807 

B.  &  S.  Fastener  v.  B.  G.  Fastener,  58  Fed.  818;  7  C.  C.  A.  498  ..  .  54,  194, 

207,  378,  384,  385,  394,  714 

B.  &  S.  Fastener  v.  Edgarton,  96  Fed.  489;  37  C.  C.  A.  523 194,  904 

B.  &  S.  Fastener  v.  Kraetzer,  150  U.  S.  Ill;  37  L.  Ed.  1019;   14  S.  Ct.  48 

203   226 

Bantz  v.  Frantz,  105  U.  S.  160;  26  L.  Ed.  1013 871,  872*,  873'  877 

Barnard  v.  Gibson,  7  How.  650;    12  L.  Ed.  649 116,  130,  304,  893 

Barnes  v.  Walworth,  51  Fed.  88 613 

Barney  v.  Oelrichs,  138  U.  S.  529;  34  L.  Ed.  1037;  11  S.  Ct.  414 921 

Barreda  v.  Silsbee,  21  How.  146;   16  L.  Ed.  86 131 

Barrett  v.  Hall,  1  Mas.  447 ;  Fed.  Cas.  1047 440,  473 

Barry  v.  New  York,  53  N.  Y.  536 411 

Barton  v.  White,   144  Mass.  281 921 

Bate  v.  Gillett,  31  Fed.  809 420,  421,  422 

Bate  v.  Hammond,  129  U.  S.  151;  32  L.  Ed.  645;  9  S.  Ct.  225 420, 

421,  422,  923 

Bate  v.  Sulzberger,  157  U.  S.  1 ;  39  L.  Ed.  601 ;  15  S.  Ct.  50S 420,  422 

Bates  v.  Clark,  95  U.  S.  204;  24  L.  Ed.  471 498 

Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68 59,  68,  73,  76,  96,  102,  320, 

613,  629,  857,  908 

Bates  v.  Force,  149  Fed.  220;   79  C.  C.  A.  178 226 

Bates  v.  Keith,  84  Fed.  1014;  28  C.  C.  A.  638 627,  661 

Bates  v.  Keith,  82  Fed.  100 661 

Bates  v.  Serger,  2  O.  G.  493 775 

Battin  v.  Taggart,  58  U.  S.  77;    15  L.  Ed.  37  .  .  .  222,  223,  404,  734,  873, 

8S0  888 
Bauserman  v.  Blunt,  147  U.  S.  647;  37  L.  Ed.  316;   13  S.  Ct.  466  ...  !  921 

Baxter,  Ex  parte,  2  O.  G.  470 775 

Beach  v.  American,  63  Fed.  597 247,  459,  670 

Beach,  Ex  parte,  3  O.  G.  607 775 

Beach  v.  Hobbs,  92  Fed.  146;  34  C.  C.  A.  248 257,  561 

Beach  v.  Hobbs,  82  Fed.  916 256 

Bean  v.  Smallwood,  2  Story,  408;  Fed.  Cas.  1173  ..  .  593,  667,  672,  687,  775 

Beatty  v.  Burnes,  12  U.  S.  98;  3  L.  Ed.  96 921 

Beanbien  v.  Beanbien,  23  How.  190;  16  L.  Ed.  484 729 

Bedford  v.  Hunt,  1  Mas.  302;  Fed.  Cas.  1217  ...  71,  391,  440,  613,  667,  811 

Beebee  v.  Russell,  19  How.  283 ;  15  L.  Ed.  668    130,  304 

Beecher  v.  Atwater,  114  U.  S.  523;   29  L.  Ed.  232;   5  S.  Ct.  1007  ...  47, 

596,  603,  609 

Beedle  v.  Bennett,  122  U.  S.  71;  30  L.  Ed.  1074;  7  S.  Ct.  1090 550, 

717,  770 

Beer  Co.  v.  Mass.  97  U.  S.  25 ;  24  L.  Ed.  989 920 

Beer  v.  Walbridge,  100  Fed.  465;  40  C.  C.  A.  496 325,  707 

Beggs,  Ex  parte,  50  O.  G.  1130 5 

Belding  v.  Challenge,  152  U.  S.  100;  38  L.  Ed.  370;  14  S.  Ct.  492  ..  .  374,  486 
Belknap  v.  Schild,  161  U.  S.  10;   16  L.  Ed.  599;  16  S.  Ct.  443  ..  .  285,  384, 

481,  505,  842,  847 

Bell  v.  Morrison,  26  U.  S.  351 ;  7  L.  Ed.  349 921 

Beman  v.  Rufford,  1  Simon  N.  S.  550 482 

Bement  v.  National,  186  U.  S.  70;  46  L.  Ed.  1058;  22  S.  Ct.  747  ..  .  474, 

513,  548,  645,  714,  744,  745,  761,  837 

Benbow-Brammer  v.  Simpson,  132  Fed.  614 247 

Bene  v.  Jeantet,  129  U.  S.  683;  32  L.  Ed.  803;  9  S.  Ct.  428  ...  .  245,  375, 

411,  904,  915 


TABLE    OF    CASES    CITED  XC1X 

[References  are  to  sections] 

Benjamin  v.  Dale,  158  Fed.  617;  85  C.  C.  A.  439 348 

Bennett  v.  Fowler,  75  U.  S.  445 ;   19  L.  Ed.  431 348 

Bensley  v.  N.  W.  Horsenail,  26  Fed.  250 151 

Berdan's  Case,   26  Ct.  CI.   48 498 

Bessette  v.  Conkey,  194  U.  S.  324;  48  L.  Ed.  997;  24  S.  Ct.  665  ...  537,  538 

Best  v.  Polk,  18  Wall.  112;   27  L.  Ed.  805 308 

Betts  v.  Menzies,  4  B.  &  Q.  B.  999 320,  888 

Bevin  v.  East  Hamilton,  5  Fish.  23;  Fed.  Cas.  1379 3 

Bevin  v.  Starr,   114  Fed.  362 335 

Bigelow  v.  Dobson,  10  Fed.  386 842 

Birdsall  v.  Coolidge,  93  U.  S.  64;  23  L.  Ed.  802  ..  .  282,  285,  292,  298,  839 

Birdsall  v.  Perego,  5  Blatch.  251;    Fed.  Cas.  1435 764 

Birdsall  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed.  768;  5  S.  Ct.  244  ..  .  165,  338, 

512,  757,  763,  765,  798,  839 

Birmingham  v.  Gates,  78  Fed.  350;   24  C.  C.  A.  132 229 

Bischoff  v.  Wethered,  9  Wall.  812;    19  L.  Ed.  829  ..  .  404,  406,  734,  888 
Bissell  v.  Goshen,  72  Fed.  545;  19  C.  CI  A.  25  .  .  .  116,  118,  130,  302,  544,  893 

Bissell  v.  Spring,  124  U.  S.  225;  31  L.  Ed.  411;  8  S.  Ct.  495 893,  894 

Black  v.  Allen,  42  Fed.  618 717 

Black  v.  Thorne,  111  U.  S  122;  28  L.  Ed.  372;  4  S.  Ct.  326  ..  .  293,  298,  839 
Black  Diamond  v.  Excelsior,  156  U.  S.  611 ;  39  L.  Ed.  553;   15  S.  C.  482 

.  .  .  204,  304,  325,  473,  496,  707,  712 

Blackledge  v.  Weir,  108  Fed.  71 ;  47  C.  C.  A.  212 764 

Blake  v.  Oxford,  68  N.  H.  302 141,  371 

Blake  v.  San  Francisco,  113  U.  S.  679;  28  L.  Ed.  1070;  5  S.  Ct.  692 ..  .  596, 

651,  654,  671,  672,  676 

Blakeney  v.  Goode,  30  Ohio  St.  350 168 

Blakey  v.  National,  95  Fed.  136;  37  C.  C.  A.  27 544,  566 

Blanchard  v.  Bank,  75  Fed.  249 ;  21  C.  C.  A.  319 129 

Blanchard  v.  Beers,  2  Blatch.  411 ;  Fed.  Cas.  1506 459 

Blanchard  v.  Putnam,  75  U.  S.  420;   19  L.  Ed.  433   ...  321,  409,  484,  526, 

629,  680,  795 

Blanchard  v.  Reeves,  1  Fish.  103;   Fed.  Cas.  1515 453 

Blanchard  v.  Sprague,  1  Cliff.  288;   Fed.  Cas.  1156 714,  724,  752 

Blanchard  v.  Sprague,  3  Sumn.  535 ;  Fed.  Cas.  1518 222,  223,  903 

Blandy  v.  Griffith,  3  Fish.  609;  Fed.  Cas.  1529 223,  443,  501 

Blessing  v.  Copper,  34  Fed.  753 324,  603,  807 

Block  v.  Commissioners,  99  U.  S.  686;  25  L.  Ed.  491 894 

Bloomer  v.  McQuewan,  14  How.  539;  14  L.  Ed.  532  ..  .  418,  450,  505,  645, 

745,  747,  757,  764,  769,  927 

Bloomer  v.  Millinger,  68  U.  S.  340;   17  L.  Ed.  581 418,  505,  757,  769 

Blount  v.  Societe,  53  Fed.  98;   3  C.  C.  A.  455  ..  .  118,  120,  535,  539,  543, 

544  549  554 
Board  of  Councilmen  v.  Deposit  Bank,  127  Fed.  812;  59  C.  C.  A.  538  .  . '.  537 

Boardmen,  In  re,  169  U.  S.  39;  42  L.  Ed.  653;   18  S.  Ct.  291 711 

Bobbs-Merrill  v.  Straus,  210  U.  S.  339;  52  L.  Ed.  122;  28  S.  Ct.  748   ...  744 
Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787;  10  S.  Ct.  378  ..  .  450,  505, 

512,  763 

Bogart  v.  Hinds,  25  Fed.  485 801 

Bonnette  v.  Koehler,  82  Fed.  428;  27  C.  C.  A.  200 234 

Bonsack  v.  Hulse,  65  Fed.  864;    13  C.  C.  A.  180 365 

Bonsack  v.  Smith,   70   Fed.   383 574 

Boogher  v.  Ins.  Co.,  103  U.  S.  90;  26  L.  Ed.  310 131 

Boone  v.  Chiles,  10  Pet.  178;   9  L.  Ed.  176 807 

Boston  v.  Allen,  91  Fed.  248 ;  33  C.  C.  A.  485 151,  285,  464,  468 


C  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Boston  v.  Bemis,  80  Fed.  287 ;  25  C.  C.  A.  420 68,  374,  378,  637 

Boston  v.  Bemis,  98  Fed.  121 ;  38  C.  C.  A.  661 790 

Boston  v.  Woodward,  82  Fed.  97;  27  C.  C.  A.  69 271,  385 

Bostwick  v.  Brinkerhoff,  106  U.  S.  3;  27  L.  Ed.  73;  1  S.  Ct.  15 116 

Bottle  v.  DeLaVergne,  47  Fed.  59 324 

Boughton  v.  Allen,  11  Paige,  321 796 

Bovill  v.  Moore,  Davis  Cas.  361 905 

Boville  v.  Moore,  2  Merch.  211 204 

Bowen  v.  Ibley,  1  Edw.  Ch.  148 796 

Bowen  v.  Morris,  2  Taunt.  374 156 

Bowers  v.  Atlantic,  104  Fed.  887 797 

Bowers  v.  Von  Schmidt,  63  Fed.  572 72 

Bowker  v.  Daws,  3  B.  &  A.  518;   Fed.  Cas.  1734 476 

Boyce  v.  Grundy,  3  Pet.  215;  7  L.  Ed.  207 719 

Boyd  v.  Cherry,  50  Fed.  279 107,  476 

Boyd  v.  Janesville,  158  U.  S.  260;  39  L.  Ed.  973;  15  S.  Ct.  837  ..  .   198, 

202,  349,  441,  629,  680 

Boyd  v.  McAlpin,  2  Robb.  277;  Fed.  Cas.  1748 411 

Boyer  v.  Keller,  127  Fed.  130;  62  C.  C.  A.  244 673 

Boyle  v.  Zacharie,  6  Pet.  647;  8  L.  Ed.  646 285 

Boynton  v.  Morris,  87  Fed.  225;  30  C.  C.  A.  617 937 

Bradford  v.  Belknap,  105  Fed.  63 380 

Bradford  v.  Corbin,  6  O.  G.  223 861 

Bradley  v.  Eagle,  57  Fed.  980;  6  C.  C.  A.  661 305,  893,  894 

Bradley  v.  Eccles,  126  Fed.  945;  61  C.  C.  A.  669 335 

Bragg  v.  Fitch,  121  U.  S.  478;  30  L.  Ed.  1008;  7  S.  Ct.  978  ..  .   198,  202, 
207,  211,  212,  215,  217,  229,  376,  442,  473,  597,  602,  889 

Bragg  v.  Hartford,  56  Fed.  292 558 

Brainard  v.  Buck,  184  U.  S.  99;  46  L.  Ed.  449;  22  S.  Ct.  458 77 

Brainard  v.  Cramme,  12  Fed.  621 688,  770 

Brant  v.  Iron  Co.  93  U.  S.  326;  23  L.  Ed.  927 384 

Brammer  v.  Witte,  159  Fed.  726;   86  C.  C.  A.  207 456 

Brass  Co.  v.  Miller,  5  Fish.  48;  Fed.  Cas.  17,254 223 

Bray  v.  Hartshorn,  1  Cliff.  538;    Fed.  Cas.  1820 440 

Brazee  v.  Schofield,  124  U.  S.  495;  31  L.  Ed.  484;  8  S.  Ct.  604 384 

Brechbill  v.  Randall,  102  Ind.  528 920 

Brennan  v.  Dowagiac,  162  Fed.  472;   89  C.  C.  A.  392    841 

Brent  v.  Davis,  10  Wheat.  350;  6  L.  Ed.  393 291 

Bresnahan  v.  Tripp,  72  Fed.  920;  19  C.  C.  A.  237 35,  561 

Bresnahan  v.  Tripp,  102  Fed.  899;  43  C.  C.  A.  48 190,  197 

Brickill  v.  Mayor,  7  Fed.  479 857 

Brickill  v.  Mayor,  112  Fed.  65;  50  C.  C.  A.  1 843 

Bricknall  v.  Hartford,  49  Fed.  372 921 

Briggs  v.  Central,  60  Fed.  87;  8  C.  C.  A.  480 616,  672 

Briggs  Petition,  29  N.  H.  553    141,  371 

Brill  v.  St.  Louis,  90  Fed.  666;    33  C.  C.  A.  213 207,  378,  442,  587 

Brinkerhoff  v.  Aloe,  146  U.  S.  515;  36  L.  Ed.  1068;  13  S.  Ct.  221  ..  .  595,  597 

Broasnahan,  In  re,  18  Fed.  62 574 

Brobet  v.  Brock,  77  U.  S.  519;  19  L.  Ed.  1002 778 

Brockway  v.  Allen,  17  Wend.  40 156 

Broadnax  v.  Central,  4  Fed.  214 548,  574 

Broderick  v.  Mayhew,  131  Fed.  92 257,  574 

Bronson  v.  Chappell,  12  Wall.  681 ;  20  L.  Ed.  436 753 

Bronson  v.  Railroad,  2  Black,  524;  17  L.  Ed.  798 116 

Brook  v.  Ashton,  27  Law.  J.  Q.  B.  145 215,  671,  676 


TABLE    OF    CASES    CITED  ci 

[References  are  to  sections] 

Brooks  v.  By  am,  2  Story,  525 ;  Fed.  Cas.  1948 165,  764 

Brooks  v.  Fiske,  15  How.  212;   14  L.  Ed.  665    ...  145,  201,  375,  459,  467, 

468,  473,  526,  528,  872 

Brooks  v.  Jenkins,  3  McLean,  432;   Fed.  Cas.  1953 158,  396 

Brooks  v.  Sacks,  81  Fed.  403;  26  C.  C.  A.  456 60,  74 

Brooks  v.  Miller,  28  Fed.  615 717,  718 

Brooks  v.  Stolley,  3  McLean,  523;  Fed.  Cas.  1962 714 

Brown  v.  Davis,  116  U.  S.  237;   29  L.  Ed.  659;   6  S.  Ct.  379 103, 

201,  202,  612 
Brown  v.  District  of  Columbia,  130  U.  S.  87;  9  S.  Ct.  437  ..  .  88,  188,  380, 

427,  598,  667,  671,  696 

Brown  v.  District  of  Columbia,  3  Mackey,  502 411 

Brown  v.  Drohen,  140  Fed.  97 640 

Brown  v.  Duchesne,  60  U.  S.  183;  15  L.  Ed.  595 532 

Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161  ..  .  12,  61,  200,  215,  223,  229, 
245,  473,  577,  590,  605,  609,  610,  613,  617,  629,  641,  871,  937 

Brown  v.  Hall,  6  Blatch.  401 ;  Fed.  Cas.  2008 407,  795 

Brown  v.  Huntington,  134  Fed.  735;  67  C.  C.  A.  639 198 

Brown  v.  King,  107  Fed.  498;  46  C.  C.  A.  432 501 

Brown  v.  Lanyon,  148  Fed.  838;  78  C.  C.  A.  528 285 

Brown  v.  Lapham,  27  Fed.  77 385,  513 

Brown  v.  Lent,  20  Vt.  529 481 

Brown  v.  Meyer,  139  U.  S.  540;  35  L.  Ed.  247;   11  S.  Ct.  625 928 

Brown  v.  Meyer,  100  U.  S.  671 ;    25  L.  Ed.  738 377 

Brown  v.  Piper,  91  U.  S.  37;  23  L.  Ed.  200  ..  .  47,  116,  215,  224,  313,  322, 
323,  324,  325,  389,  390,  394,  483,  493,  591,  593,  616,  617,  651,  653,  656, 
667,  669,  670,  671,  672,  676,  706,  707,  708,  709,  710,  734,  795,  799,  817 

Brown  v.  Shannon,  20  How.  55;   15  L.  Ed.  826 714 

Brown  v.  Stillwell,  57  Fed.  731;   6  C.  C.  A.  528 211,  375 

Brown  Saddle  Co.  v.  Troxel,  98  Fed.  620 645 

Bruce  v.  Marder,  10  Fed.  750 222 

Brunswick  v.  Thum,  111  Fed.  904;  50  C.  C.  A.  61 633,  648,  673 

Brush  v.  California,  52  Fed.  945;   3  C.  C.  A.  368 375,  798 

Brush  v.  Condit,  132  U.  S.  39;  33  L.  Ed.  251 ;  10  S.  Ct.  1  .  .  .  60, 103,  448,  854 

Brush  v.  Electric,  45  Fed.  241 558,  568 

Brush  v.  Electric,  64  Fed.  775 564 

Brush  v.  Julian,  41  Fed.  679 55 

Brush  v.  Ware,  15  Pet.  93,  112,  114;   10  L.  Ed.  89 167 

Brush-Swan  v.  Thomson-Houston,  48  Fed.  224 765 

Bryan  v.  Harrison,  27  Pa.  St.  233 322 

Bryant  v.  Leland,  6  Fed.  125 401 

Brvce  v.  Dorr,  3  McLean,  583;  Fed.  Cas.  6497 289 

Bryce  v.  National,  116  Fed.  186;  53  C.  C.  A.  611 202 

Bryce  v.  Seneca,  140  Fed.  161 851 

Buckingham's  Appeal,  60  Conn.  143 396 

Buerk  v.  Imhauser,  2  B.  &  A.  452;   Fed.  Cas.  2107 396,  830 

Buffington's  v.  Eustis,  65  Fed.  804;  13  C.  C.  A.  143 12,  195,  204,  473 

Buffington's  v.  Harvey,  95  U.  S.  99;  24  L.  Ed.  381 138 

Bullock  v.  General,  149  Fed.  409;  79  C.  C.  A.  229 309,  904 

Bullock  v.  Jones,  3  B.  &  A.  195;  Fed.  Cas.  2132 629 

Bundy  v.  Detroit,  94  Fed.  524;  36  C.  C.  A.  375  ..  .  198,  241,  374,  376,  378, 

435,  459,  461,  468,  485,  600,  615 

Burdell  v.  Denig,  92  U.  S.  716;  23  L.  Ed.  764 285,  292,  294 

Burdsall  v.  Curran,  31  Fed.  918 451,  797 

Burnham  v.  Union,  110  Fed.  765;  49  C.  C.  A.  163 599,  674 


CU  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Burns  v.  Lynde,  6  Allen,  305 717 

Burns  v.  Meyer,  100  U.  S.  671;   25  L.  Ed.  738  ..  .  207,  226,  244,  375,  377, 

598,  629,  680,  903 

Burr  v.  DeLaVergne,  102  N.  Y.  415 168 

Burr  v.  Duryea,  1  Wall.  320;  17  L.  Ed.  650 196 

Burr  v.  Duryee,  68  U.  S.  531;  17  L.  Ed.  750 310,  426,  499,  503,  531, 

605,  639,  651,  672,  679,  683,  771,  871,  872,  886,  888 

Burr  v.  Duryee,  68  U.  S.  579;   17  L.  Ed.  660 651,  686 

Burr  v.  Duryee,  2  Fish.  275;  Fed.  Cas.  2190 532 

Burr  v.  Gregory,  2  Paine,  426;  Fed.  Cas.  357 714 

Burr  v.  Kimbark,  28  Fed.  574 554,  555,  797 

Burrell  v.  Hacklev,  35  Fed.  833 800 

Burt  v.  Evory,  133  U.  S.  349;  33  L.  Ed.  647;  10  S.  Ct.  349  ..  .  380,  431, 
437,  440,  591,  601,  608,  609,  612,  617,  646,  654,  665,  667,  671,  672 

Busch  v.  Jones,  184  U.  S.  598;  46  L.  Ed.  707;  22  S.  Ct.  511 717 

Busell  v.  Stevens,  137  U.  S.  423;  34  L.  Ed.  719;  11  S.  Ct.  150  .  .  .  363,  599, 

606,  654,  655,  668,  672 

Buser  v.  Novelty,  151  Fed.  478;  81  C.  C.  A.  16 72 

Bush  v.  Fox,  5  H.  L.  Cas.  707 671,  676,  679 

Buss  v.  Putney,  38  N.  H.  44 753 

Bussey  v.  Excelsior,  110  U.  S.  131;   28  L.  Ed.  95;  4  S.  Ct.  38  .  .  .  41,  216, 

609,  657,  662,  667,  679 

Butler  v.  Eaton,  141  U.  S.  240;  35  L.  Ed.  713;   11  S.  Ct.  985 34,  711 

Butler  v.  Fayerweather,  91  Fed.  458 537 

Butler  v.  Shaw,  21  Fed.  321 13 

Butterworth  v.  Hoe,  112  U.  S.  50;  28  L.  Ed.  656;  5  S.  Ct.  25 13,  143 

Buxton  v.  Lister,  3  Atk.  383 174 

Cahill  v.  Brown,  3  B.  &  A.  580;  Fed.  Cas.  2291 85,  88 

Cahoon  v.  Ring,   1  Cliff.  592;    Fed.  Cas.  2292 20,  72,  373,*  501, 

526,  629,  811 

Cain  v.  Park,  86  O.  G.  797 3 

Calculagraph  v.  Wilson,  132  Fed.  20 247 

Caldwell  v.  Powell,  73  Fed.  488;   19  C.  C.  A.  592 325,  326 

Callaghan  v.  Myers,  128  U.  S.  617;  32  L.  Ed.  547;  9  S.  Ct.  177 290, 

829,  836,  837 

California  v.  Henzel,  48  Fed.  375 548 

California  v.  Molitor,  113  U.  S.  609;  28  L.  Ed.  1106;  5  S.  Ct.  618  ..  .  406 

Camden  v.  Stuart,  144  U.  S.  118;  36  L.  Ed.  363;  12  S.  Ct.  585 836 

Cammeyer  v.  Newton,  94  U.  S.  225;   24  L.  Ed.  72 26,  498,  745 

Campbell  v.  Bayley,  63  Fed.  463;   11  C.  C.  A.  284 46 

Campbell  v.  Duplex,  101  Fed.  282;  41  C.  C.  A.  351  .  .  207,  599,  654,  674,  675 

Campbell  v.  Duplex,  86  Fed.  315 195,  574 

Campbell  v.  Hall,  16  N.  Y.  575 • 36 

Campbell  v.  Manhattan,  49  Fed.  930 548,  574,  645,  746 

Campbell  v.  Mavor,  9  Fed.  500 853,  857 

Campbell  v.  Rankin,  99  U.  S.  261 ;  25  L.  Ed.  435 894 

Canal  Co.  v.  Clark,  13  Wall.  311;  20  L.  Ed.  581 928 

Canda  v.  Michigan,  124  Fed.  486;  61  C.  C.  A.  194 195,  937 

Canda  v.  Michigan,  152  Fed.  178;  81  C.  C.  A.  420 298,  837 

Canter  v.  American,  28  U.  S.  307;   7  L.  Ed.  306 141,  277 

Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017;  6  S.  Ct.  970  ..  .  61,  447, 

453,  501,  506,  532,  561,  629,  630,  636,  638,  673,  850 

Carbon  Co.  v.  McMillin,  119  N.  Y.  46 744 

Carhart  v.  Austin,  2  Cliff.  528;   Fed.  Cas.  2288 871 

Carnan  v.  Bowles,  2  Bro.  Ch.  84 418 


TABLE    OF    CASES    CITED  Clii 

[References  are  to  sections] 

Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698  ..  .  101, 

561,  648,  817 

Carpenter  v.  Dexter,  8  Wall.  513;    19  L.  Ed.  426 161 

Carpenter  v.  Searle,  60  Fed.  82;   8  C.  C.  A.  476 871,  878,  884 

Carr  v.  Rice,  1  Fish.  198;   Fed.  Cas.  2440 574 

Carr  v.  U.  S.,  98  U.  S.  433;  25  L.  Ed.  209 715,  721 

Carter  v.  Baker,  1  Sawy.  512;  Fed.  Cas.  2472 374 

Carter  v.  Ins.  Co.,  1  Johns.  Ch.  463 720 

Carty  v.  Kellogg,  73  O.  G.  285 3,  5 

Carver  v.  Hyde,  16  Pet,  513;  10  L.  Ed.  1051 145,  426,  468,  473,  651 

Carver  v.  Mfg.  Co.,  2  Storv,  432;   Fed.  Cas.  2485 223,  311 

Cary  v.  Acme,  108  Fed.  873;  48  C.  C.  A.  118 537 

Cary  v.  Domestic,  27  Fed.  299 579 

Cary  v.  Lovell,  37  Fed.  654 287 

Carv  v.  Neal,  90  Fed.  725 672,  919 

Cary  v.  Wolff,  24  Fed.  139 671 

Case  v.  Brown,  69  U.  S.  320;    17  L.  Ed.  817 605,  872 

Case  v.  Hall,  94  Fed.  300;  36  C.  C.  A.  259 136 

Case  v.  Terrell,  78  U.  S.  199;   20  L.  Ed.  134 553 

Casey  v.  Cincinnati,  45  Fed.  135 924 

Casebeer  v.  Mowry,  55  Pa.  St.  422 894 

Cathcart  v.  Robinson,  30  U.  S.  264;  8  L.  Ed.  264 174 

Cator  v.  Burke,  1  Br.  Ch.  434 720 

Caverly  v.  Deere,  66  Fed.  305 Ill,  363,  593,  602,  646 

Cayuta  v.  Kennedy,  127  Fed.  335 548 

Cazier  v.  Mackie-Lovejoy,  138  Fed.  654;   71  C.  C.  A.  104 247 

Celluloid  v.  American,  30  Fed.  437 476,  477 

Celluloid  v.  Arlington,  34  Fed.  324 548 

Celluloid  v.  Tower,  26  Fed.  451 696 

Centaur  v.  Heinsfurter,  84  Fed.  955;  28  C.  C.  A.  581 929 

Central  v.  Grant,  135  U.  S.  207;  34  L.  Ed.  97;   10  S.  Ct.  736  ......  116 

Cerealine  v.  Bates,  101  Fed.  272;  41  C.  C.  A.  341 646,  823 

Chabot  v.  Overseaming  Co.,  6  Fish.  71;  Fed.  Cas.  2567 752 

Chace  v.  Vasquez,  11  Wheat.  429;  6  L.  Ed.  426 116 

Chadwick  v.  Covell,  151  Mass.  190 898 

Chaffee  v.  Boston,  63  U.  S.  217;    16  L.  Ed.  240 418,477,523, 

524,  769,  927 

Chambers  v.  Chrichley,  33  Beav.  374 213,  384,  385 

Chapman  v.  Barney,  129  U.  S.  677;  32  L.  Ed.  800;  9  S.  Ct.  426 789 

Charter  v.  Charter,  47  111.  App.  36 762 

Chase  v.  Jefferson,  1  Houst.  257 387 

Chase  v.  Fillebrown,  58  Fed.  374 85,  98,  107 

Chatfield  v.  Wilson,  28  Vt.  49 508 

Chatillon,  Ex  parte,  2  O.  G.  115 775 

Chang-Kee  v.  United  States,  3  Wall.  320;   18  L.  Ed.  72 789 

Chemical  v.  Lauer,  10  Blatch.  122;  Fed.  Cas.  12,135 200,  341 

Chemical  v.  Raymond,  71  Fed.  179;  18  C.  C.  A.  31 904,  908 

Chemical  v.  Vice,  14  Blatch.  179;   Fed.  Cas.  12,136 548 

Chetwood,  In  re,  165  U.  S.  443;  41  L.  Ed.  782;   17  S.  Ct.  385 537 

Chicago  v.  Bush,  2  Biss.  472;    Fed.  Cas.  2669 459 

Chicago  v.  Sayles,  97  U.  S.  554;  24  L.  Ed.  1053  ...  54,  55,  56,  213,  222,  224, 
230,  375,  378,  441,  442,  468,  497,  507,  768,  780,  815,  872,  876 

Child  v.  Powder  Works,  45  N.  H.  547 894 

Chinnock  v.  Paterson,  112  Fed.  531;  50  C.  C.  A.  384 326,  717 

Chinnock  v.  Paterson,  110  Fed.  199 327 


CIV  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Christensen  v.  Westinghouse,  129  Fed.  96 ;   63  C.  C.  A.  598 536 

Christie  v.  Seybold,  55  Fed.  69;   5  C.  C.  A.  33 613,  682 

Christie  v.  Seybold,  54  O.  G.  957 811 

Cimiotti  v.  American,  198  U.  S.  399;   49  L.  Ed.  1100;    25  S.  Ct.  697  ..  .  206, 

226,  378,  433,  456,  467,  473,  700 

Cimiotti  v.  American,  115  Fed.  498;  53  C.  C.  A.  230 456 

Cimiotti  v.  Nearseal,  123  Fed.  479;  59  C.  C.  A.  58 257,  456 

Clark  v.  Adie,  L.  R.  2  App.  Cas.  423  ...  .  213,  230,  330,  384,  385,  768,  815 

Clark  v.  Adie,  L.  R.  10  Ch.  667 202,  466 

Clark  v.  Clark,  58  U.  S.  315;   14  L.  Ed.  315-322 , 183 

Clark  v.  Deere,  80  Fed.  534;  25  C.  C.  A.  619 Ill,  646 

Clark  v.  Ferguson,  119  U.  S.  335;  30  L.  Ed.  406;  7  S.  Ct.  382 591, 

609,  636,  664,  667,  672 
Clark  v.  Willimantic,  140  U.  S.  431 ;  35  L.  Ed.  521 ;  11  S.  Ct.  846  ..  .  65,  71, 

74,  108,  613 
Clark  v.  Wooster,  119  U.  S.  322;  30  L.  Ed.  392;   7  S.  Ct.  217  .  .  .550,568, 

717,  718,  719,  730 
Clements  v.  Odorless,  109  U.  S.  641;  27  L.  Ed.  1060;  3  S.  Ct.  525 871, 

876,  877,  885 

Cleveland  v.  Chamberlain,  1  Black.  419;   17  L.  Ed.  93 887 

Cleveland  v.  Detroit,  131  Fed.  853;  68  C.  C.  A.  233 56,  780 

Clough  v.  Barker,  106  U.  S-  166;  27  L.  Ed.  134;   1  S.  a.  188  ..  .  107,  230, 

375,  453,  485,  497,  506,  608,  673,  699,  768,  815 

Clough  v.  Gilbert,  106  U.  S.  178;  27  L.  Ed.  138;   1  S.  Ct.  198 375,  453 

Cluett  v.  Claflin,  140  U.  S.  180;   35  L.  Ed.  385;   11  S.  Ct.  725 646 

Clum  v.  Brewer,  2  Curt.  506 ;   Fed.  Cas.  2909 418,  927 

Coburn  v.  Clark,   15  Fed.  804 561,  579 

Cochrane  v.  Badische,   111   U.  S.  293;   28  L.  Ed.  433;   4  S.  Ct.  455 

.  .  .  519,  774 
Cochrane  v.  Deener,  94  U.  S.  780;  24  L.  Ed.  139  ..  .  148,  348,  379,  434,  459, 

461,  506,  688,  770,  817,  819 

Coffin  v.  Douglass,  61  Tex.  406 753 

Coffin  v.  Ogden,  85  U.  S.  120;    21  L.  Ed.  821  ..  .  10,  61,  71,  88,  89,  103, 

408,  415,  561,  590,  630,  854,  858 

Cohansey  Mfg.  Co.  v.  Wharton,  28  Fed.  189 190,  473 

Cohn  v.  United  States,  93  U.  S.  366;  23  L.  Ed.  907 106,  320 

Colgate  v.  Western,  15  Blatch.  365;  Fed.  Cas.  2995 3,  618,  672 

Collar  Co.  v.  White,  2  B.  &  A.  60;  Fed.  Cas.  14,396 689 

Colorado  v.  United  States,  123  U.  S.  307;  31  L.  Ed.  182;  8  S.  Ct.  131  ..  .  26 

Colt  v.  Arms  Co.,  1  Fish.  108;  Fed.  Cas.  3030 497,  506 

Columb  v.  Webster,  84  Fed.  592;  28  C.  C.  A.  225 37 

Columbia  v.  Freeman,  71  Fed.  302 574,  920 

Columbia  Wire  Co.  v.  Boyce,  104  Fed.  172;  44  C.  C.  A.  588 542 

Columbine  v.  Chichester,  2  Phil.  27 151 

Columbus  v.  Robbins,  52  Fed.  337;  3  C.  C.  A.  103  ..  .  116,  118,  120,  539,  544 

Columbus  v.  Robbins,  64  Fed.  384;  12  C.  C.  A.  174 116,  459,  468,  545 

Columbus  v.  Standard,  148  Fed.  622;  78  C.  C.  A.  394 74 

Commercial  v.  Fairbank,  135  U.  S.  176;  34  L.  Ed.  88;  10  S.  Ct.  972 

.  .  .  420,  421 

Com.  v.  Alger,  7  Cush.  53 920 

Com.  v.  Props.  7  Mass.  417 807 

Commissioner  v.  Whiteley,  4  Wall.  522;  18  L.  Ed.  335 25 

Computing  v.  Automatic,  204  U.  S.  609;  51  L.  Ed.  645;  27  S.  Ct.  307  ..  .  207 

Computing  v.  National,  79  Fed.  962 924 

Conard  v.  Atlantic,  26  U.  S.  446;  7  L.  Ed.  385 778 


TABLE    OF    CASES    CITED  CV 

[References  are  to  sections] 

Conley  v.  Marum,  83  Fed.  309 .  323 

Conqueror,  The,  166  U.  S.  110;  41  L.  Ed.  937;   17  S.  Ct.  510 397 

Consolidated  v.  Accumulator,  55  Fed.  485;   5  C.  C.  A.  202 120, 

539,  544,  567 

Consolidated  v.  American,  82  Fed.  993 59 

Consolidated  v.  Barnard,  43  Fed.  527 624 

Consolidated  v.  Coombs,  39  Fed.  25 223,  459 

Consolidated  v.  Coombs,  39  Fed.  803 548,  574,  645,  746 

Consolidated  v.  Columbian,  79  Fed.  795 219,  228,  692,  797 

Consolidated  v.  Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct.  513  ..  .   230, 

375,  435,  453,  459,  497,  506,  622, 624, 631, 635,  655,  717,  768, 811, 815, 864 

Consolidated  v.  Crosby,  141  U.  S.  441;  35  L.  Ed.  809;  12  S.  Ct.  49  .  .  .   290, 

298,  828,  829,  837,  845 

Consolidated  v.  Detroit,  59  Fed.  902 635 

Consolidated  v.  Guilder,  9  Fed.  155 213,  384,  555 

Consolidated  v.  Havs,  100  Fed.  984;   41  C.  C.  A.  142 457,  692,  701 

Consolidated  v.  Holtzer,  67  Fed.  907;    15  C.  C.  A.  63 615,  616,  627, 

658,  661,  904 

Consolidated  v.  Littauer,  84  Fed.  164;  28  C.  C.  A.  133 561,  692 

Consolidated  v.  McKeesport,  40  Fed.  21 207 

Consolidated  v.  Pacific,  58  Fed.  226;  7  C.  C.  A.  195 120,  539 

Consolidated  v.  Walker,  138  U.  S.  124;  34  L.  Ed.  920;  11  S.  Ct.  292  ..  .  49, 

212,  225,  440,  671,  672 

Consolidated  v.  West  End,  85  Fed.  662;  29  C.  C.  A.  386 59,  486 

Consolidated  v.  Woerle,  29  Fed.  449 76 

Consolidated  v.  Wright,  94  U.  S.  92;  24  L.  Ed.  68 18,  74,  414, 

853   S56  857 

Con.  B.  S.  Co.  v.  Detroit,  47  Fed.  894 622',  633,'  635 

Con.  Fastener  Co.  v.  Am.  Fastener  Co.,  94  Fed.  523 572 

Con.  Piedmont  v.  Pacific,  58  Fed.  226;  7  C.  C.  A.  195 539 

Consolidated  Purifier  Co.  v.  Wolf,  28  Fed.  814 766 

Continental  v.  Eastern,  210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748   .  .  267, 

484,  744 

Continental  v.  Empire,  8  Blatch.  295;    Fed.  Cas.  3142 366,  367 

Converse  v.  Cannon,  2  Woods.  7;   Fed.  Cas.  3144 501 

Coon  v.  Wilson,  113  U.  S.  268;   28  L.  Ed.  963;   5  S.  Ct.  537  .  .  .871,872, 

875,  877,  878,  885,  887 

Coop  v.  Development,  47  Fed.  899 324 

Copeland  v.  Crane,  9  Pick.  79 847 

Corbin  v.  Eagle,  150  U.  S.  38;  37  L.  Ed.  989;  14  S.  Ct.  28  .  .  .  54,  207,  208,  871 

Corbin  v.  Yale,  58  Fed.  563 384 

Corcoran  v.  Canal,  94  U.  S.  741 ;  24  L.  Ed.  190 31 

Cordova  v.  Hood,  17  Wall.  1 ;  21  L.  Ed.  587 167 

Corning  v.  Burden,  15  How.  252;   14  L.  Ed.  683  ..  .  148,  222,  426,  629,  651, 

680,  686,  688,  690,  770,  795,  815,  817,  819,  903 

Cornley  v.  Marckwold,  131  U.  S.  159;  33  L.  Ed.  117;  9  S.  Ct.  744 288 

Corser  v.  Overall  Co.,  59  Fed.  781 554 

Cortelyou  v.  Carter,   118  Fed.   1022 257 

Cortelyou  v.  Johnson,  145  Fed.  933 476 

Cortelyou  v.  Lowe,  111  Fed.  1005 474,  476,  513, 

761 

Corvallis  v.  Curran,  8  Fed.  150 497,  506 

Coupe  v.  Rover,  155  U.  S.  565;  39  L.  Ed.  263;  15  S.  Ct.  199  ..  .  223,  285, 

293,  294,  299,  777,  837,  842,  847 
Coupe  v.  Weatherhead,  16  Fed.  673 453,  454 


CV1  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Covert  v.  Sargent,  38  Fed.  237 288 

Cox  v.  Griggs,  1  Biss.  362;   Fed.  Cas.  3302 861 

Craighead  v.  Wilson,  18  How.  199;  15  L.  Ed.  332 130 

Cram  v.  Morris,  6  Pet.  598;   8  L.  Ed.  596 734 

Cramer  v.  Fry,  68  Fed.  201 481 

Cramer  v.  Singer,  93  Fed.  636;  35  C.  C.  A.  508 386,  893 

Cranson  v.  Smith,  37  Mich.  309 920 

Crandall  v.  Watters,  9  Fed.  659 671 

Crane  v.  Price,  1  Web.  393 655,  667,  671,  676,  679,  696,  769 

Crane  v.  Price,  4  Man.  &  G.  580 671,  676 

Crawford  v.  Heysinger,  123  U.  S.  589;  31  L.  Ed.  269;  8  S.  Ct.  399  ...  54, 

202,  207,  380,  602,  871 

Crawford  v.  Points,  13  How.  11;   14  L.  Ed.  10 116 

Creamer  v.  Bowers,  35  Fed.  206 288 

Creamer  v.  Washington,  168  U.  S.  124;    18  S.  Ct.  1 711 

Crescent  v.  Gottfried,  128  U.  S.  158;  32  L.  Ed.  390;  9  S.  Ct.  83  .  .  .  682,  692 

Crockett  v.  Lee,  7  Wheat.  522;  5  L.  Ed.  520 789 

Crompton  v.  Knowles,  7  Fed.  199 95,  224 

Cromwell  v.  Sac,  94  U.  S.  351 ;  24  L.  Ed.  195 31,  893,  894 

Cropper  v.  Smith,  26  Ch.  Div.  700 384 

Crosby  Case,  3  Wilson,  188 577 

Crossley  v.  Dixon,  10  H.  of  L.  Cas.  293 213 

Crosthwaite  v.  Steel,  6  R.  P.  C.  190 384 

Crouch  v.  Roemer,  103  U.  S.  797;  26  L.  Ed.  426 380 

Crown  v.  Aluminum,   108  Fed.  845;    48  C.  C.  A.  72 375,506,548, 

574,  631,  692 

Crown  v.  Standard,  136  Fed.  841 ;  69  C.  C.  A.  200 350 

Cunningham  v.  Macon,  109  U.  S.  446;  27  L.  Ed.  992;  3  S.  Ct.  109 553 

Curtis  v.  Overman,  58  Fed.  784;  7  C.  C.  A.  493 120,  539,  561 

Curtis  v.  Piatt,  L.  R.  3  Ch.  Div.  134 230,  768,  815 

Curran  v.  Burdsall,  20  Fed.  835 384,  451,  766,  927 

Curson  v.  Belworthv,  22  Eng.  Law  &  Eq.  1 425 

Cushman  v.  Parkman,  9  O.  G.  1108 861 

Cutter  v.  Sheldon,  10  Blatch.  1 ;  Fed.  Cas.  13,331    756 

Dake  v.  Rice,  130  Mass.  410 157 

Dale  v.  Hyatt,  125  U.  S.  46;  31  L.  Ed.  683;  8  S.  Ct.  756 714, 

722,  724 
Dalzell  v.  Dueber,  149  U.  S.  315;  37  L.  Ed.  749;  13  S.  Ct.  886  ..  .  141,  151, 

162,  756,  800 

Daniel  v.  Miller,  81  Fed.  1000 797 

Daniels  v.  Eldridge,  125  Mass.  356 157 

Daniels  v.  Railroad,  3  Wall.  250;   18  L.  Ed.  224 113 

Dashiell  v.  Grosvenor,  162  U.  S.  425;  40  L.  Ed.  1025;  16  S.  Ct.  805 93 

Davev  v.  Prouty,  107  Fed.  505;  46  C.  C.  A.  439 435 

Davis  v.  Brown,  94  U.  S.  423;   24  L.  Ed.  204 894 

Davis  v.  Brown,  9  Fed.  647 20 

Davis  v.  Davis,  2  Atk.  21 305 

Davis  v.  Edison,  60  Fed.  276;  8  C.  C.  A.  615 523,  541,  544,  561 

Davis  v.  Frederick,  19  Fed.  99 857 

Davis  v.  Perry,  120  Fed.  941 ;  57  C.  C.  A.  231    608,  612 

Davis  v.  United  States,  23  Ct.  CI.  329 756 

Davock  v.  Chicago,  69  Fed.  468 324 

Davoll  v.  Brown,  1  Wood  &  M.  53;  Fed.  Cas.  3662 903 

Dawson  v.  Follen,  2  Wash.  311 ;  Fed.  Cas.  3670 667 

Dawson  v.  Johnson,  1  Fost.  &  F.  656 778 


TABLE   OF   CASES   CITED  evil 

[References  are  to  sections] 

Day  v.  Fair  Haven,  132  U.  S.  98;  33  L.  Ed.  265;  10  S.  Ct.  11 49, 195, 

223,  239,  667 

Day  v.  Woodworth,  13  How.  363;    14  L.  Ed.  181 283 

Daylight  v.  Marcus,  110  Fed.  980 180 

Dayton  v.  Westinghouse,  118  Fed.  562;  55  C.  C.  A.  390 349 

Dean  v.  Mason,  61  U.  S.  198;    15  L.  Ed.  876 292,  796,  837,  839 

Debs,  In  re,  158  U.  S.  564;  39  L.  Ed.  1092;  15  S.  Ct.  900 536,  537,  924 

Debs,  Ex  parte,  159  U.  S.  251 ;  15  S.  Ct.  1039 538 

Decatur  v.  Paulding,  14  Pet.  497;   10  L.  Ed.  560 25 

Dececo  v.  Gilchrist,  125  Fed.  293;   60  C.  C.  A.  207 608 

Dederick  v.  Cassell,  9  Fed.  306 674 

Dederick  v.  Fox,  56  Fed.  714 3 

Dederick  v.  Whitman,  26  Fed.  763 158,  396 

Deere  v.  Case,  56  Fed.  841 ;  6  C.  C.  A.  157 608,  672 

Deere  v.  Dowagiac,  153  Fed.  177;  82  C.  C.  A.  351 717 

Deering  v.  Winona,  155  U.  S.  286;  39  \.  Ed.  153;  15  S.  Ct.  118  ..  .  60, 

74,  195,  232,  245,  378,  390,  408,  464,  468,  620,  629,  702,  903 

DeLamater  v.  Heath,  58  Fed.  414;    7  C.  C.  A.  279  ..  .  192,  221,  234,  856 

DeLaval  v.  Vermont,  109  Fed.  813 159 

DeLaVergne  v.  Featherstone,  147  U.  S.  209;  37  L.  Ed.  138;  13  S.  Ct.  283 

.  .  .  55,  56,  181,  207,  239,  300 

DeLaVergne  v.  Featherstone,  49  Fed.  916 55 

DeLavergne  v.  Valentine,  66  Fed.  765;   14  C.  C.  A.  77 195,  503 

Delaware  &  A.  Tel.  v.  Delaware,  50  Fed.  677;  2  C.  C.  A.  1 746 

DeLoriea  v.  Whitney,  63  Fed.  611;  11  C.  C.  A.  355 473,  496,  627 

Denise  v.  Swett,  142  N.  Y.  602 764 

Dennison  v.  Thomas,  94  Fed.  651 794 

Denniston  v.  Stewart,  18  How.  565;   15  L.  Ed.  489 113 

Densmore  v.  Scofield,  102  U.  S.  375;    26  L.  Ed.  214 715,  745 

Derby  v.  Thompson,  146  U.  S.  476;  30  L.  Ed.  1051;   13  S.  Ct.  181  ..  .  380 
Deslions  v.  LaCompagnie,  210  U.  S.  95;  52  L.  Ed.  973;  28  S.  Ct.  664  ..  .  129 

DeSollar  v.  Hanscome,  158  U.  S.  216;  39  L.  Ed.  956;  15  S.  Ct.  816 894 

Detmold  v.  Reeves,  1  Fish.  127;   Fed.  Cas.  3831 683 

Detroit  v.  Renchard,  9  Fed.  293 613,  867 

Devlin  v.  Paynter,  64  Fed.  398;  12  C.  C.  A.  188 226,  459 

D'Wolf  v.  Raband,  1  Pet.  476;   7  L.  Ed.  474 734 

Dexter  v.  Arnold,  2  Sumn.  109;  Fed.  Cas.  3858 847 

Dhegetaft  v.  London,  4  Br.  P.  C.  2d  Ed.  436 720 

Dick  v.  Oil  Well,  25  Fed.  105 324 

Dickerson  v.  Codwise,  11  Paige,  189 116 

Dickerson  v.  Machine,   35   Fed.    143 567,  570,   575 

Dickerson  v.  Matheson,  57  Fed.  524;  6  C.  C.  A.  466 505 

Dickerson  v.  Matheson,  47  Fed.  319 505 

Dickerson  v.  Matheson,  50  Fed.  73 505 

Dickerson  v.  Tinling,  84  Fed.   192;  28  C.  C.  A.  139 513,  744 

Distilling  v.  People,  41  N.  E.  188 744 

Dixon  v.  Moyer,  4  Wash.  68;  Fed.  Cas.  3931 152 

Dixon-Woods  v.  Pfeifer,  55  Fed.  390;  5  C.  C.  A.  148,  188,427,679,  691,  916 

Bobbs  v.  Penn,  5  Exch.  427 671,  676 

Dobson  v.  Cubley,  149  U.  S.  117;  37  L.  Ed.  671;  13  S.  Ct.  766 380 

Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct.  946 277,  846 

Dobson  v.  Hartford,  114  U.  S.  439;   29  L.  Ed.  177;   5  S.  Ct.  945  ..  .   247, 

277,  281,  290,  298,  337,  846,  847 

Dobson  v.  Lees,  137  U.  S.  258;  34  L.  Ed.  652;  11  S.  Ct.  71 54,  207, 

876,  885 


CV111  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Dodge  v.  Porter,  98  Fed.  624 613 

Doe  v.  Earl,  1  Adol.  &  E.  783 36 

Doe  v.  Grymes,  1  Pet.  469;   7  L.  Ed.  466 734 

Doig  v.  Morgan,  122  Fed.  460;  59  C.  C.  A.  616 591,  626 

Donnell  v.  Columbia,  2  Sumn.  366 ;  Fed.  Cas.  3987 836 

Dorsey  v.  Bradley,  12  Blatch.  202;   Fed.  Cas.  4015 505,  576,  899 

Doten  v.  City,  138  Fed.  406 ;  70  C.  C.  A.  308 842 

Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  27  L.  Ed.  877;  3  S.  Ct.  105 

.  .  .  216,  609,  657,  662,  667,  669,  672,  679 

Double  Pointed  v.  Two  Rivers,  3  Fed.  26 607 

Dougherty  v.  Steel  Co.  88  Wise.  343 20 

Dougherty  v.  West,  2  Fish.  553;   Fed.  Cas.  4029 554 

Dowagiac  v.  Brennan,  127  Fed.  143;  62  C.  C.  A.  257 485 

Dowagiac  v.  Minnesota,  118  Fed.  136;  55  C.  C.  A.  86 376,  635 

Dowagiac  v.  Superior,  162  Fed.  479 ;  89  C.  C.  A.  399 841 

Dowagiac  v.  Superior,  115  Fed.  886;  33  C.  C.  A.  36  .  .  .  207,  459,  468,  598, 

599,  622,  631,  671,  673,  674,  911,  919 

Downton  v.  Yaeger,  108  U.  S.  466;  27  L.  Ed.  789;  3  S.  Ct.  10 320 

Drake  v.  Brownell,  123  Fed.  86;   59  C.  C.  A.  216 325 

Draper  v.  Hudson,  3  O.  G.  354;   Fed.  Cas.  4069 775 

Draper  v.  Mills,  13  O.  G.  276;  Fed.  Cas.  4072 613,  867 

Draper  v.  Wattles,  3  B.  &  A.  618;   Fed.  Cas.  4073 856,  857 

Dravo  v.  Fabel,  132  U.  S.  487;  33  L.  Ed.  421;  10  S.  Ct.  170 411 

Dreyfus  v.  Searle,  124  U.  S.  60;  31  L.  Ed.  352;  8  S.  Ct.  390  ..  .  609,  616, 

671,  672,  682 
Drvfoos  v.  Wiese,  124  U.  S.  32;  31  L.  Ed.  362;  8  S.  Ct.  354  ..  .  202,  215, 

217,  375,  602,  936 
DuBois  v.  Kirk,  158  U.  S.  58;  39  L.  Ed.  895;  15  S.  Ct.  729  ..  .  96,  102,  305, 

456,  673,  691 

DuBois  v.  Railroad,  5  Fish.  208 ;   Fed.  Cas.  4109 894 

Dubuque,  Ex  parte,  68  U.  S.  69;   17  L.  Ed.  514    138,  891 

Dudley  v.  Munger,  50   Fed.  785 120 

Dueber  v.  Robbins,  75  Fed.  17;   21  C.  C.  A.  198 385,  623,  636,  675 

Duer  v.  Corbin,  149  U.  S.  216;  37  L.  Ed.  707;  13  S.  Ct.  850  ..  .  615,  635,  636 

Duff  v.  Sterling,  107  U.  S.  636;   27  L.  Ed.  517;  2  S.  Ct.  487  ..  .  202,  211, 

213,  215,  217,  229,  230,  375,  441,  477,  497,  507,  680,  768,  815 

Duffy  v.  Lyth,  5  Watts.  120 894 

Dunbar  v.  Eastern,  81  Fed.  201 ;  26  C.  C.  A.  330 596 

Dunbar  v.  Meyers,  94  U.  S.  187;   24  L.  Ed.  34  .  .  .  313,  323,  325,  341,  344, 
437,  473,  591,  598,  599,  612,  617,  619,  653,  655,  667,  669,  708,  734,  799 

Dunbar  v.  Tack  Co.  4  B.  &  A.  518;  Fed.  Cas.  4127a 672 

Duncan  v.  Jandow,  82  U.  S.  165;  2  L.  Ed.  142 154 

Dunham  v.  Dennison,  154  U.  S.  103;   38  L.  Ed.  924;    14  S.  Ct.  986 

.  .  .  468,  874 

Dunham  v.  Railroad,  2  B.  &  A.  327;  Fed.  Cas.  4151 927 

Dunlap  v.  Schofield,  152  U.   S.  244;   38  L.   Ed.  426;    14  S.  Ct.  576 

.  .  .  336,  777 

Dunlap  v.  Willbrandt,  151  Fed.  223;  80  C.  C.  A.  575 47 

Dunn  v.  Rector,   14  Johns.  118 156 

Duplex  v.  Campbell,  69  Fed.  250;   16  C.  C.  A.  220 118,  544 

Durand  v.  Schulze,  61  Fed.  819;  10  C.  C.  A.  97 240 

Durant  v.  Essex,  101  U.  S.  555;   25  L.  Ed.  961 128 

Eachus  v.  Broomall,  115  U.  S.  429;  29  L.  Ed.  419;  6  S.  Ct.  229 224, 

390,  394,  483,  795 
Eades  v.  Harris,  1  Younge.  &  C.  230 169 


TABLE    OF    CASES    CITED  C1X 

[References  are  to  sections] 

Eagleton  v.  West,  111  U.  S.  490;   28  L.  Ed.  493;   4  S.  Ct.  593  ..  .  55,  56, 

207,  239,  300,  780,  809,  812 

Eagleton  v.  West,  2  Fed.  774 809,  812 

Eames  v.  Andrews,  122  U.  S.  40;  30  L.  Ed.  1064;  7  S.  Ct.  1073  ...  59,  85, 

98,  188,  426,  427,  598,  640,  679,  691,  819,  911,  916 

Eames  v.  Godfrey,  68  U.  S.  78;  17  L.  Ed.  547  ..  .  202,  466,  473,  528, 612,  872 

Eames  v.  Worcester,  123  Fed.  67;  60  C.  C.  A.  37 468,  615,  665 

Eastern  v.  Hope,  95  U.  S.  297;  24  L.  Ed.  477 736 

Eastern  v.  Standard,  30  Fed.  63 856 

Eastman  v.  Mayor,  134  Fed.  844;  69  C.  C.  A.  628 614,  851,  855 

Easton  v.  Salisbury,  21  How.  426;   16  L.  Ed.  181 308 

Eaton  v.  Lewis,  115  Fed.  635 335 

Eaton  v.  Lewis,  127  Fed.  1018;  61  C.  C.  A.  562 335 

Eby  v.  King,  158  U.  S.  366;  39  L.  Ed.  1018;   15  S.  Ct.  972 878,  887 

Ecaubert  v.  Appleton,  67  Fed.  917;   15  C.  C.  A.  73 21,  170 

Eclipse  Mfg.  Co.  v.  Adkins,  36  Fed.  554 324 

Eddy  v.  Dennis,  95  U.  S.  560;   24  L.  Ed.  363 202,  375 

Edison  v.  Beacon,  54  Fed.  678 256,  561,  562 

Edison  v.  Columbia,  56  Fed.  496 561 

Edison  v.  Kaufman,  105  Fed.  960 513,  744,  761 

Edison  v.  Mt.  Morris,  58  Fed.  572;    7  C.  C.  A.  375   .  .* 568,  574 

Edison  v.  Peninsular,  101  Fed.  831 ;   43  C.  C.  A.  479 476,  756 

Edison  v.  Peninsular,  95  Fed.  669 476 

Edison  v.  Philadelphia,  60  Fed.  397 254 

Edison  v.  Pike,  116  Fed.  863 474,  513,  744,  761 

Edison  v.  Sawyer-Man,  53  Fed.  592;  3  C.  C.  A.  605 568,  729 

Edison  v.  Thakara,  167  Pa.  530 755 

Edison  v.  United  States,  59  Fed.  501 ;  8  C.  C.  A.  200 539 

Edmeston  v.  Lyde,  1  Paige,  637 157 

Egbert  v.  Lippmann,  104  U.  S.  333;    26  L.  Ed.  755  ..  .  18,  74,  412,  413, 

414,  415,  416,  851,  853,  854,  855,  856,  857 

Elder  v.  McClaskey,  70  Fed.  557;  17  C.  C.  A.  251 116 

Eldred  v.  Kirkland,  130  Fed.  342;  64  C.  C.  A.  588 222 

Electric  v.  Boston,  139  U.  S.  481;  35  L.  Ed.  250;   11  S.  Ct.  586 871, 

872,  876,  877 

Electric  v.  Brush,  52  Fed.  130;  2  C.  C.  A.  682 350,  356 

Electric  v.  Brush,  44  Fed.  602 170,  587 

Electric  v.  Carborundum,  102  Fed.  618;  42  C.  C.  A.  537 223 

Electric  v.  Edison,  61  Fed.  834;    10  C.  C.  A.  106 35,  256,  535,  539, 

541,  561,  564 

Electric  v.  Fuller,  59  Fed.  1003;   8  C.  C.  A.  442 486 

Electric  v.  Hall,  114  U.  S.  87;   29  L.  Ed.  96;  5  S.  Ct.  1069 468,  473 

Electric  v.  Hall,  6  Fed.  603 613 

Electric  v.  Jamaica,  61  Fed.  655 654 

Electric  v.  Julian,  47  Fed.  892 579 

Electric  v.  McKeesport,  73  O.  G.  1289 814 

Electric  v.  Pittsburg,  125  Fed.  926 506 

Elgin  v.  Marshall,  106  U.  S.  578;  27  L.  Ed.  249;   1  S.  Ct.  484 894 

Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000  ...  18,  82,  290,  298, 
392,  412,  413,  414,  416,  417,  453,  459,  503,  529,  651,  779,  809,  827,  828, 
829,  837,  838,  843,  844,  845,  846,  847,  851,  853,  854,  855,  856,  857 

Ellbert  v.  St.  Paul,  50  Fed.  205 216 

Ellicott  v.  Wiltz,  107  U.  S.  711;   27  L.  Ed.  448;  2  S.  Ct.  128 553 

Ellithorpe  v.  Robertson,  4  Blatch.  307;   Fed.  Cas.  4408    613,  867 

Emack  v.  Kane,  34  Fed.  46 924 


CX  TABLE    OF   CASES    CITED 

[References  are  to  sections] 

Emerson  v.  Slater,  22  How.  41 ;   16  L.  Ed.  365 176 

Emerson  v.  Van  Nort,  116  Fed.  974 68 

Emmons  v.  Sladden,  9  0.  G.  354 418 

Enoch  Morgans  v.  Gibson,  122  Fed.  420;  59  C.  C.  A.  46 538 

Envelope  v.  Seymer,  28  L.  J.  (N.  S.)  C.  P.  22 671,  676,  679 

Erie  v.  American,  70  Fed.  58;    16  C.  C.  A.  632 207,  214 

Ertel  v.  Stahl,  65  Fed.  517;   13  C.  C.  A.  29 572 

Ertel  v.  Stahl,  65  Fed.  519;   13  C.  C.  A.  31 551,  567 

Estey  v.  Burdett,  109  U.  S.  633;  27  L.  Ed.  1058;  3  S.  Ct.  531  ..  .  216, 304, 

657,  662,  667,  679,  833 

Estis  v.  Trabue,  128  U.  S.  225;  32  L.  Ed.  437;  9  S.  Ct.  58 134 

Eureka  v.  Bailey,  78  U.  S.  488;   20  L.  Ed.  209 510,  742,  764 

Evans  v.  Eaton,  3  Wheat.  454;  4  L.  Ed.  433 95,  418 

Evans  v.  Eaton,  3  Wash.  443;  Fed.  Cas.  4611 905 

Evans  v.  Kelly,  13  Fed.  903 223 

Excelsior  v.  Brown,  74  Fed.  321 ;  20  C.  C.  A.  428 137 

Excelsior  v.  Pacific,  185  U.  S.  282;  46  L.  Ed.  910;  22  S.  Ct.  681 714 

Excelsior  v.  Union,  32  Fed.  221 688,  770,  823 

Eyve  v.  Potter,  15  How.  42;   14  L.  Ed.  40 425 

Fabries  Co.  v.  Smith,  100  U.  S.  110;  25  L.  Ed.  547 274 

Fairbanks  v.  Stickney,  123  Fed.  79;  59  C.  C.  A.  209 342 

Fairclough  v.  Marshall,  L.  R.  4  Ch.  Div.  37 778 

Falk  v.  Missouri,  103  Fed.  295;  43  C.  C.  A.  240 636 

Fanning  v.  Gregorie,  16  How.  524;   14  L.  Ed.  523 156 

Farley  v.  Kittson,  120  U.  S.  303;  30  L.  Ed.  684;  7  S.  Ct.  534 141,  800 

Farmers'  Loan  v.  McClure,  78  Fed.  209 129,  544 

Farmers'  v.  Spruks,  127  Fed.  691;   62  C.  C.  A.  447 631,  797 

Farmers'  v.  Spruks,  119  Fed.  594 797 

Farrington  v.  Board,  4  Fish.  216 ;  Fed.  Cas.  4687 524 

Fassett  v.  Ewart,  62  Fed.  404;  10  C.  C.  A.  441 353 

Faulks  v.   Kamp,   3   Fed.   898 213,   384,   555,   766,   927 

Fay  v.  Cordesman,  109  U.  S.  408;  27  L.  Ed.  979;  3  S.  Ct.  236  ..  .  202,  206, 
207,  211,  215,  217,  246,  374,  375,  380,  468,  612,  889,  905 

Feather  v.  Queen,  6  Best  &  S.  257 498 

Featherstone  v.  Bidwell,  57  Fed.  631 ;  6  C.  C.  A.  487 871 

Feeter  v.  Heath,  11  Wend.   482 807 

Feibelman  v.  Packard,  108  U.  S.  14;  1  S.  Ct.  138 134 

Felix  v.  Ledos,  54  Fed.  163 190 

Fenner  v.  Sanborn,  37  Barb.  610 151 

Ferguson  v.  Dent,  46  Fed.  88 277 

Ferguson  v.  Earl,  9  Clark  &  F.  251 481 

Ferguson  v.  Wilson,  L.  R.  2  Ch.  77 151 

Field  v.  Seabury,  19  How.  323;   15  L.  Ed.  650 26 

Fire  Ins.  Assn.  v.  Wickham,  128  U.  S.  426;  32  L.  Ed.  503;  9  S.  Ct.  113  ...  113 

Fisher  v.  Boody,  1  Curt.  206;  Fed.  Cas.  4814 425 

Fisk,  Ex  parte,  113  U.  S.  713;  28  L.  Ed.  1117;  5  S.  Ct.  724 401 

Fitch  v.  Bragg,  16  Fed.  243 298 

Fleckner  v.  Bank,  8  Wheat.  338;  5  L.  Ed.  338 156 

Fleming,  The  Walter  M.  9  Fed.  474 732 

Flitcraft  v.  Com.  Title,  211  Pa.  119 154 

Flood  v.  Hicks,  2  Biss.  169;  Fed.  Cas.  4877 669 

Florida  Construction  v.  Young,  59  Fed.  721 539 

Florsheim  v.  Schilling,  137  U.  S.  64;   34  L.  Ed.  574;   11  S.  Ct.  20  .  .  .  49, 

88,  437,  596,  597,  608,  612,  655,  671,  672,  696 
Flower  ^.Detroit,  127  U.S.  563;  32  L.  Ed.  175;  8  S.  Ct.  1291 871 


TABLE    OF    CASES    CITED  CXI 

[References  are  to  sections] 

Foley  v.  Harrison,  15  How.  448 ;   14  L.  Ed.  433 26 

Fond  Du  Lac  v.  May,  137  U.  S.  395;  34  L.  Ed.  714;  11  S.  Ct.  98 404, 

707,  734 

Foote  v.  Silsby,  2  Blatch.  260;   Fed.  Cas.  4919 641 

Forbush  v.  Cook,  2  Fish.  668;  Fed.  Cas.  4931 668 

Ford  v.  Bancroft,  98  Fed.  309;   39  C.  C.  A.  91 380 

Forgay  v.  Conrad,  6  How.  201 ;   12  L.  Ed.  200 116,  304 

Forncrook  v.  Root,  127  U.  S.  176;  32  L.  Ed.  97;  8  S.  Ct.  1247  .  .  .  612,  854 

Forrelly  v.  Woodfolk,  60  U.  S.  288;  15  L.  Ed.  670 130 

Forsyth  v.  City,  166  U.  S.  506;  41  L.  Ed.  1095;  17  S.  Ct.  665 31 

Forsyth  v.  Garlock,  142  Fed.  461 ;  73  C.  C.  A.  577 435 

Foster  v.  Crossin,  44  Fed.  62 332,  635 

Foster  v.  Goddard,  1  Black,  506;    17  L.  Ed.   228 321,  807 

Foster  v.  Lindsay,  3  Dill.  126;   Fed.  Cas.  4976 587 

Foster  v.  Moore,  1  Curt.  279;  Fed.  Cas.  4978 380,  468 

Fourgeres  v.  Murbarger,  44  Fed.  292 327 

Fowle  v.  Park,  131  U.  S.  88;  33  L.  Ed.  67;  9  S.  Ct.  658 513 

Fowler  v.  City  of  New  York,  121  Fed.  747;  58  C.  C.  A.  113 148 

Fowler  v.  City,  110  Fed.  749 323 

Fox  v.  Perkins,  52  Fed.  205;    3  C.  C.  A.  32 431,  636,  646,  665 

Foxley's  Case,  5  Co.  109 926 

Fraim  v.  Keen,  25  Fed.  820 630 

Frank  v.  Bernard,  131   Fed.   269 213 

Franks  v.  Martin,  1  Eden.  309 • 174 

Frearson  v.  Loe,  9  Ch.  Div.  48 764 

French  v.  Carter,  137  U.  S.  239;  34  L.  Ed.  664;  11  S.  Ct.  90 600,  667 

French  v.  Hay,  89  U.  S.  231 ;  22  L.  Ed.  799 137 

Frost  v.  Cohn,  119  Fed.  505;  56  C.  C.  A.  185 631,  648,  697 

Frow  v.  DeLaVega,  15  Wall.  552;  21  L.  Ed.  60 305 

Fuller  v.  Bartlett,  68  Wise.  73 151 

Fuller  v.  Berger,  120  Fed.  274;   56  C.  C.  A.  588 548,  574,  745,  935 

Fuller  v.  Yentzer,  94  U.  S.  288;  24  L.  Ed.  103  ..  .  223,  426,  469,  473,  612, 

651,  670,  672,  679,  686,  872 

Furbush  v.  Cook,  2  Fish.  668;   Fed.  Cas.  4931 603,  668 

Furrer  v.  Ferris,  145  U.  S.  132;  36  L.  Ed.  649;  12  S.  Ct.  821 129,  544 

Gage  v.  Herring,  107  U.  S.  640;  27  L.  Ed.  601;  2  S.  Ct.  819  ..  .  187,  201, 

202,  206,  207,  274,  280,  342,  374,  380,  466,  468,  473,  522,  532,  612, 

874,  S77,  883,  887,  889 

Gage  v.  Kellog,  23  Fed.   891 688,  770 

Galliher  v.  Cadwell,  145  U.  S.  368;  36  L.  Ed.  738;  12  S.  Ct.  873  .  .  .  728,  921 

Gaily  v.  Colt,  30  Fed.  118 929 

Gait  v.  Parlin,  60  Fed.  417;   9  C.  C.  A.  49 188,  427 

Galvin  v.  City,  115  Fed.  511 ;  53  C.  C.  A.  165 431,  665 

Gaines  v.  Rugg,  148  U.  S.  228;  37  L.  Ed.  432;  13  S.  Ct.  611 128,  891 

Gaisman  v.  Gallert,  105  Fed.  955 219 

Gamewell,  In  re,  73  Fed.  908;  20  C.  C.  A.  Ill 790,  891 

Gamewell  v.  Municipal,  61  Fed.  208;   9  C.  C.  A.  450 115,  123,  550 

Gamewell  v.  Municipal,  77  Fed.  490;  23  C.  C.  A.  250 532,  579, 

629,  807 
Gandy  v.  Main,  143  U.  S.  587;  36  L.  Ed.  272;   12  S.  Ct.  598  ..  .  495,  598, 

617,  622,  627,  634,  635,  671 
Gandy  v.  Marble,  122  U.  S.  432;  30  L.  Ed.  1223;  7  S.  Ct.  129  .  .  .  383,  727 
Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158;  6  S.  Ct.  1027  ...  49,  596, 

614,  662,  667,  696 
Gardt  v.  Brown,  113  111.  475 544 


CX11  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Garretson  v.  Clark,  111  U.  S.  120;   28  L.  Ed.  371;   4  S.  Ct.  291  ..  .  279, 

290,  297,  298,  837,  838,  839,  843,  844,  845,  846 

Gaskill  v.  Meyers,  81  Fed.  854;  26  C.  C.  A.  642     876,  889 

Garst  v.  Harris,  177  Mass.  72 513 

Gates  v.  Fraser,  153  U.  S.  332;  38  L.  Ed.  734;  14  S.  Ct.  883  ..  .  167,  437,  676 

Gayler  v.  Wilder,  10  How.  477;   13  L.  Ed.  504  ..  .  10,  11,  71,  150,  151,  152, 

154,  164,  165,  270,  391,  418,  532,  629,  750,  752,  762,  765,  796,  799 

G.  &  B.  S.  M.  Co.  v.  Williams,  2  Fish.  133;  Fed.  Cas.  5847 554,  561 

Geary  v.  Sheridan,  8  Ves.  192 305 

Geist  v.  Stier,  134  Pa.  216 311 

General  v.  Campbell,  137  Fed.  600 326 

General  v.  International,  126  Fed.  755;  61  C.  C.  A.  329 937 

General  v.  Yost,  139  Fed.  568;  71  C.  C.  A.  552 88,  615 

Georgia  v.  Brailsford,  2  Dall.  402;    1  L.  Ed.  400 549,  562 

Germain  v.  Wilgus,  67  Fed.  597;   14  C.  C.  A.  561 371,  574 

German  v.  United  States,  148  U.  S.  573;  37  L.  Ed.  564;  13  S.  Ct.  702 

...  498 

German-American  v.  Loew,  103  Fed.  303 476,  477 

Germania  v.  Boynton,  71  Fed.  797;   19  C.  C.  A.  118 167 

Germer  v.  Art,  150  Fed.  141 ;  80  C.  C.  A.  9 309,  904 

Gerrich  v.  Sweetser,  4  Pink.  374 411 

Giant  v.  California,  4  Fed.  720 871 

Gibbons  v.  Wilson,  75  U.  S.  269;    19  L.  Ed.  453 498,  715 

Gibbons  v.  Ogden,  9  Wheat.  1 ;  6  L.  Ed  3 920 

Gibbs  v.  Hoefner,  19  Fed.  323 634 

Gifford  v.  Helms,  98  U.  S.  248;  25  L.  Ed.  57 532 

Gill  v.  United  States,  160  U.  S.  426;  40  L.  Ed.  424;   16  S.  Ct.  322  ..  .  151, 

366,  756 
Gill  v.  Wells,  89  U.  S.  1;   22  L.  Ed.  699  ..  .  145,  310,  322,  468,  469,  472, 

473,  604,  612,  804,  871,  872,  877,  905 

Gillespie  v.  Cummings,  1  B.  &  A.  587;  Fed.  Cas.  5434 804 

Gillett  v.  Bate,  86  N.  Y.  87 157 

Gill's  Case,  25  Ct.  CI.  415 498 

Gilman  v.  Philadelphia,  3  Wall.  713;   18  L.  Ed.  96 920 

Gilmore  v.  Anderson,  38   Fed.  846 558,  568 

Glascott  v.  Lang,  3  Mylne  &  C.  455;  2  Phil.  Ch.  310 425,  562 

Glendale  v.  Smith,  100  U.  S.  110;  25  L.  Ed.  547 273 

Globe  v.  Walker,  210  U.  S.  356;  52  L.  Ed.  1096;  28  S.  Ct.  726 744 

Globe-Wernicke  v.  Brown,  121  Fed.  90;  57  C.  C.  A.  344 548 

Glue  Co.  v.  Upton,  4  Cliff.  237;  Fed.  Cas.  9607 774 

Godden  v.  Kimmell,  99  U.  S.  201 ;  25  L.  Ed.  431 729 

Godfrey  v.  Eames,  68  U.  S.  317;  17  L.  Ed.  684 3,  6 

Goeble  v.  American,  55  Fed.  825    324 

Gold  v.  United  States,  3  Fish.  489;  Fed.  Cas.  5508 587 

Good  v.  Deland,  121  N.  Y.  1 745 

Goodyear  v.  Beverly,  1  Cliff.  348:  Fed.  Cas.  5557 450,  927 

Goodyear  v.  Bishop,  4  Blatch.  438;  Fed.  Cas.  5558 765 

Goodyear  v.  Day,  1  Blatch.  565;   Fed.  Cas.  5568 724 

Goodvear  v.  Day,  2  Wall.  Jr.  283;   Fed.  Cas.  5569 821 

Goodyear  v.  Davis,  102  U.  S.  222;    26  L.  Ed.  149  ..  .  54,  207,  375,  380, 

671,676,696,871,889 

Goodyear  v.  Railroad  Co.  2  Wall.  Jr.  356;   Fed.  Cas.  5563 411,  821 

Goodyear  v.  Rubber,  116  Fed.  363;  53  C.  C.  A.  583  ..  .  49,  224,  226,  599, 

654,  904,  919 
Goodyear  v.  Rubber,  2  Cliff.  351;  Fed.  Cas.  5583 820 


TABLE    OF    CASES    CITED  CX111 

[References  are  to  sections] 

Goodyear  v.  Rubber,  4  Blatch.  63;  Fed.  Cas.  5586 714 

Gordon  v.  Anthony,  16  Blatch.  234;  Fed.  Cas.  5605 157 

Gordon  v.  Ogden,  3  Pet.  33;  7  L.  Ed.  592 22 

Gordon  v.  Warder,  150  U.  S.  47;  37  L.  Ed.  992;   14  S.  Ct.  32 86,  375, 

502,  525,  618 

Gorham  v.  White,  81  U.  S.  511;   20  L.  Ed.  731 331,  332,  334,  337 

Gormley  v.  Bunyan,  138  U.  S.  623;  34  L.  Ed.  1086;  11  S.  Ct.  453 789 

Goshen  v.  Bissell,  72  Fed.  67;  19  C.  C.  A.  13  .  .  .  195,  598,  672,  911,  919 

Goss  Printing  Press  v.  Scott,  103  Fed.  650 636 

Gottfried  v.  Brewing,  5  B.  &  A.  4;   Fed.  Cas.  5633 223,  523 

Gottfried  v.  Miller,  104  U.  S.  521;   26  L.  Ed.  851 766,  927 

Gottfried  v.  Seipp,  8  Fed.  322 524 

Gould  v.  Banks,  8  Wend.  562 168 

Gould  v.  Rees,  82  U.  S.  187 ;  21  L.  Ed.  39.     See  Rees  v.  Gould. 

Gould  v.  Sessions,  67  Fed.  163;  14  C.  C.  A.  366 505,  536,  537 

Gould  Coupler  v.  Pratt,  70  Fed.  622 473 

Goulds  v.  Cowing,  105  U.  S.  253;   26  L.  Ed.  987 282,  290,  298,  837, 

838,  839,  845 

Gove  v.  Jennes,  19  Me.  53 778 

Graham  v.  Mfg.  Co.  11  Fed.  138 349,  350,  856 

Graham  v.  McCormick,  11  Fed.  859 349,  350,  856,  857 

Graham  v.  Mason,  5  Fish.  1 ;  Fed.  Cas.  5671 188,  197,  407 

Graham  v.  Merrill,  5  Cold.  631 539 

Grand  v.  Winegar,  82  U.  S.  373;  21  L.  Ed.  170 372 

Grand  Trunk  v.  Cummings,  106  U.  S.  700;  27  L.  Ed.  266;   1  S.  Ct.  493 

...  407 

Gramophone  v.  Gramophone,   107  Fed.   129 386 

Grant  v.  Ins.  Co.  106  U.  S.  429;  27  L.  Ed.  237;  1  S.  Ct.  414 116 

Grant  v.  Raymond,  6  Pet.  218;  8  L.  Ed.  376  ..  .  7,  222,  263,  366,  745,  746, 

837  873  903  915 
Grant  v.  Walter,  148  U.  S.  547;  37  L.  Ed.  552;   13  S.  Ct.  699  .  .'.  86,'202, 

431,  437,  525,  616,  635,  636,  665,  670 

Graves  v.  Fisher,  5  Me.  70 807 

Gray  v.  Grinberg,  159  Fed.  318;  86  C.  C.  A.  328 496 

Grayson  v.  Lynch,  163  U.  S.  468;  41  L.  Ed.  230;   16  S.  Ct.  1064 129 

Great  Western  v.  Birmingham,  2  Phil.  Ch.  602 562 

Greeley,  Ex  parte,  6  Fish.  575;  Fed.  Cas.  5745 636 

Green  v.  Barney,  19  Fed.  420 568 

Green  v.  Fisk,  103  U.  S.  518;  26  L.  Ed.  486 130 

Green  v.  Mills,  69  Fed.  852;   16  C.  C.  A.  516 116,  302,  539,  544 

Green  v.  Pathen,  13  Wend.  295 807 

Green  v.  Richards,  23  N.  J.  Eq.  32 365 

Green  v.  Terwilliger,  56  Fed.  384 398 

Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70 207,  433,  525 

Greene  v.  Buckley,  120  Fed.  955 797 

Greist  v.  Parsons,  125  Fed.  116;  60  C.  C.  A.  34 673 

Grier  v.  Wilt,  120  U.  S.  412;  30  L.  Ed.  712;  7  S.  Ct.  718 389,  394,  795 

Griswold  v.  Harker,  62  Fed.  389;    10  C.  C.  A.  435 374,  441,  507, 

608,  631 

Griswold  v.  Wagner,  68  Fed.  494;    15  C.  C.  A.  525 646,  656 

Grossmayer,  In  re,  177  U.  S.  48;  20  S.  Ct.  535 723 

Grove  v.  Hodge,  55  Pa.  504,  516 365 

Guaranty^.  Green,  139  U.  S.  137;  35  L.  Ed.  116;  11  S.  Ct.  512 787 

Guidet  v.  Brooklyn,  105  U.  S.  550;  26  L.  Ed.  1106  ..  .  596,  599,  600,  669,  908 
Gunson  v.  Sewell,  1  Blatch.  244;  Fed.  Cas.  5881 344 


CX1V  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Gutta  Percha  v.  Goodyear,  3  Sawy.  542;  Fed.  Cas.  5879 567 

Guyon  v.  Serrill,  1  Blatch.  245;   Fed.  Cas.  5881 343 

Haberman,  In  re,  147  U.  S.  525;  37  L.  Ed.  266;  13  S.  Ct.  527 545 

Hadden  v.  Spader,  20  Johns.  Ch.  554 157 

Hagood  v.  Southern,  117  U.  S.  52;  29  L.  Ed.  805;  6  S.  Ct.  608 553 

Hailes  v.  Albany,  123  U.  S.  582;   31  L.  Ed.  284;   8  S.  Ct.  262 344 

Hailes  v.  Van  Wormer,  87  U.  S.  353;  22  L.  Ed.  241  ..  .  46,  47,  48,  49,  223, 

261,  344,  440,  473,  594,  595,  596,  597,  601,  603,  607,  608,  609,  617, 

629,  647,  656,  657,  674,  675 

Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed.  241 ;  10  S.  Ct.  876 734 

Hale  v.  World,  127  Fed.  964;  62  C.  C.  A.  596 207 

Hall  v.  Bird,  3  Fish.  595;  Fed.  Cas.  5926 20 

Hall  v.  Conder,  2  C.  B.  N.  S.  22 384 

Hall  v.  General,  153  Fed.  907;  82  C.  C.  A.  653 567 

Hall  v.  MacNeale,  107  U.  S.  90;  27  L.  Ed.  367;  2  S.  Ct.  73  .  .  .  89,  412,  414, 
416,  596,  617,  662,  667,  671,  679,  851,  853,  856,  857 

Hall  v.  Mister,  Salk.  84 807 

Hall  v.  Wiles,  2  Blatch.  194;  Fed.  Cas.  5954 343,  344 

Hallock  v.  Davison,  107  Fed.  482 622 

Hamilton  v.  Kingsbury,  17  Blatch.  264;  Fed.  Cas.  5985 763 

Hammacher  v.  Wilson,  26  Fed.  239 755 

Hammershley  v.  Scamoni,  7  Fed.  584 375 

Hammond  v.  Hart,  4  B.  &  A.  Ill;  Fed.  Cas.  6003 765,  798 

Hammond  v.  Mason,  92  U.  S.  724;  23  L.  Ed.  767 751,  758 

Hammond  v.  Stockton,  70  Fed.  716;   17  C.  C.  A.  356 332,  337 

Hanifen  v.  Godshalk,  84  Fed.  649;  28  C.  C.  A.  507 59 

Hanifen  v.  Godschalk,  78  Fed.  811 82 

Hanlon  v.  Primrose,  56  Fed.  600 324 

Hapgood  v.  Hewitt,  119  U.  S.  226;  30  L.  Ed.  369;  7  S.  Ct.  193  ..  .  40,  366, 

367,  368,  751,  756 

Hardin  v.  Boyd,  113  U.  S.  756;  28  L.  Ed.  1141;  5  S.  Ct.  771 510 

Harding  v.  Handy,  24  U.  S.  103;  6  L.  Ed.  103 807 

Hardwick  v.  Masland,  71  Fed.  887 398 

Harmon  v.  Struthers,  57  Fed.  637 412,  856 

Harper  v.  Holman,  84  Fed.  222 794 

Harris  v.  Allen,  15  Fed.  106 377 

Harris  v.  Bernhart,  97  Cal.  546 387 

Harrison  v.  Foundry,  1  App.  Cas.  574 668 

Harrison  v.  Glucose,  116  Fed.  304;  53  C.  C.  A.  484 744 

Harrison  v.  Nixon,  9  Pet.  483;  9  L.  Ed.  480 807 

Hart  v.  Buckner,  54  Fed.  925;  5  C.  C.  A.  1 539 

Hart  v.  Ten  Evck,  2  Johns.  Ch.  108 841 

Hartell  v.  Tilghman,  99  U.  S.  547;   25  L.  Ed.  357   ...  176,  449,  714,  721, 

724,  764,  765,  899 

Hartman  v.  Park,  145  Fed.  358 574 

Hartshorn  v.  Saginaw,  119  U.  S.  664;  30  L.  Ed.  539;  7  S.  a:  421 225 

Hartshorn  v.  Tripp,  7  Blatch.  120;  Fed.  Cas.  6168 20 

Harwood  v.  G.  N.  R.,  11  H.  L.  Cas.  654 671,  672,  676,  679 

Haskell  v.  Jones,  86  Pa.  173 920 

Hatch  v.  Electric,  100  Fed.  975;  41  C.  C.  A.  133 257 

Hatch  v.  Moffat,  15  Fed.  252 688,  770,  823 

Hatch  v.  Reardon,  204  U.  S.  152;  51  L.  Ed.  415;  27  S.  Ct.  188 550 

Hathaway  v.  First  National,  134  U.  S.  494;  33  L.  Ed.  1004: 10  S.  Ct.  608 

...  131 
Hat-Sweat  v.  Porter,  34  Fed.  745 510 


TABLE    OF    CASES    CITED  CXV 

[References  are  to  sections] 

Hausskenecht  v.  Clavpool,  66  U.  S.  431;   17  L.  Ed.  172 921 

Hawkins  v.  Crook,  2  P.  W.  556 305 

Hawkins,  Ex  parte,  147  U.  S.  486;  37  L.  Ed.  251;   13  S.  Ct.  512 142 

Hawkins  v.  Hunt,  14  111.  42 717 

Hawks  v.  Swett,  4  Hun.  146 899 

Haworth  v.  Hardcastle,  1  Web.  480 222,  223 

Hayden  v.  Oriental,  15  Fed.  605 921 

Hayes  v.  Dayton,  8  Fed.  702 804 

Hayes  v.  Fischer,  102  U.  S.  121;  26  L.  Ed.  95 537,  538,  577 

Hays  v.  Sulsor,  1  Fish.  532;   Fed.  Cas.  6271 629 

Hayward  v.  Andrews,  106  U.  S.  672;  27  L.  Ed.  271;   1  S.  Ct.  544 150, 

165,  719,  765 

Hayward  v.  Bank,  96  U.  S.  611 ;   24  L.  Ed.  855 729 

Heald  v.  Carey,  11  C.  B.  977 57 

Heald  v.  Rice,  104  U.  S.  737;   26  L.  Ed.  910  ..  .  356,  404,  496,  596,  608, 
617,  670,  671,  672,  674,  676,  734,  871,  872,  873,  877 

Heap  v.  Tremont,  82  Fed.  449;  27  C.  C.  A.  316 59,  616,  691 

Heath  v.  Hay,  67  Fed.  246 603 

Heath  v.  Unwin,  15  Sim.  552 508 

Heaton  v.  Eureka,  77  Fed.  288;  25  C.  C.  A.  267  ..  .  474,  476,  477,  510;  513, 

548,  574,  576,  645,  714,  744,  745,  756,  761,  837 

Heaton-Peninsular  v.  Elliott,  58  Fed.  220 673 

Heaton  Peninsular  v.  Schlochtmeyer,  69  Fed.  592 327 

Heaton  v.  Schlochtermeyer,  72  Fed.  520;  18  C.  C.  A.  674 327 

Heine  v.  Smith,  43  Fed.  786 380 

Heinze  v.  Butte,  107  Fed.  165;  46  C.  C.  A.  219 542 

Henderson  v.  Carbondale,  140  U.  S.  25;  35  L.  Ed.  332;  11  S.  Ct.  691  ..  .  578 

Henderson  v.  Mayor,  92  U.  S.  259;  23  L.  Ed.  543 920 

Henderson  v.  Tompkins,  60  Fed.  758 324 

Hendy  v.  Golden,  127  U.  S.  370;  32  L.  Ed.  207;  8  S.  Ct.  1275  ...  211,  221, 
234,  313,  393,  595,  596,  602,  609,  658,  664,  667,  669,  672,  734,  795,  799 

Henry  v.  Francestown,  2  B.  &  A.  221 ;  Fed.  Cas.  6382 857 

Henry  v.  Providence,  3  B.  &  A.  501 ;   Fed.  Cas.  6384 857 

Henry  v.  Soapstone  Co.,  2  Fed.  78 856 

Herbert  v.  Adams,  4  Mas.  15;   Fed.  Cas.  6394 152,  796 

Herbert  v.  Rainey,  54  Fed.  248 924 

Herdic  v.  Roessler,  109  N.  Y.  27 920 

Herman  v.  Brooklyn,  Fed.  Cas.  6703 804 

Herrick  v.  Giant,  60  Fed.  80;  8  C.  C.  A.  475 618 

Herring  v.  Gage,  15  Blatch.  124;  Fed.  Cas.  6442 797 

Herring  v.  Hall,  208  U.  S.  554;  52  L.  Ed.  616;  28  S.  Ct.  350 154 

Hermann  v.  Hermann,  29  Fed.  92 151,  752 

Hicklin  v.  Marco,  56  Fed.  549;  6  C.  C.  A.  10 789 

Hicks  v.  Kelsey,  85  U.  S.  670;  21  L.  Ed.  852  ..  .  261,  380,  629,  646,  655,  667, 

671,  676,  696,  775 

Hien  v.  Pungs,  68  O.  G.  657 5 

Higgin  v.  Murdock,  132  Fed.  810;  65  C.  C.  A.  466 88 

Higgin  Mfg.  Co.  v.  Scherer,  100  Fed.  459;  40  C.  C.  A.  491  ..  .  118,  323,  325 

Hill  v.  Esplay,  31  Pa.  St.  334 387 

Hill  v.  Evans,  6  Law  T.  N.  S.  90 320 

Hill  v.  Thompson,  2  March,  435;  4  Wash.  C.  C.  68;  Fed.  Cas.  15,297 

...  3,  204,  931 

Hill  v.  Thompson,  1  Web.  232 489 

Hill  v.  United  States,  149  U.  S.  593;   37  L.  Ed.  862;   13  S.  Ct.  1011 

.  .  .  498,  715 


CXV1  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Hill  v.  United  States,  50  U.  S.  386;  13  L.  Ed.  385 553 

Hill  v.  Whitcomb,  1  Holmes,  317;   Fed.  Cas.  6502 714 

Hill  v.  Wooster,  132  U.  S.  693;   33  L.  Ed.  502;    10  S.  Ct.  228  ..  .  46,  584, 

608,  612,  617,  646,  654,  671,  672,  679 

Hillborn  v.  Hale,  69  Fed.  958;    16  C.  C.  A.  569 374,  459 

Himeley  v.  Rose,  9  U.  S.  313;  3  L.  Ed.  Ill 140 

Hiram,  The,  1  Wheat.  440;   4  L.  Ed.  440 411 

Hitchcock  v.  Tremain,  9  Blatch.  550;  Fed.  Cas.  6540 61 

Hoare  v.  Silverlock,  12  Ad.  &  El.  (N.  S.)  624 706 

Hobbie  v.  Jennison,  149  U.  S.  355;  37  L.  Ed.  766;  13  S.  Ct.  879 450, 

505  523  524 

Hobbs  v.  Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct.  409  .  .'.  54,'222, 

257,  435,  608,  612,  635,  640,  651,  671,  673,  700,  937 

Hobbs  v.  Gooding,  111  Fed.  403;  49  C.  C.  A.  414 692 

Hocke  v.  New  York  Central,  122  Fed.  467;  58  C.  C.  A.  627 698 

Hocking  v.  Hocking,  4  Web.  434 384 

Hockholzer  v.  Eager,  2  Sawv.  361 ;  Fed.  Cas.  6556 567 

Hoe  v.  Knapp,  27  Fed.  204 371,  574,  645,  745 

Hoe  v.  Miehle,  141  Fed.  112 574 

Hoff  v.  Iron  Clad,  139  U.  S.  326;  35  L.  Ed.  179;  11  S.  Ct.  580 380,  696 

Hogg  v.  Emerson,  11  How.  587;  3  L.  Ed.  824 223 

Hohorst  v.  Hamburg-American,  148  U.  S.  262;  37  L.  Ed.  443;  13  S.  Ct. 

590  ..  .  304 

Hohorst,  In  re,  150  U.  S.  653;  37  L.  Ed.  1211;  14  S.  Ct.  221 579 

Holabird  v.  Burr,  17  Conn.  563 827 

Holland  v.  Shipley,  127  U.  S.  396;  32  L.  Ed.  185;  8  S.  Ct.  1089  .  .  .  596,  667 

Holliday  v.  Hunt,  70  111.  109 920 

Holliday  v.  Mattheson,  24  Fed.  185 505 

Hollister  v.  Benedict,  113  U.  S.  59;  28  L.  Ed.  901;  5  S.  Ct.  717  ..  .  216, 

437,  498,  591,  592,  596,  614,  628,  629,  636,  646,  649,  654,  655,  659,  662, 

667,  679,  682 

Holly  v.  Machine  Co.,  4  Fed.  74 476 

Holmes  v.  Truman,  67  Fed.  542;   14  C.  C.  A.  517 845 

Holzapfels  v.  Rahtjens,  183  U.  S.  51;  46  L.  Ed.  49;  22  S.  Ct.  6 929 

Holmes  v.  Metropolitan,  21  Fed.  458 420,  421,  422 

Horner  v.  Graves,  7  Bing.  735 365 

Horton  v.  Mabon,  12  C.  B.  (N.  S.)  437 679 

Hoskin  v.  Fisher,  125  U.  S.  217;    31  L.  Ed.  759;   8  S.  Ct.  834 397, 

871,  876.  888 
Hotchkiss  v.  Greenwood,   11   How.  248;    13  L.  Ed.  683  ..  .  47,  261,  437, 

593,  596,  629,  646,  653,  655,  656,  657,  667,  671,  672,  676,  679,  687, 

696,  697,  775 

Househill  v.  Nelson    1  Web.  685 230,  641,  688,  689,  768,  770,  815 

Houston  v.  Stern,  74  Fed.  636;   20  C.  C.  A.  636 285 

Hovey  v.  Stevens,  1  Wood.  &  M.  290;   Fed.  Cas.  6745 857 

Howard  v.  Detroit,  150  U.  S.  164;   37  L.  Ed.  1039;   14  S.  Ct.  68  .  .  .  614, 

615,  636,  658,  904,  908,  915 

Howard  v.  St.  Paul,  35  Fed.  743 797 

Howe  v.  Abbott,  2  Story,  190;   Fed.  Cas.  6766  .  .  .  473,  503,  616,  656,  657, 

667,  670,  672,  687 
Howe  v.  National,  134  U.  S.  388;  33  L.  Ed.  963;  10  S.  Ct.  570  .  .  .  207,  223, 

440,  592,  646,  654,  662,  671 

Howe  v.  Neemes,  18  Fed.  40 442 

Howe  v.  Underwood,  1  Fish.  160;  Fed.  Cas.  6775 811 

Howell  v.  State,  10  Lea.  544 577 


TABLE    OF    CASES    CITED  Cxvii 

[References  are  to  sections] 

Howes  v.  Nutes,  4  Cliff.  173;  Fed.  Cas.  6790 223 

Howland,  Ex  parte,  12  O.  G.  889 375 

Howlett  v.  Tarte,  10  C.  B.  N.  S.  813 894 

Hoxie  v.  Carr,  1  Sumn.  173;  Fed.  Cas.  6802 21 

Hoyt  v.  Home,  145  U.  S.  302;  36  L.  Ed.  713;   12  S.  Ct.  922  .  .  .  215,  230, 
375,  378,  435,  448,  453,  457,  459,  486,  503,  506,  529 

Hubbell  v.  United  States,  179  U.  S.  77;  45  L.  Ed.  95;  21  S.  Ct.  24 207 

Hubel  v.  Dick,  28  Fed.  132 871,  878 

Huber  v.  Myers,  34  Fed.  752 765 

Huber  v.  Nelson,  148  U.  S.  270;  37  L.  Ed.  447;   13  S.  Ct.  603  ..  .  375,  420, 

871,  877,  885 

Huber  v.  Nelson,  38  Fed.  830 420,  821,  822,  885 

Hughes  v.  Alexander,  5  Duer,  488 893 

Hughes  v.  Northern,  18  Fed.  106 717 

Humiston  v.  Stainthorp,  2  Wall.  106;   17  L.  Ed.  905 116,  130,  304, 

891,  893 
Huntington  v.  Saunders,  120  U.  S.  78;  30  L.  Ed.  580;  7  S.  Ct.  356  ..  .  807 

Hunt  v.  Hallingsworth,  100  U.  S.  100;  25  L.  Ed.  569 720 

Hurlbut  v.  Schillinger,  130  U.  S.  456;  32  L.  Ed.  1011;  9  S.  Ct.  584  .  .  .  290, 

298,  344,  837,  845 

Hutchings  v.  King,  68  U.  S.  53;   17  L.  Ed.  544 778 

Hutter  v.  De  Q.  Bottle,  128  Fed.  283;  62  C.  C.  A.  652 481,  612 

Idaho,  The,  93  U.  S.  575;  23  L.  Ed.  978 841 

Ide  v.  Trorlicht,  115  Fed.  137;  53  C.  C.  A.  341 277,  342,  349,  468,  609 

Illingsworth  v.  Spaulding,  43  Fed.  827 756 

Imhauser  v.  Buerk,  101  U.  S.  647;   25  L.  Ed.  945 374,  380,  468, 

484,  612,  674 
Incandescent  Lamp  Patent,  159  U.  S.  465;  40  L.  Ed.  221;  16  S.  Ct.  75 

.  .  .  380,  904,  908 

Indiana  v.  Case,  154  Fed.  365;  83  C.  C.  A.  343 574,  744 

Indiana  v.  Crocker,  103  Fed.  496;  43  C.  C.  A.  287 203 

Independent  v.  Jeffrey,  76  Fed.  981 350 

Industrial  v.  Electric,  58  Fed.  732;   7  C.  C.  A.  471 120,  716 

Industrial  v.  Wilcox,  112  Fed.  535;  50  C.  C.  A.  387 351 

Indianapolis  v.  Horst,  93  U.  S.  291 ;  23  L.  Ed.  898 921 

Indurated  Fiber  v.  Grace,  52  Fed.  124 324,  327 

Ingels  v.  Mast,  6  Fish.  415;  Fed.  Cas.  7033 843 

Ingersoll  v.  Jewett,  16  Blatch.  378;   Fed.  Cas.  7039 36 

Inman  v.  Beach,  71  Fed.  420;   18  C.  C.  A.  165 459 

Innis  v.  Boiler  Works,  22  Fed.  780 856 

Insurance  Co.  v.  Bangs,  103  U.  S.  780;  26  L.  Ed.  608 894 

Insurance  Co.  v.  Norton,  96  U.  S.  234;  24  L.  Ed.  689 2 

Interior  v.  Perkins,  80  Fed.  528;   25  C.  C.  A.  613 593,  603,  668,  672 

International  v.  Brammer,  138  Fed.  396;  71  C.  C.  A.  633 453 

International  v.  Dey,  142  Fed.  736;   74  C.  C.  A.  68 603 

International  v.  Gaylord,  140  U.  S.  55;   35  L.  Ed.  347;   11  S.  Ct.  716 

.  .  .  600  855 

International  v.  Maurer,  44  Fed.  618 327,  874 

Ireson  v.  Pierce,  39  Fed.  795 82 

Ironclad  v.  Vollrath,  52  Fed.  143 570 

Irwin  v.  Hasselman,  97  Fed.  964;  38  C.  C.  A.  587 626 

Isaacs  v.  Cooper,  4  Wash.  259;   Fed.  Cas.  7096 242,  574 

Ives  v.  Hamilton,  92  U.  S.  426;  23  L.  Ed.  494  ..  .  230,  378,  435,  448,  453, 

459,  499,  503,  651 
Ives  v.  Sargent,  119  U.  S.  652;   30  L.  Ed.  544;   7  S.  Ct.  436  ...  871,  874, 

875,  876,  877,  878 


CXV111  TABLE    OF    CASES    CITED 

[References  are'  to  sections] 

Jackson  v.  Lawton,  10  Johns.  23 26 

Jacobs  v.  Baker,  74  U.  S.  295;  19  L.  Ed.  200 684 

James  v.  Campbell,  104  U.  S.  356;  26  L.  Ed.  786 9,  26,  95,  223,  244, 

310,  347,  348,  356,  498,  505,  747,  871,  872,  873,  877,  888,  903 

Javos  v.  Fleece,  60  Fed.  622 794 

Jennings  v.  Keble,  10  Fed.  669 332,  635 

Jennings  v.  Pierce,  15  Blatch.  42;  Fed.  Cas.  7283 417 

Jensen  v.  Norton,  64  Fed.  662;  12  C.  C.  A.  608 544 

Jerome,  Ex  parte,  3  O.  G.  64 775 

Jewell  v.  Jackson,  140  Fed.  340;   72  C.  C.  A.  304 202,  574 

Jewell  v.  Knight,  123  U.  S.  426;   31  L.  Ed.  190;   8  S.  Ct.  193 113 

Johnson  v.  Flushing,  105  U.  S.  539;  26  L.  Ed.  1162 871,  872,  877 

Johnson  v.  Foos,  141  Fed.  73;  72  C.  C.  A.  105 654 

Johnson  v.  Forty-Second  St.  R.,  33  Fed.  499 604 

Johnson  v.  Chisholm,  115  Fed.  625;  53  C.  C.  A.  123 616 

Johnson  v.  McCullough,  4  Fish.  170;  Fed.  Cas.  7401 72 

Johnson  v.  National,  106  Fed.  319 792 

Johnson  v.  Root,  2  Cliff.  108;  Fed.  Cas.  7409 11 

Johnson  v.  Tidewater,  50  Fed.  90 245 

Johnson  v.  Toledo,  119  Fed.  885;  56  C.  C.  A.  415 616 

Johnson  v.  Union,  59  Fed.  20 164,  165,  171 

Johnson  v.  Wharton,  152  U.  S.  252;  38  L.  Ed.  429;   14  S.  Ct.  608  ..  .    31, 

532,  893 

Joliet  v.  Dice,  105  111.  649 151 

Jonathan  v.  Whitehurst,  72  Fed.  496 167 

Jones  v.  Barker,  11  Fed.  597 74 

Jones  v.  Berger,  58  Fed.  1006 753 

Jones  v.  Morehead,  68  U.  S.  155;   17  L.  Ed.  662 298,  667,  671, 

676,  679,  775 

Jones  v.  Munger,  49  Fed.  61 ;    1  C.  C.  A.  158 622,  936 

Jones  v.  Munger,  50  Fed.  785;  1  C.  C.  A.  668  .  .  .  120,  130,  539,  544,  545,  893 

Jones  v.  Pearce,  1  Web.  125 289 

Jones  v.  Seawall,  3  Cliff.  563 ;  Fed.  Cas.  7495 2,  18,  857 

Jordan  v.  Moore,  L.  R.  1  C.  P.  624 679 

Jordan  v.  Overseers,  4  Ohio,  295 920 

Jourolmon  v.  Ewing,  85  Fed.  103;   29  C.  C.  A.  41 890 

Judd  v.  Gibbs,  3  Gray,  539 753 

Jupe  v.  Pratt,  1  Web.  146 230,  768,  815 

Kahn  v.  Starrels,  136  Fed.  597;  69  C.  C.  A.  371 277,  342 

Kaolatype  v.  Hoke,  30  Fed.  444 116,  324,  603,  792 

Kay  v.  Marshall,  1  Mylne,  373 204 

Kay  v.  Marshall,  O.  &  F.  245 672,  679 

Keach,  In  re,  14  R.  I.  571 921 

Kearney  v.  Denn,  15  Wall.  51 ;  21  L.  Ed.  41 537 

Kearney,  Ex  parte,  7  Wheat.  38;  5  L.  Ed.  36 537,  577,  578,  725,  825 

Kearney,  In  re,  160  U.  S.  231;  40  L.  Ed.  402;   16  S.  Ct.  273 579 

Kearney  v.  Railroad,  30  Fed.  330 613 

Keasbey,  In  re,  160  U.  S.  221 ;  40  L.  Ed.  402;   16  S.  Ct,  273 579 

Keasby  v.  Carey,  139  Fed.  571 72 

Keech  v.  Hall,  1  Doug.  21 778 

Keeler  v.  Standard,  157  U.  S.  659;  39  L.  Ed.  848;   15  S.  Ct.  738 505 

Kelleher  v.  Darling,  4  Cliff.  424;   Fed.  Cas.  7653 857 

Kelley  v.  Ypsilanti,  44  Fed.  19 299,  924 

Kelly  v.  Clow,  89  Fed.  297;  32  C.  C.  A.  205 593,  668,  672,  908 

Kendall  v.  Winsor,  62  U.  S.  322;   16  L.  Ed.  165 3,  6,  7,  857,  932 


TABLE    OF    CASES    CITED  CX1X 

[References  are  to  sections] 

Kendrick  v.  Emmons,  1  Holmes,  234;  Fed.  Cas.  7694 448 

Kendrick  v.  Emmons,  2  B.  &  A.  208-  Fed.  Cas.  7695 497,  506 

Kennedy  v.  Hazelton,  128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct.  202  ..  .  56,  780 

Kennedy  v.  Ins.  Co.  3  H.  &  J.  367 156 

Kennon  v.  Gilmer,  131  U.  S.  22;  33  L.  Ed.  110;  9  S.  Ct.  696 138 

Kent  v.  Simonds,  39  Fed.  606 692 

Kerr  v.  Clampitt,  95  U.  S.  188;   24  L.  Ed.  493 537 

Keshkonong  v.  Burton,  104  U.  S.  668;  26  L.  Ed.  886 921 

Kessler  v.  Eldred,  206  U.  S.  285;  51  L.  Ed.  1065;  27  S.  Ct.  611  ...  31,  250, 

564,  573,  720 

Ketchum  v.  Johnson,  8  Fed.  586 505 

Key  v.  Marshall,  8  Clark  &  F.  245 656,  657 

Keyes  v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;  15  S.  Ct.  772 366,  717, 

732,  756,  793 

Keves  v.  Eureka,  45  Fed.  199 717 

Keyes  v.  Grant,  118  U.  S.  25;  30  L.  Ed.  54;  6  S.  Ct.  974  ..  .  404,  406,  492 

Keves  v.  Pueblo,  31  Fed.  560 568,  730 

Keystone  v.  Adams,  151  U.  S.  139;   38  L.  Ed.  103;   14  S.  Ct.  295  ..  .  215, 

298,  375,  622,  626,  635,  636,  692,  837,  842,  843 
Keystone  v.  Martin,  132  U.  S.  91;    33  L.  Ed.  275;  10  S.  Ct.  32  ...  116, 

117   130  304 
Keystone  v.  Phoenix,  95  U.  S.  274;  24  L.  Ed.  344  ..  .  12,  195,  202,' 204,' 207, 

211,  212,  219,  222,  223,  226,  244,  375,  377,  380,  598,  635,  671,  676, 

837,  843 

Kilborn  v.  Liveright,  165  Fed.  902 817 

Kilborn  v.  Sunderland,  130  U.  S.  509;  32  L.  Ed.  1005;  9  S.  Ct.  594 720 

Kilborn  v.  Rewes,  8  Gray,  415 169 

Kilbourne  v.  Bingham,  50  Fed.  697;    1  C.  C.  A.  617 696 

Kilmer  v.  Griswold,  67  Fed.  1017;   15  C.  C.  A.  161 120,  539 

Kimberly  v.  Arms,  129  U.  S.  512;   32  L.  Ed.  764;   9  S.  Ct.  355  ..  .  129, 

544,  578,  836 

King  v.  Anderson,  90  Fed.  500 700,  797 

King  v.  Bilhofer,  127  Fed.  127;  62  C.  C.  A.  241 19S 

King  v.  Butler,  3  Lev.  220 26 

King  v.  Cutter,  1  Stark.  354 242 

King  v.  Gallun,  109  U.  S.  99;  27  L.  Ed.  870;  3  S.  Ct.  202  ..  .  216,  313,  646, 

656,  657,  662,  667,  672,  679,  706,  707,  710 

King  v.  Hubbard,  97  Fed.  795;  38  C.  C.  A.  423 247,  459,  460 

King  v.  Wheeler,  2  B.  &  A.  345 222,  669 

Kingsbury  v.  Buckner,  134  U.  S.  650;  33  L.  Ed.  1047;  10  S.  Ct.  638  ..  .  128 

Kingston  v.  Preston,  Den.  634 760 

Kinloch  v.  Western    113  Fed.  659;   51  C.  C.  A.  369 459,  544,  635 

Kinsman  v.  Parkhurst,  59  U.  S.  289;    15  L.  Ed.  385 385,  510,  513 

Kirchberger  v.  American,  128  Fed.  599;   64  C.  C.  A.  107 56,  309 

Kisinger-Ison  v.  Bradford,  123  Fed.  91 ;  59  C.  C.  A.  221 790 

Kittle  v.  Hall,  29  Fed.  508 5,  55,  568,  732 

Kittridge  v.  Race,  92  U.  S.  116;  23  L.  Ed.  488 277 

Klein  v.  Russell,  86  U.  S.  433;  22  L.  Ed.  116 223,  375,  377,  857 

Klein  v.  Seattle,  77  Fed.  200;   23  C.  C.  A.  114 635,  636 

Knapp  v.  Morss,  150  U.  S.  221;   37  L.  Ed.  1059;    14  S.  Ct.  81  .  .  .  54,  86, 

207,  208,  211,  215,  229,  234,  246,  376,  426,  468,  502,  525,  596,  597, 

616,  618,  636,  651,  672,  690 

Knapp  v.  Railroad,  20  Wall.  117;  22  L.  Ed.  328 537 

Knease  v.  Bank,  4  Wash.  9 ;   Fed.  Cas.  7875 667 

Kneeland  v.  Sheriff,  2  Fed.  901 108 


CXX  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Knight  v.  Railroad,  3  Fish.  1 ;    Fed.  Cas.  7882 775 

Knox  v.  Mining  Co.,  6  Sawy.  430;  Fed.  Cas.  7907 459 

Knoxville  v.  Africa,  77  Fed.  501;   23  C.  C.  A.  252 118,  544 

Kohl  v.  United  States,  91  U.  S.  367;  23  L.  Ed.  449 498 

Kokomo  v.  Kitselman,  189  U.  S.  8;  47  L.  Ed.  689;  23  S.  Ct.  521  ..  .  206,  378, 

433,  469,  502,  525,  529,  614,  680 

Krajeuski  v.  Pharr,  105  Fed.  514;  44  C.  C.  A.  572 223 

Krementz  v.  Cottle,  148  U.  S.  556;  37  L.  Ed.  558;   13  S.  Ct.  719  ..  .  443, 

615,  622,  626,  633,  634,  635,  671,  673 

Krick  v.  Jansen,  52  Fed.  823 324,  807 

Krumbhaar  v.  Birch,  83  Pa.  426 311 

Lacroix  v.  Lyon,  33  Fed.  437 386 

Ladd  v.  Cameron,  25  Fed.  37 579 

Lake  Shore  v.  National,  110  U.  S.  229;  28  L.  Ed.  129;  4  S.  Ct.  33  .  .  .  214, 

223,  550,  608,  717,  937 

Lalance  v.  Haberman,  55  Fed.  292;  5  C.  C.  A.  Ill 518 

Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247 223,  634,  937 

Lamson  v.  Godehard,  59  Fed.  776;  8  C.  C.  A.  265 587 

Lamson  v.  Hillman,  123  Fed.  416;  59  C.  C.  A.  510 506,  574,  673 

Lander  v.  Cowles,  16  O.  G.  405 82 

Lane  v.  Locke,  150  U.  S.  193;  37  L.  Ed.  1049;   14  S.  Ct.  78  .  .  .  151,  366, 

568,  730,  732,  756,  793 
Lane  v.  Welds,  99  Fed.  286;  39  C.  C.  A.  528  ..  .  31,  386,  622,  623,  627,  893 

Langdon  v.  De  Groot,  1  Pain,  203 ;  Fed.  Cas.  8059 775 

Langford  v.  United  States,  101  U.  S.  341;  25  L.  Ed.  1010 498 

Lansdale  v.  Smith,  106  U.  S.  391;  27  L.  Ed.  219;   1  S.  Ct.  350 729 

Lanyon  v.  Brown,  115  Fed.  150;  53  C.  C.  A.  354 159 

Lappin  v.  Corning,  94  Fed.  162 323 

La  Rue  v.  Electric,  31  Fed.  80 634 

Last  Chance  v.  Tyler,  157  U.  S.  683;  39  L.  Ed.  859;  15  S.  Ct,  733  ..  .   31, 

C09  SQ3  894 

Lattimore  v.  Hardsocg,  121  Fed.  986;  58  C.  C.  A.  287 '.  .  .  .'  845 

Lawes  v.  Purser,  38  Eng.  L.  &  E.  Rep.  48 764 

Lawther  v.  Hamilton,  124  U.  S.  1;  31  L.  Ed.  325;  8  S.  Ct.  342 435, 

639,  692,  817 

Lay  v.  Indianapolis,  120  Fed.  831 ;  57  C.  C.  A.  313 3 

Lay  v.  Marshall,  7  Scott,  548 669 

Learv  v.  Railroad,  139  Mass.  580 20 

Lee  v.  Blandv,  1  Bond.  361 ;  Fed.  Cas.  8182 158,  376 

Le  Fort  v.  Delafield,  3  Edw.  Ch.  22 796 

Leggett  v.  Avery,  101  U.  S.  256;  25  L.  Ed.  865  ..  .  54,  207,  310,  770,  870, 

871,  872,  889 

Leggett,  Ex  parte,  2  O.  G.  199 775 

Leggett  v.  Standard,  149  U.  S.  287;  37  L.  Ed.  737;   13  S.  Ct.  902  ..  .  355, 

732,  871,  874,  889 

Le  Guen  v.  Gouveneur,  1  Johns.  Ch.  500 141,  302,  371 

Lehigh  v.  Kearney,  158  U.  S.  461 ;  39  L.  Ed.  1055;  15  S.  Ct.  871  ..  .  207,  602 
Lehigh  v.  Mellon,  104  U.  S.  112;  26  L.  Ed.  639 211,  212,  218,  222, 

223  244  598 
Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  26  L.  Ed.  939  ..  .  71,  99,'332,'495, 

560,  561,  598,  629.  634,  635,  638 

Lenox  v.  Roberts.  2  Wheat,  373;  4  L.  Ed.  371 720 

Lepper  v.  Randall,  113  Fed.  627;   51  C.  C.  A.  337 485 

LeRoy  v.  Tatham,  14  How.  156;    14  L.  Ed.  367  ..  .  426,  593,  651,  683, 

689,  775,  866,  903 


TABLE    OF    CASES    CITED  CXX1 

[References  are  to  sections] 

Letson  v.  Alaska,  130  Fed.  129;  64  C.  C.  A,  463 435,  640 

Lettelier  v.  Mann,  91  Fed.  917 412 

Lewin  v.  Welsbach,  81  Fed.  904 924 

Lewis  v.  Chapman,  3  Beav.  133 732 

Lewis  v.  Pennsylvania,  59  Fed.  129;   8  C.  C.  A.  41 211 

License  Cases,  5  How.  504;    12  L.  Ed.  504 920 

Lightner  v.  Boston,  1  Law  Des.  338 751,  758 

Lighter  v.  Brooks,  2  Cliff.  287;   Fed.  Cas.  8344 481 

Ligowski  v.  American,  34  Fed.  328 3 

Lindsav  v.  Stein,  10  Fed.  907 3,  5 

Litchfield  v.  Goodnow's,  123  U.  S.  549;  31  L.  Ed.  199;  8  S.  Ct.  210  ..  .  893 

Little  v.  Barreme,  6  U.  S.  170;  2  L.  Ed.  168 498 

Little  v.  Bowers,  134  U.  S.  547;  33  L.  Ed.  1016;   10  S.  Ct.  620 550 

Littlefield  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577  ..  .  152,  153,  160.  161,  163, 
165,  282,  290,  298,  511,  714,  722,  765,  796,  798,  835,  837,  845,  846 

Livingston.  Ex  parte,  20  O.  G.  1746 5 

Livingston  'v.  Woodworth,  15  How.  546;    14  L.  Ed.  809  ..  .  290,  292,  298, 

837,  839,  847 

Livingstone  v.  Jones,  3  Wall.  Jr.  330;  Fed.  Cas.  8414 292 

Livingstone  v.  Van  Ingen,  9  Johns.  507 920 

Lockwood  v.  Cleveland,  20  Fed.  164 587 

Lockwood  v.  Faber,  27  Fed.  63 904 

Lockwood  v.  Wicks,  75  Fed.  118;   21  C.  C.  A.  257 550 

Loew  v.  German-American,  107  Fed.  949;  47  C.  C.  A.  94 118,  476,  477 

Loew  v.  Miller,  138  Fed.  886;  71  C.  C.  A.  266 436,  441 

Long  v.  Pope,  75  Fed.  835;    21  C.  C.  A.  533 226,  378,  527 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177  .  .  .  72,  76,  108,  222,  232, 
321,  391,  392,  396,  440,  459,  469,  608,  611,  613,  617,  622,  624,  626,  631, 
635,  647,  648,  651,  655,  656,  663,  671,  673,  674,  692,  693,  700,  807,  809, 
811,  864,  865,  903,  917 

Loom  Co.  v.  Higgins,  15  Blatch.  446;  Fed.  Cas.  17,342 65 

Lord  v.  Veazie,  8  How.  255;   12  L.  Ed.  249 887 

Lorraine  v.  Thurmond,  51  O.  G.  1781 613 

Losh  v.  Hague,  1  Web.  207 440 

Louisiana  v.Jumel,  107  U.  S.  711 ;  27  L.  Ed.  448;  2  S.  Ct.  128 553 

Louisiana  v.  McComb,  92  U.  S.  531 ;  23  L.  Ed.  623 553 

Lovejoy  v.  Murray,  3  Wall.  1 ;    18  L.  Ed.  129 894 

Lovell  v.  Cary,  147  U.  S.  623;   37  L.  Ed.  307;   13  S.  Ct.  472  ..  .  616,  636, 

656,  672,  676 

Lowell  v.  Lewis,  1  Mas.  182;  Fed.  Cas.  8568 223,  285,  289,  440,  905 

Lumber  Co.  v.  Buchtel,  101  U.  S.  638;  25  L.  Ed.  1073 893,  894 

Lupton  v.  White,  15  Ves.  432 841,  847 

Lyman  v.  Lalor,  1  B.  &  A.  403;  Fed.  Cas.  8632 613 

Lynch  v.  Murphy,  161  U.  S.  247;  40  L.  Ed.  688;  16  S.  Ct.  523 161 

Lyon  v.  Donaldson,  34  Fed.  789 283 

Mabie  v.  Haskell,  2  Cliff.  507;  Fed.  Cas.  8653 473,  485,  600 

Macauley  v.  White,  9  Fed.  698 577 

Macbeth  v.  Gillinder,  54  Fed.  169 256 

Macfarlane  v.  Price,  1  Stark.  199 242 

Machesney  v.   Brown,   29   Fed.   145 171 

Macnamara  v.  Hulse,  Car.  &  M.  4 669 

Maddock  v.  Coxon,  45  Fed.  578 3S0 

Magic  v.  Douglas,  2  Fish.  330;   Fed.  Cas.  8948 574 

Magic  v.  Economy,  97  Fed.  87 ;  38  C.  C.  A.  56 209 

Magin  v.  Karle,  150  U.  S.  387;  37  L.  Ed.  1118;   14  S.  Ct.  153 103 


CXxil  TABLE    OF    GASES    CITED 

[References  are  to  sections] 

Magowan  v.  New  York,  141  U.  S.  332;  35  L.  Ed.  781;  12  S.  Ct.  62   .  .  .  222, 

612,  622,  624,  626,  631,  635,  655,  811,  864 

Mahler  v.  Animarium,  111  Fed.  530;  49  C.  C.  A.  431 707 

Mahn  v.  Harwood,  112  U.  S.  354;  28  L.  Ed.  665;  5  S.  Ct.  174;  6  S.  Ct. 

451  ..  .  12,  204,  207,  222,  244,  308,  313,  393,  795,  799,  871,  872,  876, 

877,  878,  885,  889 

Maitland  v.  Gibson,  63  Fed.  840;  11  C.  C.  A.  446 50 

Malin  v.  Kinney,  1  Cai.  117 411 

Malone  v.  Marriott,  64  Ala.  486 116 

Manghaum  v.  Sharpe,  17  C.  B.  (N.  S.)  443 927 

Mann  v.  Bank,  86  Fed.  51;   29  C.  C.  A.  547 129,  544 

Manning  v.  Cape  Ann,  108  U.  S.  462;  27  L.  Ed.  793;  2  S.  Ct.  860  ..  .  18,  103 

Mann's  v.  Monarch,  34  Fed.  130 273 

Mfg.  Co.  v.  Nairn,  7  Ch.  Div.  834 928 

Mfg.  Co.  v.  Shakespear,  39  L.  J.  Ch.  36 928 

Many  v.  Jagger,  1  Blatch.  372;   Fed.  Cas.  9055 440,  451,  795 

Marchand  v.  Emken,  132  U.  S.  195;  33  L.  Ed.  332;  10  S.  Ct.  65  .  .  .  636, 

667,  671 

Marden  v.  Campbell,  67  Fed.  809;  15  C.  C.  A.  26 116,  120,  123, 

539,  893 

Maryland  v.  Dorr,  46  Fed.  773 823 

Market  v.  Rowley,  155  U.  S.  621;  39  L.  Ed.  284;  15  S.  Ct.  224  ..  .  380,  431, 

496,  665,  712,  734 

Marsh  v.  Keating,  1  Bing.  N.  C.  198 926 

Marsh  v.  Marshall,  53  Pa.  St.  396 322 

Marsh  v.  Nichols,  128  U.  S.  605;  32  L.  Ed.  538;  9  S.  Ct.  168 532,  827 

Marsh  v.  Nichols,  140  U.  S.  344;  35  L.  Ed.  413;   11  S.  Ct.  798 722 

Marsh  v.  Sayles,  5  Fish.  610;  Fed.  Cas.  9119 3 

Marsh  v.  Seymour,  97  U.  S.  348;   24  L.  Ed.  963 283,  839 

Marsh  v.  Whitmore,  21  Wall.  178;  22  L.  Ed.  482 729 

Marston  v.  Swett,  66  N.  Y.  211 764 

Martinton  v.  Fairbanks,  112  U.  S.  670;  28  L.  Ed.  862;  5  S.  Ct.  321  ..  .  131 

Martin  v.  Hazard,  93  U.  S.  302;  23  L.  Ed.  885 133 

Martin  v.  Martin,  67  Fed.  786;    14  C.  C.  A.  642 385 

Marvel  v.  Merritt,  116  U.  S.  11;  29  L.  Ed.  550;  6  S.  Ct.  207 903 

Mason  v.  Crosby,  3  Wood.  &  M.  258;   Fed.  Cas.  9236 836 

Mason  v.  Graham,  90  U.  S.  261 ;  23  L.  Ed.  86 837,  845 

Masseth  v.  Johnston,  59  Fed.  613 372,  574 

Masseth  v.  Palm,  51  Fed.  824 448 

Mast  v.  Dempster,  82  Fed.  327;   27  C.  C.  A.  191 2,  74,  197 

Mast  v.  Stover,  177  U.  S.  485;   44  L.  Ed.  856;   20  S.  Ct.  708  ..  .  73,  118, 
122,  224,  250,  253,  540,  557,  593,  616,  656,  657,  661 

Mast  v.  Superior,  154  Fed.  45 ;  83  C.  C.  A.  157 841 

Masten  v.  Hunt,  55  Fed.  78 ;  5  C.  C.  A.  42 194,  904 

Masten  v.  Hunt,  51  Fed.  216 194 

Masterson  v.  Herndon,  77  U.  S.  416;  19  L.  Ed.  953 134 

Masury  v.  Anderson,  11  Blatch.  162;    Fed.  Cas.  9270 244 

Match  v.  Rosber,  106  N.  Y.  473 365 

Matheson  v.  Campbell,  78  Fed.  910;   24  C.  C.  A.  284 903,  909 

Matheson  v.  Campbell,  69  Fed.  597 909,  914 

Mathews  v.  Flower,  25  Fed.  830 356 

Mathers  v.  Green,  34  Beav.  170 927 

Mathis  v.  Meek,  1  Heisk.  534 539 

Matteson  v.  Caine,   17  Fed.  525 442 

Matthews  v.  Boston,  105  U.  S.  54;  26  L.  Ed.  1022 877 


TABLE    OF    CASES    CITED  CXX111 

[References  are  to  sections] 

Matthews  v.  Iron  Clad,  124  U.  S.  347;   31  L.  Ed.  477;   8  S.  Ct.  639 

.  .  .  871,  872,  877,  885 

Matthews  v.  National,  71  Fed.  518 548 

Maxwell  v.  Kennedy,  8  How.  222;    12  L.  Ed.  210 732,  793 

Maxwell  Land  Grant  Case,  122  U.  S.  365;  30  L.  Ed.  1211;  7  S.  Ct.  1271 

...  136 

Maxwell  v.  Schwartz,  57  N.  W.  141 539 

May  v.  Juneau,  137  U.  S.  408;  34  L.  Ed.  729;   11  S.  Ct.  102 734 

Mayor  v.  American,  60  Fed.  1016;  9  C.  C.  A.  336 158 

Mayor  v.  Ransom,  64  U.  S.  487;   16  L.  Ed.  515  ..  .  286,  288,  292,  295,  298 
McAleer  v.  United  States,  150  U.  S.  424;  37  L.  Ed.  1130;  14  S.  Ct.  160 

.  .  .  151,  366 
McCarty  v.  Lehigh,  160  U.  S.  110;   40  L.  Ed.  358;   16  S.  Ct.  240  ..  .  195, 

216,  219,  220,  223,  646,  937 
McClain  v.  Ortmayer,  141  U.  S.  419;   35  L.  Ed.  800;   12  S.  Ct.  76  .  .  .  12, 

195,  201,  202,  203,  204,  211,  223,  226,  240,  245,  380,  473,  587,  592, 

598,  615,  623,  626,  635,  636,  672,  673,  903 

McCleary  v.  Baker,  63  Fed.  841 ;   11  C.  C.  A.  451 601 

McCloskey  v.  DuBois,  8  Fed.  710 775 

M'Cluny  v.  Silliman,  28  U.  S.  270;  7  Led.  269 921 

McClurg  v.  Kingsland,  1  How.  202;   11  L.  Ed.  102  ..  .  151,  271,  347,  366, 
367,  369,  429,  639,  751,  752,  756,  757,  759,  770,  850,  856,  857 

McComb  v.  Brodie,  1  Woods.  153;   Fed.  Cas.  8708 287 

McComb  v.  Frink,  149  U.  S.  629;  37  L.  Ed.  876;  13  S.  Ct.  993 894 

McCormick  v.  Aultman,  169  U.  S.  606;  42  L.  Ed.  875;  18  S.  Ct.  443  ..  .  8S7 

McCormick  v.  Aultman,  69  Fed.  371 ;  16  C.  C.  A.  259  ..  .  188,  198,  221,  226, 

234,  241,  376,  378,  380,  427,  435,  442,  468,  519,  532,  679,  919 

McCormick  v.  Aultman,  58  Fed.  778 602 

McCormick  v.  Minnesota,  42  Fed.  152 811 

McCormick  v.  Seymour,  2  Blatch.  240;   Fed.  Cas.  8726 857 

McCormick  v.  Talcott,  61  U.  S.  402;   15  L.  Ed.  930  ..  .  202,  224,  230,  375, 

376,  378,  380,  441,  442,  456,  468,  497,  506,  507,  517,  587,  612,  641,  686, 

768,  815,  871 

McCrea  v.  Holdsworth,  6  Ch.  Ap.  L.  R.  418 331 

McCreary  v.  Pennsylvania,  141  U.  S.  459;  35  L.  Ed.  817;  12  S.  Ct.  40 

...  95,  843,  846 

McDermott  v.  Strong,  4  Johns.  Ch.  687  .... 157 

McDonald  v.  Whitney,  24  Fed.  600 485,  736 

McDowell  v.  Kurtz,  77  Fed.  206;  23  C.  C.  A.  119 459,  544,  554 

McElmoyle  v.  Cohen,  38  U.  S.  312;   10  L.  Ed.  310 921 

McEwan  v.  McEwan,  91  Fed.  787 223 

McFarland  v.  Hall,  17  Tex.  691 116 

McGahey  v.  Virginia,  135  U.  S.  662;  34  L.  Ed.  304;  10  S.  Ct.  972 553 

McGourkey  v.  Toledo,  146  U.  S.  536;  36  L.  Ed.  1079;  13  S.  Ct.  170  ..  .  116, 

304,  893 

McKay  v.  Dizer,  61  Fed.  102;  9  C.  C.  A.  382 380 

McKay  v.  Jackman,   12  Fed.  615 688,  770 

McKay  v.  Smith,  39  Fed.  556 755 

McKay  v.  Smith,  29  Fed.  295 510 

McKeeves  v.  United  States,  14  Ct.  CI.  414 287 

McLaughlin  v.  Peoples,  21  Fed.  574 568,  719,  730,  732,  793 

McLean  v.  Fleming,  96  U.  S.  245;   24  L.  Ed.  828 558,  568,  728,  921 

McLish  v.  Roff,  141  U.  S.  661 ;  35  L.  Ed.  893;   12  S.  Ct.  118 116 

McMicken v.  Perin,  59  U.  S.  507;    15  L.  Ed.  504 125,  836 

McMillin  v.  Barclay,  5  Fish.  189;  Fed.  Cas.  8902 2,  18,  856,  857 


CXX1V  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

McMurray  v.  Mallory,  111  U.  S.  97;  28  L.  Ed.  365;  4  S.  Ct.  375  ..  .  532, 

612,  877,  887 
McSherryv.  Dowagiac,  101  Fed.  716;  41  CCA.  627  ..  .  228,  376,  378,  456, 

459,  468,  841 

McSherry  v.  Dowagiac,  160  Fed.  948;  89  C  C  A.  26 837,  845 

Meader  v.  Norton,  1  Wall.  442 308 

Medsker  v.  Bonebrake,  108  U.  S.  66;  27  L.  Ed.  654;  2  S.  Ct.  351 836 

Menasha  v.  Dodge,  85  Fed.  971;  29  C  C  A.  508 544 

Menendez  v.  Holt,  128  U.  S.  514;  32  L.  Ed.  526;  9  S.  Ct.  143  ..  .  558,  568 

Mercantile  Trust  Co.  v.  Wood,  60  Fed.  346;  8  C  C.  A.  658 129 

Mergenthaler  v.  Press  Publishing  Co.,  57  Fed.  502 603,  782 

Mergenthaler  v.  Ridder,  65  Fed.  853 797 

Merriam  v.  Whittemore,  5  Gray,  316 893 

Merrill  v.  Yeomans,  94  U.  S.  568;  24  L.  Ed.  235  .  .  .  196,  207,  219,  222,  223, 

226,  244,  473,  507,  521,  609,  688,  821,  824 

Merrill  v.  Yeomans,  1  B.  &  A.  47;  Fed.  Cas.  9472 820 

Merrill  v.  Yeomans,  5  O.  G.  267 775 

Merrow  v.  Shoemaker,  59  Fed.  120 613 

Meserole  v.  Paper,  6  Blatch.  356;   Fed.  Cas.  9488 714 

Metallic  v.  Brown,  104  Fed.  345;   43  C  C  A.  568    459 

Metallic  v.  Brown,  110  Fed.  665;   49  C  C  A.  147 274,  342 

Metcalf  v.  Citv,  68  Fed.  859;    16  C  C  A.  37 128 

Metcalf  v.  Watertown,  153  U.  S.  671;  38  L.  Ed.  861 ;   14  S.  Ct.  947  ..  .  921 

Metropolitan  v.  Young,  14  Blatch.  46 ;   Fed.  Cas.  9508 607 

Mevs  v.  Conover,  93  U.  S.  cxlii;  23  L.  Ed.  1008 837 

Michigan  v.  Consolidated,  67  Fed.  121 ;  14  C  C  A.  232 54,  56,  780 

Michigan  v.  Rust,  168  U.  S.  589;  42  L.  Ed.  591;   18  S.  Ct.  208 26 

Miehle  v.  Read,  90  O.  G.  426 3 

Miles  v.  U.  S.  103  U.  S.  304;   26  L.  Ed.  481 131 

Milkman  v.  Ordway,  106  Mass.  232,  256 151 

Millard  v.  Chase,  10S  Fed.  399;  47  C  C  A.  429 194 

Miller  v.  Brass  Co.,  104  U.  S.  350;  26  L.  Ed.  783  ..  .  12,  200,  204,  222,  380, 

473,  605,  609,  731,  871,  872,  873,  876,  877,  878,  883,  885, 

886  888 

Miller  v.  Eagle,  151  IL  S.  186;   38  L.  Ed.  121;    14  S.  Ct.  310  ...  86,  188, 

197,  215,  348,  349,  351,  353,  354,  355,  356,  357,  358,  359.  360,  361, 

374,  375,  376,  378,  380,  426,  427,  435,  468,  496,  525,  528,  587,  598, 

629,  672,  680,  919 

Miller  v.  Foree,  116  U.  S.  22;  29  L.  Ed.  552;  6  S.  Ct.  204 616,  671 

Miller  v.  Handley,  61  Fed.  100    74 

Miller  v.  MTntyre,  6  Pet.  61 ;  8  L.  Ed.  320 137 

Miller  v.  Miller,  2  Pick.  570 807 

Miller  v.  Taylor,  4  Burr,  2303 16,  920 

Miller  v.  Whittier,  36  Me.  585 847 

Milliganv.  Upton,  97  U.  S.  3;  24  L.  Ed.  985  ..  .  313,  646,  667,  775,  795,  823 

Mills  v.  Green,  159  U.  S.  651 ;  40  L.  Ed.  293;  16  S.  Ct.  132 274,  550 

Millward  v.  Banes,   11  O.  G.  1060 811 

Murphy  v.  Excelsior,  70  Fed.  491 473 

Milner  v.  Yesbera,  111  Fed.  386;   49  C  C  A.  397 118,  325 

Milwaukee  v.  Brunswick-Balke,  126  Fed.  171 ;  61  C  C  A.  175  .. .  436,  441,  673 

Minter's  Patent,   1   Web.   132 368 

Mississippi  v.  Cromwell,  91  U.  S.  643;   23  L.  Ed.  368 174 

Missouri  v.  Bell  Tel.,  23  Fed.  539 746 

Missouri  v.  Texas,  38  Fed.  775 277 

Mitchell  v.  Ewart,  81  Fed.  390;   26  C  C  A.  443 459 


TABLE  OF  CASES  CITED  CXXV 

[References  are  to  sections] 

Mitchell  v.  Harmony,  13  How.  115;  14  L.  Ed.  113 481,  498 

Mitchell  v.  Hawley,  83  U.  S.  544;  21  L.  Ed.  322  ..  .  150,  165,  418,  450,  505, 

523,  765,  899,  927 
Mitchell  v.  Tilghman,  86  U.  S.  287;   22  L.  Ed.  125  ..  .  212,  214,  223,  409, 

904,  937 
Moffatt  v.  United  States,  112  U.  S.  24;  28  L.  Ed.  623;  5  S.  Ct.  10  ...    26 

Moffitt  v.  Garr,  66  U.  S.  273;   17  L.  Ed.  207 532,  887,  889 

Moffitt  v.  Rogers,  106  U.  S.  423;  27  L.  Ed.  76;   1  S.  Ct.  70 872,  877 

Moffitt  v.  Rogers,  8  Fed.  147 672 

Montesquieu  v.  Sandys,  18  Ves.  302 425 

Montross  v.  Mabie,  30  Fed.  4 366,  756 

Moody  v.  Fiske,  2  Mas.  112;  Fed.  Cas.  9745 242,  914 

Moore  v.  Cheeseman,  23  Mich.  290 717 

Moore  v.  Green,  19  How.  69;   15  L.  Ed.  533 729 

Moore  v.  Marsh,  74  U.  S.  515;  19  L.  Ed.  37 150,  750,  827 

Moore  v.  Robbins,  96  U.  S.  530;  24  L.  Ed.  848 26 

Morey  v.  Lockwood,  75  U.  S.  230;  19  L.  Ed.  339  .  .  .  459,  503,  651,  871,  873 
Morgan  v.  Albany,  152  U.  S.  425;  38  L.  Ed.  500;  14  S.  Ct.  627  ..  .  54,  207, 

208,  476.  477,  513,  523,  524,  771 
Morgan  v.  Daniels,  153  U.  S.  120;   38  L.  Ed.  657;    14  S.  Ct.  772  ..  .  59, 

74,  582,  587,  613,  895 

Morgan  v.  Seaward,  1  Web.  170 634,  649 

Morgan  v.  United  States,  81  U.  S.  531 ;   20  L.  Ed.  738 498,  715 

Morley  v.  Hawkes,  Y.  &  J.  520 798 

Morley  v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299  ..  .  201, 
224,  229,  241,  245,  375,  378,  380,  432,  442,  492,  497,  506,  519,  532, 
587,  605,  607,  640,  641,  642,  643,  674,  686 

Morris  v.  Barclay,  68  Pa.  St.  173 744 

Morris  v.  McMillin,  112  U.  S.  244;   28  L.  Ed.  702;   5  S.  Ct.  218  ..  .  216, 

596,  654,  657,  662,  667,  676,  679 

Morse  v.  Elmendorf,  11  Paige,  277 151 

Morse  v.  Morse,  103  Mass.  73 365,  744 

Morton  v.  Infirmary,  2  Fish.  320;    Fed.  Cas.  9865 683 

Morton  v.  Nebraska,  21  Wall.  660;   22  L.  Ed.  639 308 

Morton's  Patent,  8  Op.  Attys.  Gen.  269 683 

Mosher  v.  Joyce,  51  Fed.  441 ;   2  C.  A.  322 298,  845 

Mosler  v.  Mosler,  127  U.  S.  354;  32  L.  Ed.  182;  8  S.  Ct.  1148  ..  .  348,  353, 

356,  596,  617,  820 

Mossberg  v.  Nutter,  124  Fed.  966;  60  C.  C.  A.  98 790 

Mott  v.  Hicks,  1  Cow.  513 156 

Motte  v.  Bennett,  2  Fish.  642;    Fed.  Cas.  9884 574 

Motteux  v.  Insurance,   1  Atk.  545 720 

Mowry  v.  Barber,  1  McArthur,  563 ;   Fed.  Cas.  9892 3 

Mowry  v.  Whitney,  81  U.  S.  434;  20  L.  Ed.  858 26,  837 

Mowry  v.  Whitney,  81  U.  S.  620;  20  L.  Ed.  860 282,  284,  285,  290, 

298,  378,  597,  688,  770,  817,  835,  837,  840,  844,  845,  846,  847 

Muller,  In  re,  7  Blatch.  23;   Fed.  Cas.  9911 577 

Muller  v.  Lodge,  77  Fed.  621;  23  C.  C.  A.  357  ..  .  207,  221,  234,  376,  378, 

435,  597,  603,  840 

Munger  v.  Connell,  1  O.  G.  491 861 

Munson  v.  Mayor,  124  U.  S.  601 ;  31  L.  Ed.  586;  8  S.  Ct.  622  ..  .  440,  647,  688 

Muntz  v.  Foster,  2  Web.  93 674 

Murphy  v.  Excelsior,  76  Fed.  965;   22  C.  C.  A.  658 376,  473 

Murray  v.  Clayton,  L.  R.  10  Ch.  675 202,  466 

Murray  v.  Clayton,  7  Ch.  App.  577 668 


CXXV1  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Myers  v.  Brown,  102  Fed.  250;  42  C.  C.  A.  320 131 

Myers  v.  Frame,  8  Blatch.  446;  Fed.  Cas.  9991 223,  343 

Nagle,  Ex  parte,  C.  D.  1870,  137 375 

Nashua  v.  Boston,  61  Fed.  237;  9  C.  C.  A.  468 789 

Nashville  v.  McConnell,  82  Fed.  65 924 

Nassau  v.  Sprague,  95  Fed.  415;   37  C.  C.  A.  146 536,  537 

Nathan  v.  Craig,  47  Fed.  522 807 

Nathan  Mfg.  Co.  v.  Craig,  49  Fed.  370 587 

National  v.  American,  53  Fed.  367;  3  C.  C.  A.  559  ...  .  190,  251,  252,  374, 

469,  603,  604 

National  v.  Automatic,  105  Fed.  670;  44  C.  C.  A.  664 542 

National  v.  Belcher,  71  Fed.  876;  18  C.  C.  A.  375 903 

National  v.  Boston,  156  U.  S.  502;  39  L.  Ed.  511;  15  S.  Ct.  434 435, 

481,  616,  691 

National  v.  Boston,  45  Fed.  481 252 

National  v.  Boston,  41  Fed.  48 755 

National  v.  Brown,  36  Fed.  317 613 

National  v.  Connecticut,  73  Fed.  491 213,  797 

National  v.  Daab,  136  Fed.  891 574 

National  v.  Elsas,  81  Fed.  197 283 

National,  Ex  parte,  201  U.  S.  156;  26  L.  Ed.  404 120 

National  v.  Hedden,  148  U.  S.  4S2;  37  L.  Ed.  529;  13  S.  Ct.  680  ..  .  356,  692 

National  v.  Insurance  Co.,  104  U.  S.  54;  26  L.  Ed.  693 841 

National  v.  Interchangeable,  106  Fed.  693;  45  C.  C.  A.  544  ..  .  129,  375,  376, 

378,  380,  435,  441,  442,  459,  468,  473,  506,  544,  587,  598,  609,  612, 

622,  626,  635,  636,  671,  672,  675 

National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372 481 

National  v.  Quick,  67  Fed.  130;  20  C.  C.  A.  410 744 

National  v.  Schlegel,  128  Fed.  733;  64  C.  C.  A.  594 714 

National  v.  Spiro,  78  Fed.  774;  24  C.  C.  A.  334 112 

National  v.  Stecher,  81  Fed.  395;  26  C.  C.  A.  448 380 

National  v.  Thomson,  106  Fed.  531 916 

National  Folding  v.  American,  55  Fed.  488 153 

National  Folding  v.  Robertson,  99  Fed.  985 645 

National  Progress  v.  Williams,  44  Fed.  190 219 

Needham  v.  Oxley,  8  L.  T.  N.  S.  604 764 

Needham  v.  Washburn,  7  O.  G.  651 795 

Nellis  v.  Pennock,  13  Fed.  451 171 

Nelson  v.  Hartford,  1  Web.  295 230,  375,  497,  639,  768,  815 

Nelson  v.  Hartford,  1  Web.  331 688,  770,  903 

Nelson  v.  Thompson,  1  Web.  275 686,  815 

Nesbit  v.  Riverside,  144  U.  S.  610;  36  L.  Ed.  562;  12  S.  Ct.  746 894 

Nesbits  Case,  C.  D.  1870,  106 6 

Nesmith  v.  Sheldon,  6  How.  41;  12  L.  Ed.  39 113 

Nestor  v.  Brewing  Co.,  161  Pa.  St.  473 744 

New  v.  Walker,  108  Ind.  365 920 

New  Departure  v.  Bevin,  73  Fed.  469;   19  C.  C.  A.  534 596 

New  Departure  v.  Bevin,  64  Fed.  859 459,  468 

New  Orleans  v.  Steamship,  20  Wall.  387;   22  L.  Ed.  354  ..  .  536,  537,  538, 

577  578  725 
New  Process  v.  Maus,  122  U.  S.  413;    30  L.  Ed.  1193;  7  S.  Ct.'l304 

.  .  .  100,  148,  688,  770 

Newall  v.  Wilson,  2  De  O.  M.  &  G.  282 256 

Newark  v.  Newark,  23  N.  J.  Eq.  515 539 

Newhall  v.  McCabe,  125  Fed.  919;  60  C.  C.  A.  629 567 


TABLE    OF    CASES    CITED  CXXvil 

[References  are  to  sections] 

Newhall  v.  Sanger,  92  U.  S.  761 ;  23  L.  Ed.  769 308 

Newton  v.  Buck,  72  Fed.  777 164,  165 

Newton  v.  Furst,  119  U.  S.  373;  30  L.  Ed.  442;  7  S.  Ct.  369  ..  .  202,  215, 

602,  877,  885 

New  York  v.  Ambler,  103  Fed.  316 207 

New  York  v.  American,  42  Fed.  455 797 

New  York  v.  Buffalo,  18  Fed.  638 558,  568 

New  York  v.  Hollingsworth,  56  Fed.  224;  5  C.  C.  A.  490 371 

New  York  v.  New  Jersey,  137  U.  S.  445;  34  L.  Ed.  741;  11  S.  Ct.  193 

.  .  .  324,  325,  335,  411,  709 

New  York  v.  Peoria,  21  Fed.  878 717 

New  York  Filter  v.  Chemical,  93  Fed.  827 548 

New  York  Filter  v.  Jackson,  91  Fed.  422 561 

New  York  Filter  v.  Loomis,  91  Fed.  421 729 

Ney  v.  Ney,  69  Fed.  405;    16  C.  C.  A.  293 198,  376 

Noonan  v.  Chester,  99  Fed.  90;    39  C.  C.  A.  426 213,  384,  385,  442 

North  v.  Kirshaw,  4  Blatch.  70;    Fed.  Cas.  10,311    551 

N.  Am.  Exploration  v.  Adams,  104  Fed.  404;  45  C.  C.  A.  185  ..  .  129,  544 

North  Bloomfield,  In  re,  27  Fed.  795 577 

North  Carolina  v.  Temple,  134  U.  S.  22;  33  L.  Ed.  849;  10  S.  Ct.  509  ..  .  553 

Northern  Trust  Co.  v.  Snyder,  77  Fed.  818;  23  C.  C.  A.  480 277 

Northup  v.  Adams,  2  B.  &  A.  567 ;   Fed.  Cas.  10,328 332,  337,  635 

Northwestern  v.  New  Haven,  28  Fed.  234 459 

Northwestern  v.  Philadelphia,  1  B.  &  A.  177;  Fed.  Cas.  10,337 613 

Northwood  v.  Dalzell,  100  Fed.  198;  40  C.  C.  A.  295 325 

Norton  v.  Can  Co.,  45  Fed.  637 374,  448 

Norton  v.  Eagle,  57  Fed.  929 568 

Norton  v.  Eagle,  59  Fed.  137 680 

Norton  v.  Jensen,  49  Fed.  859;    1  C.  C.  A.  452  ...  448,  456,  459,  506,  903 

Norton  v.  Jensen,  90  Fed.  415;  33  C.  C.  A.  141 378,  448,  473 

Norton  v.  San  Jose,  79  Fed.  793;  25  C.  C.  A.  194 31 

Nourse  v.  Allen,  Fed.  Cas.  459 804 

Nudd  v.  Burrows,  91  U.  S.  426;  23  L.  Ed.  286 921 

Nutter  v.  Brown,  98  Fed.  892 ;  39  C.  C.  A.  332 661 

Odell  v.  Stout,  22  Fed.  159 613,  867 

Odorine  v.  Amesbury,  2  Mason,  28;  Fed.  Cas.  10,430 348,  356 

Office  v.  Globe,  77  Fed.  465;  23  C.  C.  A.  242 624 

Office  v.  Fenton,  174  U.  S.  492;  43  L.  Ed.  1058;   19  S.  Ct.  641  ..  .  49,  597, 

675,  695,  707,  709 

Ogilvie  v.  Hearne,  13  Ves.  463 305 

Ogle  v.  Ege,  4  Wash.  584 ;  Fed.  Cas.  10,462 574 

Oldham  v.  James,  14  Irish  Ch.  81 151 

Olin  v.  Timken,  155  U.  S.  141;  39  L.  Ed.  100;   15  S.  Ct.  49 627,  636 

Oliver  v.  Piatt,  3  How.  333;  11  L.  Ed.  332 167,  794,  804 

Oliver  v.  Rumford,  109  U.  S.  75;   27  L.  Ed.  862;   3  S.  a.  61  .  .  .  40,  150, 

165,  270,  271,  366,  751,  756,  762,  765,  899 

Onderdonk  v.  Fanning,  4  Fed.  148 384,  555 

O'Neal  v.  United  States,  190  U.  S.  36;  23  S.  Ct.  776 538 

O'Reillv  v.  Morse,  15  How.  62;   14  L.  Ed.  601  ..  .  222,  230,  340,  341,  342, 
377,  380,  424,  490,  506,  639,  679,  686,  6S8,  768,  770,  815,  817,  819,  880 

Ormson  v.  Clarke,  13  C.  B.  (N.  S.)  337 679 

Osborn  v.  Bank,  22  U.  S.  738;  6  L.  Ed.  738 553 

Osborne  v.  Glazier,  31  Fed.  402 630 

Osgood  v.  Franklin,  2  Johns.  Ch.  1 796 

Osgood  v.  Metropolitan   75  Fed.  670;  21  C.  C.  A.  491 616 


CXXV111  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Otley  v.  Watkins,  36  Fed.  323 377 

Oval  v.  Sandy  Creek,  60  Fed.  285 356,  380,  485 

Overweight  v.  Improved,  94  Fed.  155;  36  C.  C.  A.  125 198 

Overweight  v.  Vogt,  102  Fed.  957;  43  C.  C.  A.  80 45,  49,  597,  599, 

603,  674,  695 

Packard  v.  Lacing,  70  Fed.  66;  16  C.  C.  A.  639 68,  92,  93,  371 

Packet  v.  Sickles,  86  U.  S.  611 ;   22  L.  Ed.  203 285,  292,  294 

Packet  v.  Sickles,  51  U.  S.  440;  13  L.  Ed.  417 842 

Paddock  v.  Commercial,  104  Mass.  521 836 

Page  v.  Land,  49  Fed.  936 937 

Paillard  v.  Bruno,  29  Fed.  864 420,  421,  422 

Paine  v.  Central,  118  U.  S.  152;  30  L.  Ed.  193;  6  S.  Ct.  1019 131 

Paine  v.  Trask,  56  Fed.  233;  5  C.  C.  A.  497 158 

Palmer  v.  Corning,  156  U.  S.  342;  39  L.  Ed.  445;    15  S.  Ct.  381 473, 

595,  597 
Palmer  v.  Lozier,  90  Fed.  732;  33  C.  C.  A.  255  ..  .  349,  351,  353,  357,  598, 

672,  919 

Palmyra,  The,  10  Wheat.  502;  6  L.  Ed.  501 116 

Paper  Bag  Cases,  105  U.  S.  766;  26  L.  Ed.  959  ..  .  165,  274,  505,  686,  752, 

796,  798 

Paper  Bag  Cases,  30  Fed.  63 426,  686 

Parker  v.  Haworth,  4  McLean,  370;  Fed.  Cas.  10,738  .  .  .  158,  396,  503,  903 

Parker  v.  Hulme,  1  Fish.  44;   Fed.  Cas.  10,740 45,  508,  689 

Parker  v.  McKee,  24  Fed.  808 213,  384,  451,  555,  797 

Parker  v.  Stiles,  5  McLean,  44;   Fed.  Cas.  10,749 223 

Parker  v.  Yale,  123  U.  S.  87;  31  L.  Ed.  100;  8  S.  Ct.  38  .  .  .  204,  222,  871, 

872,  875,  876,  877,  885,  888 

Parkham  v.  American,  4  Fish.  468;  Fed.  Cas.  10,713  • 61 

Parkhurst  v.  Kinsman,  1  Blatch.  488;  Fed.  Cas.  10,757 11 

Parkinson,  Ex  parte,  C.  D.  1871,  251 337 

Parkman's  Admr.  v.  Aicardi,  34  Ala.  393 796 

Parks  v.  Booth,  102  U.  S.  96;  26  L.  Ed.  54  .  .  .  73,  96,  282,  432,  604,  608,  835 

Parks  v.  Stevens,  L.  R.  Eq    358 679 

Parlin  v.  Moline,  89  Fed.  329;   32  C.  C.  A.  221 633 

Parramore  v.  Taylor,  114  Fed.  97;   52  C.  C.  A.  45 631 

Parrish  v.  Ferris,  2  Black,  606 31 

Parry  v.  Hitchcock,  58  Fed.  402 234 

Parsons  v.  Bedford,  3  Pet.  433;   7  L.  Ed.  732 131 

Parsons  v.  Robinson,  122  U.  S.  112;  30  L.  Ed.  1122;  7  S.  Ct.  1153 116 

Patent  v.  Glover,  141  U.  S.  560;  35  L.  Ed.  858;  12  S.  Ct.  79 636 

Pattee  v.  Kingman,  129  U.  S.  294;  32  L.  Ed.  700;  9  S.  Ct.  389  ..  .  667,  871 
Patterson  v.  Commonwealth,  97  U.  S.  501;   24  L.  Ed.  1115  ..  .  505,  645, 

745,  746,  871,  920,  921 

Paxton  v.  Brinton,  107  Fed.  137 209 

Peabody  v.  Norfolk,  98  Mass.  452 898 

Pearce  v.  Mulford,  102  U.  S.  112;   26  L.  Ed.  93 440,  647,  671,  676 

Pearl  v.  Ocean,  2  B.  &  A.  469;  Fed.  Cas.  10,876 380 

Peck  v.  Collins,  103  U.  S.  660;   26  L.  Ed.  512 532,  887 

Peck  v.  Cooper,  112  111.  192 481 

Peck  v.  Jones,  70  Pa.  St.  83 322 

Peer  v.  Humphrey,  2  Ad.  &  E.  495 418 

Penfield  v.  Chambers,  92  Fed.  630;  34  C.  C.  A.  579  ..  .  376,  378,  435,  459 

Penfield  v.  Potts,  126  Fed.  475;  61  C.  C.  A.  371 31,  219,  937 

Pennington  v.  King,  7  Fed.  462 447 

Pennock  v.  Dialogue,  2  Pet.  1 ;  7  L.  Ed.  327 6,  7,  366,  386,  387,  857 


TABLE    OF    CASES    CITED  CXX1X 

[References  are  to  sections] 

Pennoyer  v.  McConnaughy,  140  U.  S.  1 ;  35  L.  Ed.  363;  11  S.  Ct.  699  ..  .  553 

Pennsylvania  v.  Libby,  L.  R.  3  Eq.  308 551 

Pennsylvania  Drill  Co.  v.  Simpson,  29  Fed.  288 613,  867 

Pennsylvania  v.  Locomotive,  110  U.  S.  490;  28  L.  Ed.  222;  4  S.  Ct.  220 

.  .  .  206,  215,  596,  616,  617,  618,  635,  638,  651,  656,  662,  667,  670,  671, 

672,  675,  676,  679,  687,  695,  858 

Pennsylvania  Steel  v.  Vermilye,  90  Fed.  493;   33  C.  C.  A.  619 805 

Pentlarge  v.  Pentlarge,  19  Fed.  817 587 

People  v.  Super.  Niag.  4  Hill.  23 834 

Peoria  v.  Cleveland,  58  Fed.  227;  7  C.  C.  A.  197 877,  878 

Perkins  v.  Buchanan,  129  Fed.  134 506 

Perkins  v.  Tourniquet,  6  How.  206;   12  L.  Ed.  204 116 

Perkins  v.  Hart,  24  U.  S.  237;  6  L.  Ed.  237 113 

Perkins  v.  Nashua,  2  Fed.  451 412 

Perrin  v.  Lepper,  72  Mich.  541 539 

Perry  v.  Littlefield,  17  Blatch.  272;   Fed.  Cas.  11,008 510 

Perry  v.  Revere,  103  Fed.  314;  43  C.  C.  A.  248 43 

Perry  v.  Skinner,  1  Web.  253 343 

Peters  v.  Active,  129  U.  S.  530;  32  L.  Ed.  738;  9  S.  Ct.  389 86,  525, 

671,  854 

Peters  v.  Active,  130  U.  S.  626;  32  L.  Ed.  1057;  9  S.  Ct.  643 591 

Peters  v.  Active,  21  Fed.  319 525 

Peters  v.  Hanson,  129  U.  S.  541 ;  32  L.  Ed.  742;  9  S.  Ct.  393  ..  .  591,  617,  671 

Peterson  v.  Wooden,  3  McLean,  248;   Fed.  Cas.  11,038 444 

Phelps  v.  Oaks,  117  U.  S.  236;  29  L.  Ed.  888;  6  S.  Ct.  714 921 

Philadelphia  v.  Edison,  65  Fed.  551 ;   13  C.  C.  A.  40 254,  561 

Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679 285,  286,  287,  292,  298 

Phillips  v.  Detroit,  111  U.  S.  604;  28  L.  Ed.  532;  4  S.  Ct.  580  ..  .  88,  216, 

596,  597,  609,  657,  662,  666,  667,  672,  679,  696,  707,  710 

Phillips  v.  Page,  65  U.  S.  164;   16  L.  Ed.  639  ..  .  47,  407,  440,  593,  596, 

653,  667,  671,  676,  679,  775,  795 
Phoenix  v.  Spiegel,  133  U.  S.  360;   33  L.  Ed.  663;    10  S.  Ct.  409  ..  .  54, 

198,  207,  212,  224,  374,  468 

Piatt  v.  Vattier,  9  Pet.  416;  9  L.  Ed.  403 732 

Pickering  v.  McCullough,  104  U.  S.  310;   26  L.  Ed.  749  ..  .  49,  89,  92,  93, 

431,  437,  594,  595,  596,  597,  601,  603,  607,  608,  612,  617,  624,  669, 

674,  782 

Pickhardt  v.  Packard,  22  Fed.  530 171 

Pierson  v.  Eagle,  3  Storv,  402;   Fed.  Cas.  11,156 857 

Pine  v.  Bailey,  94  Fed.  258;  36  C.  C.  A.  229 166,  179 

Pinney  v.  Bank,  68  Kan.  223 920 

Pirkl  v.  Smith,  42  Fed.  410 330 

Pitcher's  Case,  1  Ct.  CI.  7 715 

Pitts  v.  Edmonds,  2  Fish.  52;  Fed.  Cas.  11,191 2,  18 

Pitts  v.  Hall,  2  Blatch.  229;  Fed.  Cas.  11,192 261,  368,  629,  856,  857 

Pitts  v.  Wemple,  1  Biss.  87;  Fed.  Cas.  11,194 372,  574,  746 

Pitts  v.  Whitman,  2  Story,  609;  Fed.  Cas.  11,196 472 

Pittsburg  v.  Cowles,  55  Fed.  301 107 

Pittsburgh  v.  Heck,  102  U.  S.  120;  26  L.  Ed.  58 138 

Plow  v.  Carson,  72  Fed.  387 129,  544 

Plummer  v.  Sargent,  120  U.  S.  442;  30  L.  Ed.  737;  7  S.  Ct.  640 353 

Pohl  v.  Anchor,  134  U.  S.  381 ;  33  L.  Ed.  953;  10  S.  Ct.  577  ..  .  420,  421,  422 

Poillon  v.  Shmidt,  6  Blatch.  299;  Fed.  Cas.  11,241 689 

Pomeroy  v.  Bank,  1  Wall.  592;   17  L.  Ed.  638 126 

Pope  v.  Gormully,  144  U.  S.  238;  36  L.  Ed.  420;  12  S.  Ct.  637.   .  .  163, 165,  926 


CXXX  TABLE    OF   CASES   CITED 

[References  are  to  sections] 

Pope  v.  Gormully,  144  U.  S.  254;  36  L.  Ed.  426;  12  S.  Ct.  643 174 

Pope  v.  Owsley,  27  Fed.  100 213,  532,  732 

Portland  v.  Hermann,  160  Fed.  91 ;  87  C.  C.  A.  247 456 

Post  v.  Marsh,  L.  R.  16  Ch.  Div.  395 151 

Post  v.  Richards,  26  Fed.  618 801 

Potter  v.  Crowell,  3  Fish.  112;  Fed.  Cas.  11,323 548 

Potter  v.  Fuller,  2  Fish.  251 ;   Fed.  Cas.  11,327 561 

Potter  v.  Holland,  4  Blatch.  157;  Fed.  Cas.  11,572 164 

Potter  v.  Holland,  4  Blatch.  206;  Fed.  Cas.  11,329 753 

Potter  v.  Schenck,  1  Biss.  515;   Fed.  Cas.  11,337 459 

Potts  v.  Craeger,  155  U.  S.  597;   39  L.  Ed.  275;   15  S.  Ct.  194  ..  .  88,  89, 

94,  215,  222,  435,  459,  616,  617,  618,  622,  635,  655,  671,  672,  673,  696, 

699  709 

Potts,  In  re,  166  U.  S.  263;  41  L.  Ed.  994;  17  S.  Ct.  520 138 

Powder  v.  Powder,  98  U.  S.  126;  25  L.  Ed.  77  .  .  .  734,  815,  821,  871,  872, 

877,  881,  883,  888 

Power  Co.  v.  Allen,  120  Mass.  252 481 

Pratt  v.  Paris,  168  U.  S.  255;  42  L.  Ed.  458;  18  S.  Ct.  62 714,  718 

Prentiss  v.  Duluth,  58  Fed.  437;  7  C.  C.  A.  293 161 

Preston  v.  Manard,  116  U.  S.  661;  29  L.  Ed.  763;  6  S.  Ct.  695 672,  908 

Price  v.  Berrington,  7  Eng.  L.  &  Eq.  260 425 

Price  v.  Steel  Co.,  46  Fed.  107 558,  568 

Prindle  v.  Brown,  155  Fed.  531 ;  84  C.  C.  A.  45 613 

Proctor  v.  Ackroyd,  6  O.  G.  603 861 

Proctor  v.  Bennis,  L.  R.  36  Ch.  D.  740  ..  .  230,  453,  507,  519,  605,  686, 

768,  815 

Proctor  v.  Globe,  92  Fed.  357;  34  C.  C.  A.  405 544 

Prouty  v.  Ruggles,  16  Pet.  336;   10  L.  Ed.  985  ..  .  145,  198,  377,  456,  468, 

473   528   577  612  872 
Providence  v.  Goodyear,  76  U.  S.  805;  19  L.  Ed.  828  ..'.  ...'... !  777^  821 

Purcell  v.  Uliner,  4  Wall.  519;   18  L.  Ed.  437 790 

Purifier  Co.  v.  Christian,  3  B.  &  A.  42;  Fed.  Cas.  307 541 

Raffity  v.  King,  6  L.  J.  93 798 

Railroad  v.  Dubois,  79  U.  S.  47;  20  L.  Ed.  265 224,  390,  483,  795 

Railroad,  Ex  parte,  95  U.  S.  221 ;  24  L.  Ed.  355 21 

Railroad  v.  Fraloff,  100  U.  S.  24;  25  L.  Ed.  531 131 

Railroad  v.  Huson,  95  U.  S.  465;   24  L.  Ed.  527 920 

Railroad  v.  Ketchum,  101  U.  S.  289;   25  L.  Ed.  932 121 

Railroad  v.  National,  102  U.  S.  14;  26  L.  Ed.  61 532,  893 

Railroad  v.  Soutter,  2  Wall.  510;   17  L.  Ed.  900 304 

Railroad  v.  Stimpson,  14  Pet.  448;    10  L.  Ed.  535  ..  .  317,  560,  629,  638, 

795,  811 

Railroad  v.  Swasey,  23  Wall.  405;  23  L.  Ed.  136 116 

Railroad  v.  Trimble,  77  U.  S.  367;  19  L.  Ed.  949 173 

Railroad  v.  Turrill,  94  U.  S.  695;  24  L.  Ed.  238 290,  295,  298, 

827,  829,  837 

Railroad  v.  Turrill,  101  U.  S.  836;  25  L.  Ed.  1009 835 

Railroad  v.  Turrill,  110  U.  S.  301 ;  28  L.  Ed.  154;  4  S.  Ct.  5 282,  835 

Railroad  v.  United  States,  92  U.  S.  733;  23  L.  Ed.  634    308 

Railway  v.  Monroe,  147  Fed.  241 ;  77  C.  C.  A.  383 574 

Rainear  v.  Western,  159  Fed.  431 ;  86  C.  C.  A.  411 591 

Ralston  v.  Smith,  9  C.  B.  N.  S.  117 343,  679 

Randall  v.  Baltimore,  109  U.  S.  478;  27  L.  Ed.  1003;  3  S.  Ct.  322  ..  .  402,  734 

Randolph  v.  Allen,  73  Fed.  23;  19  C.  C.  A.  353 136 

Rathbone  v.  Orr,  5  McLean,  131 ;  Fed.  Cas.  11,585 152 


TABLE    OF    CASES    CITED  CXXX1 

[References  are  to  sections] 

Ransom  v.  N.  Y.,  1  Fish.  252;  Fed.  Cas.  11,573 574 

Ransome  v.  Hyatt,  69  Fed.  148;   16  C.  C.  A.  185 198,  484,  629 

Read  v.  Schultze-Berge,  78  Fed.  493 380 

Reckendorfer  v.  Faber,  92  U.  S.  347;  23  L.  Ed.  719  ..  .  46,  47,  48,  595,  596, 

597,   599,   601,   603,   607,   608,   609,   617,    629,   656,   657,   674,   696, 

774,  872 

Red  Jacket  v.  Davis,  82  Fed.  432;  27  C.  C.  A.  204 476 

Reece  v.  Globe,  61  Fed.  958;  10  C.  C.  A.  194  ..  .  194,  207,  208,  212,  222,  224, 
226,  228,  230,  245,  375,  378,  380,  453,  459,  497,  937 

Reed  v.  Cutter,  1  Story,  590;  Fed.  Cas.  11,645 10,  71,  89,  318,  344, 

368,  391,  613,  811 

Reed  v.  Chase,  25  Fed.  94 212,  234 

Reed  v.  Lawrence,  29  Fed.  915 298,  435 

Reed  v.  Stockmeyer,  74  Fed.  186;  20  C.  C.  A.  381 20 

Reedy  v.  Scott,  90  U.  S.  352;   23  L.  Ed.  109 473,  532,  887 

Rees  v.  Gould,  82  U.  S.  187;  21  L.  Ed.  39  .  .  .  145,  201,  202,  374,  377,  459, 

468,  473,  499,  608,  609,  612,  674,  872 

Reeves  v.  Bridge  Co.,  5  Fish.  456;  Fed.  Cas.  11,660 613,  867 

Regan  v.  Pacific,  49  Fed.  68;    1  C.  C.  A.  169 163,  926 

Regent  v.  Penn.  121  Fed.  80;   57  C.  C.  A.  334 614 

Registering  Co.  v.  Sampson,  L.  R.   19  Eq.  462 365,  746 

Rein  v.  Clayton,  37  Fed.  354 532 

Renard  v.  Levenstein,  2  Ham.  &  M.  628 165 

Renwick  v.  Pond,  10  Blatch.  39;    Fed.  Cas.  11,702 476,  477 

Rice  v.  Wheatley,  9  Dana,  272 140 

Rich  v.  Baldwin,  133  Fed.  920;   66  C.  C.  A.  464 198 

Rich  v.  Lippiitfott,  2  Fish.  1 ;  Fed.  Cas.  11,758 10,  152 

Richards  v.  Chase,  158  U.  S.  299;  39  L.  Ed.  991 ;  15  S.  Ct.  831  ..  .  49,  116, 

323,  325,  326,  389,  595,  597,  654,  707,  709 

Richards  v.  Chase,  159  U.  S.  477;  40  L.  Ed.  225;  16  S.  Ct.  53 207,  692 

Richards  v.  Todd,  127  Mass.  167 836 

Richards  v.  Michigan,  186  U.  S.  479;  46  L.  Ed.  1259;  22  S.  Ct.  942 325 

Richards  v.  Michigan,  179  U.  S.  686;  45  L.  Ed.  386;  21  S.  Ct.  918 325 

Richards  v.  Michigan,  102  Fed.  508;  42  C.  C.  A.  484 325 

Richardson  v.  Noyes,  2  B.  &  A.  398;    Fed.  Cas.  11,792 476,  477 

Richert  v.  Felps,  6  Wall.  160;    18  L.  Ed.  849 308 

Richmond  v.  Atwood,  *48  Fed.  910;   1  C.  C.  A.  144 117,  130 

Richmond  v.  Atwood,  52  Fed.  10;   2  C.  C.  A.  596  ..  .  116,  118,  120,  302, 

539,  544,  893 

Ricker  v.  Powell,  100  U.  S.  104;    25  L.  Ed.  527 790,  805 

Riddell  v.  Mandevill,  5  Cranch.  322;  3  L.  Ed.  321 720 

Ries  v.  Barth,  136  Fed.  850;  69  C.  C.  A.  528 673 

Ripley  v.  Elson,  49  Fed.  927 ; .  332,  635 

Risdon  v.  Medart,  158  U.  S.  68;  39  L.  Ed.  899;  15  S.  Ct.  745  ..  .  326,  426, 

682,  686,  688,  709,  817,  819,  823 

Risdon  v.  Trent,  92  Fed.  375 197 

Ritter  v.  Ulman,  78  Fed.  222;  24  C.  C.  A.  71 543,  544 

Robbins  v.  Chicago,  4  Wall.  657;  18  L.  Ed.  427 894 

Robbins  v.  Dueber,  71  Fed.  186 447 

Roberts  v.  Harnden,  2  Cliff.  500;    Fed.  Cas.  11,903 374,  459,  473,  599 

Roberts  v.  Nail,  53  Fed.  916 195,  432 

Roberts  v.  Northern,  158  U.  S.  1 ;  39  L.  Ed.  873;  15  S.  Ct.  756 894 

Roberts  v.  Rver,  91  U.  S.  150;   23  L.  Ed.  267 188,  215,  379,  380,  427, 

486,    598,    601,    617,    651,   654,   655,    656,   670,   671,   672,    676,  679, 

818,  919 


CXXX11  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Robertson  v.  Blake,  94  U.  S.  728;   24  L.  Ed.  245   ...  297,  298,  377,  608, 

670,  830,  847 

Robertson  v.  Perkins,  129  U.  S.  233;  32  L.  Ed.  686;  9  S.  Ct.  279 407 

Robinson  v.  Bland,  2  Burrows,  1086 827 

Robinson  v.  Satterlee,  Fed.  Cas.  11,967 716 

Robinson  v.  Sutter,  8  Fed.  828 219 

Robinson  v.  Sutter,  11  Fed.  798 716 

Rodwell  v.  Housman,  58  Fed.  870 324 

Roemer  v.  Bernheim,  132  U.  S.  103;  33  L.  Ed.  277;  10  S.  Ct.  12 345 

Roemer  v.  Peddie,  132  U.  S.  313;  33  L.  Ed.  382;   10  S.  Ct.  98  .  .  .  54,  207, 

380  871   876 
Roemer  v.  Simon,  95  U.  S.  214;  24  L.  Ed.  384  ...  82,  321,  396,  407',  795',  807 

Roemer  v.  Simon,  91  U.  S.  149;    23  L.  Ed.  267 139,  890 

Rogers  v.  Cox,  96  Ind.  157 765 

Rogers  v.  Fitch,  81  Fed.  959;   27  C.  C.  A.  23 672 

Rogers  v.  Mergenthaler,  64  Fed.  799;  12  C.  C.  A.  422 60 

Rogers  v.  Mergenthaler,  58  Fed.  693 570 

Rogers  v.  U.  S.,  141  U.  S.  548;    35  L.  Ed.  853;   12  S.  Ct.  91 131 

Roosevelt  v.  Western  Electric,  20  Fed.  724 756 

Root  v.  Ball,  4  McLean,  177;  Fed.  Cas.  12,035 503 

Root  v.  Railway,  105  U.  S.  189;  26  L.  Ed.  975  ..  .  279,  282,  285,  290,  292, 
298,  299,  336,  371,  562,  568,  717,  718,  719,  730,  745,  764,  778,  807, 
835,  837,  839,  847 

Root  v.  Sontag,  47  Fed.  309 603 

Root  v.  Third  Avenue,  146  U.  S.  210;   36  L.  Ed.  946;    13  S.  Ct.  100 

...  18,  412,  855 

Rose  v.  Clark,  1  Yew.  &  C.  Ch.  534 720 

Rose  v.  Woodruff,  4  Johns.  Ch.  547 305 

Rosenthal  v.  Walker,  111  U.  S.  185;  28  L.  Ed.  395;  4  S.  Ct.  382 578 

Ross  v.  Ft.  Wayne,  63  Fed.  466;    11  C.  C.  A.  288 21,  550,  717 

Ross  v.  Fuller,  105  Fed.  510 764 

Ross  v.  Montana,  45  Fed.  424 287 

Ross-Moyer  v.  Randall,  104  Fed.  355;   43  C.  C.  A.  578 211,  507 

Rousseau  v.  Brown,  21  App.  D.  C.  73 143 

Rowan  v.  Ide,  107  Fed.  161 ;    46  C.  C.  A.  214 542 

Rowbotham  v.  Steele,  71  Fed.  758 797 

Rowe  v.  Blodgett,  112  Fed.  61 ;  50  C.  C.  A.  120 333,  335 

Rowe  v.  Blodgett,  103  Fed.  873 335 

Rowell  v.  Lindsay,  113  U.  S.  97;  28  L.  Ed.  906;  5  S.  Ct.  507  ..  .  12,  198, 

200,  202,  377,  379,  473,  577,  605 

Royal  v.  Art,  121  Fed.  128 335 

Royer  v.  Coupe,  146  U.  S.  524;   36  L.  Ed.  1073;  13  S.  Ct.  166 54, 

207,  208.  871 

Royer  v.  Coupe,  29  Fed.  358 287 

Royer  v.  Roth,  132  U.  S.  201 ;  33  L.  Ed.  322;  10  S.  Ct.  58  .  .  .  49,  595,  596, 

603,  667,  671,  675 
Royer  v.  Schultz,  135  U.  S.  319;  34  L.  Ed.  214;   10  S.  Ct.  833  ..  .  404,  497 

Rover  v.  Schultz,  28  Fed.  850 \  .  456 

Rubber  v.  Ewing,  9  Wall.  805;   19  L.  Ed.  829 890 

Rubber  v.  Goodyear,  76  U.  S.  788;  19  L.  Ed.  566  ..  .  223,  288,  291,  310, 
317,  532,  751,  777,  807,  821,  827,  828,  829,  830,  833,  837,  838, 
841,  844 

Rubber  v.  Welling,  97  U.  S.  7;  24  L.  Ed.  942 46 

Rubber  Tip  v.  Howard,  87  U.  S.  498;  22  L.  Ed.  410  ..  .  43,  261,  426,  629, 

651,  661,  656,  657,  667,  696 


TABLE    OF    CASES    CITED  CXXX111 

[References  are  to  sections] 

Rubber  Tire  v.  Milwaukee,  154  Fed.  358;   83  C.  C.  A.  336 574,  744 

Rude  v.  Westcott,  130  U.  S.  152;   32  L.  Ed.  888;  9  S.  Ct.  463 288, 

292,  294,  842 

Rumford  v.  Baking  Co.,  134  Fed.  385;  67  C.  C.  A.  367 648 

Rumford  v.  Hygienic,  159  Fed.  436;   86  C.  C.  A.  416 476 

Rumford  v.  Hygienic,  148  Fed.  862 476 

Rumford  v.  Lauer,  10  Blatch.  122;  Fed.  Cas.  12,135 200 

Rumsey  v.  Buck,  20  Fed.  697 451 

Rupp  v.  Elliott,  131  Fed.  730;    65  C.  C.  A.  544 510,  574,  744,  745 

Russell  v.  Cowley,  1  Web.  470 222,  903 

Russell  v.  Dodge,  93  U.  S.  460;    23  L.  Ed.  973 871,  873 

Russell  v.  Farley,  105  U.  S.  433;  26  L.  Ed.  1060 273 

Russell  v.  Kern,  69  Fed.  94;  16  C.  C.  A.  154 Ill 

Russell  v.  Place,  94  U.  S.  606;   24  L.  Ed.  214 31,  383,  561,  893,  894 

Russell  v.  Mallory,  10  Blatch.  140;  Fed.  Cas.  12,166 857 

Ryan  v.  Goodwin,  3  Sumn.  514;  Fed.  Cas.  12,186 223,  228,  668 

Ryan  v.  Hard,  145  U.  S.  241 ;  36  L.  Ed.  691 ;   12  S.  Ct.  919 671 

Ryerson  v.  Eldred,  18  Mich.  12 539 

Sadler  v.  Hoover,  48  U.  S.  646;    12  L.  Ed.  644 113 

St.  Germain  v.  Brunswick,  135  U.  S.  227;  34  L.  Ed.  122;  10  S.  Ct.  822 

.  .  .  617,  651,  676 

St.  Louis  v.  American,  156  Fed.  574;  84  C.  C.  A.  340 603 

St.  Louis  v.  Knapp,  104  U.  S.  658;   26  L.  Ed.  883 807 

St.  Louis  v.  Southern,  108  U.  S.  24;  27  L.  Ed.  638;  2  S.  Ct.  6 116 

St.  Paul  v.  Starling,  140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct.  803 65, 

108,  762,  809 

Sage  v.  Wyncoop,  104  U.  S.  319;   26  L.  Ed.  740 98 

Saltmarsh  v.  Tuthill,  12  How.  387;    13  L.  Ed.  385 537 

Sand  Creek  v.  Robbins,  41  Ind.  79 717 

Sanders  v.  Aston,  3  B.  &  A.  881 679 

Sanders  v.  Hancock,  128  Fed.  424;  63  C.  C.  A.  166 603,  608 

Sanders  v.  Logan,  2  Fish.  167;  Fed.  Cas.  12,295 857 

Sanford,  Petitioner,  160  U.  S.  247;  40  L.  Ed.  414;   16  S.  Ct,  291 128 

Sanitas  v.  Voigt,  139  Fed.  551 ;   71  C.  C.  A.  535 646 

Santa  Maria,  The,  10  Wheat.  431 ;  6  L.  Ed.  359 140 

Sapphire  v.  Napoleon,  85  U.  S.  51 ;   21  L.  Ed.  814 277 

Sargent  v.  Hall,  114  U.  S.  63;  29  L.  Ed.  67;  5  S.  Ct.  1021  ...  54,  202,  207, 

211,  215,  380,  587,  889 

Sargent  v.  Larned,  2  Curt.  340;  Fed.  Cas.  12,364 600 

Sargent  v.  Seagrave,  2  Curt.  553;   Fed.  Cas.  12,365 532,  554,  857 

Sarven  v.  Hall,  21  Fed.  Cas.  512    448 

Sawyer  v.  Bixby,  1  O.  G.  165;  Fed.  Cas.  12,398 775 

Sawyer  v.  Carpenter,  143  Fed.  976;    75  C.  C.  A.  162 421 

Sawyer  v.  Carpenter,  133  Fed.  238 421 

Sawyer  v.  Massey,  25  Fed.  144    587 

Sawyer  v.  Turner,  55  Fed.  979 548 

Sayre  v.  Scott,  55  Fed.  971 ;   5  C.  C.  A.  366 219,  298 

Saxby  v.  Gloucester,  7  Q.  B.  Div.  305 675 

Saxe  v.  Hammond,  1  B.  &  A.  629;  Fed.  Cas.  12,411 477 

Schenck  v.  Singer,  77  Fed.  841 ;  23  C.  C.  A.  494 633,  648,  673 

Schenectady  v.  Holbrook,  101  N.  Y.  45 764 

Schillinger  v.  Guenther,  17  Blatch.  66;   Fed.  Cas.  12,458 344 

Schillinger  v.  United  States,  155  U.  S.  163;  39  L.  Ed.  108;  15  S.  Ct.  85 

.  .  .  498,  715 
Schillinger's  Case,  24  Ct.  CI.  278 498 


CxxxlV  TABLE   OF   CASES    CITED 

[References  are  to  sections] 

Schlender  v.  Corey,  30  Minn.  501 539 

Schlict  v.  Sherwood,  36  Fed.  590 596 

Schneider  v.  Lovell,  10  Fed.  666 904,  915 

Schneider  v.  Missouri,  36  Fed.  582 477 

Schneider  v.  Pountney,  21  Fed.  399 477 

Schollenberger,  Ex  parte,  96  U.  S.  369;   24  L.  Ed.  853 723 

Schreiber  v.  Grimm,  72  Fed.  671;  19  C.  C.  A.  67 380,  437,  599, 

646,  656,  672 

Schroeder  v.  Brammer,  98  Fed.  880 374,  378,  459,  468,  622 

Schroeder  v.  Lahrman,  26  Minn.  87 386 

Schumacher  v.  Cornell,  96  U.  S.  549;  24  L.  Ed.  676 456,  473,  605 

Schwarzwalder  v.  New  York,  66  Fed.  152;  13  C.  C.  A.  380 344 

Schutz  v.  Jordan,  141  U.  S.  213;  35  L.  Ed.  705;  11  S.  Ct.  906 578 

Scott  v.  Neeley,  140  U.  S.  106;  35  L.  Ed.  358;  11  S.  Ct.  712 285 

Scruggs  v.  Memphis,  108  U.  S.  368;  27  L.  Ed.  756;  2  S.  Ct.  780 778 

Seabury  v.  Johnson,  76  Fed.  456 203 

Seaman,  In  re,  4  O.  G.  691 337 

Seattle  v.  McNamara,  81  Fed.  863;    26  C.  C.  A.  652 285,  293 

Seed  v.  Higgins,  8  El.  &  Bl.  767 341,  679 

Seibert  v.  Michigan,  34  Fed.  33 579 

Seitz  v.  Brewers,  141  U.  S.  510;  35  L.  Ed.  837;  12  S.  Ct.  46 756 

Sessions  v.  Gould,  49  Fed.  855 485,  579 

Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;   12  S.  Ct.  799  ..  .  287, 

290,  295,  497,  503,  532,  612,  672,  777,  846 
Sewall  v.  Jones,  91  U.  S.  171 ;   23  L.  Ed.  275  ..  .  95,  215,  223,  230,  375, 

453,  454,  470,  516,  616,  671 

Sewing  Machine  v.  Frame,  24  Fed.  596 454 

Seymour  v.  McCormick,  16  How.  480;    14  L.  Ed.  1024  .  .  .  280,  285,  292, 

298,  843,  844,  845,  846,  857 

Seymour  v.  McCormick,  60  U.  S.  96;    15  L.  Ed.  557 340,  342 

Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33  .  .  .  26,  81,  85,  98,  105, 
106,  187,  223,  229,  260,  261,  320,  374,  377,  409,  411,  432,  440,  468,  473, 
488,  560,  608,  609,  612,  613,  629,  634,  647,  674,  745,  746,  779,  795,  804, 
871,  883,  888,  937 

Sharon  v.  Sharon,  67  Cal.  195 116 

Sharp  v.  Riessner,  119  U.  S.  631;  30  L.  Ed.  507;  7  S.  Ct.  417 212 

Shaw  v.  Cooper,  7  Pet.  292;  8  L.  Ed.  689  ..  .  3,  7,  371,  413,  851,  854,  857 

Shaw  v.  Quincy,  145  U.  S.  444;  36  L.  Ed.  768;  12  S.  Ct.  935 723 

Sheffield  v.  Newman,  77  Fed.  787;   23  C.  C.  A.  459 789 

Shelton  v.  Darling,  2  Conn.  435 156 

Shepard  v.  Adams,  168  U.  S.  618;  42  L.  Ed.  602;  18  S.  Ct.  214 110 

Shepard  v.  Carrigan,    116  U.  S.  593;  29  L.  Ed.  723;  6  S.  Ct.  493 48, 

54,  202,  204,  207,  214,  380,  770,  871,  885,  889 

Sherman  v.  Brick,  93  U.  S.  209;  23  L.  Ed.  949 308 

Shinkle  v.  Covington,  83  Ky.  420 539 

Shinkle  v.  Louisville,  62  Fed.  690 549 

Shoe  Co.  v.  Ferrell,  68  Tex.  638 753 

Shoup  v.  Henrici,  2  B.  &  A.  249;  Fed.  Cas.  12,814 10 

Shrewsbury  v.  Railroad,  1  Sim.  (N.  S.)  410 562 

Shute  v.  Morley,  64  Fed.  368;   12  C.  C.  A.  356 305 

Sibbald  v.  United  States,  12  Pet.  488;  9  L.  Ed.  485 138 

Sickles  v.  Borden,  4  Blatch.  14;  Fed.  Cas.  12,833 292 

Sickles  v.  Evans,  2  Cliff.  203;  Fed.  Cas.  12,839 880,  888 

Sickles  v:  Falls,  4  Blatch.  518;  Fed.  Cas.  18,270 688,  770 

Siebert  v.  Manning,  32  Fed.  625 714 


TABLE   OF   CASES   CITED  CXXXV 

[References  are  to  sections] 

Siemens  v.  Sellers,  123  U.  S.  276;  31  L.  Ed.  153;  8  S.  Ct.  117  .  .  .  421,  422,  424 

Siemens-Halske  v.  Duncan,  142  Fed.  157;   73  C.  C.  A.  375 385,  767 

Silsby  v.  Foote,  14  How.  218;    14  L.  Ed.  394  ..  .  246,  343,  612,  734,  795 

Silsby  v.  Foote,  61  U.  S.  378;    15  L.  Ed.  953 282,  284,  342,  835 

Simmons  v.  Standard,  62  Fed.  928 447 

Simonds  v.  Hathorn,  93  Fed.  958;  36  C.  C.  A.  24 792 

Simonds  v.  Hathorn,  90  Fed.  201 354 

Simpson,  Ex  parte,  Fed.  Cas.  12,878 3 

Sinclair  v.  Backus,  4  Fed.  539 856 

Singer  v.  Brill,  54  Fed.  380;  4  C.  C.  A.  374 459,  603 

Singer  v.  Cramer,  192  U.  S.  265;  48  L.  Ed.  437;  24  S.  Ct.  291  ..  .  198,  207, 

375,  496,  937 

Singer  v.  Cramer,  109  Fed.  652;  48  C.  C.  A.  588 54 

Singer  v.  June,  163  U.  S.  169;  41  L.  Ed.  118;  16  S.  Ct.  1002 929 

Singer  v.  Springfield,  34  Fed.  393 477,  542 

Singer  v.  Wilson,  38  Fed.  586 717 

Singer  v.  Wright,  141  U.  S.  696;   35  L.  Ed.  906;    12  S.  Ct.  103 550 

Sipp  v.  Atwood-Morrison,  142  Fed.  149;  73  C.  C.  A.  367 591,  929 

Slawson  v.  Grand,  107  U.  S.  649;   27  L.  Ed.  576;  2  S.  Ct.  663  ..  .  46,  47, 

216,  313,  323,  325,  440,  593,  616,  619,  647,  656,  657,  662,  666,  667, 

669,  672,  679,  734,  795,  799 

Smead  v.  Fuller,  57  Fed.  626 197 

Smead  v.  Union,  44  Fed.  614 190 

Smeeth  v.  Perkins,  125  Fed.  285;  60  C.  C.  A.  199 459 

Smith  v.  Au  Gres,  150  Fed.  257;  80  C.  C.  A.  145 841 

Smith  v.  Elliott,  9  Blatch.  400;   Fed.  Cas.  13,041 649,  671 

Smith  v.  Ely,  5  McLean,  76;  Fed.  Cas.  13,043 689 

Smith  v.  Goodyear,  93  U.  S.  486;  23  L.  Ed.  952 3,  47,  71,  76,  212,  427, 

560  561,  593,  622,  626,  629,  635,  636,  649,  671,  676,  692,  696,  700,  811, 

864 

Smith  v.  Meridan,  92  Fed.  1003 572 

Smith  v.  Mottley,  150  Fed.  266;  80  C.  C.  A.  154 841 

Smith  v.  Nichols,  88  U.  S.  112;   22  L.  Ed.  566  ..  .  49,  261,  343,  344,  380, 

431,  437,  440,  591,  596,  599,  601,  617,  629,  646,  647,  654,  656,  657, 

665,  667,  671,  676,  695,  818,  823 

Smith  v.  Putnam,  45  Fed.  202 377 

Smith  v.  Ridgley,  103  Fed.  875;  43  C.  C.  A.  365 213,  385 

Smith  v.  Sands,  24  Fed.  470 718 

Smith  v.  Sheley,  12  Wall.  358;   20  L.  Ed.  430 766,  927 

Smith  v.  Sprague,  123  U.  S.  249;   31  L.  Ed.  141;  8  S.  Ct.  122  ...  18,  71, 

412,  413,  414,  416,  417,  851,  853,  855,  856,  857 

Smith  v.  Stewart,  55  Fed.  481 336 

Smith  ^.Vulcan,  165  U.S.  518;  41  L.Ed.  810;  17  S.Ct.  407   .  .  .  118,304,891 

Smith  v.  Weeks,  53  Fed.  758;  3  C.  C.  A.  644 139 

Smith  v.  Whitman,  148  U.  S.  674;  37  L.  Ed.  606;   13  S.  Ct.  768  ..  .  331, 

332,  334,  335,  337 

Smith  &  Davis  v.  Mellon,  58  Fed.  705;  7  C.  C.  A.  439 856 

Snow  v.  Railway,  121  U.  S.  617;  30  L.  Ed.  1004;  7  S.  Ct.  1343  .  .  .  207,  215, 

217,  223,  380,  989 

Snow  v.  Lake  Shore,  18  Fed.  602 456 

Snydam  v.  Dequidre,  Har.  Rep.  347 796 

Snyder  v.  Bunnell,  29  Fed.  47 477,  527 

Societe  v.  Blount,  51  Fed.  610 545 

Societe  v.  General,  97  Fed.  604 420 

Societe  v.  Rehfuss,  75  Fed.  657 180,  374 


Cxxxvi  TABLE   OF   CASES   CITED 

[References  are  to  sections] 

Society  v.  Watson,  77  Fed.  512;  23  C.  C.  A.  263 890 

Soehner  v.  Favorite,  84  Fed.  182;   28  C.  C.  A.  317  ..  .  223,  437,  599,  937 
Solomons  v.  United  States,  137  U.  S.  342;  34  L.  Ed.  667;  11  S.  Ct,  88 

.  .  .  151,  366,  429,  751,  756,  759 

Somerby  v.  Buntin,  118  Mass.  279 168 

Southard  v.  Russell,  16  How.  547;  14  L.  Ed.  545 128,  891 

Southern  v.  Earl,  82  Fed.  690;    27  C.  C.  A.  185 543,  544 

Southern  Pacific  v.  United  States,  168  U.  S.  1;  42  L.  Ed.  355;  18  S.  Ct.  18 

...  37,  386 

Spader  v.  Davis,  5  Johns.  Ch.  280 157 

Sparhawk  v.  Cloon,  135  Mass.  263 157 

Sparhawk  v.  Yerkes,  142  U.  S.  1 ;  35  L.  Ed.  915;  12  S.  Ct.  104 183 

Speidel  v.  Henrici,  120  U.  S.  377;  30  L.  Ed.  718;  7  S.  Ct.  610  ..  .  728,  921 

Speidel  v.  Henrici,  15  Fed.  753    732 

Spill  v.  Celluloid,  21  Fed.  631    671 

Spill  v.  Celluloid,  28  Fed.  870 277 

Spring  v.  Sewing,  4  B.  &  A.  427;  Fed.  Cas.  13,258 271 

Squire,  Ex  parte,  3  B.  &  A.  133;  Fed.  Cas.  13,269 13 

Stainthorp  v.  Humiston,  4  Fish.  107;   Fed.  Cas.  13,281 72 

Standard  v.  Caster,  113  Fed.  162;  51  C.  C.  A.  109 376,  485,  615,  658 

Standard  v.  Crane,  56  Fed.  718;  6  C.  C.  A.  100 544,  551,  557,  564, 

567,  570,  572 

Standard  v.  Ellis,  159  Mass.  448 755 

Standard  v.  Leslie,  118  Fed.  557;  55  C.  C.  A.  323 213,  714 

Standard  v.  Osgood,  58  Fed.  583;  7  C.  C.  A.  382 618 

Standard  v.  Southern,  48  Fed.  109 603 

Standard  v.  Teague,  15  Fed.  390 375 

Stanford  v.  Bates,  22  Vt.  546 411 

Stanley  v.  Board,  121  U.  S.  535;  30  L.  Ed.  1000;  7  S.  Ct.  1234 131 

Stanley  v.  Hotel,  13  Me.  51 156 

Star  v.  Grossman,  4  Cliff.  568;   Fed.  Cas.  13,321 440,  647 

Star  v.  General,  111  Fed.  398;  49  C.  C.  A.  409 591,  603,  624,  633, 

673,  674 

Stark  v.  Starr,  94  U.  S.  477;  24  L.  Ed.  276 37 

State  v.  Cook,  107  Tenn.  499 920 

State  v.  Lockwood,  43  Wis.  405 920 

State  of  Delaware  v.  Delaware,  47  Fed.  633 746 

Stead  v.  Anderson,  4  C.  B.  806 508 

Stead  v.  Course,  8  U.  S.  403;   2  L.  Ed.  400 800 

Steam  Cutter  v.  Sheldon,  5  Fish.  477;  Fed.  Cas.  13,331 < 532 

Steam  Gauge  v.  Ham,  28  Fed.  618 554,  555 

Stearnes  v.  Page,  7  How.  819;  12  L.  Ed.  818 729 

Stearns  v.  Lawrence,  83  Fed.  738 31 

Stearns  v.  Russell,  85  Fed.  218;  29  C.  C.  A.  121  ..  .  95,  195,  380,  501,  597, 

598,  616,  656,  661,  672,  673,  675,  919 

Steams-Roger  v.  Brown,  114  Fed.  939;  52  C.  C.  A.  559 544,  729 

Steers  v.  Rogers,  62  L.  J.  Ch.  671 927 

Steiner  v.  Adrian,  59  Fed.  132;    8  C.  C.  A.  44 661,  672 

Steinmetz  v.  Allen,  192  U.  S.  543;  48  L.  Ed.  555;  24  S.  Ct.  416  ..  .  143,  348 

Stelle  v.  Carroll,  37  U.  S.  201 ;  9  L.  Ed.  200 778 

Stephens  v.  Cadv,  14  How.  528;  14  L.  Ed.  528 157,  827,  920 

Stephenson  v.  Brooklyn,  114  U.  S.  149;  29  L.  Ed.  58;  5  S.  Ct.  777  ..  .  594, 

596,  609,  617,  662,  667,  669 

Stevens  v.  Cady,  2  Curt.  200;   Fed.  Cas.  13,395 336 

Stevens  v.  Gladding,  58  U.  S.  447;  15  L.  Ed.  155 157,  336,  920 


TABLE    OF    CASES    CITED  CXXXV11 

[References  are  to  sections] 

Stevenson  v.  McFassell,  90  Fed.  707;  33  C.  C.  A.  249 612 

Stewart,  Ex  parte,  4  O.  G.  665 3 

Stewart  v.  Smith,  58  Fed.  580;  7  C.  C.  A.  380 336 

Stewart  v.  Solomon,  97  U.  S.  361 ;  24  L.  Ed.  1044 138,  891 

Stilwell-Bierce  v.  Eufaula,  117  Fed.  410;    54  C.  C.  A.  584  ..  .  195,  223, 

598,  603,  608,  919,  937 

Stilwell  v.  Cincinnati,  1  B.  &  A.  610;  Fed.  Cas.  13,453 72 

Stimes  v.  Franklin,  14  Wall.  22;   20  L.  Ed.  846 138,  891 

Stimpson  v.  Railroad,  4  How.  380;    11  L.  Ed.  1020 317,  850,  889 

Stimpson  v.  Railroad,  10  How.  329;  13  L.  Ed.  441    145,  468,  473 

Stimpson  v.  Rogers,  4  Blatch.  333;   Fed.  Cas.  13,457 926 

Stimpson  v.  Stimpson,  104  Fed.  893;  44  C.  C.  A.  241 929 

Stimpson  v.  Woodman,  77  U.  S.  117;   19  L.  Ed.  866  ..  .  261,  596,  629,  653, 

656,  657,  667,  670,  671,  672,  679,  695,  775 

Stirling  v.  St.  Louis,  79  Fed.  80 3 

Stirrat  v.  Excelsior,  61  Fed.  980;  10  C.  C.  A.  216  ..  .  12,  195,  204,  213,  214, 
222,  223,  376,  378,  441,  442,  468,  507,  652,  657,  937 

Stitt  v.  Easton,  22  Fed.  649 10,  372 

Stoddard  v.  Chambers,  2  How.  318;   11  L.  Ed.  282 308 

Stonecutter  v.  Shortsleeves,  16  Blatch.  381 ;   Fed.  Cas.  13,334 756 

Story,  Ex  parte,  12  Pet.  339 891 

Stott  v.  Rutherford,  92  U.  S.  107 ;  23  L.  Ed.  486 764 

Stout  v.  Lye,  103  U.  S.  66;  26  L.  Ed.  428 31,  532,  893 

Stover  v.  Mast,  89  Fed.  333;  32  C.  C.  A.  231 250 

Stow  v.  Chicago,  104  U.  S.  547;  26  L.  Ed.  816  ..  .  188,  427,  598,  646,  651, 

670,  671,  672 

Strauss  v.  Meyer,  22  Fed.  467 277 

Streator  v.  Wire-Glass,  97  Fed.  950;   38  C.  C.  A.  573 630,  634 

Streit  v.  Kaiper,  143  Fed.  981 ;  75  C.  C.  A.  167 207 

Strom  v.  Weir,  83  Fed.  170;  27  C.  C.  A.  502 325,  696 

Studebaker  v.  Illinois,  42  Fed.  52 327 

Sturm  v.  Baker,  150  U.  S.  312;  37  L.  Ed.  1093;  14  S.  Ct.  99 384 

Suffolk  v.  Hayden,  70  U.  S.  315;   18  L.  Ed.  76 9,  285,  287,  292,  293, 

294,  295,  348,  349,  350,  353,  356,  361,  551,  764,  837,  842 

Sugar  v.  Yaryan,  43  Fed.  140 54 

Sullivan  v.  Redfield,  1  Paine,  441 ;  Fed.  Cas.  13,597 574 

Supply  Co.  v.  McCready,  4  B.  &  A.  588;  Fed.  Cas.  295 476 

Sutter  v.  Robinson,  119  U.  S.  530;   30  L.  Ed.  492;  7  S.  Ct.  376  .  .  .  54, 

204,  207,  244,  587,  770,  885,  889 

Swain  v.  Holyoke,  109  Fed.  154;  48  C.  C.  A.  265 412 

Swain  v.  Ladd,  102  U.  S.  408;  26  L.  Ed.  184 870,  871,  885 

Swain  v.  Seemens,  9  Wall.  254;   19  L.  Ed.  554 753 

Swan  v.  Frank,  148  U.  S.  603;  37  L.  Ed.  577;   13  S.  Ct.  691    327 

Swift  v.  United  States,  196  U.  S.  375;  49  L.  Ed.  518;  25  S.  Ct.  276  ...  .  163 

Syone  v.  Marsh,  6  B.  &  C.  551 926 

Tabor  v.  Hoffman,  118  N.  Y.  30 898 

Tabor  v.  Photograph,  87  Fed.  871 198 

Tannage  v.  Adams,  77  Fed.  191 561 

Tannage  v.  Zahn,  70  Fed.  1003;  17  C.  C.  A.  552 , 673 

Tatham  v.  LeRoy,  2  Blatch.  474;   Fed.  Cas.  13,760 459 

Tatham  v.  Lowber,  4  Blatch.  86;   Fed.  Cas.  13,765 797,  827 

Tatum  v.  Gregory,  41  Fed.  142 380 

Taylor  v.  Archer,  8  Blatch.  315;  Fed.  Cas.  13,778 341,  343 

Taylor  v.  Sawyer,  75  Fed.  301;  22  C.  C.  A.  203  ..  .  459,  558,  611,  612,  729 
Teal  v.  Walker,  111  U.  S.  242;  28  L.  Ed.  415;  4  S.  Ct.  420 778 


CXXXV111  TABLE    OF    CASES    CITED 

[References  are  to  sections] 

Teese  v.  Huntington,  23  How.  2;    16  L.  Ed.  479 789,  795 

Telegraph  v.  Himmer,  19  Fed.  322 555,  797 

Telephone  Cases,  126  U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778  ..  .  60,  77,  613, 

641,  686,  688,  770,  782,  817,  819,  865,  917 

Temple  v.  Goss,  58  Fed.  196;   7  C.  C.  A.  174 503,  504,  672 

Temple  v.  Goss,  30  Fed.  440 937 

Terhune  v.  Phillips,  99  U.  S.  592;  25  L.  Ed.  293  ..  .  47,  593,  667,  696,  707, 

708,  710 

Terry  v.  Davy,  107  Fed.  50;  46  C.  C.  A.  141 327 

Terry  v.  Sharon,  131  U.  S.  40-  33  L.  Ed.  94;  9  S.  Ct.  705 116 

Tetley  v.  Easton,  2  C.  B.  (N.  S.)  70 679 

Thatcher  v.  Burtis,  121  U.  S.  286;  30  L.  Ed.  942;  7  S.  Ct.  1034  ...  49,  86, 

525,  603,  608,  609,  636,  654 

Thayer  v.  Hart,  20  Fed.  693 65,  80 

Thibodeau  v.  Hildreth,  124  Fed.  892;   60  C.  C.  A.  78 160,  365 

Thomas  v.  Rocker,  77  Fed.  420;    23  C.  C.  A.  211 207,  352 

Thompson  v.  Boisselier,  114  U.  S.  1;  29  L.  Ed.  76;  5  S.  Ct.  1042  .  .  .  322, 
592,  596,  608,  612,  614,  617,  636,  646,  654,  655,  662,  664,  667,  671,  672 

Thompson  v.  Nelson,  71  Fed.  339;  18  C.  C.  A.  137 544 

Thompson  v.  Second  Ave.  93  Fed.  824;  35  C.  C.  A.  620 459 

Thompson  v.  Railroad,  6  Wall.  134;  18  L.  Ed.  765 720 

Thomson  v.  Bank,  53  Fed.  250;  3  C.  C.  A.  518  ..  .  374,  608,  609,  612,  624, 

631,  655,  674 
Thomson  v.  Wooster,  114  U.  S.  104;   29  L.  Ed.  105;  5  S.  Ct,  788  ..  .  290, 

337,  717,  837,  839 

Thomson-Houston  v.  Capitol,  56  Fed.  849 166,  179 

Thomson-Houston  v.  Elmira,  71  Fed.  396;  18  C.  C.  A.  145 273,  348, 

349,  350,  352,  354,  611 

Thomson-Houston  v.  Hoosick,  82  Fed.  461 ;  27  C.  C.  A.  419 351,  360 

Thomson-Houston  v.  Jeffrey,  101  Fed.  121 ;   41  C.  C.  A.  247 351 

Thomson-Houston  v.  Kelsey,  75  Fed.  1005;  22  C.  C.  A.  1 475,  476, 

477,  559 

Thomson-Houston  v.  Kelsey,  72  Fed.  1016 477,  527 

Thomson-Houston  v.  Nassau,  110  Fed.  646 190 

Thomson-Houston  v.  National,  65  Fed.  427;   12  C.  C.  A.  671 188,  427 

Thomson-Houston  v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107  .  .  .  349,  351,  353, 

476,  477,  506,  559 

Thomson-Houston  v.  Ohio,  130  Fed.  549 506 

Thomson-Houston  v.  Ohio,  78  Fed.  139 477 

Thomson-Houston  v.  Western,  70  Fed.  69;  16  C.  C.  A.  642 531 

Thomson-Houston  v.  Western,  65  Fed.  615 698 

Thomson-Houston  v.  Winchester,  71  Fed.  192 3,  561 

Thorn  v.  Washburn,  159  U.  S.  423;  40  L.  Ed.  205;   16  S.  Ct.  94 760 

Tiemann  v.  Kraatz,  85  Fed.  437;  29  C.  C.  A.  257 437 

Tift,  In  re,  11  Fed.  463 577 

Tilghman  v.  Proctor,  102  U.  S.  707;   26  L.  Ed.  279  ..  .  93,  107,  197,  222, 

223,  230,  245,  375,  497,  518,  605,  639,  640,  686,  688,  768,  770,  815,  817, 

819,  914 

Tilghman  v.  Proctor,  125  U.  S.  136;  31  L.  Ed.  664;  8  S.  Ct.  894  ..  .  129,  153, 

285,  286,  288,  290,  544,  829,  833,  836,  837,  844,  847 

Tillinghast  v.  Champlain,  4  R.  I.  173 425 

Time  Telegraph  v.  Carev,  19  Fed.  322 451 

Titley  v.  Easton,  2  C.  B.  (N.  S.)  70 679 

Tod  v.  Wick,  36  Ohio,  370 920 

Toledo  v.  Penn.  54  Fed.  730 924 


TABLE    OF    CASES    CITED  Cxxxix 

[References  are  to  sections] 

Tompkins  v.  Gage,  5  Blatch.  268;   Fed.  Cas.  14,088 223 

Tondeur  v.  Stewart,  28  Fed.  561 190,  473 

Topliff  v.  Topliff,  145  U.  S.  156;  36  L.  Ed.  658;   12  S.  Ct.  825  .  .     94,  107, 

230,  283,  435,  608,  617,  622,  626,  635,  663,  671,  672,  673,  692,  700, 

871   872  873 

Toppan  V  Tiffany,  39  Fed.  420 797 

Torrent  v.  Rodgers,  112  U.  S.  659;  28  L.  Ed.  842;  5  S.  Ct.  501 404 

Tourniquest  v.  Perkins,  57  U.  S.  82;   14  L.  Ed.  854 130 

Travers  v.  Cordage,  64  Fed.  771 426 

Traverse  v.  Beyer,  26  Fed.  450 476,  477 

Tremaine  v.  Hitchcock,  90  U.  S.  518;  23  L.  Ed.  97 833 

Trent  v.  Risden,  102  Fed.  635;  42  C.  C.  A.  529 797 

Tripp  v.  Vincent,  3  Barb.  Ch.  613 807 

Troy  v.  Corning,  14  How.  193;    14  L.  Ed.  383  ..  .  40,  165,  270,  271,  366, 

751,  756,  762 

Troy  v.  Corning,  7  Blatch.  16;    Fed.  Cas.  14,197 277 

Trotman  v.  Wood,  16  C.  B.  (N.  S.)  479 213,  384 

Truly  v.  Wanzer,  5  How.  141 ;   12  L.  Ed.  140 571 

Tubular  v.  O'Brien,  93  Fed.  200 474 

Tuck  v.  Bramhill,  6  Blatch.  95;    Fed.  Cas.  14,213 343,  344 

Tucker  v.  Spalding,  80  U.  S.  453;   20  L.  Ed.  515  ..  .  188,  197,  215,  404, 

427,  492,  616,  617,  670,  671,  672 

Turner  v.  Cameron's,  5  Exch.  932 778 

Turner  v.  Winter,  1  Web.  77 489 

Turnpike  v.  Hay,  7  Mass.  102 156 

Turrell  v.  Spaeth,  3  B.  &  A.  458;  Fed.  Cas.  14,269    497,  506 

Turrill  v.  Railroad,  68  U.  S.  491 ;   17  L.  Ed.  668 223 

Tuttle  v.  Claflin,  76  Fed.  227 ;  22  C.  C.  A.  138 298 

Tuttle  v.  Matthews,  28  Fed.  98 299 

Tyler  v.  Boston,  74  U.  S.  327;  19  L.  Ed.  93 814,  914,  915 

Tyler  v.  Galloway,  13  Fed.  477 480 

Tyler  v.  Tuel,  6  Cranch,  324;  3  L.  Ed.  237 796 

Underwood  v.  Gerber,  149  U.  S.  224;  37  L.  Ed.  710;   13  S.  Ct.  854  ..  .  70, 

225,  348,  350,  356,  667,  775 

Underwood  v.  Hitchcox,  1  Ves.  279 174 

Underwood  v.  Warren,  21  Fed.  573 213,  384,  451 

Union  v.  Battle  Creek,  104  Fed.  337;   43  C.  C.  A.  560 467,  526 

Union  v.  Binney,  5  Fish.  166;  Fed.  Cas.  14,387 454 

Union  v.  Botsford,  141  U.  S.  250;  35  L.  Ed.  734;   11  S.  Ct.  1000 401 

Union  v.  De'sper,  101  U.  S.  332;   25  L.  Ed.  1024  ...  12,  187,  201,  202,  207, 

211,  215,  374,  380,  466,  468,  473,  490,  609,  872 

Union  v.  Johnson,  61  Fed.  940;    10  C.  C.  A.  176 150,  171,  539 

Union  v.  Keith,  139  U.  S.  530;    35  L.  Ed.  261;    11  S.  Ct.  621  ..  .  6,  49, 

595,  671,  675,  676,  903 

Union  v.  Matthieson,  2  Fish.  600;   Fed.  Cas.  14,399 261,  377,  433 

Union  v.  Murphy,  97  U.  S.  120;  24  L.  Ed.  935  ..  .  222,  247,  322,  373,  374, 
435,  448,  453,  457,  459,  468,  497,  499,  500,  501,  503, 
529,  909 

Union  v.  Philadelphia,  75  Fed.  1004 552 

Union  v.  Selchow,  112  Fed.  1006 696,  697 

Union  v.  U.  S.  112  U.  S.  624;  28  L.  Ed.  828;  5  S.  Ct.  475  ..  .  54,  207,  375, 

871    8S9 

Union  v.  Vandeusen,  90  U.  S.  530;  23  L.  Ed.  128 310,  469,  667,'672, 

774,  775 
Union  v.  Vandeusen,  10  Blatch.  109;   Fed.  Cas.  14,395 775 


Cxi  TABLE    OF   CASES   CITED 

[References  are  to  sections] 

Union  Mill  v.  Dangberg,  81  Fed.  73 31 

Union  Paper  Bag  v.  Waterbury,  39  Fed.  389 426,  686 

Union  Stock  Yards  v.  Western,  59  Fed.  49;   7  C.  C.  A.  660 753 

United  States  v.  Am.  Bell  Tel.  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90 

...  26,  794 
United  States  v.  Am.  Bell  Tel.  167  U.  S.  224;  42  L.  Ed.  144;  17  S.  Ct. 

809  ..  .  3,  745 

United  States  v.  Bailey,  9  Pet.  257;  9  L.  Ed.  234 113 

United  States  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530;   15  S.  Ct.  420 

.  .  .  380,  429,  498,  506 

United  States  v.  Burns,  79  U.  S.  246;  20  L.  Ed.  388 429,  498,  714 

United  States  v.  Harvey,  196  U.  S.  310;   49  L.  Ed.  492;  25  S.  Ct.  240 

213  897 
United  States  v.  Palmer,  128  U.  S.  262;  32  L.  Ed.  441 ;  9  S.  Ct.  104  .  .  .'  26, 

429,  498,  715,  847 

United  States  v.  Russell,  80  U.  S.  623;   20  L.  Ed.  474 498,  847 

United  States  v.  Whitney,  118  U.  S.  22;  30  L.  Ed.  53;  6  S.  Ct.  950  ..  .      3 

U.  S.  v.  Bell  Tel.  29  Fed.  17 746 

U.  S.  v.  Briggs,  5  How.  208 ;  12  L.  Ed.  119 113 

U.  S.  v.  Dawson,  101  U.  S.  569;  25  L.  Ed.  791 131 

U.  S.  v.  Dewitt,  9  Wall.  41 ;  19  L.  Ed.  593 920 

U.  S.  v.  Eliason,  16  Pet.  291 ;  10  L.  Ed.  968 136 

U.  S.  v.  Griffith,  141  U.  S.  212;  35  L.  Ed.  719;   11  S.  Ct.  1005 123 

U.  S.  v.  Great  Falls,  112  U.  S.  645;  28  L.  Ed.  846;  5  S.  Ct.  306  ..  .  498,  715 

U.  S.  v.  Hopewell,  51  Fed.  798;  2  C.  C.  A.  510 789 

U.  S.  v.  Hughes,  52  U.  S.  552;   13  L.  Ed.  551 26 

U.  S.  v.  Hughes,  71  U.  S.  232;   18  L.  Ed.  303 26 

U.  S.  v.  Jones,  131  U.  S.  1 ;  33  L.  Ed.  90;  9  S.  Ct.  669 498 

U.  S.  v.  Jose,  63  Fed.  951 577 

U.  S.  v.  Lee,  185  U.  S.  213;  46  L.  Ed.  878;  22  S.  Ct.  629 923 

U.  S.  v.  McLemore,  45  U.  S.  286;  11  L.  Ed.  284 553 

U.  S.  v.  Minnesota,  18  How.  241 ;  15  L.  Ed.  347 123 

U.  S.  v.  Minor,  114  U.  S.  233;  29  L.  Ed.  110;  5  S.  Ct.  836 26 

U.  S.  v.  Peck,  102  U.  S.  64;  26  L.  Ed.  46 764 

U.  S.  v.  San  Jacinto,  125  U.  S.  273;  31  L.  Ed.  747;  8  S.  Ct.  750 26 

U.  S.  v.  Schurz,  102  U.  S.  378;  26  L.  Ed.  167 26,  745 

U.  S.  v.  Stone,  2  Wall.  525;  17  L.  Ed.  765 26 

U.  S.  v.  Union,  98  U.  S.  569;  25  L.  Ed.  143 796 

U.  S.  Consolidated  v.  Griffin,  126  Fed.  364;  61  C.  C.  A.  334 574,  920 

U.  S.  Credit  v.  American,  59  Fed.  139;  8  C.  C.  A.  49 698 

U.  S.  Fastener  v.  Bradley,  149  Fed.  222;  79  C.  C.  A.  180 574 

U.  S.  Gramophone  v.  Seaman,  113  Fed.  745;   51  C.  C.  A.  419 544 

U.  S.  Hog  v.  North,  158  Fed.  818;  86  C.  C.  A.  78 378,  620 

U.  S.  Mitis  v.  Midvale,  135  Fed.  103 717,  777 

United  Nickel  v.  California,  25  Fed.  475 190,  756 

United  Nickel  v.  Worthington,  13  Fed.  392 481 

Van  Camp  v.  Cruikshanks,  90  Fed.  814;   33  C.  C.  A.  280 567 

Vance  v.  Campbell,  66  U.  S.  427;   17  L.  Ed.  168  ..  .  145,  201,  202,  223,  224, 

228,  322,  340,  377,  389,  390,  456,  469,  473,  483,  598,  604,  612,  634,  795, 

872  921   937 

Vance  v.  Campbell,  1  Fish.  483;   Fed.  Cas.  16,837 223,  634 

Van  Ness  v.  Hyatt,  38  U.  S.  294;  10  L.  Ed.  292 778 

Van  Norden  v.  Morton,  99  U.  S.  378;  25  L.  Ed.  453 720 

Vasuini  v.  Paine,  1  Har.    64 746,  920 

Vavasseur  v.  Krupp,  L.  R.  9  Ch.  Div.  351 498 


TABLE    OF    CASES    CITED  Cxli 

[References  are  to  sections] 

Victor  v.  American,  151  Fed.  601 ;  81  C.  C.  A.  145 207 

Victor  v.  The  Fair,  123  Fed.  424;   61  C.  C.  A.  58   ...  474,  510,  513,  574, 

714  744  745  935 
Vinton  v.  Hamilton,  104  U.  S.  485;  26  L.  Ed.  807  ..  .  216,  608, '617, '654, 

657,  662,  667,  671,  676,  679 

Voigtmann  v.  Weis,  148  Fed.  848;  78  C.  C.  A.  538 591 

Von  Wittberg  v.  Carson,  44  Conn.  289 753 

Vose  v.  Singer,  4  Allen,  226 927 

Voss  v.  Fisher,  113  U.  S.  213;   28  L.  Ed.  975;   5  S.  Ct.  511 473,  605 

Vulcan  v.  American,  58  Atl.  290 898 

Vulcanite  v.  Folsom,  3  Fed.  509 716 

Wade  v.  Lawder,  165  U.  S.  624;  17  S.  Ct.  425 724 

Wade  v.  Metcalf,  129  U.  S.  202;  32  L.  Ed.  661;  9  S.  Ct.  271  ..  .  366,  512, 

756,  763 

Wales  v.  Waterbury,  101  Fed.  126;  41  C.  C.  A.  250 841,  845,  846 

Walker  v.  Brooks,  125  Mass.  241 720 

Walker  v.  Derville,  12  Wall.  442;  20  L.  Ed.  429 720 

Walker  v.  Powers,  104  U.  S.  245 ;  26  L.  Ed.  729 804 

Wallace  v.  Holmes,  9  Blatch.  65;   Fed.  Cas.  17,100  .  .  .  476,  477,  524,  559 

Walsh  v.  Colclough,  56  Fed.  778;   6  C.  C.  A.  114 411 

Walton  v.  Lavator,  29  L.  J.  C.  P.  275 384 

Walton  v.  Potter,  1  Web.  585 459,  616 

Wanzer  v.  Truly,  17  How.  584;  15  L.  Ed.  216 311 

Warren  v.  Burt,  58  Fed.  101 ;  7  C.  C.  A.  105 129,  544 

Warren  v.  Casey,  93  Fed.  963;  36  C.  C.  A.  29 207 

Warren  v.  Keep,  155  U.  S.  265;   39  L.  Ed.  144;   15  S.  Ct.  83  .  .  .  830,  846 

Warren  v.  Rosenblatt,  80  Fed.  540;   25  C.  C.  A.  625 629 

Wasatch  v.  Cresent,  148  U.  S.  293;  37  L.  Ed.  454;   13  S.  Ct.  600 396, 

803 
Washburn  v.  Beat  Em  All,  143  U.  S.  275;  36  L.  Ed.  154;  12  S.  Ct.  443 
...  9,  74,  77,  80,  222,  349,  350,  356,  390,  408,  435,  493,  561,  562,  613, 
617,  622,  624,  631,  632,  635,  641,  655,  663,  672,  692,  850 
Washburn  v.  Gould,  3  Story,  122;    Fed.  Cas.  17,214 59,  71,  613, 

811,861 

Waterman  v.  Lockwood,  125  Fed.  497;  60  C.  C.  A.  333 216 

Waterman  v.  Mackenzie,  138  U.  S.  252;   34  L.  Ed.  923;  11  S.  Ct.  334 

.  .  .  150,  163,  165,  171,  763,  765,  778,  926 

Waterman  v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371 398 

Waterman  v.  Thomson,  2  Fish.  461;  Fed.  Cas.  17,260 413 

Watsoh  v.  Cincinnati,  132  U.  S.  161;  33  L.  Ed.  295;   10  S.  Ct.  45 54, 

207,  591,  600,  617,  667,  671 
Watson  v.  Stevens,  51  Fed.  757;  2  C.  C.  A.  500  ..  .  435,  486,  616,  626,  630, 

631,  691 

Wattles,  Ex  parte,  3  O.  G.  291 775 

Wayman  v.  Southard,  10  Wheat.  20;  6  L.  Ed.  4 113 

Weatherhead  v.  Coupe,  147  U.  S.  322;  37  L.  Ed.  188;  13  S.  Ct.  312  ..  .  473 

Webber  v.  Virginia,  103  U.  S.  344;  26  L.  Ed.  565 920,  921 

Webster  v.  Carpet  Co.  5  O.  G.  522;  Fed.  Cas.  17,337 861 

Webster  v.  Cooper,  10  How.  54;   13  L.  Ed.  54 113 

Weir  v.  Barnett,  3  Exch.  Div.  32 481 

Weir  v.  Bell,  3  Exch.  Div.  238 481 

Weir  v.  Gas  Co.  91  Fed.  940 794 

Weir  v.  Morden,  125  U.  S.  98;   31  L.  Ed.  645;   8  S.  Ct.  869  ..  .  221,  222, 

234,  602 
Weir  v.  Morden,  21  Fed.  243 5 


Cxlii  TABLE    OF   CASES    CITED 

[References  are  to  sections] 

Weirman  v.  Shaw,  157  Fed.  928;  85  C.  C.  A.  222 775 

Welch  v.  Mandeville,  1  Wheat.  233;  4  L.  Ed.  231 765 

Welling  v.  Crane,  14  Fed.  571 904,  915 

Wellman  v.  Midland,  106  Fed.  221 937 

Wells  v.  Curtis,  66  Fed.  318;    13  C.  C.  A.  494  ..  .  226,  363,  374,  376,  378, 

442,  598,  908 

Wells  v.  Gill,  1  B.  &  A.  77;   Fed.  Cas.  17,393 497,  506 

Wells  v.  Jacques,  5  O.  G.  364;   Fed.  Cas.  17,398 379,  598 

Wells-Fargo  v.  Oregon,  19  Fed.  20 : 577 

Welsbach  v.  Apollo,  96  Fed.  332;  37  C.  C.  A.  508 17 

Welsbach  v.  Cosmopolitan,  104  Fed.  83;  43  C.  C.  A.  418  ..  .  543,  544,  704 

Werner  v.  King,  96  U.  S.  218;   24  L.  Ed.  613 375 

Wessel  v.  United,  139  Fed.  11;    71  C.  C.  A.  423 196,  817 

West  v.  Smith,  101  U.  S.  263;  25  L.  Ed.  809 411,  753 

West  v.  Rae,  33  Fed.  45 325 

Western  v.  American,  131  Fed.  75;  65  C.  C.  A.  313 506 

Western  v.  Ansonia,  114  U.  S.  447;   29  L.  Ed.  210:   5  S.  Ct.  447  ..  .  202, 

244,  671 

Western  v.  LaRue,  139  U.  S.  601;   35  L.  Ed.  294;   1  S.  Ct.  70  .  .  .  49,  89, 

226,  375,  435,  461,  486,  495,  598,  635,  655,  672,  673,  691 

Western  v.  North,  135  Fed.  80;   67  C.  C.  A.  553 608 

Western  v.  Sperry,  58  Fed.  186;   7  C.  C.  A.  164  ..  .  54,  55,  188,  427,  504, 

598,  672 

Western  v.  Sperry,  59  Fed.  295;  8  C.  C.  A.  129 59 

Western  &  Wells  v.  Rosenstock,  30  Fed.  67 377 

Western  Tel.  v.  Stromberg,  66  Fed.  550 385 

Western  Tel.  v.  Union,  3  Fed.  423 510 

Westinghouse  v.  Air  Brake,  2  B.  &  A.  55;  Fed.  Cas.  17,450 222 

Westinghouse  v.  Boyden,  170  U.  S.  537;  42  L.  Ed.  1136;  18  S.  Ct.  707 

.  .  .  198,  202,  207,  219,  223,  375,  380,  426,  435,  436,  453,  459,  490,  529, 

641,  688,  690,  817,  937 

Westinghouse  v.  Burton,  70  Fed.  619 550 

Westinghouse  v.  Burton,  77  Fed.  301 550 

Westinghouse  v.  Catskill,  121  Fed.  831 ;  58  C.  C.  A.  167 65 

Westinghouse  v.  Chartiers,  43  Fed.  582 613 

Westinghouse  v.  Christensen,  104  Fed.  622;  44  C.  C.  A.  92 542 

Westinghouse  v.  Dayton,  106  Fed.  724 349,  350 

Westinghouse  v.  Mutual  Life,  129  Fed.  213 65 

Westinghouse  v.  New  York,  140  Fed.  545;  72  C.  C.  A.  61    279,  845 

Westinghouse  v.  New  York,  59  Fed.  581 94,  527 

Westinghouse  v.  Press,  127  Fed.  822 548 

Westinghouse  v.  Saranac,  108  Fed.  221 65,  74 

Westinghouse  v.  Stanley,  133  Fed.  167;  68  C.  C.  A.  523 60,  613 

Westinghouse  v.  Stanley,  138  Fed.  823;  71  C.  C.  A.  189 421 

Westinghouse  v.  Stanley,  116  Fed.  641 494 

Westinghouse  v.  Union,  117  Fed.  495;  55  C.  C.  A.  230 707 

Westlake  v.  Carter,  6  Fish.  519;  Fed.  Cas.  17,451 404 

Weston  v.  Empire,  155  Fed.  301 283 

Weyeth  v.  Stone,  1  Story,  273;    Fed.  Cas.  18,107 222,  344,  688, 

770 

Wharton  v.  Fisher,  2  Serg.  &  R.  182 753 

Wheeler  v.  Clipper,  10  Blatch.  181 ;   Fed.  Cas.  17,493 448,  613 

Wheeler  v.  Jackson,  137  U.  S.  245;  34  L.  Ed.  659;   11  S.  Ct.  76 921 

Whipple  v.  Mfg.  Co.  4  Fish.  29;  Fed.  Cas.  17,514 497,  506 

Whipple  v.  Miner,  15  Fed.  117 13 


TABLE    OF    CASES    CITED  cxliii 

[References  are  to  sections] 

White  v.  Allen,  2  Cliff.  224;  Fed.  Cas.  17,535 11,  613,  811 

White  v.  Dunbar,  119  U.  S.  47;   30  L.  Ed.  303;  7S.  Ct.  72 202,  207, 

219,  222,  223,  226,  244,  380,  598,  871,  874,  876,  877,  889, 

903    937 

White  v.  Hunter,  47  Fed.  819 554 

White  v.  Lee,  3  Fed.  222 755 

White  v.  Lee,  14  Fed.  789 764 

White  v.  Peerless,  111  Fed.  190 574 

White  v.  Rankin,  144  U.  S.  628;  36  L.  Ed.  569;  12  S.  Ct.  768 714, 

722,  896 

White  v.  Spettigue,  13  Mus.  &  W.  603 299 

White  v.  Surdam,  41  Fed.  790 554 

White  v.  Walbridge,  46  Fed.  526 548 

Whiteley  v.  Swayne,  74  U.  S.  685;   19  L.  Ed.  199 629,  811 

Whiting  v.  Graves,  3  B.  &  A.  222;    Fed.  Cas.  17,577 366,  367 

Whitney  v.  Emmett,  1  Bald.  303;   Fed.  Cas.  17,585 574 

Whitney  v.  Mowry,  4  Fish.  207;   Fed.  Cas.  17,594 629 

Whittemore  v.  Cutter,  1  Gall.  429;  Fed.  Cas.  17,600 289,  796 

Whittemore  v.  Cutter,  1  Gall.  478;   Fed.  Cas.  17,601 827 

Wicke  v.  Ostrum,  103  U.  S.  461;    26  L.  Ed.  409 374,  686 

Wickelman  v.  Dick,  88  Fed.  264;   31  C.  C.  A.  530 107,  673 

Wicks  v.  Stevens,  2  Woods,  310;    Fed.  Cas.  17,616 260,  871 

Wiggin  v.  Heygood,   118  Mass.  514 157 

Wilch  v.  Phelps,  14  Neb.  134 920 

Wilde  v.  Gibson,  1  H.  L.  Cas.  620 425 

Wilgus  v.  Germain,  72  Fed.  773 629 

Wilkins  v.  Spafford,  3  B.  &  A.  274;    Fed.  Cas.  17,659 366,  367 

Wilkins  v.  Webb,  89  Fed.  982 626 

Willcox  v.  Ewing,  141  U.  S.  627;  35  L.  Ed.  882;   12  S.  Ct.  94 764 

Willcox  v.  Merrow,  93  Fed.  206;   35  C.  C.  A.  269 273,  350 

Williames  v.  McNeeley,  64  Fed.  766 672 

Williams  v.  American,  86  Fed.  641 ;  30  C.  C.  A.  318 614 

Williams  v.  Breitling,  77  Fed.  285;  23  C.  C.  A.  171 551 

Williams  v.  Corwin,  Hop.  Ch.  471 305 

Williams  v.  Hadley,  21  Kan.  350 753 

Williams  v.  McNeeley,  56  Fed.  265 567 

Williams  v.  Merle,  11  Wend.  80 926 

Williams  v.  Morgan,  111  U.  S.  684;  28  L.  Ed.  559;  4  S.  Ct.  638 116 

Williams  v.  Rome,  2  Fed.  702 290 

Williams  v.  Steam,  47  Fed.  322 936 

Williams  v.  Field,  2  Barb.  Ch.  281 116 

Willis  v.  McCullen,  29  Fed.  641 476 

Wilmington  v.  Alsbrook,  146  U.  S.  279;  36  L.  Ed.  972;   13  S.  Ct.  72  .  .  .  894 

Wilson  v.  Barnum,  8  How.  258;  12  L.  Ed.  1070 113 

Wilson  v.  City,  84  U.  S.  473;  21  L.  Ed.  723 923 

Wilson  v.  Consolidated,  88  Fed.  286;  31  C.  C.  A.  533 554,  561,  620 

Wilson  v.  Coon,  6  Fed.  611 223 

Wilson  v.  Deen,  121  U.  S.  525;  30  L.  Ed.  980;  7  S.  Ct,  1004 893,  894 

Wilson,  Ex  parte,  114  U.  S.  417;  29  L.  Ed.  89;  5  S.  Ct.  935 923 

Wilson  v.  McCormick,  92  Fed.  167;   34  C.  C.  A.  280 195 

Wilson  v.  Peto,  6  Moore,  47    481 

Wilson  v.  Rousseau,  4  How.  646;  11  L.  Ed.  1141  .  .  .  150,  154,  222,  418,  450, 

505,  712,  745,  746,  764,  769,  837 

Wilson  v.  Sanford,  10  How.  99;  13  L.  Ed.  344 714,  724 

Wilson  v.  Simpson,  9  How.  109;  13  L.  Ed.  66 476,  523,  524 


cxliv  TABLE   OF   CASES   CITED 

[References  are  to  sections] 

Wilton  v.  R.  R.  1  Wall  Jr.  192;  Fed.  Cas.  17,857 795 

Winans  v.  Denmead,  15  How.  330;    14  L.  Ed.  717  ..  .  54,  208,  219,  223, 

375,  435,  453,  457,  459,  460,  485,  487,  497,  519,  529,  600,  601,  602,  605, 

616,  651,  686 

Winans  v.  Railroad,  21  How.  88;  16  L.  Ed.  68 587 

Winans  v.  Railroad,  4  Fish.  2;  Fed.  Cas.  17,864 497,  506,  613 

Winans  v.  Railroad,  2  Story,  412;   Fed.  Cas.  17,858 687,  775 

Winch  v.  Railway,  13  L.  &  E.  506 482 

Windham's  Case,  5  Coke,  76 753 

Wing  v.  Anthony,  106  U.  S.  142;  27  L.  Ed.  110;  1  S.  Ct.  93  .  .  .  821,  871,  877 

Winslow  v.  Grindal,  2  Greenl.  64 36 

Wintermute  v.  Redington,  1  Fish.  239 ;   Fed.  Cas.  17,896 574 

Winthrop  v.  Meeker,  109  U.  S.  180;  27  L.  Ed.  898;  3  S.  Ct.  Ill 116 

Wirt  v.  Hicks,  46  Fed.  71 574 

Wisner  v.  Brown,  122  U.  S.  214;  30  L.  Ed.  1205;  7  S.  Ct.  1156 532 

Withington  v.  Kinney,  68  Fed.  500;   15  C.  C.  A.  531 759 

Wollensak  v.  Reiher,  115  U.  S.  87;  29  L.  Ed.  355;  5  S.  Ct.  1132 204 

Wollensak  v.  Reiher,  115  U.  S.  96;  29  L.  Ed.  350;  5  S.  Ct.  1137   .  .  204,  222, 

871,  875,  876,  877,  879 

Wollensak  v.  Reiher,  28  Fed.  427 548 

Wollensak  v.  Sargent,  151  U.  S.  221;  38  L.  Ed.  137;  14  S.  Ct.  291 651, 

690,  876 

Wood  v.  Carpenter,  101  U.  S.  135;   25  L.  Ed.  807 729 

Wood  v.  Deering,  66  Fed.  547 207 

Wood  v.  Rolling  Mill,  4  Fish.  550;  Fed.  Cas.  17,941 -.  .  .  .     10 

Wood  v.  Underhill,  5  How.  1 ;   12  L.  Ed.  23 814,  905,  915 

Wood  v.  Weisner,  104  U.  S.  786;  26  L.  Ed.  779 273 

Woodbury  v.  Keith,  101  U.  S.  479;   25  L.  Ed.  939  ..  .  3,  6,  8,  13,  19,  87, 

261,  308,  671,  676 

Woodcock  v.  Parker,  1  Robb.  37;  Fed.  Cas.  1813 613 

Woodman  v.  Stimson,  3  Fish.  98;  Fed.  Cas.  17,979 108,  188,  197 

Woodward  v.  Boston,  60  Fed.  283;  8  C.  C.  A.  622 213,  797 

Woodward  v.  Stone,  3  Story,  749;  Fed.  Cas.  18,021 871 

Woodworth  v.  Wilson,  4  How.  712;   11  L.  Ed.  1171 796 

Wooster  v.  Calhoun,  11  Blatch.  215;   Fed.  Cas.  18,035 431,  823 

Worden  v.  Searles,  121  U.  S.  14;   30  L.  Ed.  853;  7  S.  Ct.  814  .  .  .537,  538, 

877,  885 

Workingman's  Council  v.  New  Orleans,  57  Fed.  85;  6  C.  C.  A.  258 539 

World's  Columbian  v.  Republic,  96  Fed.  687;  38  C.  C.  A.  483 131 

Worley  v.  Loker,  104  U.  S.  340;  26  L.  Ed.  821  ..  .  103,  396,  412,  851,  857 

Worswick  v.  Buffalo,  20  Fed.  126 375 

Wright  v.  Bales,  67  U.  S.  535;  17  L.  Ed.  264 921 

Wright  v.  Clinton,  67  Fed.  790;   14  C.  C.  A.  646 376,  378,  598 

Wright  v.  Postal,  44  Fed.  352 811 

Wright  v.  Randel,  8  Fed.  591 161 

Wright  v.  Yuengling,  155  U.  S.  47;  39  L.  Ed.  64;   15  S.  Ct.  1  .  .  .  198,  204, 

211,  217,  376,  380,  456,  473,  654,  675 

Writing  Mach.  v.  Elliott,  106  Fed.  507 350 

Wyatt  v.  Wallace,  67  Ark.  575 920 

Wyckoff  v.  Wagner,  88  Fed.  515 574,  792 

Wyllie  v.  Ellice,  6  Hare,  505 841 

Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;  10  S.  Ct.  884  ..  .  54,  207,  871 
Yale  v.  Greenleaf,  117  U.  S.  554;  29  L.  Ed.  952;  6  S.  Ct.  846  ..  .  223,  244, 

322,  662,  664,  667 
Yale  v.  James,  125  U.  S.  447;  31  L.  Ed.  807;  8  S.  Ct.  967 872 


TABLE   OF   CASES  CITED  cxlv 

[References  are  to  sections] 

Yale  v.  Sargent,  117  U.  S.  373;  29  L.  Ed.  950;  6  S.  Ct.  931 12,  217, 

375 
Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed.  954;  6  S.  Ct.  934  ..  .  288,  298, 

608,  874 

Yates  v.  Russell,  17  Johns.  468 807 

Young  v.  Brehe,  19  Nev.  379 387 

Young  v.  Keighly,  16  Ves.  348 790 

Young  v.  Wolfe,  120  Fed.  956 631 

Zane  v.  Soffe,  110  U.  S.  200;  28  L.  Ed.  119;  3  S.  Ct.  562 807 


A  BRIEF  SURVEY  OF  THE  FIXED 
LAW  OF  PATENTS 

INTRODUCTORY.  —  This  chapter  is  a  bird's-eye  view  of  the 
main  body  of  the  work.  It  takes  up,  in  order,  the  main  titles  and 
aims  to  state  the  general  conclusions  which  are  evidenced  by  the 
collocation  of  appellate  rulings.  Its  value  lies  in  affording  a  com- 
parison of  views.  The  user  of  the  book  may  examine  a  question 
in  the  light  of  the  quotations  from  the  law.  He  may  draw  his  own 
conclusions  and  then  compare  them  with  those  of  the  author. 
Such  a  comparison  will  be  helpful  whether  the  conclusion  of  the 
one  tallies  with  that  of  the  other  or  not.  What  is  sought  is  the  true 
vision  —  to  extricate  ourselves  from  the  inert  mass  of  decision 
and  digest  and  get  to  higher  ground.  The  aim  of  this  chapter  is  to 
enable  the  practitioner  —  not  the  patent  specialist  alone,  but  the 
every-day  lawyer,  to  gather  up  the  living  forces  of  the  law  and 
apply  them  to  the  solution  of  immediate  problems. 

The  principles  of  the  patent  law  are  not  so  difficult  or  recondite 
as  they  are  commonly  regarded.  The  common  hesitation  in 
approaching  a  question  of  patent  law  is  a  traditional  fear  rather  than 
a  substantial  reality.  This  book  would  fail  of  a  main  purpose  if 
it  did  not  enable  the  lawyer  in  general  practice  to  meet  and 
effectually  dispose  of  the  ordinary  questions  arising  in  the  realm  of 
patents. 

This  survey  should  serve  another  purpose:  It  should  make 
evident  the  fact  that  the  patent  law  of  today  is  the  result  of  a 
natural,  progressive  development  along  broad,  sane  lines;  that 
it  is,  in  the  main,  natural,  logical,  and  therefore  simple.  It  should 
make  it  evident  that  the  great  principles  are  fixed;  and  being 
fixed,  that  Congress  should  be  slow,  very  slow,  in  disturbing  the 
structure  by  tampering  with  the  statutory  foundation  upon  which 
it  is  builded. 

ABANDONMENT,  §§  1-20. 

It  is  to  be  observed  at  the  outset  that  a  patent  creates  nothing 
that  did  not  before  exist.     The  patent  secures  to  the  inventor,  for 


2  THE    FIXED    LAW    OF    PATENTS 

a  definite  period,  the  exclusive  right  to  enjoy  what  has  been  created 
in  his  own  mind,  that  which  already  exists;  it  secures  to  the  public 
a  full  disclosure  of  that  which  already  exists.  The  common  law 
recognizes  no  quality  of  property  in  such  a  creation,  and  conse- 
quently there  could  be  no  abandonment  of  that  which  had  no 
existence  as  property.  The  Constitution  and  the  statutes  give  to 
invention  the  character  of  an  inchoate  right  which  the  inventor 
may,  by  compliance  with  the  statutes,  transform  into  a  substantial 
property  right.  It  follows,  then,  that  abandonment  must  reside 
in  the  acts  of  the  inventor  by  which  he  has  deprived  himself  of  the 
right  to  establish  or  enjoy  the  monopoly  which  he  might  have 
secured. 

Since  abandonment  is  a  forfeiture  which  places  a  right  beyond 
possible  recall,  and  since  courts  do  not  favor  forfeitures,  the  evi- 
dence must  be  clear  and  convincing  beyond  doubt.  An  invention 
may  be  abandoned  either  before  or  after  application  for  patent; 
but  there  is  a  wide  difference  between  abandonment  of  an  invention 
and  abandonment  of  an  application.  The  latter  does  not  neces- 
sarily constitute  abandonment  of  the  invention  at  all.  An  applica- 
tion may  be  abandoned  or  forfeited,  and  renewed  repeatedly,  so 
long  as  the  applicant  remains  within  the  time  and  terms  of  the 
statute. 

While  abandonment  may  occur  either  in  the  active  or  passive 
voice,  it  is  rare  that  the  evidence  shows  a  positive  act.  Usually 
it  is  a  case  of  sleeping  on  one's  rights  or  of  unconscionable  delay 
under  cover  of  experimental  use;  and  occasionally,  just  after  the 
close  of  the  eleventh  hour,  the  inventor  essays  to  recover  a  monopoly 
in  a  thing  which  his  foresight  was  not  clear  enough  to  appreciate 
and  which  was  revealed  to  him  only  by  the  sagacity  of  others. 
An  inventor  may  not  sit  with  folded  hands  to  let  others  prove  the 
utility  of  his  invention;  nor  may  he,  under  cover  of  experimental 
use,  prolong  the  life  of  his  monopoly.  On  the  other  hand,  the  courts 
are  gentle  with  the  struggling  inventor  who  is  acting  in  good 
faith;  and  they  give  wide  margin  for  experimental  use  (see  Eliza- 
beth v.  American,  97  U.  S.  126;  §  414)  where  the  invention  requires 
the  test  of  time  or  use  to  demonstrate  its  utility. 

It  has  been  said  repeatedly,  as  stated  above,  that  abandonment 
may  occur  either  before  ot  after  application;  but  it  must  be  borne 
in  mind  that  the  statute  makes  a  distinction  between  public  use 
and  abandonment  (Sec.  4886).  Public  use  for  two  years  is  an 
absolute  bar  which  cannot  be  excused  and  which  operates  without 
reference  to  the  intent  of  the  inventor  or  any  construction  of  his 
conduct.     It  is  not  uncommon  for  the  courts  to  use  the  term 


BRIEF   SURVEY  6 

abandonment  where  the  condition  is  one  of  public  use  for  more 
than  two  years. 

Abandonment  by  failure  to  claim  or  by  amendment  of  application 
and  acquiescence  in  the  ruling  of  the  Patent  Office  in  restricting 
the  scope  of  a  claim  is  true  abandonment  (§§  199-215);  and  here 
the  inventor  is  often  deprived  of  a  substantial  right  by  the  conduct 
of  his  solicitor  in  following  the  line  of  least  resistance  in  the  prosecu- 
tion of  an  application. 

ABATEMENT,  §§21-23. 

■  While  it  is  true  that  a  sole  plaintiff  or  complainant,  suing  in  his 
own  right,  having  disposed  of  his  entire  interest  in  the  patent  and 
controversy  is  unable  to  further  prosecute  the  cause,  it  is  equally 
true  that,  where  there  is  a  successor  capable  of  assuming  the  burden, 
and  who  promptly  takes  steps  so  to  do,  the  action  does  not  neces- 
sarily abate.  The  question  is  one  of  continuity  rather  than  per- 
sonality; and  the  courts  are  little  disposed  to  hang  the  fate  of  a 
cause  upon  so  uncertain  an  event  as  the  life  of  a  person,  real  or 
artificial. 

ACTIONS,  §§  24-27. 

Actions  for  infringement  are  separately  considered  under  in- 
fringement, injunction,  defenses  and  pleading.  (§§  447,  535,  308, 
and  789).  Qui  tam  actions  or  actions  for  false  marking  need  not 
be  considered. 

Actions  to  compel  issue  of  a  patent  lie  under  Sec.  4915;  and  the 
action  must  be  brought  within  the  jurisdiction  including  the  official 
residence  of  the  Commissioner  of  Patents.  In  such  case  the  court 
will  pass  upon  the  entire  question  of  patentability  and  right  to  a 
patent;  and  the  mandate  of  the  court  when  filed  in  the  Patent 
Office,  unless  stayed  by  appeal,  becomes  binding  upon  the  Com- 
missioner. Since  appeal  lies  to  the  Court  of  Appeals,  D.  C,  and 
since  such  appeal  does  not  involve  a  patent  right,  it  is  not  appealable 
to  the  Supreme  Court.  Dunham  v.  Seymour,  161  U.  S.  235, 
§  143.  Such  an  action  may  grow  out  of  the  ordinary  rejection  of 
an  application,  or  out  of  a  decision  in  interference,  or  out  of  the 
issue  of  a  patent  to  the  wrong  person. 

Actions  to  cancel  letters  patent  can  be  brought  only  by  the 
Government.  A  grant  once  issued  by  the  Commissioner  can  not 
be  recalled;  nor  can  a  patent  be  cancelled  in  a  collateral  pro- 
ceeding. The  Bell  Telephone  Case,  167  U.  S.  224,  clearly  estab- 
lished the  conditions  under  which  such  an  action  will  lie. 

Actions  under  Sec.  4918  for  delimiting  the  rights  under  issued 


4  THE    FIXED    LAW    OF    PATENTS 

patents   having  conflicting  or  overlapping  claims  are   considered 
under  §  587,  interfering  patents. 

ADJUDICATIONS,  §§  28-37. 

It  would  seem  that  a  prior  adjudication  should  be  conclusive 
between  parties  and  privies  to  the  suit;  but  the  possibility  of 
presenting  new  defenses,  under  cover  of  newly-discovered  evidence, 
and  the  restrictions  laid  upon  the  question  of  privity  (§386), 
render  a  prior  adjudication  devoid  of  true  finality  in  most  cases. 

The  utter  chaos  into  which  we  have  fallen  with  reference  to  the 
finality  of  a  prior  adjudication  as  determining  the  status  of  a  patent 
is  well  illustrated  by  Consolidated  v.  Diamond,  157  Fed.  677,  and 
the  other  cases  involving  the  Grant  patent.  This  patent  has  been 
held  valid  in  the  Southern  District  of  New  York,  the  Southern 
District  of  Ohio,  the  Northern  District  of  Georgia,  and  by  the 
Circuit  Court  of  Appeals  of  France.  The  Circuit  Court  of  Appeals 
for  the  Sixth  Circuit  held  the  patent  void  for  want  of  invention. 
Squarely  in  the  face  of  the  last-named  decision  the  Circuit  Court 
of  Appeals  for  the  Second  Circuit  held  the  patent  valid.  Here  we 
have  the  case  of  a  grant  of  the  Government  held  void  in  certain 
parts  of  the  United  States,  held  valid  in  other  parts,  and  thereby 
under  a  cloud  throughout  the  rest  of  the  land.  And  no  right  of 
appeal  lies.  That  the  framers  of  the  Constitution  and  the  authors 
of  the  patent  statutes  never  contemplated  such  a  condition  is 
evident.  The  utter  failure  of  comity  between  our  circuit  courts 
of  appeals  presents  a  situation,  relatively  speaking,  as  repugnant 
to  the  spirit  of  the  Constitution  as  the  secession  of  a  state  from  the 
Union.  It  is  the  belief  of  the  writer  that  the  portion  of  the  Circuit 
Court  of  Appeals  Act  which  makes  the  decisions  of  those  courts 
final  in  matters  affecting  Federal  grants,  such  as  patents,  is  abso- 
lutely unconstitutional,  and  should  be  so  adjudged  by  the  Supreme 
Court. 

And  the  decision  in  Kessler  v.  Eldred,  206  U.  S.  285,  is  a  step 
which  does  little  more  than  add  confusion  to  uncertainty.  In  that 
case  Eldred,  the  owner  of  a  patent,  sued  Kessler,  a  manufacturer 
of  electric  cigar  lighters,  in  the  district  of  Indiana.  The  court 
found  non-infringement  and  dismissed  the  bill.  Subsequently 
Eldred  sued  Kirkland,  another  manufacturer  of  similar  cigar 
lighters,  in  the  Western  District  of  New  York,  was  defeated  at 
circuit,  but  prevailed  in  the  Circuit  Court  of  Appeals.  Eldred  next 
sued  Breitweiser,  a  user  of  Kessler  lighters,  in  the  same  district 
(W.  D.  N.  Y.).  While  this  last  suit  was  pending,  Kessler  filed  a 
bill  in  the  Northern  District  of  Illinois  against  Eldred  to  enjoin  him 


BRIEF   SURVEY  5 

from  prosecuting  any  suit  against  him  for  alleged  infringement  of 
the  patent  by  purchase,  use  or  sale  of  any  cigar  lighter  manu- 
factured by  Kessler  and  identical  with  the  lighter  in  evidence 
before  the  court  in  the  first  suit.  The  Supreme  Court  held  that  the 
original  judgment  conclusively  settled  the  right  of  Kessler  to  manu- 
facture and  sell  his  manufactures  free  from  all  interference  from 
Eldred  by  virtue  of  the  patent  there  adjudicated,  and  granted  the 
relief  prayed  for.  Here,  then,  is  the  situation,  in  part  at  least: 
If  one  buys  a  cigar  lighter  from  Kessler  in  Illinois  or  anywhere  else 
he  may  use  it  anywhere,  even  in  the  Second  Circuit  where  the  patent 
has  been  held  valid.  If  one  buys  that  cigar  lighter  from  any  other 
maker  than  Kessler,  he  may  use  it  in  the  Seventh  Circuit  and  not 
infringe;  but  if  he  brings  it  into  the  Second  Circuit  and  uses  it 
he  at  once  infringes.  If  one  makes  such  a  lighter  in  the  Second 
Circuit  he  infringes;  but  he  may  carry  it  into  the  Seventh  Circuit 
and  use  it  freely.  If  a  user  of  such  cigar  lighters  were  sued  in  the 
Second  Circuit  by  Eldred  for  infringement  of  his  patent  and  an 
injunction  asked,  the  court  would  have  to  exclude  from  its  restric- 
tion (as  was  done  in  the  case  of  Consolidated  v.  Diamond)  all 
lighters  made  by  Kessler.  What  might  happen  in  any  one  of  the 
other  seven  circuits  one  may  only  surmise.  With  all  respect  for 
the  Supreme  Court,  the  author  submits  that  the  mark  was  entirely 
missed  in  the  failure  of  that  court  to  recognize  that  this  unspeakable 
chaos  has  its  origin  in  the  utter  repugnancy  to  common  rights  of 
that  portion  of  the  act  which  closes  the  right  of  appeal  to  the 
Supreme  Court. 

However,  there  are  certain  holdings  co-related  to  adjudications 
which  are  more  harmonious.  These  are  considered  under  comity, 
§  250,  and  res  judicata,  §  893. 

ADMINISTRATOR,  EXECUTOR,  OR  COMMITTEE  OF  AN  INSANE 

INVENTOR,  §§  38-41- 

Prior  to  the  amendment  to  Sec.  4896  on  May  23,  1908,  there 
was  no  provision  for  application  by  the  legal  representative  of  an 
insane  person.  Even  as  thus  amended  the  statute  does  not  cover 
the  case  of  an  inventor  living  and  sane,  but  incapacitated  for 
making  application;  and  since  the  two-year  limit  of  public  use  is 
absolute,  rigid,  a  case  might  well  arise  where  an  application  would 
be  barred  by  two  years  public  use  while  the  inventor  was  incapaci- 
tated by  a  passing  illness. 

A  license,  personal  in  its  nature,  does  not  pass  to  the  represen- 
tatives of  a  deceased  licensee;  but  an  assignment  or  license, 
alienable  during  the  life  of  the  holder,  does  so  pass;  and  an  executor 


6  THE    FIXED    LAW    OF    PATENTS 

or  administrator  entrusted  with  an  interest  in  a  patent  upon  which 
the  deceased  might  have  brought  suit,  may  sue  for  infringement. 

AGGREGATION,  §§  42-51. 

The  distinction  between  an  aggregation  and  a  true  combination 
is  not  always  clear.  The  main  test  lies  in  examination  of  the  result 
—  the  function  performed.  If  that  result  is  the  sum  of  the  several 
actions  of  the  elements,  it  is  an  aggregation;  if  it  is  the  product 
of  those  actions  —  if  the  action  of  one  element  so  modifies  the 
action  of  another  that  the  resultant  action  differs  from  the  sum 
of  the  separate  actions  —  it  is  a  true  combination.  Of  the  cases 
quoted  under  this  title  the  most  interesting  and  instructive  are 
Dunbar  v.  Eastern  Elevating  Co.  and  Goss  v.  Scott  (§§  48  and  45). 
In  the  Dunbar  case,  an  elevator  with  a  fixed  leg  for  entering  the 
hold  of  a  vessel  was  old.  A  movable  elevator  with  a  leg  capable  of 
entering  the  hold  of  a  vessel  was  old.  Dunbar  took  an  elevator 
of  the  stationary  type  and  mounted  a  movable  leg  on  a  track  in 
front  of  the  stationary  elevator,  so  that  when  a  vessel  came  along- 
side the  elevator  and  the  fixed  leg  was  entered  at  one  hatch,  the 
movable  leg  could  be  moved  to  enter  another  hatch  at  whatever 
distance  from  the  former,  and  thus  the  cargo  could  be  unloaded 
from  two  points  into  a  common  elevator.  That  the  invention  was 
of  large  value  and  was  licensed  generally  no  one  questioned;  but 
the  Circuit  Court  of  Appeals  for  the  Second  Circuit  reversed  the 
court  below  without  hesitation  on  the  ground  that  there  was  no 
modification  of  function,  the  one  by  the  other,  and  that  the  result 
was  aggregation  and  mere  mechanical  skill.  The  printing  press  case 
is  especially  interesting  because  there  we  find  the  court  holding 
one  patent  valid  and  another  patent  void  in  the  same  suit  on  the 
ground  that  the  one  covered  a  true  combination  while  the  other 
was  for  a  mere  aggregation. 

There  are  patents  covering  so-called  "  systems,"  such  as  systems 
of  electrical  operation  or  control,  which  present  serious  problems 
in  aggregation.  Many  of  these  patents  show  a  fine  quality  of 
mechanical  and  engineering  skill,  but  are  destitute  of  that  quality 
which  characterizes  true  invention.  The  holding  of  the  Second 
Circuit  in  Western  v.  Rochester,  145  Fed.  41  (§  698)  is  indicative 
of  the  trend  of  future  decisions  in  such  cases. 

Of  course  the  Rubber  Tip  Pencil  Case  (Rubber  Tip  v.  Howard, 
87  U.  S.  498)  is  standard  authority  on  this  question  as  related  to 
articles  of  manufacture;  but  the  writer  has  always  regarded  that 
case  as  involving  mechanical  skill,  pure  and  simple.  It  did  not 
rise,  in  his  opinion,  even  to  the  dignity  of  a  clever  aggregation. 


BRIEF  SURVEY  7 

AMENDMENT,  §§  52-57- 

In  view  of  the  remarks  made  in  §  53,  only  brief  comment  need 
be  made  here.  The  underlying  principle  governing  the  question 
of  broadening  the  scope  of  a  patent  by  amendment  to  the  body  of 
the  specification  is  this:  If  the  original  description  disclosed  the 
subject-matter  of  the  amendment,  then  the  amendment,  if  justified 
by  the  state  of  the  art,  is  proper.  If,  on  the  other  hand,  the  original 
description  did  not  so  disclose  the  subject-matter  of  the  amendment, 
there  is  no  foundation  for  the  amendment.  The  statute  makes  no 
provision  for  the  filing  of  a  supplemental  oath  to  justify  the  intro- 
duction of  new  matter.  The  Patent  Office  Rules  do  make  such 
provision.  Whether  such  practice  is  justifiable  or  not  the  appellate 
courts  have  not  yet  determined. 

The  most  serious  problems  are  those  where  the  applicant  has 
injected  into  the  specification  matters  of  improvements,  after- 
thoughts, and  statements  to  broaden  the  scope  of  the  patent.  When 
such  amendments  are  made  after  long  delay  and  after  the  accruing 
of  intervening  rights,  as  in  the  case  of  Mayo  v.  Jenckes,  133  Fed. 
527  (§  54)  they  are  unwarranted.  These  common  attempts  to 
broaden  the  patent  consist  both  in  amendment  to  the  description 
and  to  the  claims.  While  the  applicant  may  always  amend  to 
make  his  description  and  his  claim  as  broad  as  his  disclosure,  the 
grant  may  never  go  beyond  that  point;  for  the  moment  it  does, 
the  applicant  exceeds  the  statute,  which  requires,  as  a  condition 
of  the  grant,  a  disclosure  of  the  exact  monopoly  sought,  in  such 
full,  clear  and  exact  terms  as  will  enable  a  person  skilled  in  the  art 
to  make  and  use  the  same.  This  question  arises  and  is  considered 
more  fully  under  the  title  of  claims  —  construction,  §§  188-230. 

ANTICIPATION,   §§  58-108. 

The  grant  of  a  patent  is  prima  facie  evidence  of  novelty,  and 
conversely,  that  it  is  not  anticipated.  The  weight  of  this  pre- 
sumption is  not  great.  It  may  be  re-inforced  somewhat  by  evidence 
of  large  utility  and  use,  but  nevertheless  the  judicial  mind 
approaches  this  question  with  little  predilection  in  favor  of  the 
patent.  And  so  it  should  be;  for  both  the  patentee  and  the  public 
are  entitled  to  an  adjudication,  when  a  patent  becomes  a  source 
of  conflict  in  the  industrial  world,  which  shall  be  exhaustive  of 
the  state  of  the  art  and  broadly  conclusive  of  the  questions  in  con- 
troversy. As  has  been  so  well  said  by  the  First  Circuit  in  Millard 
v.  Chase,  108  Fed.  399,  (§  681),  it  is  the  duty  of  the  court,  un- 
hampered by  the  framing  of  the  issues  by  the  parties,  to  pass  upon 
the  scope  and  validity  of  the  claims  in  the  interest  of  the  public. 


8  THE    FIXED    LAW    OF    PATENTS 

The  notion  of  a  half-century  ago  that  the  possession  of  a  patent 
entitled  the  holder  to  rush  into  court  and  cry  "  stop  thief,"  and 
the  later  reaction,  led  so  rigorously  by  the  late  Justice  Blatchford, 
have  neutralized  and  calmed  each  other  in  a  beneficent  fashion. 

Since  no  general  test  of  anticipation  exists,  or  can  exist,  we  must 
content  ourselves  with  aids  like  the  following: 

1.  As  an  invention  in  order  to  receive  the  protection  of  the 
law  must  be  so  described  as  to  enable  one,  without  experiment, 
assistance  or  advice  to  make  and  use  the  same,  so  an  alleged 
anticipation  must  disclose  the  invention  so  clearly  that  it  may  be 
made  or  used  by  those  skilled  in  the  art  without  resort  to  the 
patent  under  attack  for  necessary  information. 

2.  Anticipation  may  not  be  read  out  of  the  patent  in  question 
and  into  the  alleged  anticipation.  It  is  easy  to  do  so  after  the 
fact. 

3.  Anticipation  cannot  be  made  out  by  finding  one  element 
here,  and  one  there;  nor  can  it  be  made  out  by  the  ingenious 
elucidation  of  doubtful  and  uncontemplated  functions  of  an  old 
device  by  expert  testimony. 

4.  The  analogousness  of  an  anticipation  is  "  proportioned 
inversely  to  the  distance  from  which  it  is  brought." 

5.  The  "  infringement-if-later  "  rule  is  not  of  universal  applica- 
tion.   Infringement  is  not  the  unqualified  antithesis  of  anticipation. 

An  abandoned  experiment  can  never  anticipate.  So  long  as 
it  is  an  experiment  it  is  not  an  invention.  If  it  is  reduced  to  practice, 
made  operative,  it  is  no  longer  an  experiment.  Experimental  use 
is  quite  a  different  thing.  An  abandoned  device  to  be  an  anticipa- 
tion must  disclose  the  idea  of  means  to  such  a  degree  that  nothing 
more  than  ordinary  mechanical  skill  is  necessary  to  make  it  per- 
form the  required  function.  A  mere  conception,  however  complete 
and  exact,  is  not  enough.  On  the  other  hand,  it  is  immaterial 
that  the  anticipating  device,  so  long  as  it  was  complete  and  opera- 
tive, never  was  used  practically.  But  it  happens  not  infrequently 
that  an  alleged  anticipation  is  brought  out  of  a  scrap-heap,  attic, 
or  store-room  and  clothed  with  the  dignity  of  perfect  anticipation. 
Such  devices  must  be  viewed  with  a  conservatism  commensurate 
with  the  enthusiasm  or  complacency  with  which  they  are  pro- 
duced. Nevertheless,  if  the  anticipation  is  evident,  the  non-use 
cannot  discredit  the  showing. 

Anticipation,  once  fairly  established,  the  burden  of  proof  shifts 
to  the  complainant,  and  in  addition  to  this  burden  is  the  obligation 
to  establish  invention  anterior  to  the  anticipating  exhibit  with 
no  less  certainty  than  is  required  to  establish  anticipation. 


BRIEF   SURVEY  9 

Combining  old  elements  is  a  favorite  expedient  of  the  expert. 
He  dissects  the  patent  in  suit  to  break  up  and  destroy  its  entirety. 
Having  done  this,  it  is  ordinarily  easy  to  find  one  element  or  sub- 
combination in  one  patent,  another  in  another,  and  so  on.  The 
danger  in  such  an  attack  lies  not  so  much  in  the  building-up  of 
combinations  from  old  devices  and  patents  as  in  the  clever  and 
misleading  dissection  of  the  patent  in  suit  which  reduces  it  to 
a  mere  aggregation,  where  "  anticipation  on  the  installment  plan  " 
may  be  applied  with  much  show  of  sincerity. 

A  more  complete  and  condensed  statement  of  the  general  rule 
upon  evidence  of  anticipation  than  that  in  Coffin  v.  Ogden,  85 
U.  S.  120,  (§  71),  is  not  to  be  found.  Nor  can  anything  be  added 
to  the  statement  of  Judge  Coxe  in  American  v.  Wagner,  151  Fed. 
576,  (§  72),  upon  the  evidential  value  of  models.  Expert  evidence 
of  anticipation,  like  expert  evidence  in  general,  divides  under  two 
heads:  First,  that  class  which  elucidates  the  constructions  and 
enables  the  court  the  more  readily  to  form  a  correct  judgment. 
Second,  that  class  of  evidence  which,  concluding  with  a  jurat, 
elucidates  nothing,  and  having  settled  the  law  and  the  fact,  leaves 
nothing  for  the  court  to  decide. 

Parol  evidence  of  anticipation  must  be  certain,  clear,  and  free 
from  suspicion.  Since  the  Barbed  Wire  Case,  143  U.  S.  275,  the 
courts  have  been  properly  suspicious  of  oral  proofs  of  anticipation 
—  suspicious  of  fading  memory  and  conscious  or  unconscious  bias. 
Yet  there  are  cases,  like  that  of  National  v.  Stolts,  157  Fed.  392, 
(§  74),  where  parol  evidence  alone  is  sufficient  to  defeat  a  patent 
on  the  ground  of  anticipation.  Whether  the  proof  be  in  the  form 
of  a  tangible  device,  a  prior  patent,  or  the  oral  testimony  of  wit- 
nesses, it  must  be  sufficient  to  carry  the  question  clear  of  doubt. 
A  patent  is  a  substantial  right,  and  the  evidence  to  destroy  it  must 
be,  in  its  way,  no  less  substantial. 

Foreign  use  alone  does  not  anticipate.  It  is  only  when  such 
use  is  brought  to  this  country  in  the  form  of  definite  knowledge 
prior  to  the  date  of  the  domestic  invention  —  only  when  it  becomes 
"  known  "  in  the  sense  required  by  Sec.  4886  —  that  it  can  operate 
as  an  anticipation.  Mere  knowledge  of  the  fact  that  a  certain 
thing  is  done  abroad  is  not  enough. 

A  patent  or  publication  in  a  foreign  country,  in  order  to  become 
an  anticipation,  must  be  a  full  and  clear  disclosure  which  will 
enable  one  to  practise  the  invention  of  the  patent  in  suit  without 
its  use  as  a  side-light.  The  loose  methods  which  obtain  in  many 
foreign  countries  as  to  the  drafting  of  specifications  and  claims 
render  it  necessary  to  view  such  disclosures  with  much  suspicion. 


10  THE    FIXED    LAW    OF    PATENTS 

Loose  and  general  statements  may  be  twisted  into  seeming  antici- 
pation. 

An  interesting  question  of  carrying  the  date  of  invention  back 
of  a  foreign  patent  is  raised  in  Welsbach  v.  American,  98  Fed.  613, 
(§  82). 

As  above  stated,  the  "  infringe-if-later  "  rule  is  not  of  universal 
application.  It  rarely  happens  that  the  alleged  anticipation  is  a 
Chinese  copy  of  the  device  of  the  patent  under  fire.  Questions  of 
equivalency,  identity,  diversity,  transposition  of  parts,  and  many 
other  questions  are  usually  present  to  complicate  the  examination. 

The  rule  as  to  anticipation  by  a  prior  inoperative  device  is 
this:  If  the  inoperativeness  is  a  mere  matter  of  lack  of  mechanical 
development,  the  essence  of  the  invention  being  clearly  present, 
such  defect  will  not  prevent  anticipation;  but  if  the  inoperative- 
ness resides  in  an  inherent  defect  and  lack  of  elements  in  necessary 
combinative  relation,  then  the  anticipation  fails. 

Since  every  inventor  is  charged  with  knowledge  of  the  prior 
art,  so  a  witness  claiming  knowledge  which  will  anticipate  is 
charged  with  that  exactness  of  knowledge  which  enables  him, 
wholly  independently  of  the  patent  in  suit,  to  disclose  the  invention 
in  operative  completeness.  Anything  short  of  this  is  insufficient. 
Mere  knowledge  of  the  scientific  principles  involved  will  not  answer; 
the  knowledge  must  be  of  the  means  essential  to  put  them  to  use. 
Nor  will  knowledge  of  a  similar  device  in  another  art  performing  a 
different  function  do.  The  knowledge  must  match  up  with  the 
vital  features  of  the  invention,  else  it  fails. 

Anticipation  by  a  mere  paper  patent  is  a  subject  upon  which  the 
circuit  courts  of  appeals  are  not  in  perfect  accord.  A  reading  of  the 
cases  under  §§  92-99  will  show  the  different  leanings.  Neces- 
sarily, a  clear  showing,  whether  the  patent  be  paper  or  otherwise, 
must  be  anticipation;  but  when  the  paper  patent  must  be  con- 
strued, explained,  and  made  to  fit  the  case,  it  clearly  has  not  the 
same  weight  as  a  patent  which  has  gone  into  use  and  demonstrated 
its  practical  utility.  And  this,  too,  is  as  it  should  be;  for  when  we 
must  rest  anticipation  partly  upon  a  prior  patent  and  partly  upon 
the  construction  we  must  place  upon  it,  we  have  the  right  to  insist 
that  our  construction  shall  rest  upon  a  substantial  thing,  and  not 
upon  something  that  has  a  doubtful  standing  in  the  realm  of  realities. 

A  process  patent  can  be  anticipated  only  by  a  similar  process. 
A  mechanical  process  cannot  be  anticipated  by  a  chemical  process, 
and  vice  versa. 

As  a  single  use  for  more  than  two  years  is  an  absolute  bar  to  a 
patent,  so  a  single  prior  use  is  sufficient  to  anticipate.     Neither 


BRIEF    SURVEY  11 

number  of  uses  nor  number  of  persons  knowing  to  such  use  matters. 
A  single  use  by  a  single  person,  if  duly  proved,  anticipates.  But 
a  mere  accidental  use,  or  the  fact  that  the  prior  device  might, 
in  the  light  of  the  patent  in  suit,  have  been  put  to  the  use  in  question 
is  not  anticipation. 

Finally,  the  question  of  a  doubtful  anticipation  may  be  resolved, 
in  many  cases,  from  surrounding  circumstances.  A  well  organized 
showing  of  anticipation  may  be  so  utterly  repugnant  to  ordinary 
human  conduct  and  condition  as  to  discredit  itself.  On  the  other 
hand,  while  it  may  be  impossible  to  find  absolute,  item  for  item 
anticipation  in  the  prior  art,  it  may  be  so  evident  that  the  inventor 
was  nothing  more  than  a  borrower  from  prior  or  analogous  arts 
that  his  invention  merits  scant  respect.  Generally  speaking,  an- 
ticipation is  a  problem  demanding  a  careful  analysis  of  the  subject- 
matter,  a  careful  balancing  of  the  proofs  adduced,  and  the  exercise 
of  a  sound  common  sense  which  recognizes  the  human  element  and 
the   personal  equation. 

APPEALS,  §§  109-144. 

Only  such  matters  relating  to  appeals  are  considered  in  this 
work  as  relate  particularly  to  patent  causes.  There  are  excellent 
general  works  on  the  subject,  and  anything  more  than  a  very 
brief  review  of  the  rules  peculiar  to  patents  would  be  out  of  place. 

Appeals  from  orders  granting  injunctions  are  so  intimately 
connected  with  the  subject  of  injunctions  that  they  are  preferably 
there  considered.     (§§  535-545). 

While  the  Circuit  Court  of  Appeals  Act  cut  off  appeal  to  the 
Supreme  Court  in  patent  causes,  a  question  of  jurisdiction  is  appeal- 
able thereto. 

Assignments  of  error  are  too  often  based  upon  the  opinion  of 
the  court.  This  is  bad  practice.  The  assignments  should  be  directed 
to  that  which  the  court  decreed  or  refused  to  decree  as  raised  by 
the  pleadings.  A  general  assignment  would  seem  to  be  good;  and 
the  appellate  court  may,  of  its  own  motion,  raise  a  question  not 
assigned,  when  an  error  by  the  court  below  is  evident.  The  assign- 
ments should  raise  the  issues  on  appeal  in  an  orderly  manner  and 
without  prolixity;  and  the  brief  and  argument  should  be  directed 
thereto.  Where  an  appellant  sets  forth  a  number  of  assignments 
and  fails  to  refer  in  any  manner,  either  in  his  brief  or  upon  the 
argument,  to  certain  of  his  counts,  such  counts  will  be  assumed  to 
have  been  abandoned.  When  a  multitude  of  unnecessary  assign- 
ments is  made,  the  court  will  not  consider  them  seriatim. 

Certification  to  the  Supreme  Court  must  be  upon  a  definite, 


12  THE    FIXED    LAW    OF    PATENTS 

stated  proposition  of  law  upon  which  the  court  specifically  asks 
instruction.  Questions  of  fact,  or  the  bare  question  of  infringement 
—  whether  regarded  as  a  question  of  law  or  of  fact  —  will  not  be 
considered. 

A  cross-appeal  from  a  decree  holding  certain  claims  valid  and 
infringed  and  certain  other  claims  void  or  not  infringed  cannot  be 
filed  by  the  complainant  until  final  hearing. 

Appeals  in  law  actions  are  strictly  limited  to  a  review  of  ques- 
tions of  law  raised  by  exceptions  regularly  taken.  Questions  of 
fact  will  not  be  considered;  and  this  holds  when  a  jury  has  been 
waived. 

For  reasons  which  will  be  evident  to  one  who  examines  the  law 
upon  interlocutory  and  final  decrees,  the  author  undertakes  to 
establish  no  fixed  line  of  demarkation  between  them. 

ARBITRATION,  §  145. 

There  is  no  statutory  provision  for  trial  by  arbitration,  and 
but  one  ruling  of  the  appellate  courts  strictly  relating  thereto. 
It  would  seem  that,  as  parties  are  generally  bound  by  stipulations  of 
counsel  and  as  a  stipulated  record  on  appeal  is  good,  a  stipulation, 
regularly  made  upon  the  record,  to  try  out  an  infringement  cause 
before  an  arbitrator  should  give  his  decision  substantially  the  same 
force  and  effect  as  that  of  a  judge  sitting  in  circuit. 

ART,  §§  146-148. 

As  stated  in  §  147,  the  term  "  art  "  has  had  a  beneficent  use 
in  the  patent  law.  Nothing  is  to  be  added  to  what  is  said  under 
that  section  except  to  raise  the  following  question:  If  the  Supreme 
Court  held  Bell's  telephone  invention  to  be  an  "  art  "  and  capable 
of  the  broad  construction  given  it  (Telephone  Cases,  126  U.  S.  1, 
§  148),  why  should  that  court  hold  Westinghouse's  air-brake 
invention  not  to  be  an  "  art  "  and  patentable  only  as  a  mechanical 
improvement?    (Westinghouse  v.  Boyden,  170  U.  S.  537,  §  686). 

ASSIGNMENT,  §§  149-176. 

The  patent  is  an  entirety  and  can  be  subdivided  only  as  authorized 
by  law.  Joint  owners  are,  unless  the  assignment  specifically  pro- 
vides to  the  contrary,  tenants  in  common.  The  owner  of  the 
smallest  fractional  part  holds,  so  far  as  the  enjoyment  of  the 
monopoly  is  concerned,  as  much  as  the  holder  of  all  the  rest.  No 
accounting  can  be  had  between  common  tenants.  A  patent  cannot 
be  divided  by  claims.     A  title  interest  in  a  patent  is  either,— 


BRIEF   SURVEY  13 

1.  The  whole  patent, 

2.  An  undivided  share  of  that  exclusive  right,  or, 

3.  An    exclusive    territorial    right. 

The  first  and  third  holders  may  sue  alone.  The  second  must 
join  co-owners.  Anything  short  of  these  three  is  a  mere  license. 
Waterman  v.  Mackenzie,  138  U.  S.  252,  §  150. 

An  invention  is  assignable  either  before  or  after  patent.  An 
assignment  of  an  application  is  recordable  in  the  Patent  Office, 
but  an  assignment  of  future  inventions  is  not.  An  assignment 
may  contain  conditions  and  reservations;  and,  when  recorded, 
such  conditions  and  reservations  are  notice  to  a  subsequent  pur- 
chaser either  when  set  out  in  the  assignment  or  referred  to  as 
contained  in  another  and  unrecorded  writing.  An  action  to  compel 
assignment  will  lie,  and  an  interest  in  a  patent  may  be  reached  by 
a  creditor's  bill.  Under  Sec.  5046  a  trustee  in  bankruptcy  acquires 
title  to  a  patent  interest.  A  copartnership  or  corporation  may  hold 
title  to  a  patent;  but  the  assignment  of  an  interest  merely  for  the 
benefit  of  the  copartnership  terminates  with  the  copartnership. 
An  assignment  by  a  corporation  need  not  be  under  seal. 

The  evidential  value  of  a  recorded  assignment  underwent  a 
severe  shock  in  the  decision  of  Mayor  v.  American,  60  Fed.  1016, 
(§  158).  The  Second  Circuit  therein  reversed  the  rule  in  Brooks 
v.  Jenkins,  3  McLean,  432,  which  was  established  in  1844,  and  which 
had  been  generally  followed  as  establishing  an  assignment  as 
primary  evidence  and  prima  facie  proof  of  the  execution  and 
genuineness  of  the  original  document.  In  Standard  v.  Crane,  76 
Fed.  767  (§  158)  the  Seventh  Circuit  disapproved  the  holding  of 
the  Second  Circuit  and  reaffirmed  the  rule  of  Brooks  v.  Jenkins. 
The  amendment  of  Mar.  3,  1897,  to  Sec.  4898  appears  to  have  met 
this  situation  of  conflict;  at  least  it  shifts  the  burden  to  the  party 
questioning  the  validity  of  an  assignment  duly  verified  as  therein 
provided. 

A  bare  license  is  unassignable,  and  does  not  pass  to  legal  repre- 
sentatives. A  license  may  be  parol  or  may  arise  by  implica- 
tion. 

A  territorial  right,  unless  specifically  restricted,  gives  the  owner 
the  right  to  sell  the  product  made  under  the  patent  outside  the 
territory  to  which  his  manufacture  is  restricted. 

As  to  notice,  the  recording  of  an  assignment  has  the  effect,  in 
most  cases,  intended  by  Congress;  but  a  full  reading  of  Waterman 
v.  Mackenzie,  138  U.  S.  252;  Waterman  v.  Shipman,  55  Fed.  982; 
and  National  v.  New  Columbus,  129  Fed.  114,  are  commended  to 
put  one  on  his  guard. 


14  THE    FIXED    LAW   OF    PATENTS 

ATTORNEYS,  §§  177-181. 

Possibly  quite  enough  has  been  said  on  this  subject  under  §  140. 
The  applicant  is  bound  by  the  acts  and  omissions  of  his  solicitor; 
and  while  he  is  not  bound  by  his  arguments,  he  is  prejudiced 
thereby  if  they  partake  of  the  nature  of  admissions.  Most  of  us 
have,  at  some  time,  had  the  disagreeable  duty  of  informing  a  client 
that  he  has  no  claim  which  would  enable  him  to  prosecute  an  in- 
fringement of  the  invention  he  had  actually  made  and  which  he 
supposed  was  protected  by  the  claims  of  his  patent. 

BANKRUPTCY,  §§  182-3. 

There  have  been  no  appellate  holdings  under  the  present  bank- 
rupt act,  and  no  discussion  of  the  rulings  upon  the  former  act  is 
necessary. 

CLAIMS,  §§  184-248. 

The  claim  marks  the  boundary  of  the  close  of  the  patent.  It 
not  only  marks  the  line  between  the  new  and  the  old,  but  it  marks 
the  advance  as  well.  Not  only  must  the  claim  indicate  where  the 
progress  begins,  but  it  must  disclose  the  limit  of  the  advance 
made,  else  the  patentee  might  close  the  door  to  future  progress. 
Duff  v.  Forgie,  59  Fed.  772,  §  204. 

It  is  about  the  claim  that  the  conflict  centers,  from  its  filing  in 
the  Patent  Office  to  the  final  decree  of  the  appellate  court.  This 
is  necessarily  so  because  the  claim,  though  it  may  be  likened  to 
the  description  in  a  deed  which  marks  the  bounds  of  a  parcel  of 
land,  deals  not  with  a  tangible  thing,  but  with  an  idea  of  means  — 
a  mental  product.  The  inexactness  of  mind  and  language  always 
leaves  the  claim  what  it  is  • —  merely  an  approximation,  more  or 
less  remote,  to  an  exact  disclosure  of  what  a  certain  mind  has 
accomplished. 

It  is  a  reasonable  rule  of  construction  that  the  claim  should  be 
as  broad  as  the  invention.  Wagner  v.  Wycoff,  151  Fed.  585,  §  222. 
But  it  does  not  follow  in  the  least  that,  when  the  claim  is  clear, 
unmistakable  and  definitive  of  something  less  than  the  description 
and  drawings  show,  it  can  be  expanded  to  become  co-extensive 
therewith.  It  is  only  when  the  claim  clearly  indicates  such  an 
intended  construction  and  intent  on  the  part  of  the  patentee, 
together  with  clear  proof  of  the  generic  importance  of  the  invention, 
that  the  courts  are  in  the  least  disposed  to  vary  the  rule  that  the 
claim  may  be  restricted,  but  not  broadened,  by  reference  to  the 
description. 

While  it  is  a  general  rule  that  greater  liberality  of  construction 


BRIEF   SURVEY  15 

is  applied  to  a  generic  claim  than  to  an  improvement  claim  (§  197), 
there  are  exceptions.  There  are  those  improvements  which  are 
in  a  very  proper  sense  generic,  improvements  which,  in  the  long 
line  of  attempts,  cancel  prior  failures  and  accomplish  a  long-sought 
end.  An  invention  may  be  broad  and  generic  —  advancing  a 
broad  forefront;  or  it  may  be  narrow  and  yet  generic  —  going  far 
but  not  wide  in  the  art.  Bell's  discovery  was  broad  and  generic; 
but  it  was  the  improved  transmitter  which  made  long  distance 
telephony  possible. 

A  claim  may  be  limited  by  the  active  or  passive  act  of  the 
applicant.  He  may  fail  to  claim,  or  he  may  —  perhaps  even  in 
his  attempt  to  claim  broadly  —  employ  terms  of  limitation.  (§  229). 
It  is  a  common  error  to  suppose  that  the  use  of  such  expressions 
as  "  means  "  for  doing  this  or  that  broadens  the  claim.  Such  is 
not  the  case;  for  we  must  first  translate  the  "  means  "  into  the 
specific  element  or  combination  disclosed  in  the  specification  or 
drawing,  and  then,  and  then  only,  if  it  be  permissible,  apply  the 
doctrine  of  equivalents.  But  by  far  the  most  common  form  of 
limitation  is  by  amendment  of  .the  claim.  Limitations  imposed 
by  the  Patent  Office  and  submitted  to  by  the  applicant,  broadly 
speaking,  are  conclusive.  (§  207).  But  it  must  not  be  assumed 
that  all  amendments  are  limitations.  (§  208).  An  amendment 
may  define  or  specify  the  more  clearly  and  yet  not  limit.  More 
than  this,  an  amendment  may  broaden  the  claim;  and  an  amend- 
ment may  so  broaden  the  claim  as  to  have  much  the  same  effect 
as  broadening  the  claim  by  reissue.     (§  199). 

The  claim  must  be  construed  in  view  of  the  prior  art.  (§  224), 
and  it  is  chiefly  this  factor  which  determines  the  spirit  in  which 
the  rules  of  construction  shall  be  applied.  And  the  construction 
of  the  claim  in  the  light  of  the  description  and  drawings  and  of 
the  prior  art  has  been  a  source  of  great  confusion,  notwithstanding 
the  repeated  plain  statements  of  the  courts.  As  the  Supreme 
Court  has  said,  "  some  persons  seem  to  suppose  that  a  claim  in 
a  patent  is  like  a  nose  of  wax  which  may  be  turned  and  twisted 
in  any  direction,  by  merely  referring  to  the  specification  so  as  to 
make  it  include  something  more  than  or  something  different  from, 
what  its  words  express."  White  v.  Dunbar,  119  U.  S.  47,  §  223. 
Now  the  reason  for  this  confusion  lies,  apparently,  in  our  failure 
to  perceive  that,  while  the  claim  may  not  be  twisted  like  a  wax 
nose,  the  rules  for  construction  of  the  claim  may  be.  When  the 
court  has  made  up  its  mind,  in  view  of  the  disclosure  of  the  patent 
and  the  prior  art,  that  a  claim  should  be  sustained  —  when  the 
court  has  applied  judicial  acumen  and  common  sense  to  the  problem 


16  THE    FIXED   LAW   OF   PATENTS 

—  it  has  little  difficulty  in  making  the  rules  of  construction  soften 
and  yield.  And  when,  in  like  manner,  it  is  evident  that  the  claim 
should  be  defeated,  the  "  nose  of  wax  "  character  of  the  rules 
readily  adapts  itself  to  the  occasion.  And  it  is  not  in  the  wise 
bending  of  these  rules  that  injustice  is  done;  but  rather,  in  those 
rare  cases  where  the  court  has  forgotten,  for  the  moment,  the 
paramountcy  of  its  own  promptings  and  followed  a  hard-and-fast 
rule  of  construction. 

Reading  in  elements,  when  such  course  does  not  broaden  the 
claim  or  serve  to  save  it  from  palpable  invalidity,  may  be  justi- 
fiable, although  the  general  rule  is  to  the  contrary.  (§  220).  Omit- 
ting elements  to  broaden  a  claim  is  never  justifiable,  (§  218); 
except  in  the  case  of  a  generic  claim,  and  then  only  when  such 
course  does  no  violence  to  the  plain  disclosure  of  the  patent  and 
omits  no  element  definitely  specified  by  the  patentee  as  marking 
one  of  the  limits  of  his  invention. 

A  condition  frequently  encountered  is  that  where,  if  the  claim 
be  given  the  construction  and  scope  to  establish  infringement, 
it  must  be  held  void  for  anticipation  (§  216);  and  the  tendency 
is  generally  to  apply  the  "  valeat  quam  pereat  "  rule  (§  228)  to 
save  the  patent  by  finding  non-infringement.  Here  it  is  believed 
the  duty  of  the  court  should  be  to  thus  apply  the  rule  where  the 
patent  discloses  substantial  utility ;  but  to  refuse  to  apply  that 
rule  when  the  patent  is  indubitably  trivial,  and  thus  protect  the 
public  against  an  apparent  but  unwarranted  monopoly. 

A  discussion  of  this  title  might  be  extended  almost  indefinitely. 
It  might  be  carried  into  the  domain  of  equivalency,  infringement 
and  invention.  It  is  enough  to  conclude  by  referring  to  the  opinion 
in  Reece  v.  Globe,  61  Fed.  958,  quoted  in  extenso  under  §  222, 
as  clearer  and  more  comprehensive  than  anything  that  could  be 
written  here. 

COMITY,  §§250-257. 

As  stated  by  the  Supreme  Court,  "  comity  is  not  a  rule  of  lawr 
but  one  of  practice,  convenience,  and  expediency."  (§  250). 
This  subject  has  already  received  attention  under'the  title  adjudi- 
cation. 

Between  circuit  and  circuit  the  rule  may  well  obtain,  when  the 
patent  and  proofs  are  the  same.  Naturally  a  circuit  court  of 
appeals  is  in  no  sense  called  upon  to  follow  the  decision  of  a  judge 
sitting  in  circuit  on  the  ground  of  comity.  Between  circuit  courts 
of  appeals,  if  any  conclusion  may  be  drawn,  it  is  that  stated  in 
Imperial  v.  Crown,  139  Fed.  312,  §  253,  that  an  appellate  court, 


BRIEF   SURVEY  17 

in  justice  to  the  parties,  will  make  an  independent  examination 
of  the  case,  and  will,  if  it  can  without  violence  to  its  own  judgment, 
follow  the  decision  of  another  appellate  tribunal  of  like  jurisdiction. 
But  if  the  court  finds  a  substantial  ground  of  difference  of  opinion, 
it  will  not  hesitate  to  disregard  the  question  of  comity.  The 
Supreme  Court,  never  controlled  by  the  decision  of  another  tri- 
bunal, will,  however,  accord  due  weight  to  the  decisions  of  courts 
of  appeals.  In  general,  the  gravity  of  comity  increases  with  the 
number  and  concordance  of  prior  holdings.     (§  256). 

COMMISSIONER  OF  PATENTS,  §  258. 

The  acts  of  the  Commissioner  of  Patents  are  presumably  right, 
but  they  are  never  conclusive  (except  where  some  form  of  estoppel 
makes  them  so  as  between  the  parties)  as  to  a  question  of  novelty, 
utility,  or  prior  use,  (§  261).  It  is  not  within  his  power  to  recall 
a  patent  grant  once  issued.  McCormick  v.  Aultman,  169  U.  S. 
606,  §  26.  Nor  can  he  limit  the  scope  of  a  patent  by  formulating 
an  interference  claim.    Reed  v.  Smith,  123  Fed.  878,  §  208. 

COMPOSITION  OF  MATTER,  §§  264-6. 

Both  a  composition  of  matter  and  an  article  of  manufacture 
are  specified  as  patentable  subject-matter  in  Sec.  4886;  and  there 
is  a  distinct  difference  between  the  two.  In  the  one,  the  patentable 
quality  resides  in  the  novel  combination  of  ingredients;  in  the 
other,  the  novelty  of  the  article  itself.  The  validity  of  a  patent 
upon  a  composition  of  matter  depends  upon  the  disclosure  of  the 
elements  in  novel  combination  (§  266),  while  the  article  of  manu- 
facture depends  upon  the  inherent  characteristics  of  the  article 
itself.     (§  775). 

Nothing  need  be  added  to  what  is  said  in  §§  267-8. 

CONTEMPT,  §  269. 

This  subject  is  considered  under  §§  536,  577. 

COPARTNERSHIP,  §  270. 

As  has  been  seen,  (§  155),  an  assignment  to  a  copartnership 
for  the  use  of  the  copartnership  terminates  therewith.  A  copartner 
holding  no  interest  in  the  patent  cannot  sue  for  infringement.  The 
question  of  acquisition  of  an  equitable  interest  in  a  patent  used 
in  the  firm  business  is  one  which  can  be  determined  only  in  the 
light  of  the  articles  of  agreement  between  the  parties  and  the 
conditions  of  acquisition  and  use  of  the  patent  itself. 


18  THE    FIXED    LAW   OF    PATENTS 

CORPORATIONS,  §  271. 

Matters  relating  to  infringement  and  injunction  as  affecting 
corporations  are  considered  under  §§  479-82  and  547.  For  matters 
of  assignment  see  §  156.  Dissolution  and  merger  of  a  corporation 
pending  suit  does  not  work  abatement.  (§21).  A  license  arising 
by  implication  is  unassignable  and  expires  with  the  corporation. 

COSTS,  §§  272-277. 

While  the  patent  statute  specifically  provides  for  the  recovery 
of  costs,  the  courts  follow  the  general  rules  of  practice  in  apportion- 
ment and  taxation.  A  mere  question  of  costs  cannot  be  made 
the  subject  of  appeal. 

The  provisions  as  to  disclaimer  in  Sees.  973  and  4922,  R.  S. 
apply  not  only  to  cases  strictly  within  the  rule,  but  the  courts  in 
their  discretion  have  extended  the  rule  to  the  point  where,  if  on 
appeal  a  complainant  succeeds  in  part  and  part  of  the  claims 
sued  on  are  held  void  for  want  of  novelty,  costs  will  be  divided. 
In  like  manner,  if  a  complainant  refuses  to  declare  the  claims 
alleged  to  be  infringed  and  on  appeal  abandons  all  but  certain  of 
such  claims,  he  will  not  recover  costs.  (§  277).  But  where  suit 
is  brought  for  infringement  of  a  process  and  the  machine  for  carry- 
ing out  the  process,  and  the  process  patent  is  held  good,  but  the 
machine  patent  bad,  costs  will  not  be  denied.  (§  277).  When  a 
defendant  escapes  on  an  issue  not  pleaded,  the  complainant  will 
recover  costs  below,  but  neither  party  will  recover  costs  of  appeal. 
(§  277).  Corporation  officers  improperly  joined  as  defendants  may 
recover  costs  in  both  courts. 

The  courts  are  very  properly  exercising  discretionary  powers 
in  denying  costs  in  cases  where  the  record  has  been  unduly  padded 
or  extended  by  the  party  otherwise  entitled  to  costs. 

DAMAGES,  §§  278-299. 

As  stated  in  §  279,  the  terms  "  damages  "  and  "  profits  "  are 
often  confused.  We  have  damages  in  equity  and  we  have  defend- 
ant's profits  as  a  measure  of  damages  in  actions  at  law.  Likewise 
there  is  confusion  between  the  rules  of  evidence  relating  to  damages 
and  rules  establishing  the  measure  of  damages. 

What  is  the  measure  of  damages?  The  Supreme  Court  tells 
us  that  "  there  cannot,  in  the  nature  of  things,  be  any  one  rule  of 
damages  which  will  equally  apply  to  all  cases.  The  mode  of 
ascertaining  actual  damages  must  necessarily  depend  upon  the 
peculiar  nature  of  the  monopoly  granted."  Seymour  v.  McCor- 
mick,  16  How.  480,  §  290.     Again,  "  the  profit  made  by  the  de- 


BRIEF    SURVEY  19 

fendant  and  that  lost  by  the  plaintiff  are  among  the  elements  which 
the  jury  may  consider."  Philip  v.  Nock,  84  U.  S.  460,  §  290. 
Again,  "  where  profits  are  the  proper  measure,  it  is  the  profits 
which  the  infringer  makes."  Burdell  v.  Denig,  92  U.  S.  716,  §  290. 
Again,  "  established  license  fees  are  the  best  measure  of  damages 
that  can  be  used."  Clark  v.  Wooster,  119  U.  S.  322,  §  292.  Again, 
"  evidence  of  an  established  royalty  will  undoubtedly  furnish  the 
true  measure  of  damages."  Birdsell  v.  Coolidge,  93  U.  S.  64,  §  294. 
Again,  "  the  verdict  of  the  jury  must  be  for  the  actual  damages 
sustained."  Birdsell  v.  Coolidge  again  under  §  285.  Should  we 
turn  to  the  subject  of  profits  (§§  837-842)  we  would  find  the  same 
seeming  confusion,  both  of  terms  and  of  what  constitutes  a  measure 
of  damages  or  standard  for  computing  profits.  But  these  quotations 
are  not  given  to  show  conflicting  rules,  but  to  impress  the  state- 
ment first  quoted  that  "  there  cannot,  in  the  nature  of  things,  be  any 
one  rule  of  damages  which  will  equally  apply  to  all  cases."  There 
are  cases  where  the  measure  is  the  defendant's  gains;  there  are 
cases  where  the  measure  is  the  plaintiff's  losses;  there  are  cases 
where  both  may  enter  in;  there  are  cases  where  a  license  fee  is 
the  criterion;  there  are  cases  where  an  established  royalty  is  the 
measure;  there  are  cases  where  the  measure  is  the  entire  profit 
of  a  defendant's  business;  there  are  cases  where  it  is  only  a  small 
fraction  of  that  profit;  there  are  cases  where  the  full  damages 
are  but  nominal;  and  there  are  cases  where  the  damages  are 
substantial,  but  absolutely  impossible  of  computation  under  any 
existing  rule.  It  would  be  a  person  of  great  hardihood  and  small 
experience  who  would  undertake  to  formulate  a  universal,  fixed, 
invariable  rule  of  damages. 

Actual  damages  must  be  actually  proved  and  not  left  to  specula- 
tion (§§  280,  295).  While  there  are  two  or  three  cases  which  would 
seem  to  imply  that  some  discretion  and  latitude  might  be  left  to 
the  jury,  these  have  not  been  generally  followed.  It  may  not  be 
that  the  evidence  must  put  an  exact  multiplicand  and  multiplier 
into  the  hands  of  the  jury;  but  it  certainly  must  be  that  the  evi- 
dence shall  enable  the  jury  to  determine,  without  guesswork  or 
speculation,  these  two  factors.  Rude  v.  Westcott,  130  U.  S.  152, 
§  295.  Where  damages  are  to  be  recovered  in  equity  it  would  seem 
that  greater  latitude  of  proof  might  be  admissible  before  a  master. 
Mast  v.  Superior,  154  Fed.  45,  §  286.  But  that  case  also  teaches 
that  even  the  court  may  not  disregard  the  canons  and  arbitrarily 
determine  the  damages. 

Increasing  the  damages  under  the  statute  is  a  discretionary 
power  of  the  court,  and  will  not  ordinarily  be  disturbed  on  appeal. 


20 


THE    FIXED    LAW    OF    PATENTS 


The  grounds  for  the  exercise  of  that  power  are  the  conduct  of  the 
defendant  —  wilful  or  improvident.  There  is  no  appellate  rule 
justifying  an  increase  of  damages  on  the  ground  of  inadequacy  of 
reward  under  the  proofs  in  the  absence  of  a  contributing  act  of  the 
defendant. 

Damages  become  liquidated  only  upon  the  day  of  the  verdict 
or  the  coming  in  of  the  master's  report.  It  follows  that  interest 
can  be  added  only  from  that  day. 

The  difference  between  damages  at  law  and  in  equity  is  stated 
in  Coupe  v.  Royer,  155  U.  S.  565,  §  285.  And  since  a  court  of 
equity  will  not  assume  jurisdiction  solely  for  the  assessment  of 
damages  or  ascertainment  of  profits  (§371),  it  would  seem,  in 
view  of  Brown  v.  Lanyon,  148  Fed.  838,  §  285,  that  the  statement 
above  made  that  cases  may  arise  where  damages  are  evident  but 
unmeasurable  under  the  rules  is  justified. 

It  is  evident  that  where  an  established  license  or  royalty  measure 
exists  damages  may  be  ascertained;  but  in  cases  where  no  such 
measure  exists  resort  must  be  had  to 

1.  Plaintiff's  actual  damages  in  terms  of, 

a.  Losses  of  sales  which  he  would  otherwise  have  made, 

b.  Losses  by  reduction  of  prices  due  directly  to  the  unlawful 

competition,  or, 

2.  Gains  of  defendant  measured  in  terms  of, 

a.  Gains  directly  traceable  to  the  infringement,  or, 

b.  Savings  made  by  the  use  of  the  infringing  subject-matter 

over  what  he  might  have  saved  by  the  use  of  other  means 
open  to  his  use  outside  the  realm  of  patent  protection,  or, 

3.  Possibly  a  combination  of  some  of  these  conditions. 

In  each  of  these  cases  the  evidence  must  reach  home  without 
question.  If  loss  of  sales,  it  must  be  certain  that  they  would  have 
come  to  the  plaintiff  and  no  one  else  but  for  the  diversion  by  the 
defendant.  If  reduction  of  price,  it  must  appear  that  the  infringe- 
ment was  the  proximate  and  sole  cause.  If  gains,  they  must  stand 
separated  from  other  contributing  factors.  If  savings,  the  com- 
parison between  the  economy  of  the  invention  of  the  patent  and 
common  and  free  means  must  be  free  from  all  speculation  or 
estimation. 

Mitigations  and  deductions  are  to  be  made  with  the  same  exacti- 
tude as  the  proofs  of  damages.  They  need  not  be  catalogued  here; 
but  if  the  same  general  principles  are  applied  that  are  well  known 
in  the  business  world  in  charging  the  account  of  a  department 
with  proper  items  of  costs  and  expenses,  proper  deductions  may 
be  ascertained. 


BRIEF   SURVEY  21 

In  the  proofs,  the  burden  is  upon  the  plaintiff  or  complainant 
except  as  to  deductions  and  mitigations.  The  main  features  have 
been  indicated.  We  now  come  to  the  subject  of  segregation.  The 
rule  of  Garretson  v.  Clark,  111  U.  S.  120,  as  reduced  to  its  final  terms 
in  Westinghouse  v.  N.  Y.,  140  Fed.  545,  §  845,  is  this: 

1.  If  damages  are  sought  on  only  a  part  of  the  machine  or  device, 
"  the  patentee  must  in  every  case  give  evidence  tending  to  separate 
or  apportion  the  defendant's  profits  and  the  patentee's  damages 
between  the  patented  features  and  the  unpatented  features,  and 
such  evidence  must  be  reliable  and  tangible,  and  not  conjectural 
or  speculative." 

2.  If  damages  are  sought  on  the  whole  machine,  "  he  must 
show  by  equally  reliable  and  satisfactory  evidence  that  the  profits 
and  damages  are  to  be  calculated  on  the  whole  machine,  for  the 
reason  that  the  entire  value  of  the  whole  machine  as  a  marketable 
article  is  properly  and  legally  attributable  to  the  patented  feature." 

Taking  this  rule  as  construed  in  the  Westinghouse  case,  we  have, 
as  a  practical  consequence,  — 

1.  That  small  number  of  cases  where  the  profits  may  be  entirely 
and  unerringly  attributed  to  the  infringement,  and  to  nothing 
else. 

2.  That  small  number  of  cases  where  perfect  segregation  is 
possible. 

3.  The  great  majority  of  cases  where  the  profit  is  clearly  due  in 
part,  and  in  part  only,  to  the  patented  subject-matter,  and  where 
segregation  is  an  utter  impossibility. 

DEFENSES,  §§306-322. 

Since  the  statute  makes  distinct  and  separate  provision  for 
defenses  in  patent  causes,  the  subject  is  treated  separately  from 
pleading  and  practice.  The  subject  of  notice  under  the  statute 
is,  however,  included  with  pleading  under  §  795. 

The  five  defenses  which  the  statute  provides  and  which  may 
be  pleaded  with  the  proper  notice,  are  all  affirmative  defenses 
which  attack  the  patent  as  an  entirety,  and  which,  if  proved, 
render  the  patent  to  all  intents  and  purposes  void  and  of  no  effect 
so  far  as  the  claims  sued  on  are  concerned  in  the  circuit  in  which 
such  verdict  or  decree  is  made  final  on  appeal.  It  is  not  a  repeal 
of  the  grant,  nor  can  the  grant  be  cancelled  in  a  collateral  proceed- 
ing under  any  circumstances;  but  when  a  patent  has  been  held 
void  as  to  all  of  its  claims  by  an  appellate  court  on  any  one  of  the 
statutory  grounds  that  may  be  pleaded,  the  grant,  for  that  juris- 
diction at  least,  is  silenced.    And  since  the  establishment  of  any  one 


22  THE    FIXED    LAW    OF    PATENTS 

of  these  five  defenses  is  so  far-reaching,  it  follows  that  the  pleading 
and  proofs  must  have  that  inerrancy  which  is  necessary  to  warrant 
a  court  in  declaring  null  and  void  that  which  has  been  done  by  a 
department  of  the  Government  in  the  performance  of  the  duty 
to  it  charged  by  law. 

Since  defenses  are  essentially  a  part  of  the  subject  of  pleading 
and  practice  so  ably  treated -by  the  text-books,  the  following  brief 
comment  on  the  few  general  defenses  which  have  been  passed  upon 
by  the  appellate  courts  is  sufficient. 

Those  defenses  which  attack  the  grant  —  such  as  unwarranted 
acts  of  the  Commissioner,  defective  grant  or  specification,  invalidity 
of  reissue  and  non-patentability  —  must  be  pleaded  with  the  same 
certainty,  and  where  necessary  to  enable  the  plaintiff  or  com- 
plainant to  meet  the  special  matters  alleged  as  best  he  may,  with 
like  notice  as  a  defense  under  the  statute.  Defenses  of  license  or 
res  judicata  may  be  raised  by  plea  or  answer.  The  defense  of  non- 
infringement is  by  way  of  excuse;  but  when  the  defendant  raises 
this  defense  and  attempts  to  justify  his  acts  under"  a  subsequent 
patent,  he  is  on  thin  ice.  Buser  v.  Novelty,  151  Fed.  478,  §  312. 
The  defense  of  non-utility,  in  like  manner,  is  beset  with  danger; 
for  one  may  not  justify  an  act  in  one  breath  and  deny  its  commis- 
sion in  the  next. 

DEMURRER,  §§  323-327. 

A  demurrer  which  attacks  the  validity  of  a  patent  on  its  face 
is  a  proper  pleading  where  the  invalidity  of  the  patent  is  evident. 
But  such  a  demurrer  will  be  sustained  only  when  it  is  clear  that  no 
evidence  could  be  adduced  which  could  possibly  overcome  the  fatal 
defects  visible  to  the  naked  eye.  It  is  to  be  noted,  however,  that 
there  is  a  tendency  to  extend  the  range  of  judicial  notice  in  deciding 
upon  a  demurrer  of  this  character.  It  is  believed  that  this  tendency, 
while  it  has  the  merit  of  hastening  determination  and  saving 
expense  of  litigation,  is  one  fraught  with  danger.  Knowledge 
is  never  exact;  memory  is  treacherous;  and  often  we  discover  a 
supposition  upon  which  we  have  traveled  half  a  lifetime  to  be 
founded  in  error.  It  is  only  when  this  judicial  prerogative  concerns 
itself  with  the  plainest  of  propositions  that  it  is  within  the  limits 
set  by  experience. 

Demurrers  rested  upon  other  grounds  are  questions  of  ordinary 
pleading. 

DESIGNS,  §§328-337. 

Between  the  opinion  in  Gorham  v.  White,  81  U.  S.  511,  and 
that  in  Smith  v.  Whitman,  148  U.  S.  674  —  the  latter  modifying 


BRIEF   SURVEY  23 

the  former  —  we  may  approach  the  essential  characteristics  of 
a  patentable  design.  It  is  clear  that  the  foundation  of  a  patentable 
design  must  be  something  more  than  mere  mechanical  skill,  some- 
thing more  than  artistic  arrangement.  It  must  be  a  distinct 
product  of  the  brain,  as  much  as  the  invention  of  a  machine,  though 
not  from  the  same  corner  of  the  brain.  It  has  been  said  that  the 
test  of  infringement  is  whether  the  design  in  question  would,  to 
the  eye  of  the  ordinary  observer,  appear  to  be  the  same  as  the 
design  of  the  patent.  Such  a  rule  is  proper  in  the  case  of  a  trade- 
mark; but  it  is  referred  to  here  as  showing  how  the  courts  have, 
at  times,  wholly  missed  the  mark  in  the  consideration  of  the  essen- 
tials of  a  true  design.  A  true  design  appeals  to  something  more 
than  the  eye  in  the  ordinary  sense  of  that  term.  It  appeals  through 
the  eye  to  the  artistic  consciousness  —  not  by  any  particular 
feature,  contour  or  configuration,  or  even  a  collocation  of  elements, 
as  in  the  case  of  a  trademark  —  and  awakens  a  response  in  the 
mind  of  the  person  possessed  of  a  sense  of  art.  If  it  falls  short  of 
this,  if  to  the  person  with  this  sense  it  is  merely  peculiar  or  orna- 
mental, it  is  not  the  creation  by  one  mind  of  that  which  awakens 
a  response  in  the  mind  of  another,  which  constitutes  true  design 
invention.  It  follows,  necessarily,  that  so-called  "  mechanical  " 
designs  are  not  patentable,  and  that  one  may  not  reinforce  a  mere 
trademark  by  patenting  it  as  a  design. 

The  penalty  provision  of  the  amendment  of  Feb.  4,  1887,  is 
narrowly  limited  by  the  clause  "  knowing  that  the  same  has  been 
so  applied."  This  seemingly  limits  the  penalty  to  willful  manu- 
facturer or  copyist;  and  excuses  the  innocent  purchaser  or  dealer. 
Gimble  v.  Hogg,  97  Fed.  ?91,  §  336.  And  it  also  appears  from  the 
decision  in  that  case  that  the  notice  necessary  to  charge  a  person 
with  the  penalty  must  be  something  more  than  the  ordinary 
notice  of  marking  the  design  patented. 

DISCLAIMER,  §§339345. 

The  distinction  between  a  disclaimer  and  a  reissue  is,  broadly 
speaking,  that  the  one  limits  and  the  other  corrects.  The  object 
of  a  disclaimer  is  to  enable  a  patentee  who,  through  inadvertence, 
accident  or  mistake,  has  claimed  more  than  he  should,  to  avoid 
having  his  patent  fall  under  the  statutory  defenses.  We  need  not 
consider  the  effect  of  the  failure  to  disclaim  before  suit,  since  that 
question  has  arisen  under  the  title  of  costs.  (§  274).  It  is  evident 
that  the  patentee,  in  a  case  where  the  necessity  of  a  disclaimer  is 
not  evident  on  the  face  of  the  patent  in  view  of  the  prior  art, 
may  await  the  decision  of  an  appellate  tribunal.    Gage  v.  Herring, 


24  THE    FIXED    LAW   OF    PATENTS 

107  U.  S.  640,  and  Thompson  v.  Bushnell,  96  Fed.  238,  both  under 
§  340.  But  while  the  courts  give  the  patentee  the  benefit  of  every 
doubt  as  to  the  necessity  of  disclaiming,  they  look  with  little 
patience  upon  him  who  seeks  to  use  this  provision,  especially 
designed  for  his  protection,  as  a  means  for  broadening  or  extending 
the  scope  of  his  claim.     Hailes  v.  Albany,  123  U.  S.  582,  §  344. 

DISCOVERY,  §§  346-7. 

The  two  quotations  under  this  title  should  be  contrasted  with 
the  majority  opinion  in  Westinghouse  v.  Boyden,  170  U.  S.  537, 
§  686,  especially  the  following: 

"  For  such  discoveries  and  such  inventions  the  law  has  given 
the  discoverer  and  the  inventor  the  right  to  a  patent  as  a  discoverer 
for  the  useful  art,  process,  method  of  doing  a  thing  he  has  found, 
and  as  inventor  for  the  means  he  has  devised  to  make  his  discovery 
one  of  actual  value.  Other  inventors  may  compete  with  him  for 
ways  of  giving  effect  to  the  discovery,  but  the  new  art  he  has 
found  will  belong  to  him  and  those  claiming  under  him  during  the 
life  of  his  patent."  —  Telephone  Cases. 

"  To  say  that  the  patentee  of  a  pioneer  invention  for  a  new 
mechanism  is  entitled  to  every  mechanical  device  which  produces 
the  same  result  is  to  hold  in  other  language,  that  he  is  entitled  to 
a  patent  for  his  function."  —  Westinghouse  Case. 

While  these  statements  are,  theoretically,  perfectly  reconcilable, 
the  applications  made  in  these  two  cases  are  in  absolute  contradic- 
tion. Bell  did  not  patent  the  undulatory  theory  of  sound;  neither 
did  Westinghouse  patent  the  discovery  in  pneumatics  which  made 
his  invention  possible.  Both  patented  means  for  utilizing  their 
discoveries. 

This  is  not  the  first  time  the  writer  has  criticized  the  Westing- 
house decision,  nor  will  this  be  the  last;  for  while  he  is  not  and 
never  has  been  in  any  way  concerned  with  the  event  of  that  con- 
troversy, he  agrees  with  the  four  dissenting  Supreme  Court  justices 
and  many  of  our  ablest  patent  lawyers  in  regarding  it  as  contrary 
to  the  spirit  and  trend  of  other  decisions,  as  depriving  great 
genius  of  its  just  reward,  and  as  putting  a  premium  upon  that  sort 
of  thievery  that  comes  to  the  front  and  brazenly  makes  its  claim 
under  an  improvement  patent  nearly  every  time  a  great  inventor 
has  explored  far  and  added  a  large  domain  to  the  known  and  useful 
in  life. 

DIVISIONAL  PATENTING,  §§  348-355. 

The  underlying  principles  of  this  subject  came  up  for  considera- 
tion  and  statement   before   Judge   Taft   in   Thomson-Houston   v. 


BRIEF    SURVEY  25 

Ohio,  80  Fed.  712,  §  350.  Notwithstanding  the  fact  that,  in  another 
circuit,  another  brilliant  mind  has  differed  therefrom,  it  will  be 
assumed,  as  a  very  safe  position,  that  the  law  laid  down  by  Judge 
Taft  will  not  be  disturbed.  It  is  sufficient  to  refer  to  that  opinion 
for  all  that  it  covers,  and  conclude  with  a  remark  upon  one  point 
which  did  not  arise  in  that  case. 

There  are  cases,  like  some  of  those  under  §§  352  and  355,  where 
it  is  evident  that  the  aim  of  the  patentee  has  been  to  extend  or 
strengthen  his  monopoly  without  additional  or  further  invention. 
Now,  these  are  not  really  cases  of  divisional  patenting  at  all,  but 
attempts  at  justification  of  double  patenting  under  guise  of  divis- 
ional patenting.  The  moment  this  situation  is  perceived  it  is  easy 
to  apply  the  proper  rules  —  the  rules  of  double  patenting  — 
without  any  strain  upon  the  rules  of  divisional  patenting. 

DOUBLE  PATENTING,  §§356-361. 

A  deal  of  unnecessary  discussion  has  occurred  under  this  title. 
When  the  Supreme  Court  said  in  Suffolk  v.  Hayden,  70  U.  S.  315, 
that  if  two  patents  be  granted  for  the  same  invention  the  latter 
is  void,  there  was  nothing  more  to  say.  The  court  did  not  say  that 
the  rule  applied  only  to  patents  to  different  applicants  or  that  it 
did  not  apply  to  two  patents  to  the  same  applicant.  But  inasmuch 
as  it  was  not  clearly  understood  as  applying  to  cases  of  two  patents 
for  the  same  invention  to  the  same  applicant,  the  court  repeated 
and  specified  and  particularized  the  rule  in  James  v.  Campbell, 
104  U.  S.  356;  McCreary  v.  Penna.  143  U.  S.  459;  and  in  the 
Barbed  Wire  Case,  143  U.  S.  275,  (all  under  §  356)  until  it  would 
seem  that  so  simple,  self-evident,  and  so  unavoidable  a  rule  should 
have  percolated  down  through  the  intellects  of  our  profession. 
But,  alas,  it  has  not  so  done;  and  to  this  day  our  courts  are  obliged 
to  tell  us  the  old,  old  story  every  time  we  come  into  court  with  a 
patent  which  has  been  taken  out  to  strengthen  the  redoubt  of  a 
former  patent  to  the  same  inventor.  The  writer  speaks  feelingly 
and  from  experience  upon  this  subject. 

But  it  is  not  always  clear  which  of  two  patents  is  the  senior. 
It  has  been  held  that,  where  there  is  no  other  guide,  the  priority 
of  numbering  must  control.  Crown  v.  Standard,  136  Fed.  841, 
§  359.  But  in  Electric  v.  Brush,  52  Fed.  130,  §  361,  it  was  held  that 
the  complainant  might  elect  between  the  two.  It  would  seem  — 
although  it  has  not  been  so  held  —  that,  since  a  disclaimer  in  the 
earlier  patent  made  by  the  inventor  cannot  make  the  later  patent 
good,  by  parity  of  reasoning  of  two  patents  of  the  same  date  to  the 
same  inventor  the  Government  issuing  both  grants  should  be  barred 


26  THE    FIXED    LAW    OF    PATENTS 

from  disclaiming  the  grant  to  the  patentee  of  the  broader  of  the 
two  patents. 

DRAWINGS,  §§362-3. 

Only  one  remark  need  be  made  in  connection  with  the  appellate 
rulings  on  this  subject.  Not  only  is  it  unnecessary  that  the  drawings 
should  be  working  drawings,  but  it  is  not  even  necessary  that  they 
should  be  pictorial  of  the  apparatus  of  the  patent.  Drawings 
speak  a  universal  language.  The  American  engineer  reads  a 
Japanese  drawing  with  no  knowledge  of  the  language  or  even  the 
reference  characters  employed,  and  vice  versa.  Symbolism  has 
become  to  a  large  degree  universal  and  uniform,  especially  so  in 
electrical  engineering.  It  is  enough  if  the  drawing  contributes 
its  part  and  agrees  with  the  description  in  disclosing  the  invention 
to  one  skilled  in  the  art. 

EMPLOYER  AND  EMPLOYEE,  §§364-369. 

If  the  rule  of  Agawam  v.  Jordan,  74  U.  S.  583,  §  368,  that  persons 
employed,  as  much  as  employers,  are  entitled  to  their  own  inde- 
pendent inventions,  and  the  further  rule  of  the  same  case  quoted 
under  §  369,  that  suggestions  from  another,  made  during  the 
progress  of  experiments,  in  order  that  they  may  be  sufficient 
to  defeat  a  patent,  *  *  *  must  have  furnished  such  information 
to  whom  the  communication  was  made  that  it  would  have  enabled 
an  ordinary  mechanic,  without  the  exercise  of  any  ingenuity  and 
special  skill  on  his  part  to  construct  and  put  the  improvement 
in  successful  operation  —  if  these  rules  are  borne  in  mind,  the 
ground  is  cleared  materially.  The  right  to  patent  an  invention 
and  the  right  to  its  use  are  two  quite  separate  matters.  The 
suggestion  of  the  idea  of  means  —  the  conception  which  constitutes 
the  act  of  invention  —  may  originate  with  either  party;  and  with 
whichever  party  this  conception  originates,  provided  only  it  is  a 
completed  conception  requiring  only  ordinary  mechanical  skill 
to  put  it  in  terms  of  materials,  there  lies  the  right  to  patent.  At 
the  same  time  the  right  to  the  title  of  the  patent  may  have,  by 
agreement  or  in  consequence  of  the  inter-relation  of  the  parties, 
passed  entirely  to  the  other  party,  or  a  lesser  interest  may  have 
been  established. 

An  implied  license  arising  under  the  various  conditions  disclosed 
in  §  366  is  essential  to  industrial  progress.  If  the  rule  were  other- 
wise, if  on  the  one  hand  employees  could  control  the  monopoly 
of  the  improvements  occurring  in  the  regular  course  of  business, 
the  manufacturer  would  be  stopped  in  his  progress;  if,  on  the  other 


BRIEF    SURVEY  27 

hand,  all  rights  were  denied  employees,  much  of  the  impetus  of 
progress  would  be  lost.  The  question  of  an  implied  license  is 
further  considered  under  §  756,  and  the  general  rules  established 
by  the  circuit  courts  of  appeals  and  there  quoted  should  be  read. 
Generally  speaking,  a  shop  license  arising  out  of  employment 
relations,  is  personal  and  non-assignable;  but  such  right  may 
be  succeeded  to  by  a  corporate  successor  if  the  inventor  acquiesces 
therein.  Lane  v.  Locke,  150  U.  S.  193,  §  366.  It  is  clear  that  a 
contract  which  robs  an  employee  of  all  right  to  future  invention  is 
unconscionable  (§  365);  and  contracts  between  employer  and 
employee  are  not  divorced  from  the  governing  principles  of  equity. 

EQUITY,  §§370-372. 

Upon  this  subject  nothing  need  be  added,  except  to  refer  to 
the  specific  subjects  considered  under  §§  717-720. 

EQUIVALENTS,  §§  37338o. 

Undoubtedly  the  essentials  of  an  equivalent  stated  by  Robinson 
and  approved  in  Duff  v.  Forgie,  59  Fed.  772,  §  373,  are  well  stated 
so  far  as  mechanical  elements  are  concerned;  but  it  is  doubted  if 
the  second  essential  therein  named  is  applicable  at  all  times  to  a 
chemical  combination.  Tyler  v.  Boston,  74  U.  S.  327,  §  373.  At 
least  this  is  true:  Since  the  range  of  equivalency  varies  directly 
with  the  quality  or  degree  of  invention,  making  the  doctrine  a  rule 
of  judgment  rather  than  a  final  test,  it  follows  that  a  kindred 
resiliency  exists  as  to  the  construction  of  essentials.  Not  that  the 
courts  will  disregard  these  essentials,  but  that  they  will  determine 
their  presence  or  absence  in  the  same  spirit  the  invention  is  ap- 
proached. 

This  doctrine,  built  up  step  by  step  by  the  courts,  is,  perhaps, 
the  most  beneficent  of  all  rules.  It  gives  the  court  the  power  to 
accord  to  a  generic  invention  the  reward  it  deserves.  It  also  gives 
the  court  the  much-needed  power  to  limit  minor  inventions  and 
improvements  to  a  monopoly  commensurate  with  the  small  addi- 
tion made  to  the  sum-total  of  human  knowledge. 

As  to  identity,  the  rule  in  Union  v.  Murphy,  97  U.  S.  120,  §  379, 
covers  the  ground  as  completely  as  any  single  definition  can.  But 
the  real  problem  in  applying  this  doctrine,  just  as  in  the  determina- 
tion of  anticipation  or  infringement,  resides  in  the  lack,  in  most 
cases,  of  an  obvious  similarity  of  the  elements  or  lack  of  absolute 
identity  of  function,  or,  often  in  the  lack  of  both  these  conditions. 
In  other  words,  it  is  not  the  application  of  the  doctrine,  but  the 


28  THE    FIXED   LAW   OF   PATENTS 

marshalling  of  the  conditions  precedent  to  its  application,  that 
renders  the  problem  serious. 


ESTOPPEL,  §§  381-387. 

The  general  principles  of  estoppel  are  not  peculiar  in  patent 
cases.  Such  principles  as  that  the  estoppel  must  be  definite, 
mutual,  and  definitely  proved  are  all  well  known.  An  interference 
adjudication,  in  the  absence  of  privity,  does  not  operate  as  an 
estoppel.  A  vendor-patentee  and  a  licensee  are  both  estopped 
to  deny  the  validity  of  a  patent;  but  to  what  extent  either  may 
limit  the  scope  of  the  patent  by  showing  the  prior  art  is  a  delicate, 
and  as  believed,  an  unsettled  question.  Smith  v.  Ridgley,  103  Fed. 
875,  §  384;   Elgin  v.  Creamery,  80  Fed.  293,  §  385. 

A  former  licensee  may,  after  the  expiration  of  the  license,  act 
as  a  stranger  toward  the  patent.  Stimpson  v.  Stimpson,  104  Fed. 
983,  §  385.  As  has  been  remarked  under  adjudications,  the  rule 
of  privity  is  so  strict  that  the  conclusiveness  upon  a  real  party 
behind  a  prior  litigation  is  often  hard  to  establish,  since,  in  such  a 
case,  it  is  difficult,  if  not  impossible  to  establish  mutuality.  Since 
an  estoppel  bears  some  of  the  characteristics  of  a  forfeiture,  it  is 
not  looked  upon  with  favor. 

EVIDENCE,  §§  388-411. 

Of  course,  the  patent  itself  is  prima  facie  evidence  of  the  existence 
of  the  monopoly,  and  that  it  was  created  in  due  form  of  law;  but 
it  must  never  be  assumed  that  this  fact,  nor  the  fact  of  large  utility, 
nor  long  acquiescence,  nor  a  long  and  vigorous  ordeal  in  the  Patent 
Office,  counts  for  anything  to  speak  of  in  the  face  of  a  substantial 
attack  by  a  defendant. 

While  the  defense  of  anticipation  must  be  made  with  the 
statutory  notice,  the  practice  of  extending  the  privilege  of  showing 
the  state  of  the  prior  art  without  notice  (cases  under  §  389)  render 
it  possible  to  make  a  substantial  defense  by  so  limiting  the  patent 
as  to  defeat  the  charge  of  infringement  in  many  cases. 

As  stated  under  the  title  anticipation,  the  evidence  to  show 
invalidity  by  prior  patent,  publication,  or  use  must  be  indubitable. 
The  common  practice  of  putting  in  evidence  under  regular  notice 
a  great  array  of  prior  patents  is  not  without  danger.  Forsyth 
v.  Garlock,  142  Fed.  461,  §  390.  The  better  practice  is  to  introduce 
only  those  of  distinctly  anticipatory  character  under  notice,  and 
introduce  separately  such  as  are  purely  concerned  with  the  prior 
art.     The  plaintiff  or  complainant  may  rebut,  but  the  defendant 


BRIEF   SURVEY  29 

may,  in  the  discretion  of  the  court,  be  denied  surrebuttal  on  a 
question  of  anticipation.    St.  Paul  v.  Starling,  140  U.  S.  184,  §  392. 

The  method  of  taking  depositions,  either  in  law  actions  or  in 
equity,  must  follow  Federal  law  and  practice.  §§  395,  401.  The 
evidential  value  of  an  assignment  duly  recorded  has  been  reviewed 
under  assignment,  §  158.  The  cases  of  Elevator  v.  Crane,  76  Fed. 
767,  and  Mayor  v.  American,  60  Fed.  1016  under  that  title  should 
be  read  in  connection  with  Paine  v.  Trask,  56  Fed.  233,  under 
§396. 

The  rule  as  to  exhibits  in  Overweight  v.  Improved,  94  Fed.  155, 
§  397,  is  certainly  one  to  be  exercised  with  great  care.  In  this  age 
of  specialization,  complexity  and  refinement  in  engineering  the 
court  would  be  assuming  a  great  burden  and  a  large  risk  in  many 
cases  should  it  follow  this  rule,  take  to  itself  the  province  of  the 
expert,  and  give  to  an  exhibit  a  value  in  evidence  perhaps  un- 
warranted under  proper  explanation  and  interpretation.  And 
this  leads  to  a  remark  concerning  expert  evidence.  The  function 
of  the  expert  is  to  give  evidence  which  will  enable  the  court  to 
determine  matters  of  law  and  fact,  (Norton  v.  Jensen,  49  Fed. 
859,  §  398,)  and  not  to  usurp  the  functions  of  counsel  or  court; 
(Osgood  v.  Metropolitan,  75  Fed.  670,  §  398)  and  the  too  common 
idea  that  the  value  of  expert  evidence  lies  in  a  count  of  noses 
deserves  the  reprimand  to  be  found  in  American  v.  Cleveland,  158 
Fed.  978,  §  398. 

In  concluding  this  subject  the  writer  wishes  to  repeat  the  advice 
he  received  when  a  student  and  which  has  been  of  great  value: 
"  Remember  that  every  great  law-suit  turns  upon  a  single  issue. 
Find  the  pivot  and  direct  all  your  energy  to  swing  the  case  your 
way  upon  it.  Do  not  be  led  away;  direct  your  evidence  and  your 
argument  to  the  pivotal  point."  These  were  the  words,  as  nearly 
as  they  can  be  recalled  after  the  lapse  of  nearly  forty  years,  of  one 
of  our  greatest  patent  lawyers,  one  of  our  great  judges,  and  the 
greatest  scholar  of  the  law  I  have  ever  known  —  Judge  Henry  R. 
Selden. 

EXPERIMENT,  §§  412-417. 

Absolutely  nothing  need  be  added  to  the  quotation  from  Eastman 
v.  Mayor,  134  Fed.  844,  given  under  §  412. 

FOREIGN  PATENT,  §§  419-424. 

This  entire  subject,  confused  as  it  has  been  rendered  by  the 
bungling  statements  of  the  act  of  1870  and  later  by  the  hardly 
less  lucid  amendment  of  1897,  and  finally  utterly  changed  in  aspect 


30  THE    FIXED    LAW    OF    PATENTS 

by  the  act  of  1903,  has,  fortunately,  been  simplified  and  largely 
set  at  rest  by  the  decision  of  the  Second  Circuit  in  Welsbach  v. 
Apollo,  96  Fed.  322,  §  420,  and  the  First  Circuit  in  Sawyer  v.  Car- 
penter, 143  Fed.  976,  §  420.  The  Welsbach  case  seems  to  close  the 
controversy  over  the  old  law;  the  Sawyer  case  seems  to  mark  the 
line  between  the  old  and  the  new.  To  these  pronouncements 
nothing  need  be  added  except  to  refer  to  the  decision  in  Heap  v. 
Tremont,  82  Fed.  449,  quoted  under  §  424.  It  is  believed  that 
this  rule  is  a  wise  limitation  upon  the  Patent  Office  rule,  or  at 
least  upon  the  effect  of  statements  made  under  the  rule. 

FRAUD,  §  425. 

The  less  said  upon  this  subject  the  better.  Experience  teaches 
that  those  cases  where  fraud  can  be  proved  are  few  and  trivial; 
that  those  cases,  few  but  not  trivial,  fail  in  the  proofs. 

FUNCTION,  §§  426-7. 

It  is  clear  that  a  function  cannot  be  claimed;  but  as  said  in 
Continental  v.  Eastern  (§  427)  the  distinction  between  a  practically 
operative  mechanism  and  its  function  is  difficult  to  define.  Here 
is  the  field  of  contention.  Once  determined  to  be  functional  or 
non-functional  the  claim  is  readily  disposed  of;  but  a  reading  of 
all  the  cases  leave  court  and  counsel  without  criteria  for  deter- 
mining whether  a  claim  is  or  is  not  functional.  The  signal  instance 
to  illustrate  this  point  is,  of  course,  Westinghouse  v.  Boyden, 
170  U.  S.  537,  §  686. 

IMPROVEMENT,  §§430-444. 

An  improvement  is  one  of  the  patentable  classes  provided  by 
the  statute.  (Sec.  4886).  Except  for  the  particular  meaning 
given  this  term,  it  might  be  said  that  any  invention  not  a  broad 
or  basic  discovery  would  be  an  improvement;  but  such  is  not  the 
meaning  commonly  given  the  term.  The  courts  generally  use  it 
as  denoting  an  invention  which  marks  an  advance  in  a  known  art. 
It  may  be  great  or  small  —  in  fact,  an  improvement  may  be  truly 
generic,  revolutionary  in  an  art,  and  entitled  to  a  range  of  equiva- 
lency substantially  as  great  as  a  generic  invention.  Chicago  v. 
Miller,  133  Fed.  541,  §  435;  Columbia  v.  Kokomo,  143  Fed.  116, 
§  435;  Wagner  v.  Wycoff,  151  Fed.  585,  §  435.  So  it  is  evident  no 
strict  definition  of  an  improvement  may  be  given,  although  the 
statement  in  McCormick  v.  Talcott,  61  U.  S.  402,  §  434  defines 
an  ordinary  narrow  improvement. 

A  mere  carrying  forward,  a  mere  perfecting  in  a  mechanical 


BRIEF    SURVEY  31 

sense,  or  mere  improvement  in  the  product  do  not  constitute 
patentable  improvement.  To  be  patentable  there  must  be  the 
exercise  of  the  inventive  faculty  which  lifts  it  above  mechanical 
skill.  A  reasonably  good  distinction  is  drawn  in  Thomson-Houston 
v.  Lorain,  117  Fed.  249,  §  437.  As  will  be  seen,  when  we  come  to 
the  tests  of  invention,  utility  and  use  go  far  in  determining  a  doubt- 
ful case.  Indeed,  utility  may  save  an  improvement  from  falling 
over  the  line  of  mechanical  skill;  and  the  range  of  equivalency 
which  will  be  accorded  an  improvement  patent  is  often  best  deter- 
minable by  the  part  the  patent  has  had  in  the  useful  arts.  This 
subject  recurs  with  those  of  invention  and  infringement,  and  is 
one  of  large  importance.     Reference  to  those  titles  should  be  had. 

INFRINGEMENT,  §§  445-532. 

No  general  definition,  no  general  rule,  no  general  test  of  in- 
fringement exists.  The  number  of  issued  patents  approaches  the 
million  mark.  Each  patent  has  afforded  opportunity  for  a  condi- 
tion of  infringement  in  some  sense  differing  from  that  of  every 
other  patent.  Each  patent  is  supposed  to  disclose  a  novel  combina- 
tion or  creation,  and  every  infringement  suit  is  a  new  problem. 
While  the  various  rules  and  tests  are  of  large  value  in  the  interpre- 
tation and  decision,  it  is  only  when  one  follows  the  methods  of 
such  master  minds  as  have  been  able  to  rise  above  fitting  the  facts 
to  a  rule,  mastered  the  facts,  decided  the  question  in  the  quiet  of 
their  own  consciences,  and  then,  perhaps,  found  a  rule  to  ornament 
their  wisdom,  that  justice  is  done.  In  taking  a  general  view  of 
the  many  rulings  on  this  subject  they  will  be  regarded  as  guides, 
rather  than  fixed  rules,  and  will  be  taken  up  in  much  the  same 
order  in  which  they  are  presented  in  the  body  of  the  work. 

An  addition  to  a  combination,  construction  or  process  avoids 
infringement  only  when  such  addition  destroys  the  unity  of  the 
invention  and  makes  it  something  else.  So  with  mere  change  of 
form,  impairing  or  increasing  efficiency,  or  change  of  location  or 
other  modification  which  does  not  destroy  the  essence  of  the  inven- 
tion does  not  avoid  infringement.  But  ever  since  O'Reilly  v. 
Morse,  15  How.  62,  §  459,  it  has  been  clear  that,  where  form  is 
the  essence  of  invention,  change  of  form  does  avoid  infringement. 
Change  of  the  number  of  parts  or  substitution  of  one  material 
for  another  are  subject  to  the  same  rule.  The  rule  as  to  combina- 
tions is  well  stated  in  U.  S.  v.  Berdan,  156  U.  S.  552,  §  464.  A 
combination,  to  be  patentable,  must  possess  the  qualities  of 
interaction  which  effect  a  new  or  different  result  from  that  of  any 
element  or  the  summation  of  the  separate  results  of  all  the  elements 


32  THE    FIXED    LAW    OF    PATENTS 

—  else  it  is  a  mere  aggregation.  It  is  only  when  (1)  something  is 
added  which  changes  the  action  and  function  of  the  combination; 
or  (2)  when  something  is  omitted  which  produces  such  change; 
or  (3)  when  some  element  is  substituted  which  cannot  be  held  an 
equivalent  for  that  which  was  omitted,  that  infringement  is  avoided. 
And  here,  of  course,  we  are  bound  by  the  limits  the  patentee  has 
set  in  his  claim.  As  said  in  Fay  v.  Cordesman,  109  U.  S.  408, 
§  466,  if  the  patentee  specifies  any  element  as  entering  into  the 
combination,  either  directly  by  the  language  of  the  claim  or  by 
such  a  reference  to  the  descriptive  part  of  the  specification  as 
carries  such  elements  into  the  claim,  he  makes  such  element 
material  to  the  combination,  and  the  court  cannot  declare  it  to 
be  immaterial.  But  in  applying  this  rule,  we  have  no  right  to 
forget  the  rule  of  equivalency  and  of  interpretation,  as  was  done 
in  Kinzell  v.  Littrell,  67  Fed.  926,  §  473,  and  declare  unquali- 
fiedly that  "  it  is  immaterial  that  the  elements  claimed  in  the  patent 
of  plaintiff  and  omitted  in  defendant's  device  are  not  of  the  essence 
of  the  real  invention."  The  rule  of  equivalency  as  applied  to  com- 
binations has  been  said  to  be  construed  most  strongly  against  him 
who  alleges  infringement.  Erie  v.  American,  70  Fed.  58,  §  468; 
but  this  is  in  contradiction  of  the  Supreme  Court  rule  in  Gill  v. 
Wells,  89  U.  S.  1,  §  468,  and  of  nearly  every  other  case  quoted 
under  that  section.  The  distinction  between  claims  for  combina- 
tions and  claims  not  strictly  so  regarded  is  generally  academic  and 
artificial  rather  than  real  in  most  cases;  and  if  we  were  to  have 
one  rule  for  combinations  and  another  for  the  few  claims  that 
have  not  that  characteristic,  we  should  add  confusion  to  no  purpose. 
Before  passing  to  the  next  subject  in  order,  a  word  should  be 
added  concerning  assignments.  As  between  the  assignor  and 
assignee  of  a  territorial  right  the  rules  of  Keeler  v.  Standard,  157 
U.  S.  659,  §  450;  Hobbie  v.  Jennison,  149  U.  S.  355,  §  512,  and 
Simpson  v.  Wilson,  4  How.  709,  §  175,  permit  the  sale  of  articles 
outside  the  territory  assigned  and  vice  versa.  The  effect  of  these 
rules  can  be  avoided  between  the  parties  only  by  specific  agreement, 
and  as  to  third  parties  limitation  may  be  imposed  only  by  bringing 
such  party  within  the  terms  of  such  limitation  by  some  such 
restriction  as  that  of  Heaton  v.  Eureka,  77  Fed.  288,  §  899  and 
National  v.  Schlegel,  126  Fed.  733,  §  899.  The  general  principles 
of  estoppel  apply  alike  to  inventor-assignor  and  assignee.  It  does 
not  lie  in  the  mouth  of  an  inventor  to  attack  that  which  he  has 
assigned,  though  he  is  not  estopped  from  denial  of  infringement. 
So  with  the  assignee  holding  a  title  or  interest  under  the  patent. 
A  licensee  may  not  use  his  privilege  to  make  and  store,  up  large 


BRIEF   SURVEY  33 

quantities  of  articles,  terminate  the  license,  and  then  market  the 
articles  so  made  and  escape  infringement.  Pelzer  v.  Binghamton, 
95  Fed.  823,  §  510. 

The  general  rules  of  contributory  infringement  have  been  mainly 
settled  by  Judge  Taft  in  Thomson-Houston  v.  Ohio,  80  Fed.  712, 
§  477.  In  this  review  of  general  principles,  to  do  otherwise  than  to 
refer  to  that  opinion  as  authority  and  to  note  the  timely  warning 
of  the  Second  Circuit  in  Cortelyou  v.  Johnson,  145  Fed.  933,  §  477, 
would  be  superfluous. 

Corporations  as  infringers  are  subject  to  the  same  rules  as 
natural  persons.  The  rule  as  to  personal  liability  of  an  officer  or 
director  appears  to  have  undergone  a  change.  The  old  tort  feasor 
rule  of  such  cases  as  Graham  v.  Earle,  92  Fed.  155,  §  481,  and 
National  v.  Leland,  94  Fed.  502,  §  481,  seems  to  have  been  largely 
abandoned.  Western  v.  North,  135  Fed.  79,  §  481,  Cazier  v. 
Mackie-Lovejoy,  138  Fed.  654,  §  481,  and  Scott  v.  Fisher,  145 
Fed.  915,  §  481.  And  it  would  seem  a  sound  rule  that  an  officer 
of  a  joint-stock  company  is  not  personally  liable  for  the  acts  of 
infringement  of  the  company.  National  v.  Stolts,  135  Fed.  534, 
§480. 

Division  or  union  of  elements,  and  in  the  case  of  additions  or 
subtractions  which  do  not  destroy  the  unity  of  the  invention, 
does  not  avoid  infringement;  but  there  are  cases,  such  as  stated 
in  Dunlap  v.  Willbrandt,  151  Fed.  223,  §  485,  where  division  or 
union  would  destroy  the  law  of  the  structure  or  go  beyond  the  limits 
set  by  the  inventor  in  his  claim. 

The  question  of  infringement  is  one  of  fact.  The  questions  of 
construction  which  precede  it  are  of  law.  The  evidence,  therefore, 
may  bear  upon  either  proposition.  The  conduct  of  the  defendant 
may  have  some  weight,  but  it  can  never  be  controlling  (§  487); 
and  it  is  never  enough  to  shift  the  burden  of  proof.  Evidence  of 
identity  of  function  is  very  persuasive,  but  until  reinforced  by  a 
construction  of  the  elements  of  the  claim  and  those  of  the  alleged 
infringement  to  establish  ground  for  identity  it  cannot  be  con- 
clusive. In  short,  the  evidence  of  infringement  must  be  specific 
and  cannot  be  inferred.  Inhauser  v.  Buerk,  101  U.  S.  647,  §  494. 
Once  established,  a  single  act  is  sufficient.  Hutter  v.  De  Q.  Bottle, 
128  Fed.  283,  §  494;  but  proof  of  threatened  acts  is  insufficient. 
Gray  v.  Grinberg,  159  Fed.  138,  §  494.  Collateral  matters,  such 
as  utility  (§  495)  or  co-pendency  of  applications  in  the  Patent 
Office  without  interference  (Mann  v.  Hoffmann,  104  Fed.  245,  §  496) 
or  the  issue  of  a  patent  to  the  defendant  (Hardison  v.  Brinkman, 
156  Fed.   962,   §  496)   may  have  some  corroborative  effect,  but 


34  THE    FIXED    LAW    OF    PATENTS 

they  are  not  dynamic.  Quite  as  important  as  these  rules  are 
those  which  guide  in  the  construction  of  the  claim  and  of  the 
infringement  complained  of.  These  have  arisen  under  anticipa- 
tion, §§  71-77;  claims,  §§  188-230;  evidence,  §§  389-393  and 
401-411;  and  will  also  arise  under  invention,  §§  620-638,  and  in 
cases  of  reissue  under  §§  871-879. 

The  moment  a  generic  invention  makes  its  impress  upon  the 
industrial  world,  a  swarm  of  parasites  is  hatched,  and  they  begin 
their  attack.  It  is  to  screen  the  real  public  benefactor,  in  some 
small  degree,  from  the  onslaught  of  these  insects  that  such  rules 
as  that  of  McCormick  v.  Aultman,  69  Fed.  371,  §  497,  are  designed. 
While  the  Government  may  not  be  subjected  to  the  ordinary 
processes  of  infringement  prosecution,  it  may  be  reached  through 
the  Court  of  Claims,  and  compensation  awarded,  even  if  the  pro- 
hibition of  injunction  does  not  lie.     (§  498). 

The  question  of  identity  has  been  summed  up  in  a  single  sen- 
tence: "  There  must  in  the  ordinary  patent  be  identity  of  means 
and  identity  of  operation  as  well."  American  v.  Cimiotti,  123  Fed. 
869,  §  502.  And  the  rule  in  Thomson  v.  Western,  72  Fed.  530, 
§  503,  is  sound  as  well  as  clever. 

The  subject  of  infringement  by  importation  or  exportation  is 
comprised  in  a  few  cases,  and  the  rules  cited  under  §  505  are  com- 
prehensive. 

There  may  be  infringement  by  an  improvement  or  of  an  improve- 
ment. This  was  settled  as  long  ago  as  Evans  v.  Eaton,  7  Wheat. 
356,  §  506.  In  the  case  of  infringement  by  an  improvement  there 
generally  arises  the  question  of  the  scope  of  the  prior  patent  and 
the  application  of  the  doctrine  of  equivalents.  When  the  alleged 
infringement  is  of  an  improvement,  we  may  have  both  the 
question  of  equivalency  as  respects  the  prior  patent  and  that 
of  limitation  of  the  improvement  patent  by  the  prior  art,  including 
the  prior  patent.  Where  the  case  is  of  improvement  against 
improvement  the  rule  well  stated  in  Ries  v.  Barth,  136  Fed.  850, 
§  507,  that  the  presumption  is  that  each  is  an  independent  im- 
prover in  a  common,  open  field,  will  go  far  in  simplifying  the 
issues. 

In  the  earlier  days,  when  an  infringer  was  regarded  as  a  tort 
feasor  with  instincts  not  far  removed  from  the  criminal,  the  question 
of  intent  had  much  significance  —  silent  if  not  otherwise.  With 
the  passing  of  time  the  infringer  has  lost  somewhat  the  garb  of  a 
brigand,  is  held  up  to  a  higher  standard  of  knowledge  and  business 
conduct,  is  presumed  to  know  the  law  better  than  ever  before,  is 
presumed  to  know  the  state  of  the  art  and  the  existing  patents 


BRIEF   SURVEY  35 

relating  to  his  business,  and  is  neither  coddled  nor  punished 
along  moral  lines.  (§  508). 

The  grant  of  a  right  under  a  patent  must  carry  enough  with 
it  to  insure  the  enjoyment  of  the  grant.  If  one  buys  the  right  to 
use  a  machine  that  he  may  reap  benefit  from  selling  the  product, 
the  grantor  may  not  stop  him  because  he  holds  a  patent  upon  the 
product;  but  the  reverse  condition  would  not  follow.  If  a  person 
buys  the  right  to  use  or  sell  a  product  or  article  of  manufacture 
and  does  not  secure  the  right  to  use  the  process  or  machine,  he 
cannot  justify  his  lack  of  foresight  by  infringing  the  process  or 
machine. 

The  infringement  of  a  process  is  subject  to  the  same  rules  as  a 
machine,  so  far  as  they  may  be  applied  —  such  as  the  omission 
or  addition  of  an  element  or  the  use  of  an  equivalent.  But  it  is 
evident  that,  as  a  process  consists,  in  most  cases,  of  a  series  of 
steps  or  a  series  of  chemical  actions  or  material  modifications  which 
cannot  be  observed  or  compared  by  the  eye  of  the  court;  and  since 
also  the  function  or  result  itself  is,  often,  not  distinguishable  by 
the  naked  eye,  the  ordinary  tests  of  mechanical  identity  of  elements 
or  function  cannot  be  applied.  It  follows  that,  in  such  cases,  the 
evidence  must  be  largely  that  of  experts  and  persons  skilled  in 
the  art.  Matheson  v.  Campbell,  78  Fed.  910,  §  519.  And  it  is 
due  to  this  obscurity  that  the  rule  of  equivalents  is  somewhat 
modified.  As  was  said  in  Tyler  v.  Boston,  74  U.  S.  327,  §  373, 
"  the  term  equivalent,  when  speaking  of  machines,  has  a  certain 
definite  meaning,  but  when  used  in  regard  to  chemical  action  of 
such  fluids  as  can  be  discovered  only  by  experiment,  it  only  means 
equally  as  good."  Here  the  test  as  expressed  by  the  words  in 
italics  passes  over  from  an  independent  comparison  of  the  elements 
to  a  comparison  of  results.  But  it  must  not  be  assumed  that  this 
test  applies  to  those  process  cases  where  analysis  is  plain  and  free 
from  empiricism. 

The  use  or  sale  of  a  product,  the  production  of  which  involved 
the  infringement  of  a  machine  or  process,  when  the  product  itself 
is  not  patented  as  an  article  of  manufacture,  is  not  infringement. 
Welsbach  v.  Union,  101  Fed.  131,  §  521. 

In  Stimpson  v.  Railroad,  4  How.  380,  §  522,  the  rule  was  laid 
down  that  an  infringement  cannot  be  sued  for  which  took  place 
prior  to  the  surrender  of  the  original  patent.  At  that  time  the 
rule  was  that  a  surrender  for  the  purpose  of  obtaining  a  reissue 
extinguished  all  rights  which  existed  under  the  original  grant. 
Moffat  v.  Garr,  66  XL  S.  273,  §  887.  But  in  Peck  v.  Collins,  103 
U.  S.  660,  §  887,  the  question  whether  a  surrender  under  the  act 


36  THE    FIXED    LAW   OF    PATENTS 

of  1870  extinguished  all  rights  was  raised  but  not  answered.  The 
court  went  a  step  farther  in  Allen  v.  Culp,  166  U.  S.  501,  §  887,  and 
in  McCormick  v.  Aultman,  169  U.  S.  606,  §  887,  answering  the 
question  certified  by  the  Circuit  Court  of  Appeals  in  McCormick 
v.  Aultman,  69  Fed.  371,  §  887,  held  distinctly  that  when  a  reissue 
was  sought  and  refused  as  to  certain  claims,  on  the  return  of  the 
original  patent  such  claims  were  not  thereby  rendered  void.  Now, 
taking  this  change  of  holding,  what  is  its  effect  as  to  infringement 
occurring  prior  to  surrender  and  reissue?  It  is  thought  that  there 
is  no  appellate  determination  of  this  question. 

What  constitutes  infringement  by  carrying  repairs  to  the  point 
of  reconstruction  is  well  illustrated  in  Goodyear  v.  Jackson,  112 
Fed.  146,  §  524.  The  ultimate  test  is  whether  the  act  is  a  rehabilita- 
tion or  a  re-creation  of  the  idea  of  means.  Wilson  v.  Simpson, 
9  How.  109,  §  524.  In  the  case  of  the  bale  tie  of  American  v. 
Simmons,  106  U.  S.  89,  §  524,  or  the  knitting  needle  of  the  Goodyear 
case,  the  infringement  is  evident.  So  it  would  be  in  a  case  like 
Pacific  v.  Alaska,  100  Fed.  462,  §  523,  where  nothing  of  the  old 
machine  remained  but  the  legs.  But  between  these  lies  debatable 
ground,  like  that  of  Morrin  v.  White,  143  Fed.  529,  §  523.  There 
it  would  seem  clear  that  the  replacement  of  a  single  tube  of  the 
battery  would  be  legitimate  repair;  but  as  the  essence  of  the 
invention  resided  in  the  emplacement  of  the  entire  battery  of  tubes, 
then  a  replacement  of  the  entire  battery  would  be  a  re-creation, 
and  therefore  infringement.  Such  a  case  illustrates  how  narrow  the 
margin  between  legitimate  repair  and  infringement  may  be. 

The  tests  of  infringement  naturally  run  parallel  with  the  rules 
of  evidence  of  infringement.  The  anticipation  test  —  "  that  which 
infringes  if  later  anticipates  if  earlier,"  and  vice  versa,  which  has 
been  considered  at  length  under  anticipation,  is  a  test,  not  a  final 
test  by  any  means,  but  yet  one  which  has  its  proper  uses.  The 
most  general  and  practical  test  is  to  compare  the  two  devices  in 
connection  with  a  comparison  of  results  produced.  Cimiotti  v. 
American,  198  U.  S.  399,  §  526.  The  test  of  interchangeability, 
where  element  for  element  may  be  substituted,  is  wellnigh  con- 
clusive; but  such  substitution  is  not  ordinarily  obvious  or  easy. 
Where  the  plain  rules  of  equivalency  may  be  employed  to  assist  in 
such  substitution  the  rule  is  applicable.  As  utility  may  turn  the 
scale  in  a  doubtful  case  of  invention,  so  it  may,  if  great  care  is 
exercised,  illuminate  the  question  of  infringement.  But  it  must 
be  remembered,  as  said  in  Winans  v.  Denmead,  15  How.  330,  §  530, 
that  success  of  complainant  and  defendant,  the  one  compared 
with  the  other,  is  no  test  of  the  question  of  infringement. 


BRIEF   SURVEY  37 

Defenses  to  the  charge  of  infringement  have  been,  in  some 
measure,  considered  under  infringement  §§  308-322.  Nothing 
further  need  be  added,  since  the  circumstances  surrounding  each 
case  must  determine  the  character  and  course  to  be  taken. 

INJUNCTIONS,  §§  533-579- 

Injunctions  in  patent  causes  are  not  marked  by  departure  from 
general  rules.  The  statute  gives  the  "  power  to  grant  injunctions 
according  to  the  course  and  principles  of  courts  of  equity,"  (R.  S. 
4921)  and  specifies  no  further.  The  same  distinction  exists  between 
preliminary  or  provisional  injunctions  and  final  or  perpetual 
injunctions  as  in  other  fields  of  equitable  jurisdiction.  But  this 
distinction  —  this  definite  line  of  separation  —  is  too  often  lost 
sight  of;  for  while  a  final  and  perpetual  injunction  is,  when  the 
complainant  has  shown  his  right  under  a  living  patent  to  equitable 
relief  on  final  hearing,  a  matter  of  right,  a  preliminary  or  pro- 
visional injunction  is  never  a  matter  of  course  but  always  a  matter 
of  judicial  discretion.  Comity  may  have  its  weight;  a  prior 
adjudication  may  have  much  more  weight;  but  a  court  entrusted 
with  this  most  powerful  of  all  legal  enginery  is  never  deprived  of 
the  safeguard  of  discretion  in  its  use  until  a  higher  tribunal  has 
taken  jurisdiction  and  with  it  the  responsibility  attached. 

To  entitle  a  complainant  to  an  injunction  pendente  lite,  at 
least  three  features  must  be  present: 

1.  The  title  to  the  patent  and  right  to  sue  must  be  clear. 

2.  The  infringement  alleged  must  be  clear. 

3.  Something  more  than  the  mere  prima  facie  of  the  grant  must 
be  shown. 

To  these  some  might  add  irreparable  injury  and  insufficient 
remedy  at  law;  but  it  is  thought  that  the  decision  of  the  Supreme 
Court  in  Continental  v.  Eastern,  210  U.  S.  405,  §  574,  by  im- 
plication, will  render  any  positive  showing,  beyond  the  averment 
of  the  bill,  unnecessary. 

It  is  evident  that  the  title  must  be  clear,  and  that  if  it  is  doubtful 
by  reason  of  some  right  claimed  by  defendant  (§  569),  or  is  assailed 
and  put  in  doubt  (§  571),  the  relief  will  be  withheld. 

It  is  also  evident  that,  upon  an  ex  parte  showing,  the  court 
will  not  attempt  to  solve  the  question  of  infringement  in  the  face 
of  conflicting  proofs  (§  564). 

Those  showings  constituting  "  something  more  "  than  the 
prima  facie  of  the  patent  which  are  essential  are  either  public 
acquiescence,  prior  adjudication,  or  some  existent  condition  which 
is  the  fair  equivalent  of  one  or  the  other  of  these  two.     It  is  not 


38  THE   FIXED   LAW   OF   PATENTS 

possible  to  define  that  condition  which  constitutes  or  fails  to 
constitute  acquiescence  with  absolute  universality  of  application, 
as  will  be  evident  from  reading  the  cases  under  §§  554  and  563; 
but  it  is  clear  that  the  acquiescence  must  be  common  and  public, 
and  due  to  the  existence  of  the  patent,  and  not  to  extraneous 
causes.  The  mere  fact  that  the  public  has  not  attempted  to  make, 
use  or  sell  the  thing  patented  is  not  enough;  the  forbearance  to  do 
so  must  appear  to  be  due  to  the  patent  in  question.  Blount  v. 
Societe,  53  Fed.  99,  §  554;  Hall  v.  General,  153  Fed.  907,  §  563. 

Stronger  than  acquiescence  is  clear  proof  of  the  establishment 
of  the  patent  and  right  to  injunctive  relief  by  prior  adjudication. 
A  very  conservative  statement  of  the  rule  is  that  of  Wilson  v. 
Consolidated,  88  Fed.  286,  §  561.  But  again  it  must  be  observed 
that  sound  discretion  controls  even  in  these  circumstances.  Sprague 
v.  Nassau,  95  Fed.  821,  §  570;  Hatch  v.  Electric,  100  Fed.  975, 
§  570.  A  clear  summary  of  the  general  principles  is  given  in  Electric 
v.  Edison,  61  Fed.  834.  §  561. 

There  are  cases  where  injunction  pendente  lite  is  clearly  neces- 
sary to  preserve  the  status  quo,  where  none  of  the  ordinary  con- 
siderations is  the  moving  cause.  But  these  are  the  peculiar  condi- 
tions of  a  case  which  cannot  be  previsioned  by  any  rule.  In 
the  case  of  Hall  v.  General,  153  Fed.  907,  §  567,  and  quoted  fully 
under  that  section,  are  the  main  conditions  which  preclude  the 
granting  of  a  preliminary  injunction.  It  does  not  follow  that  all 
these  six  points  must  have  been  negatived  to  establish  the  com- 
plainant's right  to  the  order  asked,  but  it  is  clear  that  any  one  of 
several  of  these  points  would  have  been  sufficient  to  warrant  denial 
of  the  relief  sought. 

It  is  clear  that  non-use  by  complainant  of  the  patent  sued  on 
is  not  a  reason  for  refusing  a  preliminary  injunction.  Continental 
v.  Eastern,  210  U.  S.  405,  §  574.  Expiration  of  the  patent  of 
course  prohibits  the  granting  and  ends  the  life  of  an  injunction 
granted.  (§  550.)  A  bond  in  lieu  of  injunction  is  within  the  dis- 
cretion of  the  court  (§  546);  and  the  conduct  of  the  defendant 
has  its  weight  (§  555).  Ordinarily  the  positing  of  laches  as  a 
reason  for  denying  injunctive  relief  is  a  doubtful  proceeding;  for 
excusing  one's  own  act  on  the  ground  of  remissness  of  another 
does  not  appeal  to  a  court  of  equity.  Punishment  for  the  viola- 
tion of  an  injunction  is  adequately  reviewed  in  Bullock  v.  West- 
inghouse,  129  Fed.  105,  and  Christensen  v.  Westinghouse,  135 
Fed.  774,  quoted  extensively  under  §§  577  and  578. 

Coming  now  to  the  subject  of  appeals  from  injunction  orders, 
it  is  first  to  be  noted  that  we  are  no  longer  in  doubt  about  what  is 


BRIEF   SURVEY  39 

appealable.  Under  the  act  as  it  now  reads,  it  is  only  when  the 
order  in  some  form  grants  injunctive  relief  that  it  is  appealable. 

Without  going  into  details,  the  following  propositions  seem 
settled  by  the  various  decisions  cited  under  §§  535-545: 

1.  The  appellate  court  will  go  no  further  than  to  determine 
whether  sound  discretion  has  been  exercised. 

2.'  If,  in  the  determination  of  this  question,  the  entire  record 
must  be  reviewed,  and  if  the  proofs  are  adequate,  the  appellate 
court  will  make  final  disposition  of  the  case. 

3.  That  such  appeal  does  not  stay  other  proceedings  unless  so 
ordered. 

4.  That  neither  comity  nor  prior  adjudication  will  prevent  an 
appellate  court  from  acting  upon  its  own  independent  judgment 
based  upon  its  own  investigation  of  the  facts. 

Appeals  from  contempt  orders  are  permissible  only  as  now 
prescribed  by  the  Supreme  Court  in  In  re  Christensen,  194  U.  S. 
458,  §  538. 

In  conclusion  it  may  be  observed  that,  as  was  stated  in  the 
discussion  of  damages,  the  conditions  are  now  such  that  the  main 
protection  to  a  patentee  lies  in  his  ability  to  secure  injunctive 
relief.  It  must  follow  that  this  power  of  the  courts  will  be  invoked 
with  increasing  frequency,  and  that  the  rules,  now  generally 
established,  will  be  restated  from  time  to  time  with  greater  clearness. 

INTERFERENCES,  §§  580-585. 

Upon  this  subject  nothing  need  be  added  to  §  581,  except  to 
call  attention  to  the  cases  of  Morgan  v.  Daniels,  153  U.  S.  120,  and 
Electric  v.  Carborundum,  102  Fed.  618,  both  quoted  from  under 
§  584.  Seemingly,  these  cases  should  set  at  rest  the  question  of 
supposed  conclusiveness  of  an  interference  proceeding. 

INTERFERING  PATENTS,  §§  586-7. 

In  view  of  the  decision  of  Palmer  v.  Lozier,  90  Fed.  732,  §  587, 
patentees  will  be  slow  to  invoke  relief  under  4918  R.  S.;  since  it  is 
now  quite  possible  that  the  parties,  each  coming  into  court  with 
a  patent,  may  both  leave  that  court  empty  handed. 

INVENTION,  §§  588-702. 

Under  this  title  an  entire  volume  might  be  written;  but  such 
a  course  is  not  in  keeping  with  the  aim  of  this  book.  The  subject 
is  too  large  to  gather  up  and  treat  in  perspective.  Consequently, 
the  following  course  will  be  pursued:  The  main  divisions  will 
be  taken  up  in  the  order  of  the  text,  each  division  constituting 


40 


THE    FIXED   LAW   OF   PATENTS 


a  paragraph  with  the  title  and  section  numbers  in  heavy  faced 
type. 

Abandonment,  §  590.  The  subject  of  abandonment  has  been 
reviewed  under  that  general  title  (§§  1-20).  As  here  employed, 
it  relates  to  re-invention  and  abandoned  experiments.  It  is  at 
once  evident  that  an  abandoned  experiment  cannot  operate  as 
a  bar  to  an  invention,  since  it  is  both  an  abandoned  thing  and  a 
thing  that  never  was  patentable,  else  it  would  not  have  been  an 
experiment  merely.  The  re-invention  of  a  thing  which  has  never 
materialized  sufficiently  to  constitute  anticipation  is  as  much 
entitled  to  protection  by  patent  as  if  the  original  invention  and 
abandonment  had  never  occurred.  But  if  the  re-invention  follows 
an  abandonment  which  was  preceded  by  a  disclosure  of  the  inven- 
tion to  the  public,  such  re-invention  or  discovery  cannot  recall 
that  which  has  become  public  property  and  make  it  the  subject 
of  a  patent. 

Adaptation,  §§  591-3.  In  reading  the  quotations  under  these 
sections  one  notes  the  recurrence  of  the  qualifying  word  "  mere," 
such  as  "  mere  "  arrangement  or  grouping,  "  mere  "  strengthening 
or  increasing  weight  is  not  invention.  Such  is  the  qualification 
of  the  rule.  Whether  any  act  of  adaptation  has  ever  risen  above 
that  qualifying  word  we  need  not  speculate.  It  is  enough  that  it 
might,  and  the  courts  can  frame  no  rule  which  will  bar  to  an 
inventor  a  right  which  the  statute  gives  him.  These  remarks 
apply  to  §§  652  and  665  under  mechanical  skill,  and  to  §  707. 

Aggregation,  §§  594-597.  This  subject  has  been  fully  considered 
under  §§  42-51. 

Beneficial  use  and  scope,  §  598.  The  underlying  principle  here 
may  be  illustrated  by  Wells  v.  Curtis,  66  Fed.  318.  In  that  case 
Judge  Severns  was  entirely  right  in  saying  that  "  an  afterthought 
perceived  from  subsequent  experience  or  scientific  inspection  or 
analysis  "  and  the  application  of  the  means  disclosed  to  perform 
the  uncontemplated  function  did  not  involve  invention.  But  let 
us  suppose  that  such  "  experience,"  or  "  inspection  and  analysis  " 
had  resulted,  from  the  exigencies  of  the  case,  in  some  modification 
of  the  means.  A  single  step  thus  taken  goes  beyond  the  scope  of 
the  patent.  Why?  Because  there  would  have  been  a  change  in 
the  combination  effecting  the  result.  This  is  the  test.  As  we 
must  look  both  to  means  and  result  to  establish  identity,  so  we 
can  say  the  performance  of  an  uncontemplated  function  is  a  bene- 
ficial use  belonging  to  the  patentee  only  when,  upon  investigation, 
we  find  the  means  employed  present,  item  for  item,  and  unmodified 
in  their  combinative  relation. 


BRIEF   SURVEY  41 

Carrying  forward,  §  599.  The  rule  here  is  evident;  but  in 
Bullock  v.  General,  149  Fed.  409,  the  limit  is  well  noted.  In  the 
ordinary  course  of  manufacture,  improvements  are  made  in  num- 
bers beyond  counting;  but  now  and  then  comes  a  time  when  the 
advance  along  a  certain  line  slows  down  and  almost  stops.  At 
that  point  someone  takes  a  step  —  often  a  small  one,  but  one  which 
turns  the  halt  into  progress  again.  This  may  be  true  invention, 
and  yet  have  the  appearance  of  mere  carrying  forward.  Mere 
carrying  forward  is  but  another  name  for  mechanical  skill  (§  654). 
Invention  intervenes  only  when  another  sort  of  mental  faculty 
has  come  into  play;  and  to  decide  whether  such  an  event  has 
transpired  is  often  one  of  the  most  difficult  of  problems. 

Change  of  form,  §§  600-2.  Taking  the  rule  of  Evans  v.  Eaton, 
7  Wheat.  356,  §  600,  and  that  of  Winans  v.  Denmead,  15  How. 
330,  §  602,  we  have  this  statement:  A  change  of  form  without 
change  of  principle  is  not  patentable;  but  when  form  is  the  essence 
of  the  invention,  it  may  be  patentable.  This  covers  the  question. 
The  same  rule  is  applied  in  mechanical  skill,  §  655. 

Combinations,  §§  603-612.  The  essence  of  a  true  combination 
lies  in  the  coaction  of  the  elements.  As  elsewhere  said,  in  an 
aggregation  we  have  merely  the  sum  of  the  functions;  in  a  true 
combination  the  product  of  the  elemental  functions.  This  state- 
ment is  open  to  the  criticism  that  the  result  of  a  true  combination 
is  not  a  multiplication  of  things,  but  a  modification  of  elemental 
functions.  True,  but  the  comparison  is  helpful.  It  is  not  neces- 
sary that  the  actions  should  be  synchronous.  International  v. 
Dey,  142  Fed.  736,  §  603.  But  the  combination,  broadly  viewed, 
must  be  an  entirety.  The  four  limitations  which  must  be  put  upon 
a  combination  are  well  summarized  in  Gill  v.  Wells,  89  U.  S.  1, 
§  605.  The  result  may  be  old  if  the  combination  is  novel;  and  the 
fact  that  the  elements  are  all  old  does  not  negative  the  novelty 
of  the  combination.  Columbus  v.  Robbins,  64  Fed.  384,  §  608. 
When  both  combination  and  result  are  old  invention  is  wanting. 
It  will  be  presumed  that  the  elements  of  a  combination  claim  are 
old  unless  specifically  claimed.  A  claim  for  a  sub-combination 
is  good.  Parks  v.  Booth,  102  U.  S.  96,  §  611,  but  the  disclosure 
of  the  patent  must  be  sufficient  to  comply  with  the  statutory  re- 
quirement. Thomson-Houston  v.  Black  River,  135  Fed.  759, 
§611. 

Date  of  completion,  §  613.  While  in  the  absence  of  other  proof, 
the  date  of  application  for  patent  will  be  taken  as  the  date  of 
invention,  the  date  may  be  carried  back  to  the  date  of  actual 
invention.      The   exact   location   of  this   point   is   often   difficult, 


42  THE    FIXED   LAW   OF   PATENTS 

but  as  a  general  proposition  it  may  be  stated  that  the  date  of 
invention  has  arrived  when  the  inventor  is  able  to  so  disclose  the 
product  of  his  thought  that  another  might,  from  such  disclosure, 
put  the  idea  of  means  into  use.  This  subject  will  recur  under 
reduction  to  practice,  §§  860-867. 

Definitions,  §  614.  One  will  find  a  long,  and  perhaps  the  best, 
study  of  this  problem  by  Justice  Brown  in  McClain  v.  Ortmayer, 
141  U.  S.  419.  A  most  interesting  view  is  that  of  Judge  Grosscup 
in  Brown  v.  Crane,  133  Fed.  235,  quoted  under  this  section.  Modern 
psychology  finds  absorbing  interest  in  the  study  of  such  phenomena, 
but  so  far  as  is  known,  these  investigations  have  not  served  to 
aid  us  in  the  practical  application  of  tests  in  the  form  of  evidence. 
However,  since  the  test  of  any  alleged  truth  lies  in  subjecting  the 
facts  to  our  inner  consciousness,  we  recognize  invention,  not  by  a 
fixed  definition,  but  by  the  pronouncement  of  our  own  minds. 

Dividing  or  uniting  parts,  §  615.  This  subject  has  been  sub- 
stantially covered  under  §  591.  The  case  of  Standard  v.  Caster, 
113  Fed.  162,  §  615,  presents  an  interesting  problem.  It  is  believed 
that  that  case  presents  a  close  question. 

Double  or  analogous  use,  §§  616-618.  Undoubtedly  Potts  v. 
Creager,  155  U.  S.  597,  quoted  extensively  under  §  671,  is  the  ruling 
case  upon  this  subject.  The  distinction  between  double  use  and  anal- 
ogous use  is  not  always  clear.  A  double  use  is  rarely,  if  ever,  patent- 
able, while  in  a  so-called  analogous  use  the  analogy  may  be  so 
remote  as  to  involve  invention.  A  clear  case  of  double  use  is  that 
of  Jones  v.  Cyphers,  126  Fed.  753,  §  616.  Cases  at  the  other  extreme 
are  those  quoted  under  §  618.  In  view  of  such  holdings  as  Voight- 
man  v.  Perkinson,  138  Fed.  56,  §  616,  it  is  evident  that  the  rule 
of  Potts  v.  Creager  will  be  applied  with  strenuousness  in  most  cases 
involving  analogous  use. 

Evidence  of,  §§  620-638.  In  the  case  of  Westinghouse  v.  Stanley, 
133  Fed.  167,  §  620,  we  have  one  type  of  acquiescence  which  is 
evidence  of  invention;  in  Wolff  v.  Dupont,  134  Fed.  862,  §  620, 
we  have  quite  another.  In  the  former  case  there  was  the  acquies- 
cence of  those  engaged  in  the  particular  art  where  competition 
and  struggle  for  improvement  was  very  sharp;  in  the  latter  case 
the  condition  is  much  less  forceful.  The  acquiescence  in  the  Tesla 
inventions  involved  the  strongest  temptations,  and  the  greater 
the  temptation  the  stronger  the  evidence  of  acquiescence.  It  is 
believed  that  attempted  evasion  of  a  patent,  where  the  evidence 
of  such  attempt  is  clear  and  the  infringement  is  obvious,  should  be 
regarded  as  strong  evidence  of  invention;  but  it  is  also  believed 
that  this  rule  should  be  given  little,  if  any,  weight  when  the  com- 


BRIEF   SURVEY  43 

petition  of  business  leads  one  manufacturer  to  crowd  close  upon 
the  line  of  the  monopoly  of  another.  In  other  words,  the  intent 
should  govern.  The  rule  is  particularly  adapted  to  the  industrial 
parasite,  not  to  a  legitimate  competitor.  The  extent  to  which 
commercial  success  may  be  employed  to  evidence  invention  de- 
pends upon  the  circumstances  of  each  case.  It  cannot  be  relied 
upon,  but  it  is  often  most  persuasive.  Krementz  v.  Cottle,  148 
U.  S.  556,  §  622.  The  unfixedness  of  this  rule  is  illustrated  in  West- 
inghouse  v.  Union,  117  Fed.  495,  §  622,  where  the  court  said: 

"  If  there  is  any  doubt  upon  the  question  of  patentability,  the 
practical  and  commercial  results  of  the  improvement  must  resolve 
such  doubt  in  its  favor."     (p.  498). 

"  Its  confessed  commercial  success,  therefore,  cannot  be  accepted 
as  evidence  of  invention."     (p.  501). 

Clearly,  these  remarks  could  hardly  be  made  with  regard  to  the 
same  patent,  but  they  were  made  with  regard  to  two  patents  in 
the  same  case.  And  the  rule  is  the  same  as  to  efficiency.  National 
v.  Hedden,  148  U.  S.  482,  §  624;  and  also  as  to  extensive  use. 
Smith  v.  Goodyear,  93  U.  S.  486,  §  626.  But,  on  the  other  hand, 
if  commercial  success,  efficiency  or  extensive  use  may  be  evidence 
of  invention,  what  shall  be  said  of  a  patent  that  has  lain  dormant 
for  years,  and  when  suit  for  infringement  is  brought  upon  it,  the 
defendant  urges  the  converse  of  this  rule?  Suppose  counsel  says, 
"  The  question  of  invention  is  a  doubtful  or  debatable  one.  If 
this  patent  had  immediately  shown  large  efficiency  and  had  met 
with  great  commercial  success,  then  the  rules  would  apply  and  tip 
the  scales  in  favor  of  the  patent;  but  here  is  a  case  where  the  sign 
before  the  patent  has  been  changed  from  plus  to  minus.  Is  not 
its  failure  as  persuasive  of  want  of  invention  as  success  might  have 
been  of  invention?  "  While  the  statement  in  Campbell  v.  Duplex, 
101  Fed.  282,  §  637,  so  far  as  is  known,  is  the  nearest  approach 
to  a  justification  of  this  proposition,  it  is  believed  that  it  is  an 
argument  not  without  force.  Obvious  demand  may  have  its 
weight,  as  stated  in  Commercial  v.  Fairbank,  125  Fed.  4,  §  628; 
but  Fay  v.  Mason,  127  Fed.  325,  §  628,  places  a  distinct  limitation 
upon  the  rule,  which,  apparently,  is  this:  If  the  obvious  demand  is 
at  once  and  easily  met,  it  is  without  force;  but  if  the  obvious 
demand  is  one  met  only  with  difficulty,  there  is  evidence  of  inven- 
tion. Since  Reckendorfer  v.  Faber,  92  U.  S.  347,  §  629,  the  prima 
facie  of  a  patent  has  stood  for  very  little;  and  since  Palmer  v. 
Corning,  156  U.  S.  343,  §  629,  its  evidential  value  has  become 
microscopic.     Nor  is  the  presumption  of  the  grant  reinforced  by 


44  THE   FIXED   LAW   OF   PATENTS 

what  occurred  in  the  Patent  Office.  Canda  v.  Michigan,  124  Fed. 
486,  §  630;  American  v.  Sample,  130  Fed.  144,  §  630;  Imperial 
v.  Crown,  139  Fed.  312,  §  630.  But  the  effect  of  prior  attempts 
and  failures  and  turning  failure  into  success  is  quite  otherwise. 
With  the  rule  finally  and  well  stated  in  Carnegie  v.  Cambria,  185 
U.  S.  403,  §  631,  we  have  at  least  one  rule  of  evidence  of  invention 
which,  when  it  can  be  applied,  is  not  so  open  to  qualification  or 
diminution  as  to  render  it  of  little  force.  There  is  the  simplicity 
of  greatness  and  there  is  the  simplicity  of  triviality.  The  one  is 
clear  evidence  of  invention;  the  other  suggests  mechanical  skill. 
And  here  we  may  mark  the  distinction  between  patentees  of 
inventions  and  inventors  of  patents.  While  use  of  the  device  of 
a  patent  by  a  defendant  fairly  establishes  its  utility,  such  utility 
by  no  means  establishes  patentable  novelty.  As  a  matter  of  fact, 
the  statement  that  evidence  of  utility  cannot  be  made  to  control 
the  language  of  the  statute  which  limits  the  benefit  of  the  patent 
law  to  things  which  are  new  as  well  as  useful  is  conclusive  upon 
this  point,  and  leaves  utility  as  evidence  of  invention  where  it 
should  be  —  in  the  same  category  with  commercial  success  and 
large  use.     Grant  v.  Walter,  148  U.  S.  547,  §  636. 

Force  of  nature,  §  639.  A  force  of  nature  is  not  patentable, 
nor  may  anyone  so  claim  the  utilization  of  such  a  force  as  to  prac- 
tically exclude  another  from  employing  it  with  other  means.  The 
Morse  telegraph  case  at  the  beginning  and  the  Cameron  septic 
tank  at  the  close  of  the  series  of  cases  upon  this  subject  fitly  begin 
and  conclude  a  most  uniform  line  of  rulings. 

Generic  invention,  §§  640-3.  One  may  choose  his  definition  of 
a  generic  or  "  pioneer  "  invention  from  the  many  given  under 
§§  640-643.  The  statement  in  Westinghouse  v.  Boyden,  170  U.  S. 
537,  §  641,  that  the  word  "  pioneer  "  is  "  commonly  understood 
to  denote  a  patent  covering  a  function  never  before  performed  " 
is  open  to  serious  criticism.  In  the  first  place  it  is  altogether  ques- 
tionable whether  that  is  the  common  understanding  of  the  term. 
In  the  second  place,  it  is  of  doubtful  exclusiveness.  For  example, 
the  "  function  "  of  the  Edison  lamp  (Incandescent  Lamp  Case, 
159  U.  S.  465,)  had  been  performed  before,  but  the  Edison  incan- 
descent lamp  patent  was  a  pioneer  in  the  estimation  of  most  people. 
If  we  now  compare  Edison's  lamp  patent  with  his  film  patent 
(Edison  v.  American,  114  Fed.  926,  §  640)  we  have  the  distinction 
between  a  generic  and  specific  invention  clearly  before  us.  The 
definition  of  a  generic  process  in  Mitchell  v.  Til gh man,  86  U.  S. 
287,  §  641,  is  beyond  all  criticism;  and  the  statement  in  the 
dissenting  opinion  of  Mr.  Justice  Shiras  in  Westinghouse  v.  Boyden 


BRIEF    SURVEY  45 

(under  §  644)  that  "  a  pioneer  patent  does  not  shut  but  opens  the 
door  for  subsequent  invention  "  is  a  verity.  Men  like  Bell,  West- 
inghouse,  Cowles,  Acheson,  have  each  opened  up  great  fields  for 
invention.  Giving  to  such  as  these  protection  commensurate 
with  their  genius  —  making  improvements  tributary  to  them  — 
has  in  no  wise  retarded  progress;  but  on  the  contrary,  has  given 
them  opportunity  to  secure  the  co-operation  of  large  capital  to  carry 
the  fruits  of  their  labors  into  common  use.  And  there  is  need  at 
this  time  for  laying  emphasis  upon  this  statement  of  Justice  Shiras. 
In  the  effort  to  suppress  noxious  monopoly  there  is  a  tendency, 
such  as  that  from  which  the  learned  Justice  dissents,  to  repress 
the  monopoly  of  a  generic  invention.  While  the  reward  which 
the  world  bestows  without  patent  upon  a  Franklin  or  a  Crookes  or 
a  Koch  or  a  Mendelieff  or  a  Kelvin  may  be  quite  enough  for  these 
great  benefactors,  in  order  to  encourage  the  leaders  of  our  industries 
to  invest  their  energies  and  their  fortunes  in  bringing  the  benefit 
of  great  inventions  to  the  people  at  large,  the  legitimate  monopoly 
of  the  patent  must  be  safeguarded.  A  striking  example  lies  in  a 
comparison  of  Bell  and  Cowles.  Had  the  same  recognition  been 
accorded  Cowles  —  a  recognition  finally  awarded,  but  too  late  — 
that  was  given  Bell,  the  industrial  development  of  electrolytic 
synthesis  would  not  have  been  delayed  a  decade,  but  on  the 
contrary,  the  recognition  of  the  monopoly  of  the  field  would  have 
opened  the  way  for  capital  and  improvement  alike,  and  both 
inventor  and  nation  would  have  been  the  richer. 

Immoral  object,  §  645.  The  decisions  quoted  under  §  645  as 
to  immoral  use  open  a  vista  of  large  interest.  The  Animarium 
case  properly  withholds  the  implied  sanction  of  a  patent  to  an 
invention  which  may  be,  in  the  broader  sense  of  the  term,  "  im- 
moral," i.  e.,  lacking  in  truth  of  disclosure,  or,  affirmatively 
disclosing  that  which  is  untrue  or  pernicious.  The  slot  machine 
case  presents  quite  another  problem.  If  the  decision  in  this  case 
is  compared  with  the  recent  rulings  of  the  Supreme  Court  as  to 
the  powers  of  the  states  to  regulate  the  enjoyment  of  patent  rights 
(Wilbur  v.  Virginia,  103  U.  S.  344;  Allen  v.  Riley,  203  U.  S.  347; 
and  Woods  v.  Carroll,  203  U.  S.  358,  all  under  §  920),  it  would  seem 
that  the  decision  in  the  slot  machine  case  goes  sufficiently  far  to 
protect  the  public  through  Federal  intervention,  leaving  the  states, 
under  these  Supreme  Court  holdings,  the  power  to  legislate  for  the 
specific  protection  of  their  inhabitants. 

Improvement,  §§  646-8.  This  subject  has  been  considered  in 
connection  with  §§  430-444,  under  the  general  title  of  improvement. 
It  is  enough  to  add  here  that  it  is  thought  that  there  has  been  no 


46  THE    FIXED    LAW    OF    PATENTS 

better  comment  upon  that  which  characterizes  patentable  improve- 
ment than  the  statement  in  American  v.  Universal,  151  Fed.  591, 
quoted  under  §  648.  It  is  he  who  strikes  out  upon  a  new  line  or 
he  who  breaks  through  the  barrier  that  invents  —  not  he  who 
adapts  and  adopts  and  adjusts.  The  distance  traveled  may  be  long 
or  short;  but  so  long  as  it  goes  through  or  around  and  arrives 
where  either  (1)  no  one  had  arrived  before  (a  generic  invention);  or 
(2)  arrived  by  a  new  route  (a  specific  improvement)  it  is  invention. 

Manufacture,  §  649.  This  subject  will  be  fully  considered  in 
connection  with  §§  772-775.  As  bearing  directly  upon  the  subject 
of  invention  the  quotations  from  Kilbourn  v.  Bingham,  50  Fed. 
697  and  Cerealine  v.  Bates,  101  Fed.  272,  under  §  649,  should  be 
compared.  While  it  is  true  that  each  case  presents  its  own  prob- 
lems, to  say  that  "  there  is  no  clear  line  of  demarkation  between 
what  may  be  called  a  new  article  of  commerce,  not  patentable 
though  useful,  and  new  articles  of  manufacture  patentable  as 
such,"  is  wide  of  the  fact.  The  line  of  demarcation  is  absolutely 
clear.  Risdon  v.  Medart,  158  U.  S.  68,  §  649.  It  is  never  otherwise 
than  that  the  inherent  novelty  must  be  of  the  article  itself;  never 
in  its  elements,  else  it  is  a  process;  not  in  the  mechanical  means 
by  which  it  is  produced,  else  it  is  a  case  of  mechanical  invention. 
Either  of  these  may  or  may  not  be  patentable.  Undoubtedly  what 
the  court  had  in  mind  in  the  cereal  case  was  that  it  is  generally 
difficult  to  determine  upon  which  side  of  the  fixed  line  of  demarca- 
tion the  invention  in  question  falls. 

Mathematical  formula,  §  650.  The  one  case  cited  under  this 
section  raises,  not  the  question  of  patentability  of  mathematical 
or  other  formulae,  but  whether  a  claim  expressed  in  such  terms  is 
good.  Formulas  and  symbolism  have  long  been  used  in  the  descrip- 
tion and  drawings,  often  with  greater  lucidity  than  could  be  at- 
tained in  any  other  way;  but  when  it  comes  to  delimiting  the 
invention  by  the  claim,  that  is  quite  another  matter.  This  rule 
has  been  successfully  invoked,  at  least  once,  in  securing  a  similar 
claim  in  the  Patent  Office;  but  it  is  thought  it  should  be  permitted 
only  when  the  meaning  of  the  formula  employed  has  a  definite 
and  clearly  understood  meaning  and  only  when  the  ordinary 
expressions  fail  of  the  purpose. 

Means,  §  651.  The  Supreme  Court  has  repeatedly  held  that 
an  invention  must  consist  of  a  new  and  useful  means  of  obtaining 
the  end  sought.  But  when  that  court  came  to  consider  the  case  of 
National  v.  Boston,  156  U.  S.  502,  §  650,  the  rule  received  con- 
siderable stretching  to  make  it  cover  the  case  of  an  old  device  to 
a  remotely  analogous  use,  and  held,  "  in  that  case  it  is  the  idea  of 


BRIEF    SURVEY  47 

means,  though  old,  that  is  patentable,  and  not  the  end  attained." 
This  is  but  shifting  the  difficulty  to  another  point  and  saying  that 
novelty  is  not  an  essential  to  patentable  invention.  Had  the  court 
said  that  the  idea  of  means  resided,  not  in  the  old  device  nor  in 
the  new  use,  but  in  the  concept  that  the  old  device  could  be  put 
to  the  new  use,  the  attenuation  of  the  rule  might  be  evident,  but 
less  distortion  would  have  occurred.  How  shall  we  apply  this 
rule  to  an  article  of  manufacture?     The  answer  is  not  at  hand. 

Mechanical  skill,  §§  652-666.  If  we  had  denned  patentable 
invention  and  patentable  improvement,  we  should  have,  by 
exclusion,  defined  mechanical  skill.  But  we  have  not,  nor,  can 
it  be  done.  The  utmost  that  can  be  done  in  any  of  these  cases  is 
to  marshal  the  tests  and  criteria  which  aid  in  determining  the 
question  in  each  case.  Under  this  sub-title  of  mechanical  skill 
it  is  shown  that  adaptation,  aggregation,  carrying  forward,  change 
of  form,  uniting  or  dividing  parts,  increasing  efficiency,  adapting 
an  old  device  to  an  analogous  use  or  to  a  new  use  where  the  change 
is  trivial,  or  using  old  elements  to  produce  an  old  result  without 
recombination,  or  making  an  article  portable,  or  merely  giving  it 
strength  —  all  these  are  mechanical  skill.  And  yet  we  may  not 
say  that  none  of  these  acts,  per  se,  may  involve  invention.  As 
was  said  in  Krementz  v.  Cottle,  148  U.  S.  556,  §  656,  "  it  is  not 
easy  to  draw  the  line  that  separates  the  ordinary  skill  of  a  mechanic 
versed  in  his  art  from  the  exercise  of  patentable  invention."  And 
this  leads  directly  to  a  consideration  of  what  range  of  knowledge 
or  skill  shall  be  imputed  to  "  a  mechanic  versed  in  his  art."  In 
Brown  v.  King,  107  Fed.  498,  §  657,  a  rule  is  laid  down  which  is 
believed  to  proceed  upon  a  wrong  principle,  and  which  illustrates 
the  point  in  question.  Clearly  the  invention  in  that  case  was  not 
one  which  could  have  been  produced  by  "  the  ordinary  skill  of  a 
mechanic  versed  in  his  art."  But  the  inventor  chanced  to  be 
an  engineer  of  large  ability  who  went  about  the  problem  with 
the  directness  and  certainty  which  comes  of  education  and  training, 
and  produced  the  desired  device.  Now,  is  the  question  of  inven- 
tion to  be  decided  by  a  measurement  of  the  education  and  engineer- 
ing skill  of  the  inventor,  or  by  the  skill  of  "a  mechanic  versed 
in  his  art?  "  In  the  case  under  consideration  the  court  took  the 
inventor  as  the  measure.  Is  this  permissible?  Or,  taken  the 
other  way,  must  we  say  that  in  a  given  art  the  skill  of  a  mechanic 
used  as  a  standard  must  be  commensurate  with  the  highest  skill 
evinced  by  some  individual  in  the  art?  It  is  perfectly  clear  that, 
in  a  difficult  and  complex  art  —  such,  for  example,  as  communica- 
tion by  means  of  electricity  —  the  "  mechanic  versed  in  his  art  " 


48  THE    FIXED    LAW    OF    PATENTS 

is  not  the  lineman  who  climbs  poles  or  the  machinist  who  makes 
parts  of  the  apparatus;  but  must  this  mechanic  be  an  Edison, 
or  a  Bell,  or  a  Marconi?  To  state  the  proposition  is  to  show  its 
absurdity.  We  may,  therefore,  lay  down  the  following  negative 
rules  as  to  what  constitutes  the  status  of  mechanical  skill: 

1.  It  cannot  be  measured  in  terms  of  the  skill  of  the  inventor  to 
whom  the  patent  issued. 

2.  It  cannot  be  measured  in  terms  of  the  highest  genius  in  the 
art. 

3.  It  cannot  be  measured  in  terms  of  the  ordinary  workman 
in  the  art. 

And  on  the  positive  side  it  may  be  stated  that  mechanical  skill 
must  vary  directly  with  the  general  advance  of  the  art,  and  to  some 
degree  with  the  progress  in  general  education.  The  education 
of  to-day  makes  mechanical  skill  of  what  might  have  been  inventive 
genius  fifty  years  ago.  But  as  education  has  narrowed  the  in-field 
of  invention,  it  has  extended  the  out-field;  and  it  will  not  do  to 
apply  limitations  based  upon  engineering  training  to  close  the 
door  of  invention  to  genius  merely  because  it  happens  to  be  trained 
genius. 

Novelty,  §§  667-9.  Are  novelty  and  patentability  convertible 
terms?  Clearly  not.  While  novelty  is  an  essential  to  patentability, 
mere  novelty  is  not  enough;  novelty  plus  the  other  factors  which 
the  statute  prescribes  constitutes  patentability.  Under  §  667  will 
be  found  the  laborious  efforts  of  the  courts  to  define  and  distinguish 
novelty.  If  one  thinks  that  the  courts  must,  in  all  these  years, 
have  arrived  at  some  general  statement  or  doctrine  which  may  be 
crystallized  into  a  general  statement,  let  him  read  those  cases  and 
attempt  it.  It  is,  after  all,  but  another  instance  of  the  fact  that  no 
man  may  write  down  and  classify  the  activity  of  the  human  mind. 
As  has  been  seen,  the  line  between  invention  and  mechanical  skill 
is  a  shifting  one.  So  is  the  line  which  separates  patentable  novelty 
from  everything  else.  The  statute  makes  novelty  and  utility  the 
main  qualifications  of  the  right  to  patent.  Of  these  utility  cuts 
but  small  figure  in  the  mass  of  decisions,  except  as  evidencing 
novelty.  Absence  of  novelty  is  the  chief  of  the  affirmative  defenses. 
To  the  solution  of  the  question  are  brought  most  of  the  rules  and 
tests  of  the  entire  field  of  the  patent  law,  even  including  some  of  the 
rules  and  tests  of  infringement.  Novelty  is  a  condition.  It  is 
indefinable,  shifting  and  varying  with  each  case.  It  is  something 
to  be  decided  —  whether  present  or  absent  —  by  a  jury  or  by  the 
court  exercising  the  functions  of  a  jury.  The  statute  makes  the 
wise  provision  that  in  the  trial  of  an  equity  cause,  the  court  may  in 


BRIEF    SURVEY  49 

its  judgment  empanel  a  jury  to  decide  this  question  of  fact.  It  is 
from  failure  to  regard  the  subject  of  novelty  —  the  mistake  of 
treating  it  as  a  yardstick  by  which  invention  is  to  be  measured  — 
that  so  many  decisions  have  been  astray  and  reversed  on  appeal. 

Old  device,  new  use,  §§  670-73.  A  writer  with  any  perception 
of  his  sphere  of  activity  would  not  contemplate  a  discussion  of 
this  subject.  He  would  merely  refer  to  Potts  v.  Creager,  155  U.  S. 
597,  §  671,  and  state  that  nothing  more  was  to  be  said. 

Old  elements,  new  result,  §  674;  Old  elements,  old  result,  §  675. 
The  employment  of  an  old  combination  or  process  to  effect  a  new 
result,  as  stated  in  Potts  v.  Creager,  supra,  depends  upon  the  ques- 
tion of  analogousness  as  to  its  patentability.  But  the  fact  that  the 
elements  of  the  combination  are  old  in  themselves,  when  the  result 
is  new,  does  not  affect  the  question  of  invention.  In  fact,  most 
combinations  fall  under  this  class.  With  old  elements  and  an  old 
result  the  question  of  invention  depends  upon  whether  the  com- 
bination of  the  elements  was  old. 

Old  process,  new  use,  §§  676-8.  And  the  same  rules  apply  to 
processes.  The  rules  of  Potts  v.  Creager,  155  U.  S.  597,  §  671 
and  Penna.  v.  Locomotive,  110  U.  S.  490,  §  676,  apply  with  equal 
force  to  processes  and  machines. 

Omitting  element,  §  678.  Subject  to  the  qualification  stated 
by  the  Supreme  Court  quoted  under  this  section,  just  as  omitting 
an  element  avoids  infringement  (§  456)  so  it  may  involve  invention. 
And  it  may  be  said  also  that  he  who  performs  a  given  function 
with  the  omission  of  an  element  formerly  essential,  without  the 
addition  of  another  element  to  take  its  place,  may  entitle  himself 
to  a  broader  claim  than  that  of  the  former  combination,  although 
he  may  not  draw  to  himself  the  quality  of  a  pioneer  and  dominate 
the  prior  combination. 

Patentability,  §§  679-684.  A  very  substantial  and  useful  volume 
has  been  written  upon  this  subject  alone.  As  to  what  constitutes 
patentability,  no  better  expressions  are  to  be  had  than  the  quo- 
tations under  §  679  from  Atlantic  v.  Brady,  107  U.  S.  192,  and 
Thompson  v.  Boisselier,  114  U.  S.  1.  How  far  the  copendency 
of  application  or  subsequent  issue  of  a  patent  to  another  may  evi- 
dence patentable  difference  is  a  question  which,  notwithstanding 
the  decision  in  Kokomo  v.  Kitselman,  189  U.  S.  6,  and  Ransome 
v.  Hyatt,  69  Fed.  148,  §  680,  is  an  open  question.  The  day  upon 
which  this  paragraph  was  written  the  writer  was  shown  two 
patents,  upwards  of  eight  years  apart  in  issue,  covering  a  composi- 
tion of  matter  simply  identical.  Now,  it  is  all  very  well  to  regard 
the  subsequent  issue  of  such  a  patent    as    a  presumption,  micro- 


50 


THE    FIXED    LAW    OF    PATENTS 


scopic  as  it  may  be;  but  the  moment  we  dignify  it  as  evidence  it 
fails  to  square  with  the  experience  of  any  patent  lawyer. 

The  position  taken  by  the  courts  in  Millard  v.  Chase,  108  Fed. 
399,  and  Hurlbut  v.  U.  S.  Mailing,  124  Fed.  66,  §  681,  is  absolutely 
sound.  Too  long  have  the  courts  followed  the  line  of  least  resistance 
in  regard  to  patents  of  evident  invalidity.  It  may  satisfy  the 
demands  of  the  case  at  bar  to  construe  a  patent,  confessedly 
invalid  for  want  of  invention,  so  narrowly  as  to  render  infringement 
impossible;  but  the  courts  owe  a  duty  to  the  public  —  to  the 
industries  of  the  country  —  as  was  clearly  indicated  in  Atlantic 
v.  Brady,  107  U.  S.  192,  under  §  679  —  to  wipe  out  at  every  oppor- 
tunity those  patents  which  make  no  contribution  whatever  to 
human  knowledge,  but  stand  in  the  way  of  legitimate  progress. 

As  to  the  patentability  of  a  mental  conception,  undoubtedly 
the  rule  in  Forgie  v.  Oil  Co.  58  Fed.  871,  §  682,  is  sound;  but  what 
shall  be  said  of  Bradford  v.  Expended,  146  Fed.  984,  §  682?  Is 
one  to  be  barred  from  patenting  an  article  of  manufacture  because 
he  has  also  invented  patentable  means  for  producing  that  article? 
This  question  is  merely  raised,  not  answered.  It  is  true,  as  has 
been  said  in  LeRoy  v.  Tatham,  14  How.  156r  §  683,  that  a  principle, 
scientific  or  otherwise,  is  not  patentable.  It  is  the  means  for 
utilizing  such  a  principle  that  is  the  subject-matter  of  a  patent.  An 
architectural  design  is  not  patentable.  Jacobs  v.  Baker,  74  U.  S. 
295,  §  684.  The  test  here  is  evident:  Novelty  of  design  is  not 
novelty  of  means  employed.  If  such  a  design  embraced  novel 
mechanical  means,  it  would  be  those  means,  not  the  design,  that 
would  be  patentable. 

Process,  §§  685-88.  This  subject  will  be  more  fully  considered 
under  the  general  title  process,  §§  814-822.  Perhaps  enough  has 
been  said  regarding  the  decision  in  Westinghouse  v.  Boy  den,  170 
U.  S.  537,  §  686.  But  the  writer  is  under  the  profound  conviction 
that  the  rule  of  that  case  marks  a  halt  in  the  progress  hitherto 
due  to  the  protection  of  basic  invention.  Inventors  and  manu- 
facturers alike,  knowing  this  rule,  are  endeavoring  to  overcome  its 
effect  by  the  patenting  of  not  only  all  detail  improvements,  but 
every  possible  modification  that  can  be  thought  of.  This  is  result- 
ing in  the  issuance  of  a  vast  number  of  patents  not  used  —  not 
expected  ever  to  be  used  —  simply  to  close  the  door  as  best  it 
may  be  done  in  the  absence  of  the  right  to  a  claim  for  a  mechanical 
process. 

Property  of  matter,  §  689.  Not  the  property  of  matter  dis- 
covered, but  the  invention  of  a  practical  application  of  it,  is  patent- 
able. 


BRIEF    SURVEY  51 

Result  or  function,  §  690.  To  hold  a  function  or  result  patentable 
would  be  subversive  of  the  entire  patent  system.  This  subject 
has  been  previously  considered  under  §§  426-7.  One  remark 
should  be  added  here.  It  is  a  common  error  to  suppose  that  a 
"  whereby  clause  "  (that  is,  a  clause  following  the  statement  of 
the  combination  of  the  claim  stating,  whereby  this  and  that 
operate  so  and  so  to  accomplish  this  certain  thing  —  the  function 
of  the  device)  in  some  way  makes  the  claim  broader,  or  in  some 
way  makes  the  function  performed  a  part  of  the  claim.  Recalling 
the  rule  that  a  function  is  not  patentable  at  once  shows  the  useless- 
ness  of  such  appendages  to  claims. 

Scientific  principles  or  laws,  §  691.  This  subject  has  been  gener- 
ally considered  under  patentability  §§  682,  683. 

Simplicity,  §  692-3.  This  subject  also  has  been  reviewed  under 
evidence,  §  632,  but  the  matter  of  ex  post  facto  judgment  (§  693) 
should  not  be  overlooked.  The  rule  now  clearly  laid  down  in  Car- 
negie v.  Cambria,  185  U.  S.  403,  §  693,  should  set  this  matter  at 
rest. 

Simplification,  §  694.  This,  like  the  question  of  simplicity  of 
invention,  depends  upon  whether  it  is  a  case  of  triviality  or  a  stroke 
of  genius. 

Substitution,  §§  695-7.  The  long  list  of  Supreme  Court  decisions 
leaves  no  question  as  to  the  non-patentability  of  mere  substitution 
of  one  material  for  another.  But  Edison  v.  TJ.  S.,  52  Fed.  300, 
§  697,  is  typical  of  a  case  where  substitution  of  material  is  clearly 
patentable.  In  that  case  not  only  was  the  carbon  filament  unknown, 
but  its  use  so  enlarged  the  old  function  as  to  take  the  vacuum  lamp 
from  the  laboratory  and  make  it  an  article  of  great  usefulness.  The 
test  of  patentability  would,  seemingly,  depend  upon  both  the 
novelty  of  the  element  substituted  and  the  improved  result;  or, 
as  in  the  case  of  Rainear  v.  Western,  159  Fed.  431,  §  697,  upon 
the  novel  substitution  of  a  known  element  to  effect  an  improved 
result. 

Systems  and  arrangements,  §  698.  This  subject  has  been  adverted 
to  under  aggregation,  §§  42-51.  In  the  note  under  Library  Bureau 
v.  Macey,  148  Fed.  380,  §  698,  is  indicated  that  which  may  save  a 
patent  covering  a  "  system;  "  but  as  there  stated,  it  is  the  novel 
means  employed  —  not  the  system  or  arrangement  —  that  con- 
stitutes the  patentable  feature  of  the  invention.  So  it  may  be  with 
the  numberless  electrical  systems  patented.  In  many  of  them  are 
novel  devices  and  combinations.  The  "  system  "  claim  comes 
near  being  functional  in  character,  since  it  is  the  product  of  the 
employment  of  these  devices  which  may  be  novel  in  connection 


52 


THE    FIXED    LAW    OF    PATENTS 


with  arrangements  of  wiring  necessary  to  their  conjoint  or  suc- 
cessive operation;  but  like  the  Library  Bureau  case,  the  invention 
resides  in  the  devices  which  make  the  arrangement  possible,  rather 
than  in  the  arrangement  itself. 

Tests  of,  §§699-700;  Transposition  of  parts,  §701.  These 
subjects  have  been  considered  under  evidence  and  adaptation, 
respectively. 

Utility,  §  702.  The  decision  in  Rickard  v.  DuBois,  103  Fed. 
868,  §  702,  is  most  suggestive.  It  raises  the  question,  how  many 
other  patents  are  there  which  might  come  under  this  ruling?  We 
are  told  there  is  a  novel  attachment  for  a  loom  to  make  "  bargain  " 
goods,  i.  e.,  goods  with  slight  blemishes  or  defects  which  the  loom 
would  not  make  were  it  not  interfered  with.  This  may  or  may  not 
be  a  harmless  deception  for  the  benefit  of  the  "  bargain  hunter," 
but  would  such  a  device  be  patentably  useful  under  the  statute? 
From  time  to  time  the  Patent  Office  rejects  applications  which 
would,  if  matured  into  patents,  be  subversive  of  good  morals,  on 
the  ground  of  lack  of  statutory  utility.  Consider  also  the  slot 
machine  case  under  §  645.  With  the  continually  quickening  moral 
sense  of  the  public,  the  line  will  be  drawn  more  sharply;  and  those 
inventions  which  distinctly  and  chiefly  find  their  uses  in  practices 
brought  under  public  condemnation  will  find  scant  favor  with 
the    courts. 

INVENTOR,  §  703. 

Nothing  need  be  added  to  the  statement  of  the  text. 

JOINT  INVENTIONS,  §  704. 

The  general  statement  under  this  section  is  quite  full.  While 
not  common,  instances  of  joint  patenting  do  occur,  such  as  that  in 
Standard  v.  Computing,  126  Fed.  639,  or  De  Laval  v.  Vermont, 
135  Fed.  772,  where,  through  ignorance,  the  applicants  supposed 
that  the  right  to  make  joint  application  depended  upon  joint 
ownership. 


JUDICIAL  NOTICE,  §§  705-712. 

The  courts  will  take  judicial  notice  of  matter  relating  to  novelty 
and  patentability,  and  may  refer  to  common  sources  of  general 
information  to  refresh  the  recollection.  They  will  also,  to  some 
extent,  take  judicial  notice  of  the  prior  art.  Beer  v.  Walbridge, 
100  Fed.  465,  §  709,  and  will  decide  matters  in  view  of  such  knowl- 
edge whether  pleaded  or  not.  Slawson  v.  Grand,  107  U.  S.  649, 
§  708.     In  like  manner  public  use  may  be  the  subject  of  judicial 


BRIEF    SURVEY  53 

notice;  and  to  inform  itself  on  matters  of  patentability  in  general 
the  court  will  be  at  liberty  to  refer  to  it  own  records  for  anything 
therein  contained.     Rumford  v.  Hygienic,  159  Fed.  436,  §  711. 

JURISDICTION,  §§713725. 

The  circuit  courts  have  original  jurisdiction  of  all  cases  of 
infringement,  excepting  that  actions  of  that  nature  against  the 
Government  arise  in  the  Court  of  Claims.  Appellate  jurisdiction 
originally  resided  in  the  Supreme  Court,  but  since  the  establish- 
ment of  the  circuit  courts  of  appeals  they  have  appellate  and  final 
jurisdiction  of  all  actions  of  this  nature,  excepting  only  a  question 
of  jurisdiction  of  a  Federal  court,  which  lies  to  the  Supreme  Court. 
Of  course  a  case  may  be  certified  to  the  Supreme  Court,  but  this  is 
outside  the  question  of  general  jurisdiction.  A  district  judge  sitting 
in  circuit  has  the  same  powers  as  a  circuit  justice  or  judge.  A 
controversy  involving  a  patent,  when  the  moving  cause  is  a  contract, 
is  not,  as  such,  one  which  is  under  the  jurisdiction  given  by  the 
patent  statute.  The  distinction  is  well  stated  in  Victor  v.  The  Fair, 
123  Fed.  424,  §  714.  The  general  rule  as  to  equity  jurisdiction  is 
stated  in  the  quotation  under  §  718  from  Root  v.  Railway,  105  U.  S. 
189.  When  a  court  of  equity  has  once  acquired  jurisdiction,  its 
powers  will  be  co-extensive  with  the  necessity  of  dispensing  full 
justice;  as,  for  example,  if  matters  of  contract  are  incidental, 
they  will  be  decided;  and  if  jurisdiction  were  acquired  through 
other  conditions  than  those  arising  from  infringement,  and  infringe- 
ment were  incidental  in  the  case,  the  court  would  proceed  to  a 
full  determination  of  the  issues.  Primarily,  a  court  of  equity 
takes  jurisdiction  in  order  to  apply  the  remedies  peculiar  to  equity, 
and  will  not  take  jurisdiction  when  the  remedy  at  law  is  adequate. 
Keys  v.  Eureka,  158  U.  S.  150,  §  721,  or  merely  for  the  purpose  of 
assessing  damages  or  profits.  Truman  v.  Holmes,  87  Fed.  742, 
§  719.  Generally  speaking,  an  equitable  title  is  insufficient  to 
enable  a  person  to  sue  for  infringement.  Milwaukee  v.  Brunswick- 
Balke,  126  Fed.  171,  §  926.  But  it  would  appear  that  conditions 
might  arise  where  an  equitable  interest  might  be  sufficient.  Hay- 
ward  v.  Andrews,  106  U.  S.  672,  §  720.  While  it  is  the  general 
rule  that  jurisdiction  will  not  be  taken  on  the  showing  of  any  interest 
less  than  one  of  the  three  mentioned  in  Waterman  v.  Mackenzie, 
138  U.  S.  252,  §  150,  if  the  infringement  is  committed  by  the 
assignor  against  his  assignee  holding  a  license  interest,  such  licensee 
may  sue.  Littlefield  v.  Perry,  88  U.  S.  205,  §  722.  But  a  plea  of 
license  cannot  defeat  jurisdiction.  The  question  of  residence  as 
affecting  jurisdiction  remains  unchanged  by  the  act  of  Mar.  3,  1897, 


54 


THE    FIXED    LAW    OF    PATENTS 


except  that  the  provisions  therein  contained  were  superadded  to 
the  existing  law.  Westinghouse  v.  Great  Northern,  88  Fed.  258, 
§  723.  It  is  unnecessary  to  enter  into  the  subject  of  jurisdiction 
of  state  courts  further  than  to  remark  that  it  is  a  general  principle 
that  if  such  court  has  acquired  jurisdiction  upon  proper  grounds 
it  may,  collateral  to  the  main  issue,  enquire  into  the  scope  and 
validity  of  the  patent. 

LACHES,  §§  726-732. 

Since  both  laches  and  excuse  for  laches  are  negative  in  character, 
they  do  not  appeal  strongly  to  the  courts.  Laches  may  amount 
to  abandonment  as  indicated  in  §  726.  Delay  in  bringing  suit  to 
be  effective  must  be  very  clear.  When  a  patentee  is  making  bona 
fide  effort  to  protect  his  monopoly,  he  is  not  called  upon  to  sue  all 
infringers.  Edison  v.  Sawyer-Man,  53  Fed.  592,  §  729.  But  a 
patentee  may  not  use  his  grant  as  a  trap  to  catch  game.  Hohorst 
v.  Hamburg-American,  91  Fed.  655,  §  728.  Whether  poverty 
is  an  excuse  for  laches  compare  Woodbury  v.  Keith,  101  U.  S.  479 
with  Leggett  v.  Avery,  149  U.  S.  287,  §  729.  Contradictory  as 
these  rulings  appear,  it  is  thought  no  hard  and  fast  rule  may  be 
laid  down.  Poverty  is  a  relative  term,  and  it  must  be  viewed 
along  with  surrounding  circumstances  and  conditions,  as  was 
done  in  McNeely  v.  Williames,  96  Fed.  978,  §  727.  The  subject  of 
laches  as  affecting  injunction  pendente  lite  arises  under  §  568. 

LAW  ACTIONS,  §§  733737. 

Conditions  which  warrant  the  bringing  of  an  action  at  law  for 
infringement  are  such  as  to  render  the  proceeding  rare.  The  special 
rules  affecting  such  cases  are  few.  It  is  now  well  settled  that  the 
court  has  power  to  direct  a  verdict  when  it  is  evident  and  clear 
that  the  plaintiff  cannot  recover;  but  it  is  to  be  observed  that  this 
is  a  ruling  of  law  that  recovery  cannot  be  had,  rather  than  the 
usurpation  of  the  function  of  a  jury  in  deciding  a  question  of  fact. 
It  is  the  duty  of  the  court,  in  instructing  the  jury,  to  define  the 
scope  of  the  invention  in  accordance  with  the  claim.  Holmes 
v.  Truman,  67  Fed.  542,  §  736.  And  it  is  not  proper  to  instruct 
as  to  abstract,  recondite  or  hypothetical  matters,  or  to  read  from 
the  opinion  of  another  judge  upon  the  patent  in  suit.  (§  736). 
The  subject  of  damages  has  already  been  considered.  (§§  280- 
299).  Aside  from  the  rules  here  noted  and  those  relating  to  damages 
and  to  the  statutory  notice  of  evidence  of  anticipation  (§  795), 
the  trial  of  a  law  action  for  infringement  proceeds  upon  general 
and  well-established  lines.  Some  matters  as  to  pleading  arise  under 
§§  789-807. 


BRIEF    SURVEY  55 

LETTERS  PATENT,  §§  738-748. 

It  is  quite  the  fashion  of  late  to  speak  of  a  patent  as  a  "  mo- 
nopoly." The  writer  has  fallen  into  this  habit,  and  condemns 
himself  along  with  the  practice  in  general.  A  patent  for  an  inven- 
tion is  not  a  true  monopoly.  U.  S.  v.  Bell,  128  U.  S.  315,  §  745; 
nor  is  the  "  contract  theory  "  (§  741)  without  objection.  It  will 
be  a  long  time  before  a  better  statement  will  be  made  than  that 
in  Seymour  v.  Osborne,  78  U.  S.  516,  §  745,  which  makes  the 
patent  neither  a  monopoly  nor  a  contract,  but  a  particular  form  of 
grant  sanctioned  by  the  constitution  for  the  specific  purpose  — 
both  specific  and  general  in  its  purview,  but  not  personal  —  for 
the  purpose  of  promoting  the  useful  arts.  It  is  true,  indeed,  a 
patent  or  a  series  of  patents  may  afford  the  basis  of  an  odious 
monopoly  (National  v.  Hench,  83  Fed.  36,  §  744),  but  any  attempt 
to  classify  a  patent  monopoly  as  per  se  coming  under  the  Sherman 
Act  or  the  rule  of  Bement  v.  National,  186  U.  S.  70,  must  prove 
abortive.  Rubber  Tire  v.  Milwaukee,  154  Fed.  358,  §  744,  and 
also  §  745.  The  property  right  in  letters  patent  differs  little  from 
that  in  other  personalty.  There  is  no  obligation  arising  from  the 
grant  for  the  owner  to  make  use  of  his  invention,  or,  in  the  event 
of  his  failure  so  to  do,  any  suggestion  of  abandonment  of  his  right. 
Heaton  v.  Eureka,  77  Fed.  288,  §  746.  A  defect  in  a  grant  may  be 
fatal  or  not,  according  to  the  nature  of  the  defect.  In  Marsh  v. 
Nichols,  128  U.  S.  605,  §  742,  the  defect  was  the  absence  of  the 
signature  of  the  Assistant  Secretary  of  the  Interior,  which  arose 
purely  by  accident,  and  was  fatal.  In  Western  v.  North,  135  Fed. 
79,  §  748,  the  defect  was  delay  or  irregularity  of  the  Patent  Office 
was  not  sufficient  to  defeat  the  grant.  The  writer  has  always 
regarded  the  decision  in  Marsh  v.  Nichols  as  one  of  those  cases 
which  can  arouse  no  feeling  but  sadness  over  the  limitations  of 
human  justice. 

LICENSE,  749-764. 

An  ordinary  license  is  neither  assignable  nor  transmissible. 
Haffcke  v.  Clark,  50  Fed.  531,  §  762.  But  it  may  be  so  continued, 
of  course,  by  specific  terms  in  the  contract,  or  by  conduct  or 
implication.  Lane  v.  Locke,  150  U.  S.  193,  §  751.  It  would  seem 
that  the  Supreme  Court  has  established  a  special  rule  regarding 
Government  employees.  McAleer  v.  U.  S.,  150  U.  S.  424,  §  756. 
The  construction  of  a  contract  of  license  follows  the  general  rules 
of  construction  of  written  instruments.  Standard  v.  Leslie,  78 
Fed.  325,  §  753.  The  covenants  are  mutually  binding,  and  such 
a  covenant  as  agreeing  to  defend  the  patent  for  the  protection  of 


56  THE   FIXED   LAW   OF    PATENTS 

the  licensee  is  good.  U.  S.  Cons.  v.  Griffin,  126  Fed.  364,  §  753. 
The  rules  of  estoppel  apply  between  licensor  and  licensee,  but  an 
estoppel  does  not  arise  to  prevent  a  licensee  from  showing  the  prior 
art  to  define  the  limits  of  his  obligation.  American  v.  Helmstetter, 
142  Fed.  978,  §  754.  A  licensee  may  forfeit  his  rights,  and  if  he 
does,  by  failure  to  pay  license  fees  under  the  contract,  he  cannot 
regain  his  right  by  tender  of  the  fees  due.  Piatt  v.  Fire  Extin- 
guisher, 59  Fed.  897,  §  755.  A  license  may  arise  by  implication, 
or  may  be  made  by  parol,  and,  of  course,  the  statutory  license 
arises  in  favor  of  a  device  built  with  consent  before  patent  applica- 
tion (R.  S.  4899).  A  rather  close  question  of  shop  license  arose  in 
Barber  v.  National,  129  Fed.  370,  §  756.  It  is  thought  that  case 
marks  the  limit  of  right  of  an  employer.  There  are  cases  where 
the  secured  right  to  one  device  will  carry  with  it,  by  implication  and 
by  the  rule  that  the  grantor  is  in  duty  bound  to  make  enjoyment 
of  the  grant  possible,  the  right  to  use  another  patented  device. 
The  trolley  switch  case  (Thomson-Houston  v.  Illinois,  152  Fed. 
631,  §  756)  is  in  point.  There  the  complainant  consented  to  the 
installation  of  the  apparatus,  including  its  patented  switch,  neces- 
sary to  the  use  of  the  electric  locomotives  sold  to  defendant. 
Subsequently  complainant  bought  other  locomotives  to  use  in 
connection  with  the  former  from  another  maker,  and  used  them  in 
connection  with  the  same  switch  installation.  It  was  held  that 
the  license  which  went,  by  implication,  with  the  sale  of  the  locomo- 
tives of  complainant's  make  entitled  the  defendant  to  use  the 
switches  in  connection  with  the  other  locomotives.  While  this 
holding  might,  at  first  glance,  seem  extreme,  it  is  evident  that, 
in  such  cases,  the  line  must  be  drawn  somewhere;  and  since  it  was 
within  the  power  of  that  complainant  to  have  specifically  limited 
the  use  of  its  switches  to  that  in  conjunction  with  its  locomotives, 
so  long  as  that  was  not  done,  the  rule  seems  just.  But  the  rule 
in  Edison  v.  Peninsular,  101  Fed.  831,  §  756,  is  questionable. 
Unless  the  contract  otherwise  provides,  payment  of  royalties  ceases 
with  the  life  of  the  patent;  and  it  is  fair  to  presume  that  if  the 
patent  expires  prior  to  its  full  limit  by  reason  of  the  expiration 
of  a  foreign  patent  under  the  former  rule,  payment  of  royalties 
would  then  cease.  The  right  to  royalties  depends  upon  what  is 
claimed,  not  what  is  described  in  the  patent.  Western  v.  Robertson, 
142  Fed.  471,  §  671.  And  where  the  license  was  made  before  patent 
and  covers  more  than  materializes  in  the  claim,  the  licensee  is  not 
bound  to  royalties  upon  that  which  is  found  unpatentable.  Eclipse 
v.  Farrow,  199  U.  S.  581,  §  760.  The  rule  that  the  sale  of  a  patented 
article  by  the  assignee  of  a  territorial  right  within  his  territory 


BRIEF   SURVEY  57 

sets  the  article  free  from  all  territorial  restrictions  is  fundamental. 
Hobbie  v.  Jennison,  149  U.  S.  355,  §  763.  Any  restriction  of  this 
rule  would  have  to  be  the  subject  of  a  contract.  Keeler  v.  Standard, 
157  U.  S.  659,  §  763.  The  invalidity  of  a  patent  cannot  be  set  up 
by  a  licensee  as  an  excuse  for  nonperformance  under  his  license 
until  such  fact  has  been  established  as  a  matter  of  law.  Holmes 
v.  M.  McGill,  108  Fed.  238,  §  764.  A  co-owner  of  a  patent  may 
license  without  the  consent  of  the  common  tenant  with  him.  Paulus 
v.  Buck,  129  Fed.  594,  §  764.  The  means  for  preventing  this,  and 
many  other  complications,  is  to  make  the  co-owners  tenants  by 
the  entirety  —  a  course  which  is  often  desirable. 

LICENSOR  AND  LICENSEE,  §§  765-767. 

This  subject  has  been  generally  treated  above. 

MACHINE,  §§  768-769. 

To  what  has  been  said  under  §  768  nothing  need  be  added. 
The  question  of  the  right  to  repair  a  purchased  patented  machine 
has  been  fully  considered  under  §§  523-4. 

MACHINE  AND  PROCESS,  §  770. 

It  is  clear  that  the  machine  may  be  new  and  the  process  old, 
or  the  machine  may  be  old  and  the  process  new,  or  both  may  be 
new.  A  difficulty  sometimes  arises  in  determining  whether  the 
patentable  novelty  resides  in  the  machine  or  in  the  steps  of  the 
process  wherein  the  machine  is  a  material  part.  In  such  a  case  we 
must  go  back  to  the  fundamental  principles  and  determine  whether 
that  which  is  new  arises  from  the  interaction  of  the  elements  of 
the  machine,  modifying  the  function  of  each  and  thus  affecting 
the  result,  or  whether  novelty  resides  in  the  action  (result)  of  the 
machine  combined  with  some  other  step  in  the  process. 

MACHINE  AND  PRODUCT,  §  771. 

So  also  a  machine  and  its  product  may  be  either  or  both  novel. 
But  novelty  of  the  machine  does  not  make  the  result  patentable. 
The  result  or  product,  as  an  article  of  manufacture,  must  possess 
inherent  novelty  independent  of  the  machine  which  creates  it.  A 
patent  may  or  may  not  cover  both  the  machine  and  the  manu- 
facture; where  it  does  not,  he  who  buys  the  machine  attains  the 
right  to  the  manufacture,  although  it  may  be  separately  patented. 
But  the  reverse  would  not  hold  —  a  right  to  use  or  sell  the  article 
of  manufacture  would  not  carry  the  right  to  the  separately  patented 
machine. 


58  THE    FIXED   LAW   OF   PATENTS 

MANUFACTURE,  §§  772-775- 

What  has  been  said  under  §  772  as  to  the  looseness  in  use  of 
the  term  "  manufacture  "  is  re-emphasized.  The  statute  makes 
it  one  of  the  patentable  classes  of  invention.  Why  was  this  done? 
Clearly  because  there  is  a  class  of  inventions  of  economic  value 
which  cannot  be  defined,  measured,  or  tested  in  terms  of  an  art, 
machine,  or  composition  of  matter.  A  patentable  art  consists 
in  genius  brought  to  bear  upon  matter  and  the  laws  of  matter  to 
effect  a  given  result;  so  with  a  process.  A  machine  consists  in 
imposing  upon  mechanical  elements  the  mind  of  the  inventor, 
working  in  harmony  with  the  laws  of  mechanics  to  effect  a  result. 
The  production  of  a  new  article  of  manufacture  may  involve  these 
inventive  acts  or  it  may  not;  and  the  novelty  of  the  article  cannot 
be  determined  by  the  criteria  commonly  applied  to  these  classes 
of  patentable  invention.  The  novelty  must  inhere  in  the  article 
itself.  For  example,  the  man  who  first  produced  soap,  say,  by 
combining  animal  fat  and  lye  from  wood  ashes,  produced  a  new 
article  of  manufacture  —  soap.  The  test  here  would  be  whether 
soap  had  ever  existed  before.  Soap  bark  had  existed  before, 
but  soap  bark,  in  composition  and  efficiency,  differs  materially  from 
soap;  moreover,  it  is  in  no  sense  an  article  of  manufacture.  But 
suppose  that,  subsequent  to  the  fat-and-lye  soap,  another  invented 
a  soap  made  from  a  vegetable  oil  and  soda.  His  process  might 
differ  materially,  and  as  such  be  patentable;  but  soap  as  an  article 
of  manufacture  had  been  discovered.  In  that  case  the  slimy, 
unrefined  article  —  soft  soap  —  would  be  a  perfect  anticipation  of 
the  cake  of  translucent,  mild  and  largely  different  toilet  article 
now  is  use.  The  inherent  quality  is  the  same  in  both.  Thus  it 
is  that  an  article  of  manufacture  may  be  new  and  highly  useful 
from  a  commercial  point  of  view,  and  yet  be  very  old  and  wholly 
unpatentable  from  the  viewpoint  of  the  statute.  Union  v.  Van- 
Deusen,  90  U.  S.  530,  §  775.  Now,  if  this  reasoning  is  sound,  it 
must  follow  that  the  broad  statement  that  the  test  of  novelty  must 
be  the  same  in  the  case  of  a  machine  (Campbell  v.  Bayley,  63  Fed. 
463,  §  774)  cannot  be  accepted.  Suppose  we  take  another  com- 
parison: Carborundum  is  produced  by  an  electrolytic  process. 
Carbide  is  made  by  an  electrolytic  process  more  or  less  analogous. 
The  one  yields  an  abrasive,  the  other  a  gas.  Now,  by  tests  which 
we  should  apply  to  a  machine  or  process  there  might  be  identity 
sufficient  to  warrant  anticipation  or  infringement;  but  would  one 
venture  to  say  that,  as  an  article  of  manufacture,  a  carborundum 
grinder  was  identical  with  a  charge  of  carbide  in  an  acetylene  gas 
generator?    It  has  seemed  that,  in  view  of  the  somewhat  confused 


BRIEF   SURVEY  59 

statements  of  the  courts,  there  is  necessity  of  going  back  to  such 
elemental  propositions  to  set  right  the  lines  of  reasoning  regarding 
manufactures. 

MARKING  "  PATENTED,"  §§  776-777- 

Failure  to  comply  with  the  requirement  of  the  statute  does  not 
affect  the  grant,  but  does  affect  the  right  to  recover  damages  or 
profits.  When  failure  to  mark  is  raised-  by  the  pleadings  and 
the  complainant  or  plaintiff  fails  to  make  proof  of  compliance 
with  the  statute,  damages  and  profits  are  barred.  All  .this  is  clear; 
beyond  is  doubt.  While  it  is  too  late  to  raise  this  question  for  the 
first  time  on  appeal,  may  it  not  be  raised  by  the  proofs  and  made 
an  issue  without  pleading?  Again,  suppose  that,  while  the  article 
has  not  been  marked,  the  infringer  has  been  in  full  knowledge  of 
the  patent,  has  openly  and  defiantly  infringed,  remains  silent 
and  raises  the  question  for  the  first  time  after  final  hearing.  Such 
has  been  held  a  bar  to  profits  in  a  circuit  court.  This  is  clearly  a 
subject  which  needs  further  pronouncement  by  the  appellate 
courts. 

MORTGAGE,  §  778. 

This  needs  no  discussion. 

OATH,  §§  779-780. 

The  occasions  wherein  the  oath  becomes  insufficient  to  support 
a  patent  are  most  frequently  those  where  the  specification  or  claim 
has  been  unduly  expanded  by  amendment  or  reissue.  This  has 
been  referred  to  under  §§  52-57.  It  is  evident  that  if  the  disclosure 
of  the  application  as  filed  was  insufficient,  the  proper  course  is 
to  file  a  supplemental  oath  which  states  both  inventorship  and 
the  fact  that  the  supplemental  matter  of  the  amendment  was  part 
of  the  original  invention.  American  Lava  v.  Steward,  155  Fed. 
731,  §  780.  But  where  the  application  has  been  unduly  delayed 
and  intervening  rights  have  accrued,  the  rule  analogous  to  that  of 
reissues  will  apply.    Mayo  v.  Jenckes,  133  Fed.  527,  §  54. 

OPERATIVENESS,  §§  781-782. 

The  patent  itself  is  strong  presumptive  evidence  of  operative- 
ness;  infringement  by  a  defendant  is  practically  conclusive.  Want 
of  operativeness  is  most  frequently  charged  against  a  generic 
patent  which  merely  opens  up  a  new  field.  In  such  case  a  complete 
or  commercial  disclosure  is  not  to  be  insisted  upon  —  certainly 
not  to  the  same  degree  as  in  a  minor  improvement.     Since  mechan- 


60  THE   FIXED    LAW   OF   PATENTS 

ical  skill  varies  both  with  time  and  circumstance,  that  which 
constitutes  a  disclosure  sufficient  to  enable  one  skilled  in  the  art  to 
make  and  use  must  also  vary.     No  hard  and  fast  rule  is  possible. 

PATENT  OFFICE,  §§  783-787- 

The  Supreme  Court  in  Steinmetz  v.  Allen,  192  U.  S.  543,  here 
extensively  quoted,  and  the  Second  Circuit  decision  in  Benjamin 
v.  Dale,  158  Fed.  617,  §  348,  should  serve  to  correct  the  rare  acts  of 
the  Office  open  to  objection.  When  any  conflict  arises  between  a 
rule  or  act  of  the  Office  and  a  statute,  the  statute  must,  of  course, 
prevail.  So  in  the  case  of  any  conflict  of  opinion  between  the  Office 
and  a  court.  The  statement  in  Boyden  v.  Westinghouse,  70  Fed. 
816,  §  785,  that  the  Office  employs  the  best  engineering  experts 
it  can  secure,  and  that  therefore  the  action  of  such  examiners 
is  equivalent  to  the  testimony  of  the  highest  experts,  is  a  non 
sequitur  for  at  least  two  reasons.  First,  it  is  a  notorious  fact  that 
an  examiner  cannot  give  the  time  and  study  to  a  case  that  the 
expert  does.  Second,  the  expert  is  subjected  to  a  rigid  cross- 
examination;  and  the  decision  of  the  examiner  is  at  most  only  on 
a  par  with  the  ex  parte  statements  of  an  expert,  as  in  the  case  of 
an  affidavit  on  motion  for  a  preliminary  injunction;  and  to  such 
statements,  as  has  been  seen,  the  courts  never  give  overmuch 
weight. 

PLEADING  AND  PRACTICE,  §§  788-802. 

As  stated  in  the  preface,  this  work  does  not  deal  with  pleading, 
practice,  or  procedure,  except  in  so  far  as  relates  to  matters  peculiar 
to  patent  causes.  Consequently  no  general  review  of  the  special 
rules  quoted  under  this  title  will  be  attempted. 

PRIORITY,  §§  808-812. 

This  subject  is  clearly  related  to  that  of  anticipation,  §§  58-108, 
and  reduction  to  practice,  §§  860-867.  Where  the  question  has 
arisen  and  been  adjudicated  between  the  same  parties  in  the  Patent 
Office,  such  adjudication,  in  the  absence  of  a  most  persuasive 
moving  consideration  not  there  raised,  is  conclusive.  Aside  from 
this  matter,  the  general  principles  of  reduction  to  practice  are 
reviewed  in  connection  with  the  sections  above  mentioned. 

PROCESS,  §§  813-822. 

A  process  is  generally  distinguished  from  a  machine  in  that  it 
consists  of  a  series  of  steps,  as  stated  in  Cochrane  v.  Deener,  94 
U.  S.  780,  §  815;    and  the  claim  should  be  expressed  in  terms  of 


BRIEF   SURVEY  61 

the  steps  and  not  in  terms  of  a  machine  employed.  The  rule  of 
equivalents  in  processes  is  that  stated  in  Tyler  v.  Boston,  74  U.  S. 
327,  §  373  —  that  an  equivalent  means  only  equally  good.  As 
noted  under  §  813,  a  mechanical  process  is  no  longer  patentable. 
But  it  is  thought  that  Dayton  v.  Westinghouse,  118  Fed.  562,  §  817, 
and  American  v.  Steward,  155  Fed.  731,  §  817,  are  suggestive  of 
the  proper  method  of  drawing  a  generic  claim  to  avoid,  so  far  as 
possible,  the  effect  of  Westinghouse  v.  Boyden.  As  elsewhere  stated, 
the  elements  or  steps  may  be  separately  old,  yet  patentable  in  the 
combination  of  steps  of  the  process.  This  is  well  illustrated  in 
Lowther  v.  Hamilton,  124  U.  S.  1,  §  819.  Process  and  product 
claims  may  be  had  in  the  same  patent,  but  they  must  be  separate 
claims.  The  product  cannot  be  claimed  in  terms  of  the  process, 
since  it  might  be  produced  by  another  process.  Goodyear  v. 
Davis,  102  U.  S.  122,  §  821. 

PRODUCT,  §§  823-824. 

It  was  remarked  in  the  discussion  of  a  manufacture  (§  772-775) 
that,  for  example,  he  who  first  invented  soap  as  an  article  of  manu- 
facture would  not  be  anticipated  by  a  somewhat  similar  natural 
article  —  soap  bark.  If  we  compare  that  statement  with  that 
in  Cochrane  v.  Badische,  111  U.  S.  293,  §  823,  there  is  apparent 
conflict.  But  there  is  no  real  conflict.  In  the  alizarine  case  its 
commercial  equivalent  had  been  previously  extracted  from  the 
madder  root,  but  did  not  per  se  exist  as  a  natural  substance.  In 
order  to  produce  the  article  from  the  vegetable  certain  artificial 
means  were  necessary.  Those  means  had  been  employed,  and  it 
already  existed  as  an  article  of  manufacture;  and  producing  it  by 
another  process  and  by  the  employment  of  other  materials  did 
not  confer  patentability. 

PROFITS,  §§825-847. 

The  right  to  an  accounting  in  equity  is  incident  to  the  right  to 
an  injunction.  The  statute  provides  that  the  court  may  assess 
or  cause  to  be  assessed  the  amount  to  which  the  complainant  is 
entitled.  The  assessment,  when  made  by  a  master  in  chancery, 
is  subject  to  review  and  revision  by  the  court;  but  the  court  will 
not  arbitrarily  change  the  amount  found  or  disregard  the  facts 
found  by  the  master.  The  appellate  court  may,  if  the  facts  are  clear 
and  sufficient,  revise  the  figures  of  the  master  conformable  to  the 
facts,  without  sending  the  report  back.  The  two  subjects,  profits 
and  damages,  are  so  related  and  the  rules  so  interwoven  that  the 
one  cannot  be  studied  separately  from  the  other.     Many  matters 


62  THE    FIXED    LAW    OF    PATENTS 

bearing  upon  the  subject  in  hand  will  be  found  under  damages, 
§§  278-299. 

In  Rubber  Co.  v.  Goodyear,  76  U.  S.  788,  §  273,  profits  are 
denned  as  the  gain  made  upon  any  business  or  investment,  where 
both  receipts  and  payments  are  taken  into  the  account.  If  the 
discovery  of  the  receipts  and  payments  were  easy,  and  the  mere 
computation  of  the  difference  all  there  were  to  be  done,  the  problem 
of  profits  would  be  without  incident.  But  such  is  never  the  case; 
for  even  in  the  simplest  of  accountings  some  problem  is  certain 
to  arise.  Nor  does  the  "  fruits  of  advantage  "  rule  of  Coupe  v. 
Royer,  155  U.  S.  565,  §  837,  do  more  than  indicate  that  the  profits 
may  be  either  gains  in  the  ordinary  sense  of  that  term,  or  savings, 
or  both.  The  trustee  ex  maleficio  rule  of  Wales  v.  Waterbury,  101 
Fed.  126,  §  841,  had  its  incisors  drawn  by  the  decision  of  West- 
inghouse  v.  New  York,  140  Fed.  545,  §  845,  for  all  those  cases 
where  segregation  must  be  made;  for  when  the  trustee  has  in- 
extricably mixed  his  goods  with  those  of  the  cestui  que  trustent  and 
the  burden  of  separation  is  placed  upon  the  latter  with  a  rigor  of 
rule  such  as  now  exists,  the  term  "  trustee  ex  maleficio  "  has  lost 
all  its  ancient  meaning.  As  has  been  shown  in  connection  with 
damages,  the  entire  problem  begins  with  segregation,  and  the 
inquiry  is  this:  Does  the  nature  of  the  invention  and  the  incident 
of  its  infringement  bring  it  under  the  first  or  second  portion  of  the 
rule  of  Garretson  v.  Clark,  111  U.  S.  120,  §  845?  If  it  comes  under 
the  first  portion,  before  any  of  the  ordinary  computations  of  profits 
by  way  of  receipts  and  expenses  may  be  had,  complete  segregation 
must  be  made.  If  under  the  second  portion  of  that  rule,  before 
the  regular  computation  can  be  entertained,  the  proofs  must  show 
indubitably  that  the  entire  profits  of  the  manufacture,  use  or 
sale  were  due  to  the  patented  feature.  Thus  before  any  accounting 
may  begin,  in  the  proper  sense  of  the  term,  the  rule  of  Garretson 
v.  Clark  must  be  fully  satisfied.  If,  now,  this  has  been  done,  the 
master  may  proceed,  keeping  in  mind  the  general  rule  that  his 
report  is  merely  advisory  to  the  court.  Boesch  v.  Graf,  133  U.  S. 
697,  §  836.  If  the  condition  is  one  where  the  measure  is  the  entire 
profits,  the  rule  of  Elizabeth  v.  American,  97  U.  S.  126,  §  838  and 
Rubber  Co.  v.  Goodyear,  76  U.  S.  788,  §  839,  apply.  If  it  is  a 
question  of  savings,  the  rule  of  Hohorst  v.  Hamburg-American, 
91  Fed.  655,  §  840,  is  to  be  followed.  But  the  problem  of  savings 
may  be  as  difficult  as  in  Doten  v.  City  of  Boston,  138  Fed.  406, 
§  837,  where  any  statement  of  savings  in  dollars  and  cents  based 
upon  tangible  considerations  is  wholly  impossible.  How  far  one 
may  go  in  making  a  general  estimate,  as  was  done  in  that  case, 


BRIEF   SURVEY  63 

is  a  matter  of  conjecture.  Attempts  have  been  made  to  show 
profits  by  analogy  —  by  what  others  have  done  —  but  this  is  not 
permissible.  Robbins  v.  Illinois,  81  Fed.  957,  §  842.  So  far  the 
burden  has  been  upon  complainant.  If  he  has  failed  to  segregate, 
recovery  is  impossible,  unless  he  has  shown  right  to  the  entire 
profits.  If,  after  segregation  or  proof  of  right  to  entire  profits, 
he  has  failed  to  make  tangible  proofs,  he  has  shown  no  measure, 
even  if  it  clearly  appears  that  he  has  been  damaged.  Of  course, 
if  the  complainant  can  trace  a  loss  (damage)  back  as  a  diversion 
by  defendant,  he  may  recover  that  item,  not  as  damages,  but  as  a 
profit  made  by  the  defendant.  The  burden  now  shifts  to  the 
defendant  —  provided  only  that  the  complainant  has  shown  the 
obvious  deductions  to  be  made  —  and  it  becomes  the  duty  of  the 
defendant,  if  he  can,  to  reduce  the  amount  by  direct  deduction  of 
the  amount  of  profits  or  by  deductions  in  terms  of  expenses. 
But  he  may  not  submit  as  an  item  general  expenses,  or  losses,  or 
"  manufacturer's  profits  "  (§§  828-30).  He  may  show  actual 
items  of  cost,  including  ordinary  salaries  and  commissions,  but 
not  managerial  or  proprietary  salaries.  An  accounting  is  a  post 
mortem.  As  to  most  matters  of  affirmative  proof  the  defendant  is 
defunct,  and  the  master  as  coroner  finds  sealed  lips  as  to  those 
things  he  most  needs  to  know.  Even  those  who  perform  the 
autopsy  will  disagree.  Nor  is  this  the  end  of  the  trouble;  for  when 
the  affirmative  evidence  is  all  in,  the  corpse  revives  sufficiently 
to  deny  so  much  as  he  is  able,  and  re-expires. 

PROTESTS,  §848. 

The  statement  under  this  title  is  sufficient. 

PUBLIC  USE,  §§849-858. 

The  question  of  public  use  is  not  one  of  intent;  it  is  a  question 
of  fact.  It  is  not  a  thing  to  be  mitigated  or  excused.  The  statute 
is  absolute.  Within  the  two-year  limit  full  freedom  exists.  An 
application  filed  a  moment  inside  the  limit  is  as  much  on  time  as 
if  filed  on  the  day  of  invention.  A  moment  later  and  the  inchoate 
right  is  lost  beyond  all  recall;  and  taking  a  narrow  chance  —  post- 
poning filing  to  prolong  the  life  of  the  patent  —  has  defeated  many 
a  patent.  Such  being  the  case,  it  is  but  just  that  the  burden  of 
proving  public  use  is  upon  the  defendant,  and  every  question  of 
doubt  is  to  be  resolved  against  such  an  allegation.  As  to  what 
constitutes  experiment,  as  was  said  under  the  title,  experiment, 
§  412,  there  is  nothing  to  be  added  to  the  decision  in  Eastman 
v.  Mayor,  134  Fed.  844,  there  quoted  extensively.     Foreign  use, 


64  THE    FIXED   LAW   OF   PATENTS 

unless  resulting  in  patent  or  publication,  does  not  anticipate, 
and  in  such  case  the  date  of  use  is  that  of  the  patent  or  publi- 
cation —  not  the  antecedent,  actual  use.  Since  Egbert  v.  Lipp- 
mann,  104  U.  S.  333,  §  854,  the  word  "  public  "  has  had  a  meaning 
all  its  own  when  used  to  modify  the  word  "  use."  When  Romeo 
invents  a  corset  steel  and  Juliet  wears  it  next  her  heart,  and  that 
is  public  use,  it  is  little  wonder  that  an  invention  hidden  within 
the  confines  of  a  fire  and  burglar  proof  safe  is  public  use.  Hall 
v.  Macneal,  107  U.  S.  90,  §  854.  The  question  does  not  turn  upon 
the  number  of  uses  or  upon  the  number  of  persons  concerned  in  the 
use;  although,  if  any  doubt  exists,  numbers  may  be  more  or 
less  persuasive.  Whether  a  single  sale  would,  in  all  cases,  amount 
to  public  use  seems  to  be  questioned  in  Swain  v.  Holyoke,  109  Fed. 
154,  §  856. 

PUBLIC  USE  PROCEEDINGS,  §  859. 

Nothing  need  be  added  to  the  statement  under  this  title. 

REDUCTION  TO  PRACTICE,  §§  860-867. 

Diligence  is  of  importance  when  the  question  of  priority,  the 
question  of  competition  for  the  right,  arises.  As  to  what  constitutes 
reduction  to  practice,  it  is  clear  when  we  compare  the  earlier 
decisions,  such  as  Seymour  v.  Osborne,  78  U.  S.  516,  §  862,  with  the 
Telephone  Cases,  126  U.  S.  1,  §  865,  that  the  rule  has  changed 
materially;  and  still  later,  in  the  Barbed  Wire  Case,  143  U.  S. 
275,  §  864,  we  reach  the  final  test,  the  "  last  step  rule."  It  is  evident 
that  a  literal  following  of  the  earlier  rule,  the  actual  construction 
in  material  form,  would  render  void  manjvjjatents.  .It-mould  have 
defeated  Bell's  patent,  very  likely.r^The  time  when  an  invention^ 
must  be  reduced  to  practice  by  putting  the  idea  into  wood  and: 
iron  is  past.  In  the  early  days  that  course  was  largely  necessary, ) 
just  as  the  filing  of  a  model  was  often  necessary  to  the  under-1 
standing  of  an  invention.  Clearly,  then,  it  may  be  said  thatj 
reduction  to  practice  is  no  longer  a  matter  of  construction,  building,! 
trial,  but  the  disclosure  of  the  idea  by  any  means  —  device,  drawing, 
or  verbal  description  —  which  will  enable  one  skilled  in  the  art  j 
to  make  and  use  the  same.  This  test  may  render  a  sketch  sufficient; 
it  may  render  an  experimental  machine  insufficient;  for  if  the 
idea  of  means,  operative  means,  is  disclosed,  there  is  the  invention; 
and  any  number  of  models  or  experimental  machines  —  such  as 
there  were  in  the  Telephone  Case  and  in  the  Barbed  Wire  Case  — 
if  they  fail  to  disclose  the  idea  so  that  another  may  practise  the 
alleged  invention,  —  cannot  lay  the  foundation  for  a  patent. 


BRIEF    SURVEY  65 

REHEARINGS,  §868. 

This  subject  is  one  of  practice,  and  is  not  entered  upon  in  this 
work. 


REISSUES,  §§  869-889. 

No  single  subject  of  the  patent  law  has  given  rise  to  so  much 
appellate  ruling  as  the  subject  of  reissues.  The  causes  may  have 
been,  in  many  cases,  as  stated  in  Crown  v.  Aluminum,  108  Fed.  845, 
§  871  —  the  greedy  acts  of  unscrupulous  persons  and  adventurers; 
but  it  is  thought  a  more  potent  influence  has  existed  in  the  attempts 
on  the  part  of  patentees  to  make  their  patents  cover  what  they 
honestly  believed  to  be  their  own  inventions,  but  which,  in  point 
of  fact,  were  not.  The  inventor  is  apt  to  have  an  unduly  large  idea 
of  the  child  of  his  brain;  the  manufacturer  an  unduly  large  idea 
of  his  monopoly;  and  when  either  perceives  others  stepping  beyond 
him  in  his  own  particular  art,  he  fancies  it  to  be  a  trespass  upon 
what  he  honestly  regards  as  his  own  close.  It  is  only  when  we 
take  such  a  charitable  view  of  the  seeming  overreaching  by  reissue 
that  it  can  be  viewed  with  patience  in  many  cases.  The  main, 
broad  rules  of  reissue  are  to  be  found  in  three  cases:  Miller  v. 
Brass  Co.  104  U.  S.  350,  §  883;  Topliff  v.  Topliff,  145  U.  S.  156, 
§  883;  McCormick  v.  Aultman,  169  U.  S.  606,  §  887.  These  rules 
are  as  follows: 

1.  That  the  reissue  cannot  cover  another  invention  than  that 
of  the  original. 

2.  That  the  reissue  cannot  cover  what  was  described  but  not 
claimed  after  long  delay. 

3.  That  while  a  reissue  claim  may  be  enlarged,  it  can  be  done 
only  when  actual  mistake  has  occurred,  and  then  only  without 
delay. 

4.  That  in  reissues  for  enlarging  the  scope  of  a  patent,  the  rule 
of  laches  should  be  rigidly  applied. 

5.  That  the  general  purpose  of  the  statute  providing  for  reissues 
was  to  correct  mistakes  and  errors,  and  not  to  enable  the  inventor, 
from  time  to  time,  to  extend  his  monopoly  so  as  to  cover  progress 
by  others  in  his  art. 

6.  That  due  diligence  must  be  exercised  in  discovering  the 
mistake  in  the  original,  and  that,  if  it  be  sought  for  the  purpose 
of  enlarging  the  claim,  the  lapse  of  two  years  will  ordinarily,  though 
not  always,  be  treated  as  evidence  of  abandonment  of  the  new 
matter. 

7.  That  the  question  whether  the  application  was  made  within 


66  THE    FIXED    LAW    OF    PATENTS 

a  reasonable  time  is,  in  most,  if  not  all  such  cases,  a  question  of 
law  for  the  court. 

8.  That  the  court  will  not  review  the  decision  of  the  Commis- 
sioner upon  the  question  of  inadvertence,  accident,  or  mistake, 
unless  the  matter  is  manifest  from  the  record. 

9.  That  the  specification  may  be  modified  so  as  to  make  it  more 
comformable  to  the  exact  right  of  the  patentee,  but  the  invention 
must  be  the  same. 

10.  That  if  the  patentee  abandons  his  application  for  a  reissue, 
he  is  entitled  to  a  return  of  his  original  patent  precisely  as  it  stood 
when  such  application  was  made. 

While  there  are  minor  rules  which  might  be  stated,  these  are 
the  main  ones;  and  it  is  not  necessary  in  this  brief  review  to  go 
further. 

REOPENING  CASE,  §§  890-892. 

This  is  a  question  of  practice  which  lies  chiefly  without  this 
review.  The  general  rule  of  Bresnahan  v.  Tripp,  99  Fed.  280, 
§  891,  is  that  the  new  evidence  must  be  so  cogent  and  persuasive 
as  to  convince  the  court  that  if  it  had  been  presented,  it  would  have 
resulted  in  a  different  decision;  and  this  new  evidence  must  be 
something  more  than  cumulative;  and  must  be  newly  discovered 
evidence,  and  not  merely  newly  discovered  materiality  of  old 
evidence.  Lafferty  v.  Acme,  143  Fed.  321,  §  991.  And  a  case 
will  not  be  reopened  merely  to  enable  a  complainant  to  prove 
damages.     Baker  v.  Crane,  138  Fed.  60,  §  892. 

RES  JUDICATA,  §§  893-896. 

This  subject  has  arisen  in  connection  with  adjudication,  §§  28-37, 
and  comity,  §§  250-257.  The  first  and  main  inquiry  is  whether 
the  issues  were  the  same  and  the  estoppel  mutual.  With  these 
present,  a  position  wellnigh  impregnable  is  established.  But 
lacking  either  of  these,  the  courts  are  disposed  to  decide  the  case 
on  its  merits.  A  Patent  Office  decision  is  res  judicata  on  a  question 
of  priority  between  the  same  parties  when  the  contrary  conclusion 
is  not  established  by  thoroughly  convincing  additional  proof. 
Ecaubert  v.  Appleton,  67  Fed.  917,  §  895. 

ROYALTIES,  §  897. 

For  a  masterful,  complete  review  of  the  subject  of  royalties,  a 
reading  of  Judge"  Putnam's  opinion  in  Western  Union  v.  Am.  Bell., 
125  Fed.  342,  §  897,  is  sufficient.  It  was  said,  with  regard  to  licen- 
sees, §§  749-764,  that  Eclipse  v.  Farrow,  199  U.  S.  581,  held  that 


BRIEF   SURVEY  67 

where  the  license  was  made  before  patent  and  the  subject-matter 
failed,  in  part,  to  materialize  in  a  claim,  the  licensee  need  not  pay 
royalties  upon  the  device  found  to  be  old.  Under  this  title  (§  897) 
a  quotation  from  the  same  case  seems  to  hold,  to  the  contrary. 
But  it  will  be  seen  that  the  defendant  saw  fit  to  retain  the  license 
contract  after  the  claim  had  failed;  and  so  electing,  he  could  not 
escape  its  terms. 

SECRET  PROCESS  OR  MACHINE,  §  898. 

This  subject  arises  in  connection  with  unpatented  inventions, 
§§  930-935. 

SALE  OF  PATENTED  ARTICLE,  §  899. 

The  extended  quotation  from  Heaton  v.  Eureka,  77  Fed.  288, 
needs  no  supplement. 

SPECIFICATION,  §§  900-919. 

As  said  in  §  901,  the  term  "  specification  "  has  been  loosely 
used.  In  reading  the  decisions  of  early  times,  one  finds  it  embracing 
description,  claims,  and  even  drawings  —  all  that  the  patentee 
contributes  to  the  grant;  but  most  commonly  to  the  description 
and  claims.  As  employed  here,  it  will  be  used  in  the  present  sense  — 
as  meaning  the  description  only.  The  ancient  rule  was  that  the 
specification  (description  and  claim)  should  clearly  indicate  both 
the  new  and  the  old,  and  distinguish  them.  Fancy  that  rule  in  force 
now!  Consider  what  would  be  involved,  say,  in  patenting  a  new 
type-bar  on  a  writing  machine,  if  the  patentee  had  to  describe 
all  else  in  the  machine  and  disclaim  all  else  save  the  type-bar. 
The  present  rule  is  that  of  Carnegie  v.  Cambria,  185  U.  S.  403, 
§  903,  which  is,  briefly,  that  the  specification  is  addressed  to  those 
skilled  in  the  art  to  which  it  pertains,  and  is  sufficient  if  it  may  be 
understood  by  such  skilled  persons  —  assuming  as  a  matter  of 
course  that  such  skilled  persons  are  familiar  with  all  that  has  gone 
before. 

Mere  verbosity  or  unskilled  statement  are  not  fatal  defects; 
but  verbosity  may  suggest  triviality.  Lyons  v.  Drucker,  106  Fed. 
416,  §  903.  But  where  the  defects  are  glaring  and  the  patentee 
has  had  opportunity  to  correct  the  same  by  reissue,  the  courts  will 
not  look  with  favor  upon  such  a  patent.  Matheson  v.  Campbell, 
76  Fed.  910,  §  904.  In  a  basic  patent  less  detail  will  be  required. 
Electric  v.  Pittsburg,  125  Fed.  926,  §  905.  But  where  the  invention 
is  a  narrow  improvement,  dependent  for  its  novelty  upon  location, 
size,  form,  or  any  detail  of  construction,  greater  definiteness  of 


68  THE  FIXED  LAW  OF  PATENTS 

specification  is  required.  American  v.  Steward,  155  Fed.  731,  §  904. 
The  recital  of  equivalents,  or  statements  disclaiming  limitation  to 
the  specific  construction  or  means  shown  and  described  neither  add 
to  nor  detract  from  the  patent.  The  function  need  not  be  described; 
nor  need  the  beneficial  uses  be  all  known  to  the  inventor.  It  is 
enough  if  he  has  fully  described  the  means.  A  patent  for  a  process 
should  be  definitive  as  to  matters  of  elements,  steps,  and  result. 
Cochrane  v.  Badische,  111  U.  S.  293,  §914;  but  the  statement 
quoted  under  §  914  from  Electric  v.  Carborundum,  102  Fed.  618, 
is  believed  to  be  open  to  serious  criticism  if  it  be  taken  as  a  general 
proposition.  Frequently  the  inventor  (and  his  solicitor)  is  lacking 
in  scientific  knowledge,  and  in  some  cases  an  entirely  false  idea  has 
possessed  the  mind  of  the  patentee.  These  matter  not  so  long  as 
the  real  invention  is  described.  The  ideal  specification  (which  has 
not  yet  been  written)  should,  in  the  opinion  of  the  writer,  accomplish 
the  following: 

1.  It  should  describe  the  essential  elements  which  enter  into  the 
combination. 

2.  It  should  clearly  indicate  their  co-action  and  operation. 

3.  It  should  do  precisely  what  the  claim  should  not  —  give  a 
functional  statement  of  the  invention. 

4.  It  should  be  simple  in  terms.  The  best  expert,  either  in 
drawing  a  specification  or  in  testifying  for  the  benefit  of  the  court, 
is  simple,  direct,  and  avoids  so  far  as  is  possible  technical  terms. 

5.  It  should  avoid  all  laudation  and  all  attempts  to  declare 
the  basic  character  of  the  invention. 

6.  It  should  have  a  single  aim:  the  disclosure  of  the  invention 
to  enable  others  skilled  in  the  art  to  make  and  use  the  same.  The 
specification  is  for  the  benefit  of  the  public;  the  claim  for  the  benefit 
of  the  patentee. 

STATE  STATUTES  AND  REGULATIONS  AFFECTING   PATENT 
RIGHTS,  §  920. 

The  fact  that  a  patent  happens  to  be  a  form  of  personalty  pro- 
tected by  Federal  law  does  not  exempt  it  from  the  common  rules 
governing  personal  property.  If  we  go  back  to  the  fundamental 
proposition,  that  the  Federal  grant  creates  nothing  that  did  not 
before  exist,  but  gives  to  the  patentee  the  right  to  protect  what  he 
has  created  and  provides  a  forum  therefor,  the  entire  proposition 
becomes  simple.  A  state  may  not  confiscate,  by  taxation  or  other- 
wise, or  limit  the  plain  rights  of  the  grant;  but  the  police  power 
of  the  state  may  be  exercised  in  the  protection  of  its  citizens,  and 
the  seal  of  the  Patent  Office  no  more  exempts  the  holder  thereof 


BRIEF   SURVEY  69 

from  the  exercise  of  that  power  than  does  an  internal  revenue 
stamp  issued  by  the  Federal  Government  exempt  the  person 
owning  the  property  to  which  it  is  attached. 

STATUTE  OF  LIMITATIONS,  §  921. 

The  amendment  of  Jan.  1,  1898,  to  Sec.  4921  renders  the  decisions 
cited  under  this  title  of  little  moment. 

STATUTES  RELATING  TO  PATENTS  —  THE  PATENT  STATUTE, 
§§  922-923. 

With  the  exception  of  Sec.  4887,  relating  to  the  effect  of  a  foreign 
patent  (discussed  under  §§  419-424),  the  patent  statutes,  as  estab- 
lished by  the  various  acts  of  1870-1-2,  have  remained  without 
considerable  change.  The  meaning  and  construction  of  the  various 
provisions  are  found  only  as  they  are  scattered  through  the  de- 
cisions of  the  appellate  courts.  The  Supreme  Court  has  construed 
these  by  the  same  rules  of  construction  that  it  has  applied  to  other 
statutes;  and  has  held  (Andrews  v.  Hovey,  124  U.  S.  694)  that  a 
patent  statute  cannot  be  judicially  settled  until  passed  upon  by 
that  court.  Since  it  is  the  practice  of  the  circuit  courts  of  appeals 
to  certify  unsettled  questions  of  law  to  the  Supreme  Court,  it  is 
the  reasonable  inference  that,  in  the  event  of  a  serious  and  con- 
troverted question  of  statutory  interpretation  arising,  the  rule  of 
Andrews  v.  Hovey  would  be  regarded  as  good  and  sufficient  reason 
for  certifying  such  a  question  to  the  Supreme  Court.  The  analysis 
of  the  patent  statute,  containing  the  Patent  Office  annotations, 
appended  as  a  separate  chapter  possesses  utility. 

THREATS,  §  924. 

This  title  needs  no  comment. 

TITLE,  §§925-927. 

The  title  to  a  patent  and  the  title  to  a  thing  protected  by  a 
patent  are  wholly  separate  and  different  things.  In  the  absence 
of  contract  provision,  the  passing  of  the  title  to  the  thing  patented 
frees  the  thing  from  the  monopoly  both  in  time  and  place.  Only 
he  who  holds  a  legal  title  to  a  patent  may,  alone,  sue  for  infringe- 
ment; and  what  constitutes  an  actionable  title  is  determined  by 
Waterman  v.  Mackenzie,  138  U.  S.  252,  §  150.  It  is  a  wise  rule  that 
makes  a  prima  facie  record  title  good  as  against  a  collateral  attack 
by  an  infringer,  claiming  no  title  in  himself,  who  attempts  to  show 
that  the  title  in  complainant  is  only  an  equitable  title  that  he  may 
avoid  infringement.     Goss  v.   Scott,    108   Fed.   253,   §  926.     But 


70  THE   FIXED   LAW   OF   PATENTS 

while,  under  the  circumstances  of  that  case,  the  ruling  was  unques- 
tionable, it  is  doubtful  if  such  a  rule  may  be  made  general.  Atten- 
tion is  directed  to  Blackledge  v.  Weir,  108  Fed.  71,  §  927.  As  else- 
where noted,  it  is  often  desirable  that  joint  owners  should  hold  by 
the  entirety.  This  is  a  simple  matter  of  assignment.  For  the  peace 
of  business  and  for  the  preservation  of  the  monopoly  some  pro- 
vision which  will  prevent  the  dissipation  of  the  monopoly  is 
desirable.  Minor  interests  may  be  created  by  license  or  shop  right. 
It  is  a  familiar  fact  that  most  of  the  "  patent-right  frauds  "  have 
grown  out  of  the  sale  of  territorial  rights  —  state,  county,  or  town- 
shop  rights.     It  is  a  title  that  rarely  is  warranted. 

UNPATENTED  INVENTIONS,  §§  930-935- 

An  unpatented  invention  is,  under  common-law,  common  prop- 
erty. The  constitution  and  the  statute  lift  it  one  step  higher  and 
give  it  the  character  of  an  inchoate  right.  In  that  state  it  becomes 
assignable  —  not  as  a  thing  in  being,  but  as  an  inchoate  right.  It 
has  been  held  that  a  court  of  chancery  cannot  decree  specific 
performance  to  convey  property  which  has  no  existence.  Kennedy 
v.  Hazleton,  128  U.  S.  724,  §  931.  But  it  is  clear  that,  when  such 
inchoate  right  is  matured  into  property,  such  right  may  be  enforced. 
He  who  invents  and  keeps  his  invention  a  secret  takes  his  chances 
under  the  common-law.  By  deciding  so  to  do  he  abandons  his 
inchoate  right;  and  he  who  learns  the  secret  lawfully  has  full  right 
to  the  invention.  It  is  only  when  the  statute  is  complied  with 
that  the  inchoate  right  becomes  a  patent  right,  and  therefore, 
property.  The  several  rights  which  may  be  secured  in  an  inven- 
tion before  patent  under  R.  S.  4899  are  set  out  in  Wade  v.  Metcalf, 
129  U.  S.  202,  §  932.  The  right  of  an  employer  to  the  unpatented 
invention  of  an  employee  is  a  shop  right  only.  Dable  v.  Flint, 
137  U.  S.  41,  §  933.  The  distinction  between  one  holding  an  inven- 
tion in  an  unpatented  state  with  no  intent  to  protect  it  by  patent, 
and  one  who  is  holding  such  an  invention  for  experiment,  perfecting, 
or  merely  biding  his  time  within  the  two-year  limit  the  statute 
gives  him,  is  obvious.  The  one  is  abandonment;  the  other  is 
not. 

WORDS  AND  PHRASES,  §§  936-938. 

As  has  been  elsewhere  remarked,  it  is  a  mistaken  idea  of  patentees 
and  patent  solicitors  that  they  may  broaden  a  claim  by  the  use 
of  the  term  "  means  "  or  "  means  whereby."  Observe  the  facts: 
The  court  must  first  turn  to  the  specification  and  drawings  and 
identify  the  "  means  "  as  indicating  the  specific  devices  shown  and 


BRIEF   SURVEY  71 

described.  If  there  is  any  range  of  equivalency  applicable,  it  can 
be  applied  only  after  the  "  means  "  have  been  translated  into  the 
specific  elements  shown.  Manifestly,  using  such  terms,  instead  of 
bringing  in  directly  the  elements  shown,  serves  no  good  purpose, 
but  places  upon  the  court  an  additional  burden  —  that  of  trans- 
lation of  terms  into  elements.  The  words  "  substantially  as 
described,"  "  substantially  as  set  forth,"  are  words  of  limitation, 
limiting  the  claim  to  the  specific  elements  described.  Pope  v. 
Gormully,  144  U.  S.  248,  §  937.  But  compare  this  rule  with  that  of 
Hobbs  v.  Beach,  180  U.  S.  383,  §  937.  Clearly  the  latter  rule  is 
the  one  which  has  been  followed  generally,  and  followed  in  this 
manner:  When  the  patent  is  generic  and  deserving  of  liberal  con- 
struction, such  words  of  limitation  are  given  the  least  significance 
consistent  with  their  use;  where  the  patent  is  narrow  or  trivial, 
the  rule  is  severely  applied.  The  use  of  a  "  whereby  clause  "  is 
useful  in  only  one  way:  it  may  explain  the  claim  by  indicating  its 
function.  It  adds  nothing  to  the  claim  —  nothing  whatever  — 
so  far  as  concerns  the  actual  combination. 

And  yet,  in  all  these  matters,  it  is  clear  that  the  courts  employ 
rules,  not  for  the  sake  of  the  rules,  but  for  the  sake  of  justice.  It 
is  true  of  the  patent  law,  perhaps  as  of  no  other  branch  of  the  law, 
that  we  find  a  rule  brought  into  being  and  applied  to  the  case  in 
hand  —  a  rule  hard  and  harsh  —  and  presently  that  rule  is  con- 
strued, mollified,  and  adapted,  that  it  may  still  be  used,  still  justice 
be  done.    Such  has  been  the  wise  course  of  equity. 


THE  FIXED  LAW  OF  PATENTS 


ABANDONMENT. 

Statutory  provision  §  1 
General  Rules  §  2 
After  Application  §  3 
Amendment  §  4  (see  §  52) 
Application 

Abandonment  and  renewal  §  5 

Delay  §  6 
Constructive  §  7 

Decision     of     Commissioner  —  Not 
Final  §  8 

Division  of  Application  §  9  (see  §§ 
348,  356) 
Experimental  Use  §  10  (see  §  412) 


Evidence  of  §  11  (see  §  388) 

Failure  to  Claim  §  12 

Prosecution  of  Application  §  13 
Of  Interference  §  14 
Of  Renewal  Application  §  15 

Piracy  §  16 

Prior  Patent  §  17 

Public  Use  §  18  (see  §  848) 

Subsequent  Patent  §  19 

Miscellaneous  Rulings  §  20 

See — Anticipation  §§  60-1-2;  Claims 

§  203;    Defenses  §  316;    Evidence  § 

413;   Invention  §  590;   Reissue  §  870 


§  i.     Statutory  Provision. 

Any  person  who  has  invented  *  *  *  unless  the  same  is  proved  to  have 
been  abandoned,  may  *  *  *  *  obtain  a  patent  therefor.    R.  S.  4886. 

*  *  *  Upon  failure  of  the  applicant  to  prosecute  the  same  within  one  year 
after  any  action  therein,  of  which  notice  shall  have  been  given  to  the  appli- 
cant, they  shall  be  regarded  as  abandoned  by  the  parties  thereto.    R.  S.  4894. 

*  *  *  And  upon  the  hearing  of  renewed  applications  preferred  under 
this  section,  abandonment  shall  be  considered  as  a  question  of  fact.  R.  S. 
4897. 

Note:  Prior  to  the  amendment  to  Sec.  4894  on  Mar.  3,  1897,  the  period 
of  time  mentioned  was  two  years.  In  determining  whether  there  is  abandon- 
ment under  the  statute,  it  is  therefore  necessary  to  determine  whether  the 
patent  was  issued,  or  the  application  was  filed  before,  that  amendment  went 
into  effect. 

The  subject  of  abandonment  also  arises  in  connection  with  Defenses  and 
Invention. 

§  2.     General  Rules. 

Forfeitures  are  not  favored  in  law,  and  the  courts  are  always  prompt  to 
seize  hold  of  any  circumstances  that  indicate  an  election  to  waive  a  for- 
feiture. —  Ins.  Co.  v.  Egglestone,  96  U.  S.  572;   24  L.  Ed.  841. 

Ins.  Co.  v.  Norton,  96  U.  S.  234. 

It  has  not  been,  and  indeed  cannot  be  denied,  that  an  inventor  may 
abandon  his  invention,  and  surrender  or  dedicate  it  to  the  public.  This 
inchoate  right,  thus  once  gone,  cannot  afterwards  be  resumed  at  his  pleasure ; 
for,  where  gifts  are  once  made  to  the  public  in  this  way,  they  become  abso- 
lute. —  Pennock  v.  Dialogue,  2  Pet.  1 ;  7  L.  Ed.  327. 


Abandonment  may  be  by  express  declaration  or  by  conduct  equally  sig- 
nificant with  language,  as  acquiescence  in  its  use  by  others  or  by  wilful  or 


74  THE    FIXED    LAW    OF    PATENTS  §  3 

negligent  postponement  of  his  claims,  or  by  an  attempt  to  withhold  the 
invention  from  the  public.  —  Kendall  v.  Winsor,  62  U.  S.  322;  16  L.  Ed.  165. 

An  abandonment  is  a  dedication  and  like  any  other  dedication,  it  should 
be  clearly  proved.  It  rests  upon  the  intention  of  the  inventor.  If  he  expressly 
declares,  or  by  his  acts  clearly  shows,  his  intention  to  dedicate  his  invention 
to  the  public,  a  finding  of  abandonment  would  be  warranted.  But  such  a 
dedication  should  not  be  lightly  presumed,  because  it  surrenders  a  vested 
right  of  property.  —  Mast  v.  Dempster,  82  Fed.  327;  27  C.  C.  A.  191. 

Clear  evidence  of  an  intention  to  dedicate  an  improvement  to  the  public 
is  indispensable  to  establish  abandonment.  The  patent  in  suit  and  the  appli- 
cation upon  which  it  is  based  are  persuasive  proof  that  the  inventor  never 
intended  to  dedicate,  and  never  did  dedicate,  the  improvement  they  secure 
to  the  public.  —  Ide  v.  Trorlicht,  115  Fed.  137;  53  C.  C.  A.  341. 

Mast  v.  Dempster,  82  Fed.  327;  Woolen  v.  Jordan,  7  Wall.  583;  Adams  v. 
Jones,  Fed.  Cas.  57;  Jones  v.  Sewall,  Fed.  Cas.  7495;  McMillin  v.  Barclay,  Fed. 
Cas.  8,902;   Pitts  v.  Edmonds,  Fed.  Cas.  11,191. 

§  3.     After  Application. 

An  abandonment  of  an  invention  to  the  public  may  be  evinced  by  the 
conduct  of  the  inventor  at  any  time,  even  within  the  two  years  named  in 
the  law.  The  effect  of  the  law  is,  that  no  such  consequence  will  necessarily 
follow  from  the  invention  being  in  public  use  or  on  sale  with  the  inventor's 
consent  and  allowance  at  any  time  within  two  years  before  his  application; 
but  that,  if  the  invention  is  in  public  use  or  on  sale  prior  to  that  time,  it  will 
be  conclusive  evidence  of  abandonment,  and  the  patent  will  be  void.  — 
Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

There  may  be  an  abandonment  of  an  invention  to  the  public,  as  well  after 
an  application  has  been  rejected  or  withdrawn,  as  before  any  application  is 
made.  Such  abandonment  may  be  proved  either  by  express  declarations 
of  an  intention  to  abandon,  or  by  conduct  inconsistent  with  any  other 
conclusion.  —  U.  S.  v.  Whitney,  118  U.  S.  22;  30  L.  Ed.  53;  6  S.  Ct.  950. 

Planing  v.  Keith,  101  U.  S.  479. 

There  is  a  material  difference  between  the  abandonment  of  an  invention 
and  the  abandonment  of  an  application  for  letters  patent  thereon,  by  failure 
to  comply  with  section  4894,  R.  S.  The  first  gives  the  invention  to  the 
public,  and,  once  done,  the  act  is  irretrievable;  but,  besides  the  power  con- 
ferred upon  the  Commissioner  of  Patents  to  relieve  an  applicant  from  an 
abandonment  of  his  application  under  the  statute,  an  application  which  has 
lapsed,  or  been  rejected  or  withdrawn,  may  be  renewed  or  repeated  so  long,  we 
suppose,  as  the  invention  itself  has  not  been  abandoned  by  reason  of  a  two 
years'  public  use  or  otherwise.  —  Western  v.  Sperry,  58  Fed.  186;  7  C.  C. 
A.  164. 

Planing  Machine  v.  Keith,  101  U.  S.  479;  Kendall  v.  Winsor,  21  How.  322; 
Shaw  v.  Cooper,  7  Pet.  292;    U.  S.  v.  Whitney,  118  U.  S.  22. 

There  may  be  abandonment  before  application  or  thereafter.  —  Crown 
v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

There  is  a  wide  difference  between  the  abandonment  of  an  invention  and 
the  abandonment  of  an  application.  An  abandonment  of  an  application  is 
not  necessarily  an  abandonment  of  the  invention,  and  after  the  application 
has  been  abandoned  a  valid  patent  for  the  invention  may  nevertheless  be 
secured  upon  a  new  application,  provided  the  invention  has  not  gone  into 


§§  4-5  ABANDONMENT  75 

public  use  or  been  upon  sale  for  more  than  two  years  prior  to  the  filing  of 
the  latter.  In  cases  where  the  first  application  has  not  been  abandoned, 
subsequent  applications  and  amendments  constitute  a  continuance  of  the 
original  proceeding,  and  the  two  years'  public  use  or  sale  which  may  avoid 
the  patent  must  be  reckoned  from  the  presentation  of  the  first  application, 
and  not  from  the  filing  of  subsequent  applications  or  amendments.  —  Hayes 
Young  v.  St.  Louis,  137  Fed.  80;  70  C.  C.  A.  1. 

U.  S.  v.  Am.  Bell  Tel.  Co.  167  U.  S.  224;  Colgate  v.  Western,  Fed.  Cas.  2,995; 
Miehle  v.  Read,  96  O.  G.  426;  Thomson-Houston  v.  Winchester,  71  Fed.  192; 
Godfrey  v.  Eames,  1  Wall.  317;  Smith  v.  Goodyear,  93  U.  S.  486;  Cain  v.  Park, 
86  O.  G.  797;  Ex  parte  Stewart,  4  O.  G.  665;  Stirling  v.  St.  Louis,  79  Fed.  80; 
Dederick  v.  Fox,  56  Fed.  714;    Ligowski  v.  American,  34  Fed.  328. 

The  original  application  was  abandoned  for  want  of  prosecution  within  the 
statutory  period.  Applicant  attempted  to  give  good  and  sufficient  excuses 
to  secure  revival  of  the  application,  but  failed.  He  then  filed  a  second 
application  but  did  not  file  the  statutory  oath.  Held:  The  unavoidable 
conclusion  is  that  the  first  application  was  abandoned;  that  the  second 
application  was  not  a  continuation  of  the  original  solicitation,  but  the  institu- 
tion of  a  new  and  independent  proceeding;  that  the  patent  is  founded  on 
the  second  application  alone;  and  that  the  absence  of  any  averment  that 
the  invention  was  not  in  public  use  or  on  sale  in  this  country  for  more  than 
two  years  before  the  latter  application  was  presented  to  the  commissioner 
is  fatal  to  the  cause  of  action  for  an  infringement  of  the  patent.  —  Hayes- 
Young  v.  St.  Louis,  137  Fed.  80;  70  C.  C.  A.  1. 

The  abandonment  of  an  application  destroys  the  continuity  of  the  solicita- 
tion of  the  patent.  After  abandonment  a  subsequent  application  institutes 
a  new  and  independent  proceeding,  and  the  two  years'  use  or  sale  which  may 
invalidate  the  patent  issued  upon  it  must  be  counted  from  the  filing  of  the 
later  application.  —  Hayes-Young  v.  St.  Louis,  137  Fed.  80;  70  C.  C.  A.  1. 

Bevin  v.  East  Hamilton,  Fed.  Cas.  1,379;  Lindsay  v.  Stein,  10  Fed.  907;  Lay 
v.  Indianapolis,  120  Fed.  835;  Mowry  v.  Barber,  Fed.  Cas.  9,892;  Marsh  v.  Sayles, 
Fed.  Cas.  9,199;  Ex  parte  Simpson,  Fed.  Cas.  12,878;  Carty  v.  Kellogg,  73  O.  G. 
285;    Cain  v.  Park,  86  O.  G.  797. 

§  4.     Amendment. 

Pending  the  application  for  this  patent,  he  presented  an  amendment  to 
his  specification,  whereby  he  described,  and  sought  to  include  a  construction 
substantially  identical  in  form  and  details  of  construction  with  that  made 
by  the  appellants,  and  the  amendment  was  not  allowed.  Having  acquiesced 
in  that  ruling,  the  patentee  cannot  be  heard  to  insist  that  the  matter  so 
excluded  is  nevertheless  covered  by  the  patent.  —  Wells  v.   Henderson, 

67  Fed.  930;   15  C.  C.  A.  84. 

§  5.     Application  —  Abandonment  and  Renewal. 

In  our  judgment,  if  a  party  chose  to  withdraw  his  application  for  a  patent, 
and  pay  the  forfeit,  intending  at  the  time  of  such  withdrawal  to  file  a  new 
petition,  and  he  accordingly  does  so,  the  two  petitions  are  to  be  considered 
as  parts  of  the  same  transaction,  and  both  as  constituting  one  continuous 
application,  within  the  meaning  of    the  patent  law.  —  Godfrey  v.  Eames, 

68  U.  S.  317;   17  L.  Ed.  684. 

While  the  application  remained  before  the  commissioner,  it  repelled  any 
inference  of  abandonment  or  dedication  from  the  omission  to  again  claim 
it.  —  Suffolk  v.  Hayden,  70  U.  S.  315;   18  L.  Ed.  76. 


76  THE    FIXED    LAW   OF   PATENTS  §§  6-7 

The  renewal  application  was  filed  nearly  5  years  after  the  original,  and 
public  use  had  been  continuous  from  the  first  filing.  Held:  The  language 
of  this  statute  is  plain  (see  4894),  and  requires  no  aid  from  construction. 
The  Patent  Commissioners  have  always  held  that  the  second  application 
cannot  be  considered  a  continuation  of  an  abandoned  application.  —  Lay 
v.  Indianapolis,  120  Fed.  831 ;  57  C.  C.  A.  313. 

Ex  parte  Livingston,  20  O.  G.  1746;  Hien  v.  Pungs,  68  O.  G.  657;  Ex  parte 
Beggs,  50  O.  G.  1130;  Carty  v.  Kellogg,  73  O.  G.  285;  Lindsay  v.  Stein,  10  Fed. 
912;  Weir  v.  Morden,  21  Fed.  243;  Kittle  v.  Hall,  29  Fed.  508;  Walk.  Pat.  sec. 
147;   Rob.  Pat.  sec.  580. 

§  6.     Application  —  Delay  of. 

Delay  requisite  for  completing  an  invention  or  for  a  test  of  its  value  or 
success  does  not  amount  to  abandonment.  —  Kendall  v.  Winsor,  62  U.  S. 
322;  16  L.  Ed.  165. 

Undoubtedly,  an  inventor  may  abandon  his  invention,  and  surrender  or 
dedicate  it  to  the  public;  but  mere  forbearance  to  apply  for  a  patent  during 
the  progress  of  experiments,  and  until  the  party  has  perfected  his  invention 
and  tested  its  value  by  actual  practise,  affords  no  just  grounds  for  any  such 
presumption.  —  Agawam  v.  Jordan,  74  U.  S.  583;   19  L.  Ed.  177. 

Kendall  v.  Winsor,  21  How.  322;    Pennock  v.  Dialogue,  2  Pet.  1. 

The  inventor  was  absolutely  impecunious.  For  nearly  nine  years  he 
struggled  with  poverty,  with  rejections  of  his  application,  with  delays  of  his 
solicitor,  but  never  admitted  abandonment  or  gave  up  hope  or  effort.  The 
application  was  three  times  renewed  and  finally  allowed  for  what  the  appli- 
cant had  contended.  Held  that  even  such  a  long  delay,  in  view  of  condition 
and  conduct  did  not  amount  to  abandonment.  —  Smith  v.  Goodyear,  93 
U.  S.  486;  23  L.  Ed.  952. 

Dissenting:  Bradley,  Miller,  Field. 

Godfrey  v.  Eames,  1  WaU.  317. 

A  delay  of  some  nine  years  after  the  invention  was  complete  held  to  be 
abandonment.  —  Consolidated  v.  Wright,  94  U.  S.  92;  24  L.  Ed.  68. 

It  is  sometimes  said  an  inventor  acquires  an  undue  advantage  over  the 
public  by  delaying  to  take  out  a  patent,  insomuch  as  he  thereby  preserves 
the  monopoly  to  himself  for  a  longer  period  than  is  allowed  by  the  policy 
of  the  law;  but  this  cannot  be  said  with  justice  when  the  delay  is  occasioned 
by  a  bona  fide  effort  to  bring  the  invention  to  perfection,  or  to  ascertain 
whether  it  will  answer  the  purpose  intended.  It  is  in  the  interest  of  the  public, 
as  well  as  himself,  that  the  invention  should  be  perfect  and  properly  tested 
before  a  patent  is  granted.  Any  attempt  to  use  it  for  profit,  and  not  by  way 
of  experiment,  for  a  longer  period  than  two  years  before  the  application,  would 
deprive  the  inventor  of  his  right  to  a  patent.  —  Elizabeth  v.  American, 
97  U.  S.  126;  24  L.  Ed.  1000. 

Delay  in  applving  for  patent  until  foreign  patent  expires  is  abandonments 
—  Huber  v.  Nelson,  148  U.  S.  270;  37  L.  Ed.  447;   13  S.  Ct,  603. 
Nesbit's  case,  C.  D.  1870,  106. 

§  7.     Constructive. 

If  an  inventor  makes  his  discovery  public,  looks  on  and  permits  others 
to  freely  use  it  without  objection  or  assertion  of  his  claim  to  the  invention, 
of  which  the  public  might  take  notice,  he  abandons  his  invention.  —  McClurg 
v.  Kingsland,  1  How.  202;  11  L.  Ed.  102. 


§§  8-9  ABANDONMENT  77 

Pennock  v.  Dialogue,  2  Pet.  14;  Grant  v.  Raymond,  6  Pet.  248;  Shaw  v. 
Cooper,  7  Pet.  313. 

But  if  the  inventor  allows  his  machine  to  be  used  by  other  persons  generally 
either  with  or  without  compensation,  or  if  it  is,  with  his  consent,  put  on  sale 
for  such  use,  then  it  will  be  a  public  use  and  on  public  sale  within  the  meaning 
of  the  law.  —  Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

It  has  sometimes  been  said  that  an  invention  cannot  be  held  to  have  been 
abandoned,  unless  it  was  the  intention  of  the  inventor  to  abandon  it.  But 
this  cannot  be  understood  as  meaning  that  such  an  intention  must  be  ex- 
pressed in  words.  —  Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed.  939. 

Kendall  v.  Winsor,  21  How.  322;  Shaw  v.  Cooper,  7  Pet.  292;  Adams  v.  Jones, 
1  Fish.  P.  C.  527. 

His  inaction,  his  delay,  his  silence,  under  the  circumstances,  were  most 
significant.  Though  not  express  avowals  of  abandonment,  "  to  reason's 
ear  they  had  a  voice  "  not  to  be  misunderstood.  They  spoke  plainly  of 
acquiescence  in  the  rejection  of  his  application  for  a  patent.  They  encouraged 
the  manufacture  and  sale  of  his  invention.  —  Woodbury  v.  Keith,  101  U.  S. 
479;  25  L.  Ed.  939. 

Where  there  is  an  entire  abandonment  of  all  expectation  of  succeeding  in 
an  invention  and  securing  a  patent  under  circumstances  that  justifies  the 
formation  of  the  expectation  that  the  ideas  of  the  inventor  will  always  be 
free  to  the  public,  and  the  inventor  clearly  manifests  his  intentions  to  re- 
linquish any  rights  thereto,  the  inchoate  right  to  the  patent  thus  abandoned 
cannot  be  resumed.  But  the  law  does  not  favor  forfeiture,  and,  it  being  a 
question  of  fact  whether  there  has  been  abandonment,  all  reasonable  doubts 
must  be  resolved  in  favor  of  the  patent.  —  Crown  v.  Aluminum,  108  Fed. 
845;  48  C.  C.  A.  72. 

§  8.     Decision  of  Commissioner  —  Not  Final. 

The  decision  of  the  Commissioner  in  favor  of  the  applicant,  upon  the  ques- 
tion whether  the  invention  has  been  abandoned,  is  not  conclusive,  but  may 
be  contested  and  reviewed  in  a  suit  brought  for  the  infringement  of  the 
patent.  —  U.  S.  v.  Whitney,  118  U.  S.  22;  30  L.  Ed.  53;  6  S.  Ct.  950. 

Planing  v.  Keith,  101  U.  S.  479. 

§  g.     Division  of  Application. 

Pending  consideration  in  the  patent  office,  a  subordinate  claim  became 
the  subject  of  interference  upon  which  a  patent  was  issued,  which  proclaimed 
its  divisional  character.  Subsequently  the  patents  were  issued  upon  the 
broad  claims  which  had  lingered  in  interference  in  the  patent  office,  and 
it  is  not  contended  that  the  main  invention  has  been  in  fact  included  in  the 
claim  for  a  series  of  shelves,  etc.  Such  a  construction  is  not  demanded  by 
decided  cases,  or  by  known  principles  of  law.  —  Electric  v.  Brush,  52  Fed. 
130;  2  C.  C.  A.  682. 

The  combination  claimed  in  1883  was  shown  in  the  drawing  and  specifica- 
tion of  the  earlier  patent,  but  it  was  not  claimed,  and  it  was  thereby  irre- 
vocably dedicated  to  the  public  by  the  appellant.  A  description  of  a  device 
or  combination  which  is  not  claimed  in  the  drawings  or  specification  of  a 
patent  estops  the  patentee  from  securing  a  monopoly  of  its  use  by  a  subse- 
quent patent  as  well  as  by  any  other  means.  —  M'Bride  v.  Kingman,  97 
Fed.  217;  38  C.  C.  A.  123. 

James  v.  Campbell,  104  U.  S.  356;   Adams  v.  Stamping  Co.  28  Fed.  360. 


78 


THE   FIXED   LAW   OF    PATENTS 


10 


The  original  patent  in  the  present  case  was  a  divisional  application, 
required  by  the  Patent  Office;  consequently  the  description  of  the  unitary 
structure  or  mechanism  of  the  original  patent,  together  with  claims  for 
combinations  embracing  the  whole  structure  or  apparatus,  or  combinations 
of  the  elements  of  the  reissue  with  additional  elements,  such  as  the  tension 
devise,  did  not  work  an  abandonment  or  disclaimer  of  the  combination 
specified  in  the  reissue.  — Thomson-Houston  v.  Black  River,  135  Fed.  759; 
68  C.  C.  A.  461. 

Suffolk  v.  Hayden,  3  Wall.  315;   Barbed  Wire  Case,  143  U.  S.  275. 

That  an  applicant  having  filed  an  application  sufficiently  broad  to  carry 
all  the  claims,  may  file  a  second  application  while  the  first  is  pending  and 
divide  the  claims  without  abandonment,  see  Victor  v.  American,  145 
Fed.  350;  76  C.  C.  A.  180. 

§  io.     Experimental  Use. 

Experimental  use  for  the  purpose  of  testing  the  qualities  of  an  invention 
is  never  public  use,  nor  is  there  any  proof  that  the  delay  operated  to  mislead 
others  in  taking  up  the  invention  and  with  greater  diligence  perfecting  it. 
The  case  would  be  presented  in  a  different  aspect  if  another  inventor  had 
entered  the  field,  induced  by  the  supposed  abandonment  and  misled  by  the 
delay.  It  is  of  no  advantage  to  the  public  that  an  inventor  should  apply 
for  his  patent  before  he  satisfies  himself  as  to  the  best  form  in  which  to 
embody  the  invention,  and  the  statute  which  provides  that  two  years' 
public  use  shall  not  work  a  forfeiture  clearly  has  no  application  to  a  case  of 
merely  uncompleted  experimentation.  —  Crown  v.  Aluminum,  108  Fed.  845; 
48  C.  C.  A.  72. 

Wood  v.  Rolling  Mill,  Fed.  Cas.  17,941. 

If,  then,  an  alleged  invention  is  in  fact  an  invention,  no  subsequent  aban- 
donment of  it  can  be  said  to  be  an  abandoned  experiment.  At  most,  it  is 
an  abandoned  invention.  But  an  invention  that  has  been  abandoned  is 
as  much  an  anticipation  and  to  as  great  an  extent  negatives  novelty,  as  an 
invention  that  has  not  been  abandoned.  —  Buser  v.  Novelty,  151  Fed.  478; 
81  C.  C.  A.  16. 

Gayler  v.  Wilder,  10  How.  496;  Rich  v.  Lippincott,  Fed.  Cas.  11,758;  Shoup 
v.  Henrici,  Fed.  Cas.  12,814. 

Note :  It  is  evident  in  comparing  this  remarkable  ruling  with  the 
authorities  that  the  judge  writing  the  opinion  has  made  a  general  statement 
subject  to  very  grave  qualifications. 

An  abandoned  experiment  is  an  experiment  that  has  been  abandoned. 
As  a  mere  experiment  never  amounts  to  anticipation,  the  epithet  "  aban- 
doned "  here  is  unnecessary.  If,  however,  the  machine  or  other  thing  is 
complete,  and  capable  of  producing  the  result  sought  to  be  accomplished, 
it  has  passed  the  experimental  stage  and  becomes  an  invention;  and  in  order 
that  it  may  constitute  an  anticipation,  it  is  immaterial  how  well  it  became 
known  or  how  much  it  was  used.  Indeed,  it  has  been  held  that  if  the  alleged 
invention  is  complete  and  capable  of  producing  the  results  sought  to  be 
accomplished,  though  it  may  never  have  been  used,  is  an  invention  and  an 
anticipation.  —  Buser  v.  Novelty,  151  Fed.  478;  81  C.  C.  A.  16. 

Coffin  v.  Ogden.  18  Wall.  120;  Reed  v.  Cutter,  Fed.  Cas.  11,645;  Walker  on 
Pat.  sec.  71;    Stitt  v.  Easton,  22  Fed.  649. 

Note:  These  statements,  as  applied  to  the  facts  in  this  case,  constitute 
a  remarkable  form  of  judicial  reasoning. 


§§  11-12  ABANDONMENT  79 

§  ii.    Evidence  of. 

The  evidence  of  abandonment  is  clearly  a  question  of  fact  for  the  jury.  — 
Kendall  v.  Winsor,  62  U.  S.  322;  16  L.  Ed.  165. 

Desertion  of  a  machine,  never  patented,  may  be  proved  by  showing  that 
the  inventor,  after  he  had  constructed  it,  and  before  he  had  reduced  it  to 
practice,  broke  it  up  as  something  requiring  more  thought  and  experiment, 
and  laid  the  parts  aside  as  incomplete,  provided  it  appears  that  those  acts 
were  done  without  any  definite  intention  of  resuming  his  experiments,  and 
of  restoring  the  machine  with  a  view  to  apply  for  letters  patent.  —  Seymour 
v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Johnson  v.  Root,  2  Cliff.  123;  Gayler  v.  Wilder,  10  How.  498;  Parkhurst  v. 
Kinsman,  1  Blatchf.  494;   White  v.  Allen,  2  Cliff,  230. 

It  is  quite  certain  that  the  action  of  the  Commissioner  granting  the  patent 
is  not  conclusive  of  the  question  whether  there  had  not  been  an  abandonment. 
—  Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed.  939. 

Abandonment  may  undoubtedly  be  proved  within  two  years  prior  to 
the  filing  of  the  application,  but  it  ought  not  be  presumed,  and  it  should 
be  established  by  convincing  evidence  of  the  intention  of  the  owner  of  the 
invention  to  dedicate  it  to  the  public.  An  abandonment  is  a  dedication,  and 
like  any  other  dedication,  it  should  be  clearly  proved.  —  Mast  v.  Dempster, 
82  Fed.  327;  27  C.  C.  A.  191. 


§  12.    Failure  to  Claim. 

A  failure  to  claim  what  has  been  described  is  abandonment  and  dedica- 
tion ;  and  a  reissue  to  recover  such  unclaimed  matter  is  subject  to  the  rules 
of  laches.  —  Miller  v.  Brass  Co.,  104  U.  S.  350;  26  L.  Ed.  783. 

C's  acquiescence  in  H's  claim  must  be  regarded,  so  far  as  he  is  concerned, 
as  an  abandonment  of  any  right  on  his  part  to  a  patent  for  the  same  inven- 
tion, and  having  deliberately  rested  in  that  acquiescence  for  a  period  of  nine 
or  ten  years,  it  is  too  late  according  to  the  settled  course  of  decisions  in  this 
court  to  resume  his  rights.  —  Hartshorn  v.  Saginaw,  119  U.  S.  664;  30  L. 
Ed.  539;  7  S.  Ct.  421. 

What  is  described  in  the  specification  of  a  patent  and  not  claimed  is  pre- 
sumed to  have  been  old.  —  Electric  v.  Boston,  139  U.  S.  481 ;  35  L.  Ed.  250; 
11  S.  Ct.  586. 

Where  an  inventor  describes  all  and  claims  only  part  of  his  invention  he  is 
presumed  to  have  abandoned  the  residue  to  the  public.  —  McClain  v. 
Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800;  12  S.  Ct.  76. 

An  omission  to  claim  a  device  or  combination  apparent  on  the  face  of  the 
patent  is  abandonment  and  dedication  of  that  part  of  the  invention.  — 
Underwood  v.  Gerber,  149  U.  S.  224;  37  L.  Ed.  710;  13  S.  Ct.  854. 

Miller  v.  Brass  Co.  104  U.  S.  552;    Mahn  v.  Harwood,  112  U.  S.  354. 

It  is  possible  that  the  inventor  was  entitled  to  a  broader  claim  than  that 
to  which  he  limited  himself;  but  if  he  described  and  claimed  only  a  part  of 
his  invention,  he  is  presumed  to  have  abandoned  the  residue  to  the  public.  — ■ 
Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153;   15  S.  Ct.  118. 

McClain  v.  Ortmayer,  141  U.  S.  419. 


80  THE   FIXED   LAW   OF   PATENTS  §  13 

An  inventor,  by  describing  an  invention  in  a  patent  granted  to  him,  does 
not  necessarily  preclude  himself  from  patenting  it  subsequently.  His 
omission  to  claim  what  he  describes  may  operate  as  a  disclaimer  or  abandon- 
ment of  the  matter  not  claimed;  but  it  has  no  such  effect  when  it  appears 
that  the  matter  thus  described,  but  not  claimed,  was  the  subject  of  a  pending 
application  in  the  patent  office  by  him  for  another  patent.  This  was  ex- 
plicitly adjudged  in  Suffolk  v.  Hayden,  3  Wall.  315,  and  recognized  as  sound 
doctrine  in  the  barbed  wire  case,  143  U.  S.  275.  —  Thomson-Houston  v. 
Elmira,  71  Fed.  396;  18  C.  C.  A.  145. 

When  a  specific  element  is  not  claimed  as  a  device  by  itself,  it  is,  in  effect, 
admitted  that  the  particular  element  is  old  and  was  not  invented  by  the 
patentee.  —  Overweight  v.  Improved,  94  Fed.  155;  36  C.  C.  A.  125. 

3  Rob.  Pat.  sec.  923;  Cornplanter  Pat.  23  Wall.  181;  Rowell  v.  Lindsay, 
113  U.  S.  97;   Meter  Co.  v.  Desper,  101  U.  S.  332. 

The  statute  requires  the  inventor  to  particularly  point  out  and  distinctly 
claim  the  improvement  or  discovery  which  he  seeks  to  secure  (R.  S.  sec. 
4888),  and  that  when  he  has  made  his  claims  he  has  thereby  disclaimed  and 
abandoned  to  the  public  all  other  combinations  and  improvements  that  are 
not  mere  evasions  of  the  device,  combination,  or  improvement  which  he 
claims.  —  Kinloch  v.  Western,  113  Fed.  652;   51  C.  C.  A.  362. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Mfg.  Co.  v.  Sargent,  117  U.  S.  373;  Mo- 
Clain  v.  Ortmayer,  141  U.  S.  419;  Building  Co.  v.  Eustis,  65  Fed.  804;  Stirrat  v. 
Mfg.  Co.  61  Fed.  980;  Adams  v.  Lindell,  77  Fed.  432. 

His  specifications  and  claims  constitute  a  dedication  to  the  public  of 
every  invention  they  disclose  but  do  not  claim.  —  Ide  v.  Trorlicht,  115  Fed. 
137;  53  C.  C.  A.  341. 

Adams  v.  Lindell,  77  Fed.  432. 

That,  although  the  patent  may  disclose  distinct  novelty,  unless  the  novel 
feature  is  claimed,  recovery  is  barred,  see  Robinson  v.  Chicago,  118  Fed. 
438;  55  C.  C.  A.  254. 

§  13.     Prosecution  of   Application. 

The  patent  law  favors  meritorious  inventors  by  conditionally  conferring 
upon  them,  for  a  limited  period,  exclusive  rights  to  their  inventions.  But 
it  requires  them  to  be  vigilant  in  complying  with  the  statutory  conditions. 
It  is  not  unmindful  of  possibly  intervening  rights  of  the  public.  An  inventor 
cannot.,  without  cause,  hold  his  application  pending  during  a  long  period 
of  years,  leaving  the  public  uncertain  whether  he  intends  to  prosecute  it, 
and  keeping  the  field  of  his  invention  closed  against  other  inventors.  — 
Woodbury  v.  Keith,  101  U.  S.  479;   25  L.  Ed.  939. 

An  inventor  whose  application  for  a  patent  has  been  rejected,  and  who, 
without  substantial  reason  or  excuse,  omits  for  many  years  to  take  any  step 
to  reinstate  or  renew  it,  must  be  held  to  have  acquiesced  in  its  rejection,  and 
to  have  abandoned  any  intention  of  further  presenting  his  claim.  —  U.  S. 
v.  Whitney,  118  U.  S.  22;  30  L.  Ed.  53;  6  S.  Ct.  950. 

Planing  v.  Keith,  101  U.  S.  479. 

The  failure  of  the  applicant  to  prosecute  his  application  within  two  years 
after  any  action  is  laches,  which  unexcused  operates  as  abandonment.  — 
Gandy  v.  Marble,  122  U.  S.  432;  30  L.  Ed.  1223;  7  S.  Ct.  1290. 

Butterworth  v.  U.  S.  112  U.  S.  50;  Whipple  v.  Miner,  15  Fed.  117;  Ex  p.  Squire, 
3  B.  &.  A.  133;    Butler  v.  Shaw,  21  Fed.  321. 


§§  14-18  ABANDONMENT  81 

The  failure  to  prosecute  appeal  action  within  two  years  from  any  decision 
comes  under  the  rule  of  sec.  4894.  —  Gandy  v.  Marble,  122  U.  S.  432;  30 
L.Ed.  1223;  7  S.  Ct.  1290. 

§  14.     Prosecution  of  Interference. 

The  contestant  got  the  patent;  and  although  complainant  got  a  license 
under  it,  he  got  it  at  a  pretty  large  price.  But,  whatever  may  have  induced 
his  action,  it  should  be  regarded  as  an  admission  of  contestant's  priority, 
fully  sufficient  to  make  out  a  prima  facie  case  against  him.  If  he  could  have 
answered  this,  it  was  his  privilege  to  do  so  and  he  would,  no  doubt,  have  done 
it.  As  he  did  not,  we  must  hold  it  to  be  decisive.  —  Shoemaker  v.  Merrow, 
61  Fed.  945;   10  C.  C.  A.  181. 

§  15.     Prosecution  of  Renewal  Application. 

We  concur  in  so  much  of  the  opinion  of  the  court  below  as  holds  that : 
"  If  more  than  one  application  could  be  made,  the  final  application  must 
be  made  within  two  years  after  the  allowance  of  the  original  application,  the 
term  'the  original  application,'  as  used  in  this  section,  meaning  the  first 
application." 

There  is  no  ambiguity  in  the  language  of  the  statute  as  to  the  limitation 
of  time  within  which  the  later  application  must  be  made.  The  provisions  for 
withholding  the  patent  upon  the  nonpayment  of  the  final  fee  within  six 
months,  and  for  relief  from  the  effect  of  such  provisions,  are  imperative.  — 
Weston  v.  Empire,  136  Fed.  599;  67  C.  C.  A.  374. 

§  16.     Piracy. 

If  before  his  application  for  a  patent  his  invention  should  be  pirated  by 
another  or  used  without  his  consent,  it  can  scarcely  be  supposed  that  the 
Legislature  had  within  its  contemplation  such  knowledge  or  use.  —  Pennock 
v.  Dialogue,  2  Pet.  1 ;  7  L.  Ed.  327. 

The  right  of  the  plaintiff  to  his  invention  is  compared  to  his  right  to  other 
property,  which  cannot  be  divested  by  fraud  or  violence;  and  the  case  of 
Miller  v.  Taylor  (4  Burr,  2303)  where  seven  judges  against  four  held,  that 
at  common  law  an  author  by  publishing  a  literary  composition  does  not 
abandon  his  right,  is  referred  to  as  illustrative  of  the  principle.  —  Shaw 
v.  Cooper,  7  Pet.  292;  8  L.  Ed.  689. 

§  17.     Prior  Patent. 

Quaere ;  The  defendant  claims  that  an  expired  foreign  patent  for  a  speci- 
fied and  described  invention  is  so  substantial  a  limitation  that  it  is  in  fact  a 
bar  to  a  subsequent  United  States  patent  for  the  same  invention  to  the  same 
inventor,  and  that  an  expired  foreign  patent  for  a  subordinate  feature  of  a 
described  but  unclaimed  invention  is  a  bar  to  a  subsequent  United  States 
patent  to  the  same  inventor  for  the  generic  invention,  because,  by  not 
taking  out  his  foreign  patent  for  the  generic  invention  and  by  permitting 
the  short  term  patent  to  expire,  he  had  abandoned  the  generic  invention  to 
the  world.  The  interesting  questions  of  law  which  are  involved  in  these  two 
propositions  will  become  practically  important  if  the  facts  in  the  case  require 
their  decision.  —  Electric  v.  Brush,  52  Fed.  130;  2  C.  C.  A.  682. 

Note:    See  Welsbach  v.  Apollo,  96  Fed.  332. 

§  18.     Public  Use. 

Where  the  inventor  practised  his  art  as  a  completed  invention  for  more  than 
two  years,  taught  it  to  a  large  number  of  persons  and  received  pay  for  such 


82  THE    FIXED   LAW   OF    PATENTS  §  19 

instruction,  such  use  will  be  considered  abandonment.  —  International  v. 
Gaylord,  140  U.  S.  55;  35  L.  Ed.  347;  11  S.  Ct.  716. 

Smith  v.  Sprague,  123  U.  S.  249;  Consolidated  v.  Wright,  94  U.  S.  92;  Egbert 
v.  Lippmann,  104  U.  S.  333;    Elizabeth  v.  Nicholson,  97  U.  S.  126. 

The  invention  was  one  which  the  inventor  could  have  tested  in  his  own 
home,  and  by  use  in  his  own  family.  He  did  not  sell  simply  one  or  two  and 
wait  to  see  how  they  satisfied  the  purchasers  or  what  defects  were  discovered 
by  them ;  but  the  firm  of  which  he  was  a  member  invited  the  public  to  buy, 
representing  the  beds  to  be  unequalled,  and  continued  to  manufacture  and 
sell  them  from  month  to  month  and  from  year  to  year,  in  the  same  manner 
as  any  other  article  in  their  stock  was  manufactured  and  sold ;  and  each  sale 
was  made  at  a  profit  and  with  the  contemplation  of  a  profit.  The  experiment 
was  not  a  testing  for  the  purpose  of  discovering  defects  and  perfecting  the 
invention,  but  a  testing  of  the  market,  and  to  see  how  the  article  would  sell, 
or,  as  the  inventor  said,  "  to  see  how  it  will  take  with  the  trade."  This  was 
a  trader's,  and  not  an  inventor's  experiment.  Such  a  use  does  not  carve  an 
exception  out  of  the  statute.  —  Smith  &  Davis  v.  Mellon,  58  Fed.  705 ;  7  C. 
C. A.  439. 

Elizabeth  v.  Pavement  Co.  97  U.  S.  126;  Egbert  v.  Lippmann,  104  U.  S.  333; 
Manning  v.  Glue  Co.  108  U.  S.  462;  Mfg.  Co.  v.  Sprague,  123  U.  S.  249;  Andrews 
v.  Hovey,  123  U.  S.  267;    Root  v.  Railroad  Co.  146  U.  S.  210. 

Mere  forbearance  to  apply  for  a  patent  until  one  has  protected  his  inven- 
tion, and  tested  it  by  actual  practice,  affords  no  just  ground  to  presume  its 
abandonment;  nor  will  the  use  or  sale  of  it  within  two  years  before  the 
application  is  filed  afford  such  ground,  unless  such  use  or  sale  is  accompanied 
by  other  acts  or  by  declarations  which  clearly  evidence  an  intention  to 
dedicate  an  improvement  to  the  public.  —  Mast  v.  Dempster,  82  Fed.  327; 
27  C.  C.  A.  191. 

Agawam  v.  Jordan,  7  Wall.  583;  Adams  v.  Jones,  Fed.  Cas.  57;  Babcock  v. 
Degener,  Fed.  Cas.  698;  Jones  v.  Seewall,  Fed.  Cas.  7,495;  McMillin  v.  Barclay, 
Fed.  Cas.  8,902;    Pitts  v.  Edmonds,  Fed.  Cas.  11,191. 


§  19.     Subsequent  Patent. 

No.  260,653  states  on  its  face  that  it  is  a  division  of  case  I  in  which  other 
features  of  the  invention  were  claimed,  so  that  the  public  was  not  misled 
into  the  idea  that  unpatented  portions  of  the  invention  had  been  abandoned. 
—  Electric  v.  Brush,  52  Fed.  130;   2  C.  C.  A.  682. 

So  long  as  it  was  not  in  public  use,  and  no  one  else  had  made  and  procured 
a  patent  for  the  same  discovery,  his  right  to  apply  for  a  patent  was  subject 
to  no  restriction.  Even  if  he  had  forgotten  the  invention,  or  laid  it  aside, 
as  worthless,  —  abandoned  it,  —  he  had  the  right  to  take  it  up  again,  and  to 
proceed  as  if  he  had  then  first  made  the  discovery.  Even  if  he  did  acquire 
knowledge  of  the  subsequent  patent  before  his  own  patent  was  granted,  it 
was  only  natural  and  right,  as  the  quotation  from  the  decision  of  the  Supreme 
Court  recognizes,  that  he  should  be  stimulated  to  a  fresh  attempt  to  obtain 
a  patent,  it  being  clear  beyond  dispute  that  he  was  the  first  discoverer. 
(Referring  to  Planing  Mill  v.  Keith,  101  U.  S.  479.)  —  Western  v.  Sperry, 
58  Fed.  186;  7  C.  C.  A.  164. 

(This  holding,  as  stated,  is  in  my  opinion,  absolutely  wanting  in  equity 
and  an  absolute  misconstruction  of  Planing  Mill  v.  Keith.  The  fact  that 
Chief  Justice  Fuller  concurred  in  the  decision  of  this  case  would  suggest  that 
he  must  have  done  so  on  other  grounds  than  the  ruling  here  stated  in  the 
opinion  of  Justice  Woods.) 


§  20  ABANDONMENT  83 

§  20.     Miscellaneous  Rulings. 

The  assignee  of  an  abandoned  invention  takes  no  better  title  than  the 
inventor  has,  and  takes  it  subject  to  the  abandonment.  —  Whitely  v.  Swayne, 
74  U.  S.  685;   19  L.  Ed.  199. 

The  act  of  1839  (sec.  7,  Mar.  3,  1839,  5  Stat,  at  L.  354)  as  has  repeatedly 
been  held  had  no  effect  to  invalidate  the  patent,  unless  there  be  proof  of 
abandonment  or  of  a  use  of  the  invention  for  more  than  two  years  prior  to 
the  application.  —  Beedle  v.  Bennett,  122  U.  S.  71;  30  L.  Ed.  1074;  7  S. 
Ct.  1090. 

Dissented  to  JJ.  Bradley,  Field  and  Gray. 

Reversed  on  facts,  Andrews  v.  Hovey,  123  U.  S.  267. 

The  answer  in  the  case  does  not  raise  the  question,  —  the  abandonment 
alleged  being  of  the  invention,  and  not  of  the  application  for  the  patent.  It 
is  true  that  the  respondents  denied  any  information  or  belief  whether  "  the 
letters  patent  "  referred  to  in  the  bill  of  complaint,  were  issued  in  due  form 
of  law.  If  the  respondents  proposed  to  tender  an  issue  of  abandonment, 
it  was  necessary  to  do  it  by  averments  to  that  effect,  specific  and  clear  enough 
to  be  understood.  —  Western  v.  Sperry,  58  Fed.  186;  7  C.  C.  A.  164. 

It  sometimes  happens  that  a  device  is  abandoned  for  reasons  wholly  other 
than  its  own  inherent  qualities.  As  this  machine  is  relied  on  by  the  appellant 
only  as  anticipatory,  it  is  not  necessarily  of  importance  to  inquire  whether  it 
possessed  utility  or  was  in  all  respects  patentable,  and  we  agree  with  the 
circuit  court  that  it  cannot  be  classed  with  mere  abandoned  experiments.  — 
Packard  v.  Lacing,  70  Fed.  66;   16  C.  C.  A.  639. 

Barr  was  employed  under  White.  White  made  application  for  a  patent 
and  Barr  signed  the  application  as  a  witness.  The  claims  were  so  restricted 
that  White  abandoned  the  application.  Later  Barr  made  application  for  and 
secured  a  patent  on  the  same  invention;  and  on  the  trial  swore  that  the 
original  invention  was  his  and  not  White's,  and  that  the  reason  he  did  not 
assert  claim  to  it  was  because  he  was  under  White  and  was  afraid  of  losing 
his  position.  Held:  Both  were  free  men,  White,  with  the  consent  of  the 
railway  company,  could  discharge  Barr  at  any  time,  and  Barr  at  all  times 
was  at  liberty  to  leave  his  employment.  It  would  be  carrying  the  rule  a  great 
way  and  to  a  dangerous  extent  to  hold  that  anyone  occupying  a  subordinate 
position  is  not  to  be  bound  by  his  acts,  as  between  himself  and  his  superior, 
because  of  a  supposed  fear  upon  the  part  of  the  clerk  that,  should  he  protest, 
he  might  lose  his  employment.  His  conduct  under  the  circumstances,  if 
he  was  in  fact,  or  deemed  himself  to  be,  the  inventor,  is  inexplicable,  and  runs 
counter  to  the  general  conduct  of  responsible  human  beings.  —  Barr  v. 
Chicago,  110  Fed.  972;   49  C.  C.  A.  194. 

Leary  v.  Railroad,  139  Mass.  580;  Dougherty  v.  Steel  Co.  88  Wis.  343;  Reed 
v.  Stockmeyer,  74  Fed.  186;    Atlantic  v.  Brady,  107  U.  S.  192. 

What  is  meant  by  forgotten,  or  as  Mr.  Chief  Justice  Taney  puts  it,  "  finally 
forgotten?  "  It  certainly  does  not  mean  that  the  value  of  the  invention  has 
not  been  realized  and  its  use  has  been  abandoned.  Judge  Taney  says  that 
these  facts  are  not  sufficient  of  themselves  to  prevent  anticipation,  if  the 
invention  is  still  in  the  memory  of  the  prior  inventor ;  thus  recognizing  that 
its  value  may  not  have  been  realized  and  its  use  may  have  been  abandoned, 
and  yet  it  may  still  be  in  the  memory  of  the  inventor.  Robertson  (Sic) 
says  that  it  must  be  both  "  abandoned  and  forgotten,"  or  "  disused  and  unre- 
membered."  Possibly  light  is  thrown  on  the  meaning  of  the  word  by  the 
fact  that  a  forgotten  invention  is  likened  to  a  lost  art  or  an  unpatented  or 


84 


THE    FIXED    LAW   OF    PATENTS 


§§  21-23 


unpublished  foreign  invention.  —  Buser  v.  Novelty,  151  Fed.  478;   81  C. 
C.  A.  16. 

Rob.  Pat.  Vol.  1,  p.  323;   Cahoon  v.  Ring,  Fed.  Cas.  2,291;  Hall  v.  Bird,  Fed. 
Cas.  5,926;   Hartshorn  v.  Tripp,  Fed.  Cas.  6,168;   Davis  v.  Brown,  9  Fed.  647. 

Note:    Like  the  entire  opinion  in  this  case,  this  is  a  remarkable  holding. 


ABATEMENT. 

Assignment  of  Patent  Pending  Suit 

§21 

Death  of  Complainant  §  22 


Dissolution  and  Merger  of  Corpora- 
tion §  23 
See  —  Pleading  §  800 


§  2i.     Assignment  of  Patent  pending  suit. 

The  equity  rule,  apart  from  the  statutory  or  code  provisions,  is  not  the 
same  with  respect  to  the  effect  of  assignments  pendente  lite  by  plaintiff  and 
by  defendant.  "  An  assignment  by  a  defendant  of  his  interest  in  a  litigation 
does  not  necessarily  defeat  a  suit.  The  assignee  may,  at  his  own  election, 
come  in  by  an  appropriate  application,  and  make  himself  a  party,  so  as  to 
assume  the  burden  of  the  litigation  in  his  own  name,  or  he  may  act  in  the 
name  of  his  assignor."  Ex  parte  Railroad  Co.  95  U.  S.  221.  If  a  sole  plaintiff, 
suing  in  his  own  right,  assigns  his  whole  interest  to  another,  he  is  no  longer 
able  to  prosecute  the  suit,  because  he  is  without  interest  in  the  litigation. 
Story  Eq.  PI.  sec.  348;  Hoxie  v.  Carr,  1  Sumn.  173;  Rose  v.  Fort  Wayne, 
63  Fed.  466.  But  this  does  not  mean  that  the  bill  must  be  dismissed.  The 
effect  of  the  assignment  is  stated  by  Judge  Story  not  to  be  "  necessarily 
a  destruction  of  the  suit,  like  an  abatement  at  law,  where  a  judgment  quod 
cassetur  is  entered.  It  is  merely  an  interruption  to  the  suit,  suspending  its 
progress  until  the  new  parties  are  brought  before  the  court,  and  if  this  is 
not  done  at  a  proper  time  the  court  will  dismiss  the  suit."  —  Ecaubert  v. 
Appleton,  67  Fed.  917;   15  C.  C.  A.  73. 

If  a  sole  plaintiff,  suing  in  his  own  right,  assigns  his  whole  interest  to 
another,  he  is  no  longer  able  to  prosecute  the  suit  because  he  is  without 
interest  in  the  litigation.  —  Automatic  v.  Cutler-Hammer,  147  Fed.  250; 
77  C.  C.  A.  176. 

Ecaubert  v.  Appleton,  67  Fed.  917. 

§  22.     Death  of  Complainant. 

Since  the  present  appeals  were  taken,  the  patentee  has  died,  and  the 
appellant  now  suggests  that  the  causes  of  action  do  not  survive,  and  the  suits 
cannot  be  further  prosecuted  in  the  name  of  the  legal  representatives  of  the 
decedent.  As  to  this,  it  is  sufficient  to  say  that  what  was  called  by  Chief 
Justice  Marshall,  in  Gordon  v.  Ogden,  3  Pet.  35,  "  the  silent  practice  of  the 
court " has  always  been  the  other  way.  It  is  everyday  practice  to  revive  such 
suits,  and  the  books  are  full  of  cases  in  which  this  has  been  silently  done,  no 
one  apparently  entertaining  a  doubt  of  its  propriety.  —  Railroad  v.  Turrill, 
110  U.  S.  301;  28  L.  Ed.  154;  4  S.  Ct.  5. 


§  23.     Dissolution  and  Merger  of  Corporation. 

The  dissolution  of  complainant  under  the  N.  Y.  consolidation  act  in  its 
merger  with  the  new  corporation  did  not  work  abatement  of  its  right  to 
continue  the  suit  after  such  dissolution  and  consolidation.  —  Edison  v. 
U.  S.  52  Fed.  300;  3  C.  C.  A.  83. 


§§  24-25 
ACTIONS. 


ACTIONS 


85 


General  Statement  §  24 
To  Compel  Issue  of  Patent  §  25 
Cancellation  of  Patent  §  26 
Interfering  Patents  §  27 
See —  Administrator    §   41;    Arbitra- 
tion §  145;    Assignment  §  151;    De- 


fenses §  306;  Demurrer  §  323;  Designs 
§  336;  Equity  §  370;  Fraud  §  425; 
Government  §  428;  Interferences  § 
582;  Interfering  Patents  §  586;  Law 
Actions  §  733;  Pleading  and  Prac- 
tice §  788;  (/n/azY  Trade  §  929 


§  24.     General  Statement. 

Actions  for  infringement  of  letters  patent,  of  which  the  circuit  courts  of 
the  United  States  have  exclusive  original  jurisdiction  'under  the  ninth 
paragraph  of  Sec.  629,  R.  S.,  both  at  law  and  in  equity,  are  considered 
separately  under  Equity,  Law  Actions,  and  Jurisdiction.  Actions  otherwise 
arising,  of  which  the  circuit  courts  have  exclusive  jurisdiction  and  which 
arise  out  of  the  Patent  Statute,  are  the  following: 

§  25.     To  Compel  Issue  of  Patent. 

Whenever  a  patent  on  application  is  refused,  either  by  the  Commissioner  of 
Patents  or  by  the  Supreme  Court  of  the  District  of  Columbia  upon  an  appeal 
from  the  Commissioner,  the  applicant  may  have  remedy  by  bill  in  equity; 
and  the  court  having  cognizance  thereof,  on  notice  to  adverse  parties  and 
other  due  proceedings  had,  may  adjudge  that  such  applicant  is  entitled, 
according  to  law,  to  receive  a  patent  for  his  invention,  as  specified  in  his 
claim,  or  for  any  part  thereof,  as  the  facts  in  the  case  may  appear.  And 
such  adjudication,  if  it  be  in  favor  of  the  right  of  the  applicant,  shall  authorize 
the  Commissioner  to  issue  such  patent  on  the  applicant  filing  in  the  Patent 
Office  a  copy  of  the  adjudication,  and  otherwise  complying  with  the  require- 
ments of  law.  In  all  cases,  where  there  is  no  opposing  party,  a  copy  of  the 
bill  shall  be  served  on  the  Commissioner;  and  all  the  expenses  of  the  pro- 
ceeding shall  be  paid  by  the  applicant,  whether  the  final  decision  is  in  his 
favor  or  not.    R.  S.  4915. 

Mandamus  will  lie  to  compel  a  ministerial  officer  to  do  what  is  required 
of  him  by  law ;  but  it  will  not  lie  to  reverse  his  action  when  taken.  —  Hollo- 
way  v.  Whiteley,  71  U.  S.  522;  18  L.  Ed.  335. 

Decatur  v.  Paulding,  14  Pet.  515. 

The  remedy  by  bill  in  equity  under  sec.  4915  applies  only  when  the  Com- 
missioner decides  to  reject  an  application  for  a  patent,  on  the  ground  that 
the  applicant  is  not,  on  the  merits,  entitled  to  it.  —  Butterworth  v.  Hoe, 
112  U.  S.  50;  28  L.  Ed.  656;  5  S.  Ct.  25. 

Will  lie  against  the  Commissioner.  —  Butterworth  v.  Hoe,  112  U.  S.  50; 
28  L.  Ed.  656;  5  S.  Ct.  25. 

Com'r.  v.  Whiteley,  4  Wall.  522. 

By  sec.  739  and  by  the  act  of  1875  "  no  civil  suit  shall  be  brought  before 
either  of  .said  courts  (Circuit  or  District)  against  an  inhabitant  of  the  U.  S. 
by  any  original  process  in  any  other  district  than  that  of  which  he  is  an 
inhabitant  or  in  which  he  may  be  found  at  the  time  of  serving  the  writ." 
We  entertain  no  doubt  that  this  statute  applies  to  suits  brought  under  sec. 
4915.  The  Commissioner  of  Patents  is  by  law  located  in  the  Patent  Office, 
R.  S.  476.  His  official  residence  is  therefore  at  Washington,  in  the  District 
of  Columbia.  —  Butterworth  v.  Hill,  114  U.  S.  128;  29  L.  Ed.  119;  5  S. 
Ct.  960. 


By  sec.  739  and  by  the  act  of  1875,  suits  brought  against  the  Commis- 
sioner of  Patents  under  4915  are  limited  to  the  jurisdiction  of  courts  including 


86  THE    FIXED    LAW    OF    PATENTS  §  26 

his  official  residence,  which  is,  Washington.  —  Butterworth  v.  Hill,   114 
U.  S.  128;  29  L.  Ed.  119;  5  S.  Ct.  960. 

The  provision  of  sec.  4915  is  that  the  circuit  court  may  adjudge  that  the 
applicant  "  is  entitled  according  to  law,  to  receive  a  patent  for  his  invention, 
as  specified  in  his  claim  or  for  any  part  thereof,  as  the  facts  in  the  case  may 
appear;  "  and  that,  if  the  adjudication  is  in  favor  of  the  right  of  the  appli- 
cant, it  shall  authorize  the  commissioner  to  issue  the  patent.  It  necessarily 
follows  that  no  adjudication  can  be  made  in  favor  of  the  applicant,  unless 
the  alleged  invention  for  which  a  patent  is  sought  is  a  patentable  invention. 
The  litigation  between  the  parties  on  this  bill  cannot  be  concluded  by  solely 
determining  an  issue  as  to  which  of  them  first  made  the  device.  A  deter- 
mination of  that  issue  alone,  in  favor  of  the  applicant,  carrying  with  it,  as 
it  does,  authority  to  the  commissioner  to  issue  the  patent  to  him  for  the  claims 
in  interference,  would  necessarily  give  the  sanction  of  the  court  to  the 
patentability  of  the  invention  involved.  —  Hill  v.  Wooster,  132  U.  S.  693; 
33  L.  Ed.  502;  10  S.  Ct.  228. 

Where  action  is  brought  to  compel  issue  of  a  patent  under  R.  S.  sec.  4915 
the  court  will  not  only  determine  prior  rights  between  the  parties  but  will 
also  adjudicate  the  patentability  of  the  invention.  —  Hill  v.  Wooster,  132 
U.  S.  693;  33  L.  Ed.  502;  10  S.  Ct.  228. 

Whether  the  original  conception  was  Gillette's,  whether  he  disclosed  it 
adequately  to  Sendelbach,  whether  Sendelbach  was  chargeable  as  Gillette's 
agent  in  embodying  the  conception  in  the  forms  of  the  two  claims,  were  ques- 
tions of  fact  presented  to  the  Patent  Office  tribunals  on  virtually  the  same 
evidence  that  is  now  adduced.  To  justify  us  in  directing  the  issuance  of  a 
patent  to  Gillette,  we  should  be  shown  very  clearly  that  the  adverse  findings 
were  erroneous.  —  Gillette  v.  Sendelbach,  146  Fed.  758;  77  C.  C.  A.  55. 

When  the  patent  was  issued  to  the  wrong  person,  the  rightful  owner  may 
maintain  an  action  to  compel  a  surrender  and  reissue.  —  Appleton  v.  Bacon, 
67  U.  S.  699;   17  L.  Ed.  338. 


§  26.    Cancellation  of  Patent. 

The  bill  was  filed  the  day  after  the  patent  had  expired  and  sought  to  set 
aside  and  annul  all  claims  arisen  thereunder.  Held:  that  there  remained 
nothing  which  could  be  the  subject  of  a  suit.  —  U.  S.  v.  Goodyear,  76  U.  S. 
811;  19  L.  Ed.  786. 

A  patent  cannot  be  abrogated  in  a  proceeding  collateral  thereto!  — 
Rubber  Co.  v.  Goodyear,  76  U.  S.  788;  19  L.  Ed.  566. 

Jackson  v.  Lawton,  10  Johns.  23;  Field  v.  Seabury,  19  How.  332;  Foley  v. 
Harrison,  15  How.  448. 

An  action  to  repeal  or  annul  a  patent  on  the  ground  of  fraud  or  misrep- 
resentation in  obtaining  the  same  can  be  brought  only  in  the  name  of  the 
Government  by  the  Attorney  General.  —  Mowry  v.  Whitney,  81  U.  S.  434; 
20  L.  Ed.  858. 

The  ancient  mode  was  by  scire  facias;  but  as  this  writ  is  not  used  in 
this  country,  the  chancery  jurisdiction  is  by  bill.  —  Mowry  v.  Whitney, 
81  U.  S.  434;  20  L.  Ed.  858. 

U.  S.  v.  Stone,  2  Wall.  525;  Atty.  v.  Vernon*  1  Vern.  277;  Jackson  v.  Lawton, 
10  Johns.  24;   King  v.  Butler,  3  Lev.  220. 


§  26  ACTIONS  87 

Whether  court  of  equity  will  annul  patent  when  obtained  without  fraud 
or  deceit,  quaere.  But  we  do  not  decide  here  whether  a  patent  is  absolutely 
void  because  the  patentee  is  not  the  first  inventor,  nor  whether  a  court  of 
equity  should  set  aside  a  patent  where  the  party  has  obtained  it  without 
fraud  or  deceit  believing  himself  to  be  the  first  inventor.  —  U.  S.  v.  Bell 
Tel.  Co.  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

These  provisions,  while  they  do  not  in  express  terms  confer  upon  the  courts 
of  equity  of  the  United  States  the  power  to  annul  or  vacate  a  patent,  show 
very  clearly  the  sense  of  Congress  that  if  such  power  is  to  be  exercised  any- 
where it  should  be  in  the  equity  jurisdiction  of  those  courts.  The  only 
authority  competent  to  set  aside  a  patent,  or  to  annul  it,  or  to  correct  it, 
for  any  reason  whatever  is  vested  in  the  Judicial  Department  of  the  Govern- 
ment, and  this  can  only  be  effected  by  proper  proceedings  taken  in  the  courts 
of  the  United  States.  —  U.  S.  v.  Beh\  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct. 
90. 

U.  S.  v.  Stone,  69  U.  S.  525;  Jackson  v.  Lawton,  10  Johns.  24;  Attorney  v. 
Vernon,  1  Vern.  277;  U.  S.  v.  Hughes,  52  U.  S.  552;  also  71  U.  S.  252;  Moore 
v.  Robbing,  96  U.  S.  530;  Moffat  v.  U.  S.  112  U.  S.  24;  U.  S.  v.  Minor,  114  U.  S. 
233;  Colorado  v.  U.  S.  123  U.  S.  307;  U.  S.  v.  San  Jacinto,  125  U.  S.  273;  Mowry 
v.  Whitney,  81  U.  S.  434. 

While  it  cannot  be  successfully  denied  that  the  general  powers  of  a  court 
of  equity  include  the  right  to  annul  and  set  aside  contracts  or  instruments 
obtained  by  fraud,  to  correct  mistakes  made  in  them,  and  to  give  all  other 
appropriate  relief  against  documents  of  that  character,  such  as  requiring 
their  delivery  up,  their  cancellation,  or  their  correction,  in  order  to  make 
them  conform  to  the  intention  of  the  parties,  it  would  seem  to  require  some 
special  reason  why  the  Government  of  the  United  States  should  not  be  able 
to  avail  itself  of  these  powers  of  a  court  of  equity.  —  U.  S.  v.  Bell,  128  U.  S. 
315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

Before  the  government  is  entitled  to  a  decree  cancelling  a  patent  for  an 
invention  on  the  ground  that  it  has  been  fraudulently  and  wrongfully  obtained 
it  must,  as  in  the  case  of  a  like  suit  to  set  aside  a  patent  for  land,  establish 
the  fraud  and  the  wrong  by  testimony  which  is  clear,  convincing  and  satis- 
factory. —  U.  S.  v.  Bell  Tel'.  Co.  167  U.  S.  224;  42  L.  Ed.  144;  17  S.  Ct.  809. 

The  Government,  therefore,  if  seeking  simply  to  protect  the  right  of  an 
individual,  ought  not  to  be  permitted  to  maintain  a  suit  in  equity  to  cancel 
that  against  which  the  individual  has  a  perfect  legal  defense  available  in 
an  action  brought  bv  or  against  him.  —  U.  S.  v.  Bell  Tel.  Co.  167  U.  S.  224; 
42  L.  Ed.  144;  17  S.  Ct.  809. 

See  full  discussion  and  cases  in  U.  S.  v.  Bell  Tel.  Co.  167  U.  S.  224;  42 
L.Ed.  144;  17  S.  Ct.  809. 

It  has  been  settled  that  when  a  patent  has  received  the  signature  of  the 
Secretary  of  the  Interior,  countersigned  by  the  Commissioner  of  Patents, 
and  has  affixed  to  it  the  seal  of  the  Patent  Office,  it  has  passed  beyond  the 
control  and  jurisdiction  of  that  office,  and  is  not  subject  to  be  revoked  or 
cancelled  by  the  President,  or  any  other  officer  of  the  government.  —  Mc- 
Cormick  v.  Aultman,  169  U.  S.  606;  42  L.  Ed.  875;   18  S.  Ct.  443. 

U.  S.  v.  Schurtz,  102  U.  S.  378;  U.  S.  v.  Bell  Tel.  Co.  128  U.  S.  315;  Seymour 
v.  Osborn,  11  Wall.  516;  Cammeyer  v.  Newton,  94  U.  S.  225;  U.  S.  v.  Palmer, 
128  U.  S.  262;    James  v.  Campbell,  104  U.  S.  356. 

The  only  authority  competent  to  set  a  patent  aside,  or  to  annul  it,  or  to 
correct  it  for  any  reason  whatever,  is  vested  in  the  courts  of  the  United. 


THE    FIXED    LAW    OF    PATENTS 


§§  27-29 


States,  and  not  in  the  department  which  issued  the  patent.  —  McCormick 
v.  Aultman,  169  U.  S.  606;  42  L.  Ed.  875;   18  S.  Ct.  443. 

Moon  v.  Robbins,  96  U.  S.  530;  U.  S.  v.  Bell  Tel.  Co.  128  U.  S.  315;  Lumber 
Co.  v.  Rust,  168  U.  S.  589. 

The  bill  contains  enough  on  its  face  and  in  its  form,  and  in  its  signature 
by  the  attorney  general,  to  bring  it  within  U.  S.  v.  Am.  Bell  Tel.  Co.  128 
U.  S.  315.  But  in  the  development  of  proofs  all  allegations  of  affirmative 
or  positive  fraud  dropped  out;  so  U.  S.  v.  Am.  Bell  Tel.  Co.  fails  to  reach  the 
merits  of  the  case.  —  Am.  Bell  Tel.  v.  U.  S.  68  Fed.  542;  15  C.  C.  A.  569. 

The  rule  of  fraud  applied  and  U.  S.  v.  Am.  Bell  Tel.  Co.  128  U.  S.  531 
explained  and  limited.  —  Am.  Bell  Tel.  v.  U.  S.  68  Fed.  542;  15  C.  C.  A. 
569. 

§  27.     Interfering  Patents. 

Provision  is  made  by  Sec.  4918,  R.  S.  for  the  determination  of  rights 
under  issued  patents,  the  claims  of  which  overlap  or  interfere.  The  terms  of 
the  statute  and  the  appellate  law  relating  thereto  will  be  found  in  full  under 
Interfering  Patents. 


ADJUDICATION. 

(See  §  250) 

General  Statement  §  28 

Effect  of  §  29 

Patent  Office  Decision  §  30 

Prior 

Conclusiveness  §  31 

Different  Parties  §  32 

Estoppel  on  Complainant  §  33  (see 

§381) 

Judicial  Notice  §  34 


New  Evidence  §  35 
Privity  §  36 
Stare  Decisis  §  37 

See  —  Arbitration  §  145;  Comity  § 
250;  Commissioner  of  Patents  §  261; 
Defenses  §  315;  Estoppel  §  381;  In- 
junction §§  541,  570;  Interferences  § 
580;  Patent  Office  §  785;  Res  Judi- 
cata §  893 


§  28.     General  Statement. 

The  general  effect  of  adjudications,  prior  and  collateral,  in  patent  causes 
is  similar  to  the  general  law.  The  Patent  Statute  makes  no  special  provision 
on  this  subject,  except  as  to  special  matters  relating  to  the  decisions  of  the 
Commissioner  and  those  under  him.  In  the  following  paragraphs  the  various 
general  rulings  of  the  courts  are  given.  The  effect  of  adjudications  as  Es- 
toppels and  Res  Judicata  will  be  found  under  those  titles.  The  special  appli- 
cations as  relating  to  Injunctions  and  other  special  matters  will  be  found 
under  those  titles. 

§  29.    Effect  of. 

An  adjudication  in  the  case  of  a  patent  is  not  only  a  judgment  inter 
partes,  but  is  a  judicial  construction  of  a  grant  by  the  government,  and  in  a 
broad  sense  deals  with  and  determines  the  rights  of  the  public.  A  patent 
is  sui  generis.  By  it  the  public,  through  its  authorized  representatives, 
grants  a  monopoly  for  a  term  of  years  in  consideration  of  the  surrender  of  the 
invention  to  public  use  upon  expiration  of  the  term.  When,  upon  judicial 
contest,  a  competent  court  has  sanctioned  the  grant  and  determined  the  right 
thereunder,  the  monopoly  thereby  granted  ought  not  to  be  permitted  to  be 
invaded  except  under  a  clear  showing  that  the  decision  was  wrong.  — 
Electric  v.  Edison,  61  Fed.  834;   10  C.  C.  A.  106. 

(The  patent  had  been  held  valid  in  S.  D.  N.  Y.;  S.  D.  O.;  N.  D.  Ga.; 
&  Ct.  App.  Rep.  of  France.     The  C.  C.  A.  6th  Cir.  held  the  patent  invalid). 


§§  30-31  ADJUDICATION  89 

The  case  in  the  Court  of  Appeals  for  the  Sixth  Circuit  was  not  a  proceeding 
in  rem.  The  defendant  in  that  particular  suit  has  a  decree  on  which  .  .  . 
he  could  base  a  plea  of  res  adjudicata.  That  plea  would  be  as  good  in  the 
other  circuits  as  in  the  sixth.  No  other  member  of  the  public  could  plead 
that  decree  in  any  circuit.  —  Rubber  Tire  v.  Milwaukee,  154  Fed.  358;  83 
C.  C.  A.  336. 

§  30.     Patent  Office  Decisions. 

Patents  are  often  granted  with  a  view  to  leaving  open,  to  be  decided  by  the 
courts,  questions  which  the  Patent  Office  does  not  deem  it  proper  to  adjudi- 
cate against  the  applicant  by  withholding  the  patent.  —  Andrews  v.  Hovey, 
124  U.  S.  694;   31  L.  Ed.  557;  8  S.  Ct.  676. 

The  learned  counsel  for  the  defendants,  who  testified  as  an  expert  in  the 
case,  bears  testimony  as  to  the  great  experience  and  competency  of  these 
officials;  and  while  we  do  not  go  so  far  as  to  hold  that  their  decision  upon 
this  point  is  conclusive,  (upon  a  question  of  reissue),  as  some  of  the  courts 
are  manifestly  inclined  to  do,  we  are  of  opinion  that  the  decision  of  competent 
experts,  made  after  a  full  hearing,  where  both  sides  have  been  represented 
by  able  counsel,  and  not  impeached  by  fraud  or  favoritism,  has  great  per- 
suasive force.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

§  31.     Prior  —  Conclusiveness. 

While  one  infringer  may  succeed  in  defeating  a  patent  under  one  of  the 
statutory  defenses,  such  action  does  not  prevent  another  from  being  sued,  or 
mulcted,  in  case  he  fails  to  produce  the  requisite  evidence  to  maintain  his 
defense.  —  U.  S.  v.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

The  patent  had  been  held  void  in  one  circuit  by  the  Circuit  Court  and  by 
the  Circuit  Court  of  Appeals.  In  another  suit  by  the  same  complainant 
against  a  party  who  was  a  customer  of  the  former  defendant,  the  patent  was 
held  by  the  Circuit  Court  in  another  circuit  to  be  void  and  on  appeal  to  the 
Circuit  Court  of  Appeals  of  that  circuit,  the  patent  was  held  valid.  The 
defendant  in  the  first  suit  brought  action  against  the  owner  of  the  patent 
to  restrain  him  from  bringing  suits  in  other  circuits  on  said  patent  against 
his  customers.  On  certification  of  the  questions  involved  to  the  Supreme 
Court,  it  was  held  that  the  defendant  in  the  first  suit  and  the  complainant 
in  the  suit  to  restrain  such  further  actions,  had  no  adequate  remedy  at  law; 
that  such  action  could  be  maintained  in  equity  and  that  by  an  action  in 
equity,  the  Circuit  Court  having  jurisdiction  of  the  party  owning  the  patent, 
could  restrain  him  from  bringing  action  thereon  in  any  Circuit  either  against 
the  original  defendant  or  against  any  of  his  customers,  regardless  of  the 
fact  that  another  Circuit  Court  of  Appeals  in  another  circuit  had  held  the 
patent  valid.  —  Kessler  v.  Eldred,  206  U.  S.  285;  51  L.  Ed.  1065;  27  S.  Ct.  611. 

Note:  This  decision  of  the  Supreme  Court  effaces  with  a  single  stroke 
of  the  pen  the  accumulated  holdings  of  the  past  20  years.  That  the  position 
is  tenable  with  certain  modifications  is  undoubted;  but  that  serious  modifica- 
tions will  have  to  be  made  is  equally  evident.  A  probable  certification  to 
the  Supreme  Court  in  the  case  of  Consolidated  v.  Diamond,  157  Fed.  677, 
may  serve  to  limit  and  locate  this  holding;  but  it  is  believed  that  nothing 
short  of  Congressional  action  amending  the  Circuit  Court  of  Appeals  act, 
can  give  relief  from  the  utter  chaos  which  now  exists. 

The  patent  had  been  held  void  in  one  circuit  by  the  circuit  court  and  by 
the  Circuit  Court  of  Appeals.  In  another  suit  by  the  same  complainant 
against  a  party  who  was  a  customer  of  the  former  defendant,  the  patent  was 


90  THE   FIXED   LAW   OF    PATENTS  §  31 

held  by  the  Circuit  Court  in  another  circuit  to  be  void  and  on  appeal  to  the 
Circuit  Court  of  Appeals  of  that  circuit,  the  patent  was  held  valid.  The 
defendant  in  the  first  suit  brought  action  against  the  owner  of  the  patent 
to  restrain  him  from  bringing  suits  in  other  circuits  on  said  patent  against 
his  customers.  On  such  action  the  following  was  certified  to  the  Supreme 
Court, 

Did  the  decree  rendered  by  the  Circuit  Court  in  the  District  of  Indiana 
in  the  suit  of  Eldred  v.  Kessler  have  the  effect  of  making  a  suit  by  Eldred 
against  any  customer  of  Kessler's  for  alleged  infringement  of  the  Chambers 
patent  by  use  or  sale  of  Kessler's  lighters  a  wrongful  interference  by  Eldred 
with  Kessler's  business?  To  this  the  Supreme  Court  answered  in  the  affirma- 
tive. —  Kessler  v.  Eldred,  206  U.  S.  285;  51  L.  Ed.  1065;  27  S.  Ct.  611. 

Note:  See  this  question  considered  in  Consolidated  v.  Diamond,  157  Fed. 
677.    Look  for  Supreme  Court  decision  on  certification  of  that  case. 

The  patent  had  been  held  void  in  one  circuit  by  the  circuit  court  and  by 
the  circuit  court  of  appeals.  In  another  suit  by  the  same  complainant  against 
a  party  who  was  a  customer  of  the  former  defendant,  the  patent  was  held  by 
the  circuit  court  in  another  circuit  to  be  void  and  on  appeal  to  the  Circuit  Court 
of  Appeals  of  that  circuit,  the  patent  was  held  valid.  The  defendant  in  the 
first  suit  brought  action  against  the  owner  of  the  patent  to  restrain  him  from 
bringing  suits  in  other  circuits  on  said  patent  against  his  customers.  On  such 
action  the  following  was  certified  to  the  Supreme  Court. 

Did  the  decree  in  Kessler's  favor  rendered  in  the  circuit  court  for  the 
District  of  Indiana  in  the  suit  of  Eldred  v.  Kessler,  (the  first  suit)  have  the 
effect  of  entitling  Kessler  to  continue  the  business  of  manufacturing  and 
selling  throughout  the  United  States,  the  same  lighter  he  had  theretofore 
been  manufacturing  and  selling  without  molestation  by  Eldred,  through  the 
Chambers  patent?  To  this  the  Supreme  Court  answered  in  the  affirmative.  — 
Kessler  v.  Eldred,  206  U.  S.  285;  51  L.  Ed.  1065;  27  S.  Ct.  611. 

Note:  See  this  question  considered  in  Consolidated  v.  Diamond,  157  Fed. 
677.    Look  for  Supreme  Court  decision  on  certification  of  that  case. 

That  where  a  cause  has  been  once  fairly  tried,  fully  heard  and  finally 
decided,  upon  its  merits,  by  a  competent  tribunal,  the  same  question  as 
between  the  same  parties  or  their  privies  in  interest,  ought  not  to  be  tried 
over  again  see,  Norton  v.  San  Jose,  83  Fed.  512;  27  C.  C.  A.  576. 

Parrish  v.  Ferris,  2  Black.  606;  Cromwell  v.  Sac,  94  U.  S.  351;  Stout  v.  Lye, 
103  U.  S.  66;  Johnson  v.  Wharton,  152  U.  S.  252;  Last  Chance  v.  Tyler,  157 
U.  S.  683;  Forsyth  v.  City,  166  U.  S.  506;  Norton  v.  Fruit  Packing  Co.  79  Fed. 
793;   Mining  Co.  v.  Dangberg,  81  Fed.  73. 

The  decision  of  the  Supreme  Court  in  Potts  v.  Creager,  155  U.  S.  597,  is 
not  technically  determinative  of  this  case,  because  the  parties  are  different, 
and  because  the  claims  in  issue  now  and  then  are  not  the  same.  So  far  as 
found  applicable,  the  opinion  of  the  Supreme  Court  will,  of  course,  be  fol- 
lowed. —  Anderson  v.  Potts,  108  Fed.  379;  47  C.  C.  A.  409. 

Though  the  former  case  might  not  prevent  a  renewed  inquiry  into  the 
merits,  we  are  persuaded  that  the  pronouncements  therein,  in  view  of  the 
Supreme  Court's  denial  of  appellant's  application  for  a  writ  of  certiorari 
should,  in  the  interest  of  faith  in  the  stability  of  judicial  decisions,  be  adhered 
to  by  us  as  the  law  of  the  patent.  —  Rawson  v.  Western,  118  Fed.  575; 
55  C.  C.  A.  403. 

We  should  seemingly  place  ourselves  in  the  attitude  of  reopening,  upon 
substantially  the  same  evidence,  the  question  of  the  validity  of  the  Grant 


§  31  ADJUDICATION  91 

patent  after  the  Supreme  Court  under  its  revising  powers,  had  refused  to 
re-examine  the  case.  —  Rubber  Tire  v.  Victor,  123  Fed.  85;  59  C.  C.  A.  215. 

In  Kessler  v.  Eldred,  Eldred,  the  owner  of  a  patent,  sued  Kessler,  a  manu- 
facturer of  electric  cigar  lighters,  in  the  district  of  Indiana.  The  court  found 
non-infringement  and  dismissed  the  bill.  Subsequently  Eldred  sued  Kirk- 
land,  another  manufacturer  of  similar  lighters  in  the  Western  district  of 
New  York,  was  defeated  at  circuit,  but  prevailed  in  the  Circuit  Court  of 
Appeals.  Eldred  next  sued  Breitweiser,  a  user  of  Kessler  lighters,  in  the  same 
district.  While  this  last  suit  was  pending,  Kessler  filed  a  bill  in  the  Northern 
District  of  Illinois  against  Eldred  to  enjoin  him  from  prosecuting  any  suit 
against  any  one  for  alleged  infringement  of  the  patent  by  purchase,  use  or 
sale  of  any  cigar  lighter  manufactured  by  Kessler  and  identical  with  the 
lighter  in  evidence  before  the  court  in  the  first  suit.  The  Supreme  Court 
held  that  the  original  judgment  conclusively  settled  the  right  of  Kessler  to 
manufacture  and  sell  his  manufactures  free  from  all  interference  from  Eldred 
by  virtue  of  the  patent  there  adjudicated,  and  granted  the  relief  prayed  for. 
Inasmuch  as  defendant  here  is  a  dealer,  and  as  such  may  wish  to  sell  tires 
manufactured  by  the  Goodyear  Company  which  has  secured  adjudication 
adverse  to  the  patent  in  the  Circuit  Court  of  Appeals,  Sixth  Circuit,  supra, 
the  judge  who  heard  the  motion  at  circuit  in  view  of  the  decision  in  Kessler 
v.  Eldred  inserted  the  following  clause  in  the  order : 

"  Nothing  in  this  injunctional  order  shall  prevent,  or  is  intended  to  prevent 
or  enjoin,  the  defendant  from  handling,  using,  or  selling  rubber  tires  and  rims 
covered  by  the  Grant  patent,  . . .  manufactured  by  the  Goodyear  Tire  &  Rub- 
ber Company,  having  a  right  to  manufacture,  use,  and  sell  such  tires  under  a 
judicial  decree  in  a  litigation  in  the  federal  courts  in  the  district  of  Indiana 
heretofore  pending  between  this  complainant  and  such  parties,  wherein  it 
has  been  judicially  determined  that  said  Grant  patent  is  invalid  and  void." 

The  complainants  cannot  now  question  the  propriety  of  inserting  this 
clause,  because  they  have  no  appeal  from  an  order  refusing  to  issue  injunction, 
and  the  clause  is  a  refusal  to  enjoin  tires  made  by  the  Goodyear  Company.  De- 
fendant contends,  however,  that  the  reservation  does  not  go  far  enough,  that 
defendant  should  be  left  free  to  sell  any  infringing  tires  made  in  the  Sixth 
Circuit,  or  in  any  circuit  other  than  the  Second,  or  that  no  injunction  at  all 
should  have  been  issued.  Kessler  v.  Eldred,  as  the  Supreme  Court  itself 
remarked,  was  a  case  of  novel  impression,  and  in  deciding  it  that  court  care- 
fully confined  the  decision  to  the  single  point  that  the  original  judgment  was 
conclusive  upon  the  parties  to  it.  As  to  the  proposition  that  such  adjudica- 
tion afforded  a  defense  to  Breitweiser  in  the  direct  suit  against  him,  it  said: 
"  Upon  that  question  we  express  no  opinion."  It  would  seem  that  inferior 
courts  should  be  cautious  about  extending  the  principle  enunciated  in  that 
case  beyond  the  limits  within  which  it  was  there  applied.  The  opinion  opens 
up  a  new  subject  in  patent  law  practice,  and  it  is  desirable,  no  doubt,  that 
an  early  expression  of  opinion  by  the  Supreme  Court  should  be  secured  upon 
a  record  which  will  present  its  broader  aspects,  but  we  do  not  think  it  wise 
to  certify  the  question  to  that  tribunal  upon  this  record.  Besides,  that 
question  there  is  the  further  one  whether  upon  the  merits  of  the  whole  case 
the  Second  Circuit  was  right  in  holding  the  patent  to  be  valid  and  infringed 
by  a  manufacturer  other  than  the  Goodyear  Tire  &  Rubber  Company. 
Should  the  Supreme  Court  reach  the  conclusion  that  this  circuit  erred  in  that 
respect,  the  further  application  of  the  Kessler  v.  Eldred  rule  would  no  longer 
cut  any  figure  in  the  case,  and  by  certifying  it  now  we  would  have  unneces- 
sarily vexed  that  tribunal  with  a  moot  question.  —  Consolidated  v .  Diamond, 
157  Fed.  677;  85  C.  C.  A.  349. 

That  where  a  manufacturing  infringer,  though  not  made  a  party  to  the 
suit,  comes  in  and  makes  the  substantial  defense,  such  conduct  operates  as 


92  THE   FIXED    LAW   OF   PATENTS  §§  32-35 

an  estoppel  against  such  infringer  in  a  subsequent  suit  to  the  extent  of  such 
former  adjudication  upon  the  patent;  and  for  the  purpose  of  determining 
the  extent  of  such  estoppel  the  court  may  examine  the  decision  in  such  former 
case,  see  D'Arcy  v.  Staples,  161  Fed.  733;  88  C.  C.  A.  606. 

Lane  v.  Welds,  99  Fed.  286;  Penfield  v.  Potts,  126  Fed.  475;  Cromwell  v. 
Sac,  94  U.  S.  351;  Russel  v.  Place,  94  U.  S.  606;  Stearns  v.  Lawrence,  83  Fed. 
738;   Corcoran  v.  Canal.  94  U.  S.  741;   Last  Chance  v.  Tyler,  157  U.  S.  690. 

§  32.     Prior  —  Different  Parties. 

The  defendants  in  the  case  before  us  are  other  persons  than  the  defendant 
in  the  former  case,  and  of  course  are  not  concluded  by  the  judgment  in  that 
case.  But  it  must  be  expected  that  we  should  adhere  to  our  former  opinion 
upon  a  record  substantially  the  same.  —  American  v.  Cleveland,  158  Fed. 
978;  86  C.  C.  A.  182. 


§  33.     Prior  —  Estoppel  on  Complainant. 

The  patent  had  been  held  void  in  one  circuit  by  the  Circuit  Court  and  by 
the  Circuit  Court  of  Appeals.  In  another  suit  by  the  same  complainant 
against  a  party  who  was  a  customer  of  the  former  defendant,  the  patent  was 
held  by  the  Circuit  Court  in  another  circuit  to  be  void  and  on  appeal  to  the 
Circuit  Court  of  Appeals  of  that  circuit,  the  patent  was  held  valid.  The 
defendant  in  the  first  suit  brought  action  against  the  owner  of  the  patent  to 
restrain  him  from  bringing  suits  in  other  circuits  on  said  patent  against  his 
customers.  On  such  action  the  following  was  certified  to  the  Supreme 
Court. 

Did  Kessler's  assumption  of  the  defense  of  Eldred's  suit  against  Breit- 
weiser  (Kessler's  customer)  deprive  Kessler  of  the  right,  if  that  right  would 
otherwise  exist,  of  proceeding  against  Eldred  in  the  state  and  district  of  his 
citizenship  and  residence  for  wrongfully  interfering  with  Kessler's  business? 
To  this  the  Supreme  Court  answered  in  the  negative.  —  Kessler  v.  Eldred, 
206  U.  S.  285;  51  L.  Ed.  1065;  27  S.  Ct.  611. 

Note:  See  this  question  considered  in  Consolidated  v.  Diamond,  157  Fed. 
677.    Look  for  Supreme  Court  decision  on  certification  of  that  case. 


§  34.     Prior  —  Judicial  Notice. 

These  proceedings  (prior  adjudications)  were  laid  before  us  at  this  hearing, 
but,  if  they  had  not  been,  we,  probably,  would  have  been  entitled  to  take 
notice  of  them,  as  they  appear  of  record  in  this  court.  —  Bresnahan  v.  Tripp 
72  Fed.  920;   19  C.  C.  A.  237. 

Butler  v.  Eaton,  141  U.  S.  240;   Aspen  v.  Billings,  150  U.  S.  31. 


§  35.     Prior  —  New  Evidence. 

It  is  believed  that  after  an  exhaustive  litigation  upon  a  patent  which  is 
of  importance,  and  has  been  widely  advertised,  and  after  its  careful  re- 
examination and  a  favorable  adjudication  upon  its  validity  by  the  appellate 
court,  this  class  of  paper  affidavits  in  regard  to  priority  by  individuals,  ought 
not  to  be  permitted  to  delay  the  owner  of  the  patent  from  receiving  the 
advantages  which  accrue  from  his  successful  struggle  with  infringers.  — 
New  York  v.  Niagara,  80  Fed.  924;  26  C.  C.  A.  252. 

Where  a  new  defense  is  interposed,  the  evidence  to  support  it  must  be  so 
cogent  and  persuasive  as  to  impress  the  court  with  the  conviction  that,  if 


§§  36-37  ADJUDICATION  93 

it  had  been  presented  and  considered  in  the  former  case,  it  would  probably 
have  availed  to  a  contrary  conclusion.  —  New  York  v.  Niagara,  80  Fed. 
924;  26  C.  C.  A.  252. 

Electric  v.  Edison,  61  Fed.  834;   Bresnahan  v.  Tripp,  72  Fed.  921. 

While  the  prior  litigation  and  these  adjudications,  for  the  reasons  already 
stated,  do  not  operate  strictly  as  an  estoppel,  they  do  serve  to  forcibly 
confront  us  with  conditions  of  stare  decisis,  considerations  of  public  policy, 
consideration  of  laches,  and  considerations  of  the  rule  that  the  newly  dis- 
covered evidence,  to  entitle  a  party  to  a  rehearing  and  a  reversal  of  prior 
adjudications  must  disclose  clear  and  unmistakable  anticipations  of  a  patent 
which  has  been  sustained  on  final  hearing,  on  the  ground  that  it  involved 
invention.  —  Bresnahan  v.  Tripp,  99  Fed.  280;  39  C.  C.  A.  508. 

The  mere  introduction  of  additional  patents  does  not  change  the  situation, 
unless  they  indicate  that  the  prior  art  knew  of  devices  not  indicated  by  the 
patents  in  proof  before  the  judge  who  heard  the  cause  at  final  hearing.  -— 
Consolidated  v.  Hays,  100  Fed.  984;  41  C.  C.  A.  142. 

§  36.     Privity. 

Judgments  are  binding  upon  privies  as  well  as  upon  parties,  but  only  those 
are  privies,  within  the  meaning  of  the  rule,  who  acquire  their  interest  in 
the  subject-matter  of  a  suit  subsequent  to  the  suit.  —  Carroll  v.  Goldschmidt, 
83  Fed.  508;  27  C.  C.  A.  566. 

Ingersoll  v.  Jewett,  Fed.  Cas.  7,039;  Freeman  Judgm.  Sec.  162;  Campbell  v. 
Hall,  16  N.  Y.  575;  Doe  v.  Earl,  1  Adol.  &  E.  783;  Winslow  v.  Grindal,  2  Greenl. 
64. 

§  37.     Stare  Decisis. 

The  rule  of  stare  decisis  is  a  salutory  one,  at  least  to  the  extent  that  a 
court  should  with  reasonable  stability  adhere  to  its  solemnly  declared  and 
authoritatively  published  decisions,  in  respect  to  similar  situations,  and 
upon  questions  depending  upon  similar  facts  which  relate  to  general  interests, 
as  well  as  to  private  and  particular  interests,  and  in  respect  to  which  the 
public,  in  a  measure,  is  supposed  to  adjust  itself  and  its  business  affairs. 
Public  policy  requires  the  decision  which  involves  general  law,  and  the 
determination  of  facts,  such  as  those  involved  in  a  patent  which  may  concern 
the  general  public,  should  be  adhered  to,  unless  it  shall  subsequently  be  made 
clearly  to  appear  that  the  decision  and  the  findings  were  erroneous,  when,  it 
goes  without  saying,  the  decision  should  be  corrected.  The  reasons  which  are 
so  often  given  for  holding  that  the  judgment  estops,  not  only  as  to  every 
ground  of  recovery  or  defense  actually  presented,  but  also  to  every  ground 
which  might  have  been  presented,  are  cogent  reasons  to  be  considered  upon 
the  question  of  reversing  a  long  line  of  judicial  decisions  upon  a  rehearing 
grounded  upon  newly  discovered  evidence.  —  Bresnahan  v.  Tripp,  99  Fed. 
280;  39  C.  C.  A.  508. 

Southern  Pacific  v.  U.  S.  168  U.  S.  1;  Columb  v.  Mfg.  Co.  84  Fed.  592;  Stark 
v.  Starr,  94  U.  S.  477. 

The  case  had  been  to  the  Supreme  Court,  considered  on  its  merits,  and  a 
new  trial  ordered.  Held:  The  Supreme  Court  having  thus  held,  upon  a 
consideration  of  the  written  instruments  themselves,  that  the  Cramer  inven- 
tion was  not  of  a  pioneer  character,  and  that  the  alleged  infringing  device 
is  essentially  different  in  construction  from  that  of  Cramer,  there  was  nothing 
left  for  the  court  below  to  do  on  the  last  trial  of  the  case  but  follow  the  de- 
cision of  the  Supreme  Court.  —  Cramer  v.  Singer,  147  Fed.  917;  78  C.  C. 
A.  53. 


94 


THE    FIXED    LAW    OF    PATENTS 


38-41 


ADMINISTRATOR  OR  EXECUTOR,   OR  GUARDIAN   OF  INSANE 
PERSON. 


(See  §  300) 

Statutory  Provision  §  38 

Powers  of  §  39 

License  §  40  (see  §  749) 


Right  to  Sue  §  41 

See  —  Attorneys    §     177; 

Applicant  §  300 


Death    of 


§  38.     Statutory  Provision. 

When  any  person,  having  made  any  new  invention  or  discovery  for  which 
a  patent  might  have  been  granted,  dies  before  a  patent  is  granted,  the 
right  of  applying  for  and  obtaining  the  patent  shall  devolve  on  his  executor 
or  administrator,  in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall 
have  died  intestate;  or  if  he  shall  have  left  a  will  disposing  of  the  same,  then 
in  trust  for  his  devisees,  in  as  full  manner  and  on  the  same  terms  and  con- 
ditions as  the  same  might  have  been  claimed  or  enjoyed  by  him  in  his  life- 
time-, and  when  any  person  having  made  any  new  invention  or  discovery 
for  which  a  patent  might  have  been  granted  becomes  insane  before  a  patent 
is  granted,  the  right  of  applying  for  and  obtaining  the  patent  shall  devolve 
on  his  legally-appointed  guardian,  conservator,  or  representative  in  trust 
for  his  estate  in  as  full  manner  and  on  the  same  terms  and  conditions  as  the 
same  might  have  been  claimed  and  enjoyed  by  him  while  sane;  and  when 
the  application  is  made  by  such  legal  representatives,  the  oath  or  affirmation 
required  to  be  made  shall  be  so  varied  in  form  that  it  can  be  made  by  them. 
The  executor  or  administrator  duly  authorized  under  the  law  of  any  foreign 
country  to  administer  upon  the  estate  of  the  deceased  inventor  shall,  in 
case  the  said  inventor  was  not  domiciled  in  the  United  States  at  the  time  of 
his  death,  have  the  right  to  apply  for  and  obtain  the  patent.  The  authority 
of  such  foreign  executor  or  administrator  shall  be  proved  by  certificate  of 
a  diplomatic  or  consular  officer  of  the  United  States. 

The  foregoing  section,  as  to  insane  persons,  is  to  cover  all  applications 
now  on  file  in  the  Patent  Office,  or  which  may  be  hereafter  made.  —  R.  S. 
4896,  as  amended  May  23,  1908. 


§  39.     Powers  of. 

Construed  with  reference  to  applications.  - 
147  U.  S.  209;  37  L.  Ed.  138;  13  S.  Ct.  283. 


De  La  Vergne  v.  Featherstone, 


§  40.     License. 

A  license  to  use  a  patented  invention  that  does  not  contain  words  import- 
ing assignability  is  a  grant  of  a  mere  personal  right  to  the  licensee  which  does 
not  pass  to  his  heirs  or  representatives  and  which  cannot  be  transferred  to 
another  without  the  expressed  consent  of  the  licensor.  —  Bowers  v.  Lake 
Superior,  149  Fed.  983;  79  C.  C.  A.  493. 

Hapgood  v.  Hewitt,  119  U.  S.  227;  Oliver  v.  Rumford,  109  U.  S.  75;  Troy  v. 
Corning,  14  How.  193. 

§  41.     Right  to  Sue. 

When  several  executors  have  been  appointed  under  a  will  and  only  one  has 
qualified,  that  one  may  sue.  —  Rubber  Co.  v.  Goodyear,  76  U.  S.  788;  19 
L.  Ed.  566. 

An  assignment  of  a  right  to  make,  use  and  sell  in  a  limited  territory  for 
a  limited  time  is  a  mere  license,  and  does  not  give  an  administrator  a  right  to 
sue  for  infringements  occurring  after  the  death  of  the  assignee.  —  Oliver  v. 
Rumford,  109  U.  S.  75;  27  L.  Ed.  862;  3  S.  Ct.  61. 


42-45  AGGREGATION  95 


AGGREGATION. 

General  Statement  §  42 
Arrangement  of  Parts  §  43 
Combination  §  44 
Duplication  §  45 
Manufacture  §  46  (see  §  772) 


Old  Elements 

General  Rule  §  47 
Independent  Functions  §  48 
Old  Results  §  49 
Old  Function  §  50 
Utility  —  Patentability  §  51 
See  —  Invention  §§  594,  603,  653,  670 
§  42.     General  Statement. 

The  non-patentability  of  mere  aggregations  grows  out  of  judicial  construc- 
tion of  Sec.  4886,  R.  S.,  which  limits  patentable  inventions  to  "  any  new 
and  useful  art,  machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvements  thereof."  The  general  rules  and  applications  are 
given  in  the  following  sections,  while  the  special  applications  of  the  rule  to 
Combinations  will  be  found  under  that  title,  and  those  specially  relating  to 
Mechanical  Skill  will  be  found  under  that  sub-title  under  Invention. 

§  43.     Arrangement  of  Parts. 

Of  course  there  is  nothing  in  placing  the  sections  (sectional  book-case) 
one  above  the  other,  or  the  tiers  of  sections  end  to  end,  which  is  a  mere 
duplication.  —  Globe-Wernicke  v.  Macey,  119  Fed.  696;  56  C.  C.  A.  304. 

All  those  portions  of  the  patent  submitted  to  us  relate  to  matters  which 
were  common  in  the  arts,  and  common  aside  from  the  arts  in  the  technical 
meaning  of  the  word;  and  the  details,  therefore,  concern  merely  mechanical 
skill,  and  in  no  degree  inventive  faculty.  —  Waterman  v.  Lockwood,  125 
Fed.  497;  60  C.  C.  A.  333. 

Rubber-Tip  v.  Howard,  20  Wall.  498;   Perry  v.  Revere,  103  Fed.  314. 

§  44.     Combination. 

A  mere  aggregation  of  parts  into  a  supposed  combination  producing  no 
new  function  is  not  patentable.  —  Davis  v.  Parkman,  71  Fed.  961 ;  18  C.  C.  A. 
398. 

It  is  not  easy,  and  perhaps  not  possible,  to  formulate  a  definition  or 
test  of  a  patentable  combination  of  old  elements,  which  will  serve  in  all  cases 
to  distinguish  it  from  a  mere  aggregation  of  the  results  of  the  several  elements 
of  which  it  is  constituted.  But  it  is  safe  to  say  that  the  effect  produced  by 
the  combination  must  be  new  and  useful,  and  not  such  as  would  suggest 
itself  to  the  mind  of  an  ordinarily  intelligent  person  experienced  in  the  art 
to  which  the  supposed  invention  relates.  —  Thompson  v.  Chestnut,  127  Fed. 
698;  62  C.  C.  A.  454. 

§  45.     Duplication. 

The  functions  of  the  two  presses  were  not  changed.  A  connection  was  made 
between  them,  and  the  product  of  the  one  subjected  to  the  operation  of  the 
other.  The  connection  by  which  this  was  done  was  a  mere  mechanical  im- 
provement, and  which  one  skilled  in  the  art  could  solve.  The  idea  of  so 
couplingup  two  presses  so  as  to  print  larger  paper  was  but  the  natural  advance 
incident  to  new  demands  upon  the  art.  —  Goss  v.  Scott,  108  Fed.  253;  47 
C.  C.  A.  302. 

The  test  in  such  cases  is  not  whether  duplication  exists,  but  whether 
duplication  produces,  not  mere  duplication  of  product  or  function,  but  a  new 
unitary,  additional  result,  and  not  the  mere  aggregate  of  prior,  separate 
mechanism.     The  mere  elements  of  the  combination  are  immaterial.     In 


96  THE    FIXED    LAW    OF    PATENTS  §§  46-48 

their  individual  relations  they  may  be  old,  may  be  mere  duplicates;  but  the 
test  is  not  the  character  of  the  combining  elements,  but  the  result  flowing 
from  their  being  combined.  —  Goss  v.  Scott,  108  Fed.  253;  47  C.  C.  A.  302. 
Parker  v.  Hulme,  Fed.  Cas.  10,740. 

Mere  duplication  of  parts  is  not  invention.  It  is  true  that  the  assembling 
of  old  elements  having  a  new  mode  of  operation  producing  a  more  beneficial 
result  does  amount  to  invention.  It  is  also  well  settled  that  there  is  no 
invention  in  merely  selecting  and  putting  together  parts  of  different  machines 
in  the  same  art,  where  each  operates  in  the  same  way  in  a  new  machine 
producing  the  same  result.  —  Burnham  v.  Union,  110  Fed.  765;  49  C.  C.  A. 
163. 

Overweight  v.  Vogt,  102  Fed.  957. 

§  46.     Manufacture. 

The  proposition  that  the  doctrine  of  aggregation  is  restricted  in  its  applica- 
tion to  machines  as  distinguished  from  articles  of  manufacture,  does  not 
seem  to  be  sustained  by  the  decided  cases.  —  Antisdel  v.  Chicago,  89  Fed. 
308;  32  C.  C.  A.  216. 

Hailes  v.  VanWormer,  20  Wall.  353;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Trimming  v.  Welling,  97  U.  S.  7;  Slawson  v.  Railroad,  107  U.  S.  653;  Bussey 
v.  Mfg.  Co.  110  U.  S.  146;  Hill  v.  Wooster,  132  U.  S.  693;  Rob.  Pat.  Sec.  154, 
182,  185;   Campbell  v.  Bayley,  63  Fed.  463. 

§  47.     Old  Elements  —  General  Rule. 

It  is  simply  (coating  a  metal  ring  with  imitation  ivory)  the  application 
and  the  action  of  old  and  well-known  modes  and  materials  in  an  accustomed 
manner.    It  is  a  case  of  aggregation,  not  combination.  —  Rubber  v.  Welling, 

97  U.  S.  7;  24  L.  Ed.  942. 

Mere  aggregation  or  subdivision  is  not  invention.  —  King  v.  Gallun,  109 
U.  S.  99;  27  L.  Ed.  870;  3  S.  Ct.  202. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Phillips  v.  Page,  24  How.  167;  Brown 
v.  Piper,  91  TJ.  S.  43;  Terhune  v.  Phillips,  99  U.  S.  592^  Atlantic  v.  Brady,  107 
U.  S.  192;   Slawson  v.  R.  R.  107  U.  S.  649;    Smith  v.  Goodyear,  93  U.  S.  486. 

If  several  old  devices  are  so  put  together  as  to  produce  even  a  better 
machine  or  instrument  than  was  formerly  in  use,  but  each  of  the  old  devices 
does  what  it  had  formerly  done  in  the  instrument  or  machine  from  which  it 
was  borrowed  and  in  the  old  way,  without  uniting  with  other  old  devices 
to  perform  any  joint  function  it  seems  that  the  combination  is  not  patent- 
able. —  Brinkerhoff  v.  Aloe,  146  U.  S.  515;  36  L.  Ed.  1068;   13  S.  Ct.  221. 

Hailes  v.  VanWormer,  87  U.  S.  353;    Reckendorfer,  v.  Faber,  92  U.  S.  347. 

That  a  machine  comprising  old  elements  and  combinations  in  which  there 
is  not  conjoint  action  is  not  patentable,  see  Portland  v.  Hermann,  160  Fed. 
91;  87  C.  C.  A.  247. 

American  v.  Helmstetter,  142  Fed.  978;  Beecher  v.  Atwater,  114  U.  S.  523; 
Dunlap  v.  Willbrandt,  151  Fed.  223. 

See  also,  Pickering  v.  McCullough,  104  U.  S.  310;  26  L.  Ed.  749;  Watson 
v.  Cincinnati,  132  U.  S.  161;   33  L.  Ed.  295;   10  S.  Ct.  45. 

§  48.     Old  Elements  —  Independent  Functions. 

Concededly,  Dunbar  is  entitled  to  the  credit  of  originating  the  conception 
of  using  a  second  elevator  as  an  adjunct  to  the  ordinary  grain  elevator,  which 
could  be  moved  so  as  to  reach  the  different  hatches  of  the  vessel,  and  dis- 


§  49  AGGREGATION  97 

charge  into  the  main  elevator;  but  his  right  to  a  patent  cannot  rest  upon  this 
conception  alone.  It  must  rest  upon  the  novelty  of  the  means  which  he 
contrived  to  embody  in  the  conception  and  to  carry  it  into  practical  applica- 
tion. He  effected  a  new  organization  of  a  portable  elevator,  but  if  this  did 
not  involve  invention,  but  was  that  which  could  have  been  done  by  the 
skilled  mechanic  by  selecting  known  devices,  applying  them  to  their  appro- 
priate uses,  and  introducing  such  modification  of  detail  to  fit  them  for  the  new 
environment  as  would  be  dictated  by  experience  and  good  judgment,  the 
patent  cannot  be  sustained.  The  circumstance  that  the  same  congregation 
of  devices  has  never  been  assembled  in  a  new  location  is  not  controlling, 
and  is  often  of  little  value  in  determining  the  question  of  patentable  novelty. 
Their  assemblage  may  be  nothing  but  another  instance  of  the  double  use.  — 
Dunbar  v.  Eastern,  81  Fed.  201 ;  26  C.  C.  A.  330. 

Atlantic  v.  Brady,  107  U.  S.  192;   Aron  v.  Railway,  132  U.  S.  90. 

Each  of  these  elements  appears  to  operate  separately  to  produce  its  own 
separate  individual  results,  just  as  they  might  in  connection  with  any  other 
business  where  an  exhaust  fan  was  needed  to  draw  away  the  air  from  a  given 
place,  and  an  elevator  with  endless  belts  and  buckets  to  carry  any  given 
substance  to  another  place  or  to  a  different  level.  There  is  nothing  in  the 
findings  or  in  the  case  anywhere,  to  show  anything  more  than  a  mere  juxta- 
position or  aggregation.  The  combination  to  be  patentable,  must  produce 
a  different  force  or  effect  or  result  in  the  combined  forces  or  processes  from 
that  given  in  their  separate  parts.  There  must  be  a  new  result  produced 
by  their  union ;  or  if  not  so,  it  is  only  an  aggregation  of  separate  elements. 
—  Clisby  v.  Reese,  88  Fed.  645;   32  C.  C.  A.  80. 

Reckendorfer  v.  Faber,  92  U.  S.  347;    Hailes  v.  Van  Wormer,  20  Wall.  353. 

The  aggregation  of  these  several  old  elements  in  one  structure  may  have 
produced,  and  doubtless  did  produce,  a  hot  air  furnace  that  was  some 
improvement  upon  the  prior  art,  in  the  respect  that  they  may  have  been 
stronger,  more  durable,  or  easier  of  construction.  But  these  results  were  due 
to  the  function  of  each  old  element  acting  independently  and  by  itself,  with- 
out co-action  with  the  other  elements.  A  box  put  together  with  screws, 
mitred  joints  and  dowel  pins,  may  be  an  imprsvement,  in  appearance, 
strength  and  utility,  upon  one  put  together  with  nails  alone,  but  the  elements 
of  screws,  mitered  joints  and  dowel  pins  is  an  aggregation  of  elements,  each 
contributing  its  own  function  and  not  a  patentable  combination.  —  Spear 
v.  Kelsey,  158  Fed.  622;  85  CCA.  444. 

§  49.     Old  Elements  —  Old  Result. 

An  aggregation  of  old  and  well-known  devices,  operating  in  the  old  way, 
and  producing  no  new  result  is  not  patentable.  —  Foos  v.  Springfield,  49  Fed. 
641 ;  1  C  C  A.  410. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Pickering  v.  McCullough,  104  U.  S.  318; 
Royer  v.  Roth,  132  U.  S.  201;  Heating  Co.  v.  Burtis,  121  U.  S.  286;  Florsheim 
v.  Schilling,  137  U.  S.  64;  Mill  Co.  v.  Walker.  138  U.  S.  124;  Union  v.  Keith, 
139  U.  S.  530;  Electric  v.  LaRue,  139  U.  S.  601;  Aron  v.  Railway,  132  U.  S.  84; 
Day  v.  Railway,  132  U.  S.  98;  Gardner  v.  Herz,  118  U.  S.  180. 

If  Grant's  construction  is  an  aggregation  of  well-known  parts,  each  part 
doing  its  own  appropriate  function  in  substantially  the  old  way,  it  does  not 
show  a  patentable  invention,  even  though  the  sum  of  all  the  old  results  is  a 
tire  more  serviceable  or  durable  than  shown  in  the  old  art.  —  Goodyear  v. 
Rubber,  116  Fed.  363;  53  C  C  A.  583. 

Hailes  v.  Van  Wormer.  20  Wall.  353;  Office  v.  Fenton,  174  U.  S.  492;  Richards 
v.  Elevator,  158  U.  S.  299;  Overweight  v.  Vogt,  102  Fed.  957;  Smith  v.  Nichols. 
21  Wall.  112. 


98 


THE    FIXED    LAW    OF    PATENTS 


§§  50-52 


The  mere  bringing  together  of  old  parts  and  allowing  each  to  work  out  its 
old  effect,  without  producing  some  new  product  or  result  as  a  consequence  of 
the  union  and  cooperating  action,  is  a  mere  mechanical  juxtaposition.  — 
Germer  v.  Art,  150  Fed.  141 ;  80  C.  C.  A.  9. 

Goodyear  v.  Rubber,  116  Fed.  363;    Overweight  v.  Vogt,  102  Fed.  957. 

§  50.     Old  Function. 

The  mere  combination  of  a  staple  made  and  used  according  to  well  known 
methods  with  a  washer,  where  neither  modified  the  function  of  the  other  was 
mere  aggregation.  —  Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  27 
L.  Ed.  877;  3  S.  Ct.  105. 

The  railway,  the  guard-plate,  and  the  car,  in  function  and  in  result,  he 
left  unchanged;  and  the  spray-deflectors  which  he  fixed  to  the  latter  are 
wholly  inoperative  until  the  water  is  reached  and  the  entirely  distinct  and 
separate  service  of  a  boat  becomes  requisite.  This  requirement  made  it 
necessary,  of  course,  that  the  toboggan  should  differ  somewhat  from  those 
which  had  been  used  exclusively  upon  land,  but  the  change  which  was  made 
was  merely  structural,  and  did  not  involve  invention.  —  Boynton  v.  Morris, 
87  Fed.  225;   30  C.  C.  A.  617. 

Maitland  v.  Gibson,  63  Fed.  840. 

§  51.     Utility  —  Patentability. 

The  utmost  that  can  be  justly  credited  to  the  applicant  is  that,  in  their 
aggregation,  he  exhibited  an  appreciated  realization  of  the  utility  of  each  of 
them.  It  does  not  appear  that  he  so  associated  them  as  to  produce  any  new 
result  as  the  consequence  of  their  union,  and  therefore,  he  did  not  create  a 
patentable  combination.  —  Roemer  v.  Peddie,  81  Fed.  380;  26  C.  C.  A.  440. 


AMENDMENT. 

Statutory  Provisions  §  52 
General  Statement  §  53 
Broadening  Scope  of  Invention  §  54 
New  Matter 

Broadening  §  55 

Miscellaneous  §  56 


Delay  §  57 

See —  Abandonment  ■  §  4;  Attorneys 
§  178;  Claims  §  199;  Divisional 
Patenting  §  348;  Reissue  §  869; 
Specification  §  902 


§  52.     Statutory  Provisions. 

The  fundamental  provision  as  to  amendment  is  in  Sec.  4886,  R.  S.,  which 
provides  that  the  inventor  *  *  *  "  may,  upon  payment  of  the  fees  required 
by  law,  and  other  due  proceedings  had,  obtain  a  patent  therefor,"  and  Sees. 
481  and  483,  R.  S.,  which  provide  for  the  appointment  of  a  Commissioner  of 
Patents  and  the  promulgation  of  rules  by  him  for  the  conduct  of  applica- 
tions. The  specific  provision  as  to  amendment  grows  out  of  4888  R.  S., 
which  prescribes  in  definite  terms  the  requisites  of  an  application;  and  Sec. 
4889  provides  for  drawings.  Under  Sec.  4893,  the  Commissioner  is  required 
to  cause  an  examination  of  the  application  to  determine  whether  the  appli- 
cant is,  under  the  law,  entitled  to  a  patent ;  and  Sec.  4894  places  the  statutory 
time-limit  as  to  the  completion  of  the  application.  Sec.  4897  provides  for 
renewal  applications;  Sec.  4903  as  to  notice  of  rejection;  and  Sec.  4917  as  to 
disclaimer.  The  statute  also  provides  for  the  surrender  and  reissue  of  the 
patent;  but  as  that  is  a  subject  quite  by  itself  and  the  matter  of  amendment 
governed  by  other  and  different  rules,  that  subject  is  found  in  full  under 
Reissue. 


§§  53-54  AMENDMENT  99 

§  53-     General  Statement 

The  decisions  of  the  appellate  courts  are,  except  in  isolated  cases,  un- 
concerned with  the  proceedings  in  and  the  regulations  of  the  Patent  Office. 
The  legality  of  the  grant  and  the  effect  of  the  proceedings  in  the  Patent 
Office  as  determining  the  scope  of  the  grant  are  the  main  considerations. 

But  it  should  be  noted  in  this  connection  that  the  development  of  the 
American  patent  system  has  kept  step  with  the  marvellous  growth  of  Art 
and  Science.  The  inventor  of  today  is  not  one  who  whittles  and  thinks; 
he  is  a  trained  thinker,  and  one  who  combines  the  art  and  science  of  today. 
The  Patent  Office  examiner  is  no  longer  a  mere  clerk ;  he  is  a  trained  specialist, 
both  in  engineering  and  in  the  patent  law.  While  many  inventions  are 
stumbled  upon  by  untrained  minds,  and  while  there  will  always  be  examiners 
who  never  get  beyond  the  clerical  and  the  technical,  in  the  main  the  domain 
of  patents  has  passed  over  from  the  untrained  to  the  most  thoroughly 
skilled  specialists.  It  would  seem,  under  such  circumstances,  that  the  matter 
of  preparing  an  application,  examining  and  amending  the  same,  and  the  clear 
statement  of  a  claim  should  be  a  simple  matter.  Not  so.  Great  inventions 
lie  on  the  borderland  of  the  known.  It  is  easy,  now,  to  say  how  Tesla  should 
have  described  and  claimed  his  inventions;  it  was  not  when  the  applica- 
tions were  filed.  And  there  are  two  other  facts  which,  in  the  consideration  of 
the  specifications  and  claims  of  a  patent,  should  be  in  the  mind  of  both  judge 
and  attorney:  First,  the  examination  in  the  Patent  Office  is  the  best  that  it 
can  be  under  the  niggardly  policy  of  Congress,  but  far  short  of  what  it  should 
be,  for  the  simple  reason  that  the  constantly-increasing  volume  of  business 
must  be  done  and  done.by  an  insufficient  and  overworked  force.  Second,  the 
lamentable  fact  is  that  a  great  proportion  of  applications  are  filed  by  solicitors 
wholly  unqualified  for  the  duty.  One  of  our  grave  mistakes  has  been  that, 
while  we  have  raised  the  standard  of  efficiency  in  the  Patent  Office  from  year 
to  year,  both  by  internal  development  and  by  the  addition  of  examiners  of 
higher  skill  and  training,  we  have  placed  no  such  requirements  upon  the 
patent  solicitors.  Only  occasionally  have  the  courts  been  outspoken  on  this 
subject,  but  he  who  runs  may  read,  and  he  will  read  in  the  reports  —  shielded 
by  judicial  gentleness  —  a  condemnation  of  the  incompetency  of  the  patent 
solicitor  in  general  that  is  startling.  Since  this  book  is  mainly  for  the  use 
of  the  general  practitioner,  and  since  the  highest  duty  of  the  lawyer  is  to 
conserve  the  interests  of  his  client  and  to  keep  him  out  of  litigation,  I  am 
constrained  to  place  the  strongest  emphasis  upon  the  necessity  and  ultimate 
economy  of  sending  clients  about  to  make  application  for  patent  to  solic- 
itors of  recognized  training  and  skill,  both  in  law  and  in  science. 


§  54.     Broadening  Scope  of  Invention. 

So  long  as  he  did  not  change  the  structure  of  his  device  or  invention,  he 
had  the  right  to  change  the  specification,  even  though  he  did  it  with  reference 
to  the  patent  in  suit  issued  for  the  same  device,  which  was  applied  for  and 
issued  while  his  application  was  pending;  and,  the  specification  being  as  we 
find  it,  there  is  no  support  for  the  proposition  that  for  the  purpose  of  preserv- 
ing the  possibility  of  a  function,  which  the  patentee  had  repudiated  before 
the  patent  issued,  the  claims,  though  worded  differently,  should  be  read 
so  as  to  cover  only  the  exact  construction  and  relation  of  parts  illustrated 
in  the  drawing.  The  proposition  is  not  reasonable,  nor,  so  far  as  we  know, 
supported  by  authority.  —  Western  v.  Sperry,  58  Fed.  186;  7  C.  C.  A.  164. 

Courts  ought,  therefore,  to  be  more  careful,  under  circumstances  like 
those  at  bar  (when  amendment  was  not  merely  upon  objection  by  the 
examiner,  and  not  in  view  of  anticipations  found)  to  give  a  patentee  the 
benefit  of  all  the  equities  which  can  be  raised  in  his  behalf  by  any  reasonable 


100  THE    FIXED    LAW    OF    PATENTS  §  55 

implication,  from  what  appears  on  the  face  of  the  amendments  or  from  the 
transaction  as  it  passed  through  the  patent  office.  —  Reece  v.  Globe,  61  Fed. 
958;  IOC.  C.  A.  194. 

Winans  v.  Denmead,  15  How.  330;  B.  &  S.  Fastener  v.  Ball,  58  Fed.  818; 
Leggett  v.  Avery,  101  U.  S.  256;  Morgan  v.  Albany,  152  U.  S.  425;  Sargent  v. 
Lock  Co.  114  U.  S.  63;  Sheppard  v.  Carrigan,  116  U.  S.  593;  Sutter  v.  Robinson, 
119  U.  S.  530;  Crawford  v.  Heysinger,  123  U.  S.  589;  Watson  v.  Railway,  132 
U.  S.  161;  Roemer  v.  Peddie,  132  U.  S.  313;  Caster  v.  Spiegel,  133  U.  S.  360; 
Yale  v.  Berkshire,  135  U.  S.  342;  Dobson  v.  Lees,  137  U.  S.  258;  Corbin  v.  Eagle, 
150  U.  S.  38;  Knapp  v.  Morss,  150  U.  S.  221;  Union  v.  U.  S.  112  U.  S.  624; 
Vulcanite  v.  Davis,  102  U.  S.  222;  Royer  v.  Coupe,  146  U.  S.  524. 

The  amendment  was  filed  within  three  months  after  the  filing  of  the  original 
specifications,  and  before,  so  far  as  appears,  other  inventors  whose  rights 
had  been  prejudiced  had  entered  the  field.  Railway  v.  Sayles,  97  U.  S.  554. 
The  original  drawings  and  specification  sufficiently  show  and  suggest  the 
claims  finally  made,  or  at  least  are  not  inconsistent  therewith.  Hobbs  v. 
Beach,  180  U.  S.  383.  Subject  to  the  foregoing  rules,  an  inventor  may  amend 
his  specification  so  as  to  include  therein  all  of  the  advantages  within  the 
scope  of  his  invention.  Singer  v.  Cramer,  109  Fed.  652.  —  Kirchberger  v. 
American,  128  Fed.  599;  64  C.  C.  A.  107. 

The  validity  of  such  an  amendment  depends  upon  the  question  whether  it 
brought  in  original  matter,  or  was  of  something  that  might  be  fairly  deduced 
from  the  original  application.  In  the  first  instance  the  amendment  would 
not  be  justified;  in  the  latter  it  would.  —  Cleveland  v.  Detroit,  131  Fed. 
853;  68  C.  C.  A.  233.  ^ 

Michigan  v.  Consolidated,  121  Fed.  232;  Hobbs  v.  Beach,  180  U.  S.  396;  West- 
ern v.  Sperry,  58  Fed.  186;    Sugar  v.  Yaryan,  43  Fed.  140. 

It  may  be  noted  that  these  broad  claims  are  not  found  in  the  original 
application  for  the  Johns  patent.  They  were  not  inserted  until,  five  years 
after  the  application,  and  subsequent  to  the  date  of  the  Rowe  patent,  and  to 
the  time  when  the  Rowe  device  was  put  upon  the  market.  —  Mayo  v. 
Jenckes,  133  Fed.  527;  66  C.  C.  A.  503. 

Note:  This  is  a  most  important  and  far-reaching  holding.  It  places 
the  amendment  of  an  application  long  coddled  in  the  Patent  Office  upon 
substantially  the  same  ground  as  a  reissue  wherein  the  claims  are  broadened 
after  intervening  rights.  In  my  opinion  it  should  be  good  law.  Such  a 
wholesome  rule  would  do  much  to  do  away  with  the  practice  of  delaying 
issue  of  patents  unduly. 


§  55.     New  Matter  —  Broadening. 

No  doubt  it  is  competent  to  amend  the  specifications  while  the  applica- 
tion is  pending,  so  long  as  it  is  done  within  the  scope  of  the  original  applica- 
tion ;  but  it  is  not  competent,  under  color  of  this  privilege,  to  introduce  new 
matter.  —  Michigan  v.  Consolidated,  67  Fed.  121 ;  14  C.  C.  A.  232. 

Railway  v.  Sayles,  97  U.  S.  554;  Eaglet  on  v.  West,  111  U.  S.  490;  Brush  v. 
Julian,  41  Fed.  679;  Kittle  v.  Hall,  29  Fed.  508;  Refrigerating  v.  Featherstone, 
49  Fed.  916;  Refrigerating  v.  Featherstone,  147  U.  S.  209;  Western  v.  Sperry, 
58  Fed.  186;   Robinson,  561,  635. 

The  objection  to  new  matter  brought  in  by  amendment  of  the  specifica- 
tions stands  upon  the  same  ground  as  when  it  is  introduced  upon  a  reissue, 
and  in  respect  to  the  latter  the  statute  declares  that  it  shall  not  be  done 
(sec.  4916).  —  Michigan  v.  Consolidated,  67  Fed.  121 ;  14  C.  C.  A.  232. 


§§56-57  AMENDMENT  101 

Railway  v.  Sayles,  97  U.  S.  554;  Eagleton  v.  West,  111  U.  S.  490,  Brush  v. 
Julian,  41  Fed.  679;  Kittle  v.  Hall,  29  Fed.  508;  Refrig.  v.  Featherstone,  147 
U.  S.  209;  Western  v.  Sperry,  58  Fed.  186;  Robinson  561,  635. 

The  question  of  broadening  an  application  by  amendment  is  raised  in- 
directly but  not  decided  in  Westinghouse  v.  New  York,  96  Fed.  991; 
37  C.  C.  A.  649. 

We  are  unable  to  assent  to  the  doctrine  that  an  inventor  is  thus  circum- 
scribed by  the  words  which  he  may  first  use  to  describe  the  advantages  of 
his  invention,  and  that  he  may  not  afterwards,  on  further  consideration, 
either  upon  his  own  suggestion  or  that  of  his  counsel,  amend  his  specification 
so  as  to  assert  and  maintain  all  the  advantages  which  his  device  possesses. 
—  Singer  v.  Cramer,  109  Fed.  652;  48  C.  C.  A.  588. 

Reversed  in  192  U.  S.  265. 


§  56.     New  Matter  —  Miscellaneous. 

In  view  of  the  entire  change  in  the  specification,  as  to  the  invention  de- 
scribed, the  patent,  to  be  valid,  should  have  been  granted  on  an  application 
made  and  sworn  to  by  the  administratrix.  The  specification,  as  issued,  bears 
the  signature  of  the  deceased,  and  not  of  the  administratrix,  and  it  is  suffi- 
ciently shown  that  the  patent  was  granted  on  the  application  and  oath  of 
deceased,  and  for  an  invention  which  he  never  made.  —  Eagleton  v.  West, 
111  U.  S.  490;  28  L.  Ed.  493;  4  S.  Ct.  593. 

See  De  La  Vergne  v.  Featherstone,  147  U.  S.  209. 

The  changes  made  in  the  application  were  manifestly  to  develop  the  newly 
conceived  theory  of  the  mode  of  operation,  and  to  add  claims  for  the  process. 
If  this  was  to  be  accomplished  and  the  theory  were  to  be  embodied  in  practi- 
cal means,  the  specifications  should  have  been  made  to  distinctly  point  out 
such  means,  as  we  have  already  pointed  out.  But  in  this  regard  the  former 
specifications  were  retained.  If  the  application  as  amended  were  to  be 
construed  as  embodying  such  an  invention  as  is  now  claimed,  it  was  another 
and  different  invention  from  that  for  which  the  patent  was  originally  sought, 
and,  if  an  amendment  having  the  consequence  were  permissible  it  should 
have  been  verified  bv  the  oath  of  the  inventor.  — ■  American  v.  Steward,  155 
Fed.  731;  84  C.  C.  A.  157. 

Ry.  Go.  v.  Sayles,  97  U.  S.  554;  Eagleton  v.  West,  111  U.  S.  490;  Kennedy  v. 
Hazelton,  128  U.  S.  667;  Mich.  Cent.  v.  Consolidated,  67  Fed.  121;  Cleveland  v. 
Detroit,  131  Fed.  853.     See  128  Fed.  599. 


§  57.     Delay. 

If  the  applicant  is  under  no  obligation  touching  the  delay,  there  is  no 
rule  of  law  by  which  it  can  be  said  that,  because  he  may  receive  an  incidental 
benefit  therefrom,  his  purpose  in  relation  thereto  is  unlawful.  A  man's 
motives  will  not  make  wrongful  an  act  which,  in  itself  is  not  wrongful.  — 
Am.  Bell  Tel.  v.  U.  S.  68  Fed.  542;  15  C.  C.  A.  569. 

Heald  v.  Carey,  11  C.  B.  977. 

The  inventor  does  not  determine  the  measure  of  his  rights  or  of  his  obli- 
gations. The  law  determines  that  for  him,  and  if  the  government  thinks 
that  more  speed  is  desirable  in  the  interest  of  the  public,  it  should  change 
the  law;  the  courts  cannot  do  so.  Nor  can  they  exact  of  inventors  any 
degree  of  diligence  other  than  compliance  with  the  statutory  provisions.  — 
Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 


102 


THE   FIXED   LAW    OF   PATENTS 


§  58 


The  claims  sued  upon  are  generic.  Assuming  that  this  concept  of  the 
patentee  was  complete  when  the  patent  was  exhibited  in  the  census  office 
in  1890  (eight  years  before  the  patent  application  was  filed)  so  as  to  be  prac- 
ticable and  operative,  the  machine  was  sufficiently  completed  to  obtain 
a  patent  (if  the  feature  were  patentable  at  all)  upon  the  broad  feature 
claimed.  The  accessories  subsequently  developed  added  nothing  either  to 
the  concept,  or  to  the  operativeness  of  the  mechanism  embodying  the 
concept.  What  followed,  if  anything,  was  not  development  or  evolution, 
but  improvement  merely.  And  an  inventor  having  grasped  an  idea  and  put 
it  in  mechanical  form,  may  not  wait  to  secure  a  monopoly  upon  the  broad 
thought  until  everything  in  the  nature  of  mere  accessory  improvement  that 
makes  it  commercially  better  has  been  run  out  and  perfected.  To  so  hold 
would  put  it  in  the  power  of  a  patentee  to  hold  back  his  improvement  from 
the  world  indefinitely,  obtaining  in  the  end  a  patent  that  would  exclude 
everything  relating  to  the  art,  although  the  whole  world  had  contributed 
to  the  perfecting,  commercially,  of  his  conception.  —  Universal  v.  Compto- 
graph,  146  Fed.  981 ;  77  C.  C.  A.  227. 


ANTICIPATION. 

Statute  Authority  §  58 

General  Rules  §  59 

Abandoned    Device   or   Experiment 

(see  §  1) 

Anticipatory  §  60 

Non-Anticipating  §  61 

Application  §  62 
Analogousness 

Art  §  63 

Use  §  64 
Anticipating  an  Anticipation  —  Bur- 
den of  Proof  §  65 
Application  §  66 
Combining  Old  Elements 

Different  Devices  §  67 

Different  Patents  §  68 

Mechanical  Skill  §  69 
Double  Patenting  §  70  (see  §§  348, 
356) 
Evidence  of  (see  §  388) 

Burden  of  Proof  §  71 

Device  or  Exhibit  §  72 

Expert  §  73 

Parol  §  74 

Prior  Patent  §  75 

Rebuttal  §  76 

Miscellaneous  Holdings  §  77 
Experiment  §  78  (see  §  412) 
Foreign  Invention  §  79 
Foreign  Patent  or  Publication  (see 
§419) 

Burden  of  Proof  §  80 

Date  of  §  81 

Invention  §  82 

Publication  —  Date  §  83 

Same  Inventor  §  84 

Sufficiency  §  85 
"  Infringe-if-Later  "  Test  §  86 


Inoperative  Device  §  87 

Knowledge  §  88 

Old  Elements  or  Device 

Different  Use  §  89 

Function   §  90 

Requiring  Adaptation  §  91 
Paper  Patent 

Insufficient  §  92 

Sufficient  §  93 
Prior  Art 

Insufficient  §  94 

Sufficient  §  95 
Prior  Patent 

Date  §  96 

Insufficient  §  97 

Sufficient  §  98 

Reference  on  Application  §  99 
Process  (see  §  813) 

Machine  §  100  (see  §  768) 

Process  Rule  §  101 

Miscellaneous  §  102 
Public  Use  (see  §  848) 

Sufficient  §  103 

Miscellaneous  §  104 
Publication 

Insufficient  §  105 

Sufficient  §  106 
Uncontemplated  Use  or  Function  § 
107 

Miscellaneous  Rulings  §  108 
See —  Defenses  §§  320,  321;  De- 
murrer §  325;  Designs  §  334;  Evi- 
dence §§  389-93;  Infringement  §§ 
483.  525;  Interfering  Patents  §  586; 
Judicial  Notice  §§  708-10;  Public 
Use  §  849;  Public  Use  Proceedings 
§  859 


§  58.     Statute  Authority. 

_  The  provisions  of  4886,  R.  S.,  upon  which  novelty  (and  conversely,  an- 
ticipation) depends,  are,  — 


§  59  ANTICIPATION  103 

1.  Not  known  or  used  by  others  in  this  country,  before  his  invention 
or  discovery  thereof; 

2.  Not  patented  or  described  in  any  printed  publication  in  this  or  any 
foreign  country  before  his  invention  or  discovery  thereof,  or  more  than  two 
years  prior  to  his  application; 

3.  Not  in  public  use  or  on  sale  in  this  country  for  more  than  two  years 
prior  to  his  application; 

4.  Not  abandoned. 

And  4923,   R.   S.,   provides  that,  — 

Whenever  it  appears  that  a  patentee,  at  the  time  of  making  his  applica- 
tion for  the  patent,  believed  himself  to  be  the  original  and  first  inventor 
or  discoverer  of  the  thing  patented,  the  same  shall  not  be  held  to  be  void 
on  account  of  the  invention  or  discovery,  or  any  part  thereof,  having  been 
known  or  used  in  a  foreign  country,  before  his  invention  or  discovery  thereof, 
if  it  had  not  been  patented  or  described  in  a  printed  publication. 

While  every  rule  of  anticipation  is  founded  in  some  one  of  these  statutory 
provisions,  the  classification  varies  materially  therefrom,  and  conforms 
rather  to  the  acts  and  conditions  which  constitute  anticipation. 


§  59.     General  Rules. 

It  is  about  as  difficult  to  state  a  general  rule  of  anticipation  as  it  is  to 
define  invention.  The  difficulty  with  all  such  general  rules,  or  attempts 
at  general  rules,  is  that  when  we  come  to  apply  them  to  a  specific  case, 
there  are  so  many  variations  from  the  supposed  conditions  upon  which  the 
general  rule  is  predicated  that  application  is  difficult,  if  not  impossible.  The 
following  may,  to  a  certain  extent,  be  regarded  as  general  rules: 

Admitting  the  words  "  originally  discovered  "  to  be  explained  or  limited 
by  the  subsequent  words  (act  of  1800),  still,  if  the  thing  had  been  in  use, 
or  had  been  described  in  a  public  work,  anterior  to  the  supposed  discovery, 
the  patent  is  void.  It  may  be  that  the  patentee  had  no  knowledge  of  the 
previous  use  or  previous  description;  still  his  patent  is  void;  the  law  sup- 
poses he  may  have  known  it.  —  Evans  v.  Eaton,  3  Wheat.  454;  4  L.  Ed.  433. 

It  was  left  for  Bell  to  discover  that  the  failure  was  due  not  to  workman- 
ship, but  to  the  principle  which  was  adopted  as  the  basis  of  what  had  to 
be  done.  He  found  that  the  intermittent  current  could  not  be  made  under 
any  circumstances  to  produce  the  vibrations  of  the  human  voice,  but  that 
the  true  way  was  to  operate  on  an  unbroken  current  by  increasing  and 
diminishing  its  intensity.  This  Reis  never  thought  of,  and  he  failed  to 
transmit  speech.  Bell  did,  and  he  succeeded.  Under  such  circumstances 
it  is  impossible  to  hold  that  what  Reis  did  was  an  anticipation  of  the 
discovery  of  Bell.  To  follow  Reis  is  to  fail.  To  follow  Bell  is  to  succeed. 
—  Telephone  Cases,  126  U.  S.  1 ;  31  L.  Ed.  863;  8  S.  Ct.  778. 

Foreign  use  for  more  than  two  years,  in  absence  of  publication  or  use  or 
sale  in  this  country  does  not  negative  patentable  novelty.  —  Gandy  v. 
Main,  143  U.  S.  587;  36  L.  Ed.  272;  12  S.  Ct.  598. 

To  sustain  the  defense  of  anticipation,  it  is  necessary  that  the  anticipatory 
matter  should  clearly  show  the  invention  subsequently  patented  in  such 
manner  as  to  enable  any  person  skilled  in  the  art  or  science  to  which  it 
relates,  to  make  or  construct  and  practically  use  the  invention  for  the  pur- 
poses contemplated  by  the  subsequent  patent.  —  McNeely  v.  Williames,  96 
Fed.  978;  37  C.  C.  A.  641. 

Eames  v.  Andrews,  122  U.  S.  40. 


104  THE    FIXED   LAW   OF    PATENTS  §  60 

That  an  alleged  anticipation  must  disclose  a  practically  operative  device 
and  one  which  may  be  constructed  by  one  skilled  in  the  art  without  the 
exercise  of  invention,  see  Simonds  v.  Hathorn,  93  Fed.  958;  36  C.  C.  A.  24. 

Hanifen  v.  Godshalk,  84  Fed.  649;  Heap  v.  Tremont,  82  Fed.  449;  Consoli- 
dated v.  American,  82  Fed.  993;   also  85  Fed.  662. 

If  the  question  of  identity  of  method  and  result  is  doubtful,  the  doubt 
must  be  resolved  in  favor  of  the  successful  patentee,  who  had  in  a  practical 
way,  materially  advanced  the  art.  —  Simonds  v.  Hathorn,  93  Fed.  958 ;  36 
C.  C.  A.  24. 

Washburn  v.  Gould,  3  Story,  122. 

The  statute  (sec.  4886)  conditions  the  grant  that  ife  shall  not  have  been 
"  in  public  use  or  on  sale  in  this  country  for  more  than  two  years  prior  to  " 
the  application ;  and  the  policy  of  this  provision  and  its  strict  construction 
against  the  patent  are  well  settled.  Egbert  v.  Lippman,  104  U.  S.  333. 
Nevertheless,  the  evidence  of  such  public  use  to  defeat  the  patent  must 
be  clear  and  convincing.  —  American  v.  Warren,  141  Fed.  655;  72  C.  C.  A. 
649. 

Morgan  v.  Daniels,  153  U.  S.  120. 

The  rule  in  Bates  v.  Coe,  98  U.  S.  31,  it  is  clear,  can  be  applicable  only  to 
the  one  defense  "  that  the  improvement  had  been  patented  or  described 
in  some  printed  publication  prior  to  the  supposed  invention."  In  order  to 
come  under  the  provision  of  the  statute  which  authorizes  that  defense, 
the  patent  or  publication  relied  on  must  be  prior  in  point  of  time  to  the 
patent  in  suit.  And  it  is  perhaps  true  in  respect  to  any  form  of  defense 
that  if  a  patent  is  referred  to  simply  by  number  and  date,  without  aver- 
ment of  earlier  invention  and  use,  or  of  the  date  of  the  application  upon 
which  it  was  granted,  evidence  of  those  particulars  would  not  be  competent, 
because  not  within  the  issue.  But  when  the  answer  is  framed,  like  this 
one,  to  show,  not  a  prior  patent  or  publication,  but  that  the  grantee  of 
the  patent  in  suit  was  not,  and  that  the  patentee  of  a  patent  of  later  date, 
issued  upon  an  earlier  application,  was  the  first  inventor,  it  is  an  anomalous 
proposition  that  the  fact  which  the  statute  declares  to  be  a  defense  can- 
not be  established  by  any  proof  which,  under  the  ordinary  rules  of  evi- 
dence, is  admissible.  —  Barnes  v.  Walworth,  60  Fed.  605 ;  9  C.  C.  A.  154. 

Western  v.  Sperry,  59  Fed.  295. 

§  6o.     Abandoned  Device  or  Experiment  —  Anticipatory. 

The  device  in  substantial  anticipating  form  had  been  publicly  used  years 
before  and  was  abandoned  by  the  prior  user.  Weld;  Whatever  abandon- 
ment there  was,  was  evidently  to  the  public  which  would  give  no  one  the 
right  to  obtain  a  patent  for  the  same  device.  —  Clisby  v.  Reese,  88  Fed.  645 ; 
32  C.  C.  A.  80. 

Numerous  witnesses  establish  that,  before  the  application  was  filed, 
McCarty  erected  and  operated  a  large  model  from  which  the  drawings 
were  made.  It  is  true  that  it  was  susceptible  of  improvement,  but  that  does 
not  negative  novelty.  —  Lamson  v.  Hillman,  123  Fed.  416;  59  C.  C.  A.  510. 

Telephone  Cases,  126  U.  S.  1;    Rogers  v.  Mergenthaler,  64  Fed.  799. 

The  .  .  .  machine  was  produced  at  the  hearing  in  the  circuit  court,  and 
also  at  the  hearing  in  this  court,  and  the  substantial  identity  of  the  two 
clutch  mechanisms  was  established  by  concrete  proof.  The  evidence  also 
shows  that  the  clutch  was  not  used  for  purposes  of  experiment,  or  to  gratify 


§  61  ANTICIPATION  105 

curiosity,  or  to  see  whether  it  was  successful,  or  whether  anything  more  was 
to  be  done  to  perfect  it;  but  that  it  was  put  to  use  in  ordinary  business 
as  a  thing  which  was  completed,  and  that  the  reason  why  it  was  only  used 
for  a  short  time  has  no  bearing  upon  its  practical  operativeness.  It  thus 
fulfills  the  tests  with  respect  to  anticipation.  —  United  v.  Greenman,  153 
Fed.  283;  82  C.  C.  A.  581. 

Brush  v.  Condit,  132  U.  S.  39;  Deering  v.  Winona,  155  U.  S.  286;  Brooks  v. 
Sacks,  81  Fed.  403;   Westinghouse  v.  Stanley,  133  Fed.  174. 

The  fact  that  the  clutch  in  suit  is  practically  operative  raises  a  strong 
presumption  that  the  clutch  of  the  abandoned  machine  was  practically 
operative,  since  the  two  clutches  are  substantially  identical.  —  United  v. 
Greenman,  153  Fed.  283;  82  C.  C.  A.  581. 

§  6i.     Abandoned  Device  or  Experiment  —  Non-Anticipating. 

The  re-invention  of  a  prior  lost  art  or  abandoned  unproved  device  is  not 
anticipated  by  such  facts.  - —  Gayler  v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

The  case  to  this  point  admits,  that,  although  Connor's  (the  anticipating) 
safe  had  been  kept  and  used  for  years,  yet  no  test  had  been  applied  to  it,  and 
its  capacity  for  resisting  heat  was  unknown,  there  was  no  evidence  to  show 
that  any  particular  value  was  attached  to  it  after  it  passed  from  his 
possession,  or  that  it  was  ever  afterwards  used  as  a  place  of  security  for 
papers;  and  it  appeared  that  he  himself  did  not  attempt  to  make  another 
like  the  one  he  is  supposed  to  have  invented,  but  used  a  different  one.  — ■ 
Gayler  v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

Embryonic  or  inchoate  device  does  not  defeat  a  completed,  working  in- 
vention. —  Washburn  v.  Beat  Em  All,  143  U.  S.  275;  36  L.  Ed.  154;  12  S.  Ct. 
443. 

Coffin  v.  Ogden,  85  U.  S.  120;  Cantrell  v.  Wallick,  117  U.  S.  689;  Hitchcock  v. 
Tremain,  9  Blatchf.  550;  Parkham  v.  American,  4  F.  P.  C.  468;  Bell  v.  People's 
Tel.  22  F.  R.  309. 

Unsuccessful  and  abandoned  experiments  do  not  affect  the  validity  of  a 
subsequent  patent.  —  Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153; 
15  S.  Ct.  118. 

Brown  v.  Guild,  90  U.  S.  181;  Coffin  v.  Ogden,  85  U.  S.  120. 

It  appears  that  Wood  applied  for  a  patent  and  was  rejected.  His  appli- 
cation was  accompanied  by  a  model,  which,  it  is  claimed,  embodied  the  in- 
vention in  suit.  The  model  itself  was  not  produced  and  the  account  given 
of  it  is  somewhat  conflicting.  The  only  use  ever  made  of  it  by  Wood  was 
merely  experimental.  It  was  never  used  for  any  practical  purpose.  There 
is  no  pretense  that  the  inventor  of  the  patent  in  suit  ever  knew  of  its  exist- 
ence. The  evidence  is  wholly  insufficient  for  the  court  to  conclude  that  the 
patent  in  suit  was  anticipated  by  the  Wood  device.  —  Gamewell  v.  Munic- 
ipal, 61  Fed.  948;  10  C.  C.  A.  184. 

It  is  not  enough  to  defeat  the  patent  that  someone  other  than  Gilmour 
had  conceived  the  invention  before  he  did,  or  had  even  perfected  it,  so 
long  as  it  had  not  been  in  public  use  or  described  in  some  patent  or  publi- 
cation. If  Gilmour  was  an  original  inventor,  though  a  subsequent  one,  it 
was  his  right  to  obtain  a  patent  unless  he  "  surreptitiously  and  unjustly 
obtained  the  patent  for  that  which  was  invented  by  another  who  was  using 
reasonable  diligence  in  adapting  and  perfecting  the  same."  —  Lincoln  v. 
McWhirter,  142  Fed.  967;   74  C.  C.  A.  229. 


106  THE   FIXED   LAW   OF   PATENTS  §§  62-65 

This  machine  after  having  been  used  a  couple  of  years  was  thrown  aside, 
competitors  getting  out  a  better  looking  and  more  salable  product  than 
could  be  produced  by  means  of  it;  and  it  was  sold  soon  afterwards  to  the 
defendants,  in  whose  stockroom  it  has  been  stored  away  ever  since,  unnoted 
and  unused,  until  resurrected  for  the  purpose  of  this  suit.  Whatever  virtue, 
therefore,  it  may  have  originally  had,  as  it  stands,  it  must  be  regarded  as 
in  the  nature  of  an  abandoned  experiment,  of  which  no  notice  need  now  be 
taken.  —  American  v.  Mills,  149  Fed.  743;  79  C.  C.  A.  449. 

§  62.     Abandoned  Device  or  Experiment  —  Application. 

If,  upon  the  whole  of  the  evidence,  it  appears  that  the  alleged  prior  in- 
vention or  discovery  was  only  an  experiment  and  was  never  perfected  or 
brought  into  actual  use,  but  was  abandoned  and  never  revived  by  the 
alleged  inventor,  the  mere  fact  of  having  unsuccessfully  applied  for  a  patent 
therefor  cannot  take  the  case  out  of  the  category  of  unsuccessful  experiments. 
—  Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

§  63.     Analogousness  —  Art. 

In  a  case  where  an  insulated  cable  or  wire  was  in  question,  the  citation 
of  a  sub-marine  cable  coated  somewhat  similarly  for  the  purpose  of  render- 
ing it  impervious  and  not  intended  at  all  as  a  high  insulator  held  not  good 
as  a  citation.  —  Ansonia  v.  Elec.  Sup.  144  U.  S.  11;  36  L.  Ed.  327;  12  S.  Ct. 
601. 

Time  was  wasted  in  attempting  to  show  that  machines  relating  to  diverse 
and  analogous  arts,  in  which  some  sort  of  an  envelope  was  wrapped  round 
some  sort  of  a  core,  prevented  the  exercise  of  invention  in  the  formation 
of  a  previously  unknown  machine.  — Bonsack  v.  Elliott,  69  Fed.  335;  16 
C.  C.  A.  250. 

It  is  true  that  the  device  belongs  to  another  art.  But  the  patent  is  inter- 
esting as  exhibiting  the  application  of  the  dove-tail  method  of  connection 
under  conditions  that  are  mechanically  similar  to  those  of  the  device  of 
the  patent  in  suit,  —  Bullock  v.  General,  162  Fed.  28;  89  C.  C.  A.  68. 

§  64.     Analogousness  —  Use. 

Anticipation  ought  not  to  be  found  in  prior  devices  in  the  art  to  which 
a  patent  belongs  unless  they  are  of  such  a  character  as  to  furnish  clear,  if 
not  unmistakable  suggestion,  of  the  improvement  in  question;  and  if  the 
anticipatory  suggestion  comes  from  another  art,  it  should,  of  course,  have 
less  significance,  proportioned  inversely  to  the  distance  from  which  it  is 
brought.  —  Williams  v.  American,  86  Fed.  641 ;  30  C.  C.  A.  318. 

We  do  not  think  that  the  disintegration  of  apples  or  of  cocoanut  kernels 
is  so  analogous  to  the  disintegration  of  wet  clay  that  the  ingenuity  shown 
in  the  adoption  of  the  device  for  disintegrating  clay  can  be  minimized  by 
reference  to  these  other  arts.  —  Potts  v.  Creager,  97  Fed.  78 ;  38  C.  C.  A.  47. 

§  65.     Anticipating  an  Anticipation  —  Burden  of  Proof. 

Where  a  patent  is  introduced  in  suit  showing  with  certainty  the  date  of 
its  publication  and  prior  to  the  date  of  the  patent  in  suit  it  is  incumbent 
upon  complainant  to  show,  if  not  with  equal  certainty,  yet  to  the  satis- 
faction of  the  court,  that  the  invention  of  the  patent  in  suit  preceded  that 
date.  —  Clark  v.  Willimantic,  140  U.  S.  481 ;  35  L.  Ed.  521;  11  S.  Ct.  846. 

St.  Paul  v.  Starling,  140  U.  S.  184. 


§§  66-67  ANTICIPATION  107 

An  anticipating  design  having  been  produced  and  established  as  ante- 
dating the  patent  in  suit,  it  became  necessary  for  the  patentee  to  establish 
to  the  satisfaction  of  the  court  that  his  invention  preceded  the  time  when 
the  design  in  evidence  was  shown  to  have  been  first  made.  —  Untermeyer  v. 
Freund,  58  Fed.  205 ;  7  C.  C.  A.  183. 

Plow  Works  v.  Starling,  140  U.  S.  184;   Clark  v.  Willimantic,  140  U.  S.  481. 

That  the  burden  of  proof  to  overcome  an  anticipation  by  carrying  the 
date  of  the  patent  in  suit  back  of  the  anticipation  proved,  is  upon  the  com- 
plainant, see  Rogers  v.  Fitch,  81  Fed.  959;  27  C.  C.  A.  23. 

Clark  v.  Willimantic,  140  U.  S.  492. 

No  attempt  was  made  by  the  complainant  to  show  the  actual  date  of  his 
invention,  and  in  a  case  of  this  sort  we  will  not  presume  that  the  invention 
was  made  prior  to  the  time  when  the  defendants  constructed  and  began  to 
use  in  their  mills  the  shingle-edging  machines  which  they  are  now  using. 
If  such  be  the  fact,  the  complainant  should  have  established  it  by  com- 
petent evidence,  or  show  that  the  defendants  did  not  construct  their  machine 
at  the  time  stated,  nor  until  subsequent  to  the  date  of  Wilson's  alleged 
invention.  —  Wilson  v.  Townley,  125  Fed.  491 ;  60  C.  C.  A.  327. 

A  public  knowledge  and  use  prior  to  the  date  of  the  application  being 
thus  clearly  shown,  the  burden  was  upon  the  complainant  to  show  that  the 
invention  of  the  patent  in  suit  was  made  at  an  earlier  date.  Complainant 
must  furnish  the  court  with  convincing  proof  that  the  anticipation  has  been 
anticipated.  —  New  England  v.  Sturtevant,  150  Fed.  131 ;  80  C.  C.  A.  85. 

Westinghouse  v.  Saranac,  108  Fed.  221. 

With  the  facts  of  complete  anticipation  in  construction  and  use  —  known 
to  the  patentee  several  months  prior  to  his  application  for  a  patent  —  settled 
by  the  evidence,  we  are  of  opinion  that  the  presumption  of  invention  by 
the  patentee,  which  arises  from  the  patent,  application,  and  grant,  is  over- 
come, prima  facie  by  such  anticipation  in  Sherbondy's  prima  facie  concep- 
tion reduced  to  practice,  so  that  the  burden  of  proof  is  transferred  to  the 
patentee  to  establish  priority  in  fact.  —  Consolidated?;.  Adams,  161  Fed.  343. 

Westinghouse  v.  Catskill,  121  Fed.  831;  Loom  Co.  v.  Higgins,  15  Blatchf. 
446;  Thayer  v.  Hart,  20  Fed.  693;  Westinghouse  v.  Saranac,  108  Fed.  221; 
Westinghouse  v.  Mutual  Life,  129  Fed.  213;  Walk.  Pat.  §  510;  Clark  v.  Willi- 
mantic, 140  U.  S.  481. 

§  66.     Application. 

A  mere  prior  application  is  not  a  bar  to  a  subsequent  application  except 
as  affecting  priority.  —  Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

Statements  in  a  prior  application  relied  on  to  prove  anticipation  must 
be  so  clear  and  explicit  that  those  skilled  in  the  art  will  have  no  difficulty 
in  ascertaining  their  meaning.  When  they  are  so  vague,  involved,  intricate 
and  contradictory  that  experts  disagree  radically  as  to  their  meaning  and, 
following  the  instructions  given,  construct  devices  differing  in  fundamental 
features,  it  is  safe  to  reject  such  a  document  as  an  anticipation.  —  Hillard  v. 
Fisher,  159  Fed.  439;  86  C.  C.  A.  469. 

§  67.     Combining  Old  Elements  —  Different  Devices. 

Where  the  thing  patented  is  an  entirety,  consisting  of  a  single  device  or 
combination  of  old  elements,  incapable  of  division  or  separate  use,  the  re- 
spondent cannot  escape  the  charge  of  infringement  by  alleging  or  proving 


108  THE    FIXED    LAW    OF    PATENTS  §  68 

that  a  part  of  the  entire  thing  is  found  in  one  prior  patent  or  publi- 
cation or  machine,  and  another  part  in  another  exhibit,  and  still  another  part 
in  a  third  one,  and  from  the  three  or  any  greater  number  of  such  exhibits 
to  draw  the  conclusion  that  the  patentee  is  not  the  original  and  first  in- 
ventor of  the  patented  improvement.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed. 
68. 

The  defendant's  theory  is  not  that  this  invention  was  anticipated  by 
any  one  pre-existing  machine,  taken  by  itself,  but  that  its  important  features 
were  separately  found  in  two  older  machines  and  could  have  been  combined 
without  the  exercise  of  inventive  skill.  It  is  true  that  anybody  could  have 
done  this  if  he  had  ascertained  the  cause  of  the  defect  in  the  Siemens  machine, 
and  the  kind  of  motion,  and  the  proper  means  of  applying  it,  which  would 
obviate  the  defect.  But  the  defendant's  theory,  like  many  theories  of  a  similar 
character,  assumes  what  is  not  apparent,  that  the  cause  of  the  pre-existing 
defect,  and  its  remedy,  were  open  to  the  discernment  of  the  skilled  mechanic. 
—  Smith  v.  Macbeth,  67  Fed.  137;  14  C.  C.  A.  241. 

It  is  also  probably  true  that  by  selecting  from  the  various  known  machines 
of  that  character,  and  indeed  by  selecting  only  from  those  devised  with 
reference  to  lacing  hooks,  including  especially  the  Palmer  machine,  all  the 
elements  of  the  patented  machine  in  suit  could  be  brought  together.  This, 
however,  on  well-settled  rules,  falls  far  short  of  demonstrating  that  appellee's 
device  contains  no  patentable  qualities,  though  it  compels  us  to  regard 
them  as  of  a  limited  and  restricted  character.  —  Packard  v.  Lacing,  70  Fed. 
66;   16  C.  C.  A.  639. 

It  may  be  true  that  an  imaginable  combination  of  the  two  prior  patents 
would  closely  resemble  the  patent  in  suit  but  such  a  combination  is  not 
obvious  and  would  require  patentable  invention.  —  Hart  v.  Anchor,  92  Fed. 
657;  34  C.  C.  A.  606. 

That  attempted  anticipation  by  combining  the  elements  and  combination 
of  old  devices,  or  showing  possible  capabilities  of  old  devices,  after  the  fact 
is  not  good  evidence  of  anticipation,  see.  Hatch  v.  Electric,  100  Fed.  975; 
41  C.  C.  A.  133. 

The  all-sufficient  answer  to  an  imaginary  machine  such  as  this  being 
introduced  in  anticipation  (a  showing  that  a  combination  and  arrangement 
of  old  presses  would  produce  the  same  result)  is  the  fact  that  no  one  either 
changed  the  Globe  press,  or  suggested  the  possibility  of  such  change.  — 
Goss  v.  Scott,  108  Fed.  253;  47  C.  C.  A.  302. 

The  finding  in  the  old  devices,  one  portion  here,  one  in  another,  and  so 
on,  should  not  defeat  a  patent  for  the  combination,  which  is  only  truly 
anticipated  by  a  prior  device  having  identically  the  same  elements,  or  their 
mechanical  equivalents,  co-operating  to  produce  the  same  results.  —  Im- 
perial v.  Crown,  139  Fed.  312;  71  C.  C.  A.  442. 


§  68.     Combining  Old  Elements  —  Different  Patents. 

It  is  probably  very  true  that,  by  selecting  the  various  prior  machines  in 
this  particular  art,  all  the  elements  in  the  device  in  suit,  could  be  brought 
together.  But  to  hold  that  this  fact  always  defeats  novelty  would  be  to  shut 
out  every  combination  of  old  elements  from  the  protection  of  the  patent 
laws.  —  Heap  v.  Tremont,  82  Fed.  449;  27  C.  C.  A.  316. 

Packard  v.  Lacing,  70  Fed.  66;   Boston  v.  Bemis,  80  Fed.  287. 


§§69-71  ANTICIPATION  109 

The  elements  appear  severally  in  one  or  another  of  such  prior  patents, 
but  are  not  all  united  in  either.  These  patents  furnish  evidence  of  the  prior 
state  of  the  art,  but  do  not  deprive  the  new  combination  of  patentable 
novelty.  —  Milwaukee  v.  Brunswick-Balke,  126  Fed.  171 ;  61  C.  C.  A.  175. 

Parks  v.  Booth,  102  U.  S.  96. 

The  line  which  separates  invention  from  mechanical  skill  is  at  best  a 
narrow  one,  and  the  difficulty  of  demarkation  in  this  case  is  enhanced  by  the 
fact  that  of  necessity  we  look  upon  the  alleged  anticipation  with  eyes  in- 
structed by  the  patent  in  suit  and  other  subsequent  patents,  and  must  take 
care  that  we  do  not  in  such  light  reconstruct  the  alleged  anticipation  so 
as  to  see  in  it  the  possibilities  which  may  seem  very  obvious  now,  but  which 
may  not  have  been  disclosed  by  the  patent  itself.  —  Ideal  v.  Crown,  131  Fed. 
244;  65  C.  C.  A.  436. 

Some  disclose  one  element  and  some  another,  but  none  of  them,  including 
those  already  specifically  referred  to,  disclose  all  the  elements  or  the  combina- 
tion of  elements  of  the  patent  in  suit.  For  that  reason  they  cannot 
constitute  anticipation.  —  St.  Louis  v.  American,  156  Fed.  574 ;  84  C.  C.  A. 
340. 

Bates  v.  Coe,  98  U.  S.  31;   Emerson  v.  VanNort,  116  Fed.  974. 

§  69.     Combining  Old  Elements  —  Mechanical  Skill. 

The  mechanical  skill  which  may  be  evoked  to  exclude  the  idea  of  invention 
must  be  mechanical  skill  applied  in  accordance  with  the  direction  of  the 
alleged  anticipating  patent;  not  the  skill  which,  taught  by  the  invention 
in  suit,  seeks  to  reform  and  reorganize  the  former  patent,  so  disguising  it 
under  a  cloud  of  subtlety  of  argument  and  suggestion  as  to  transform  it.  — ■ 
Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436. 

§  70.     Double  Patenting. 

While  the  effect  of  double  patenting  is  to  render  the  later  patent  void  by 
reason  of  anticipation,  only  sufficient  references  are  given  here  to  indicate 
the  rule.  A  full  list  of  decisions  on  the  subject  will  be  found  under  Double 
Patenting. 

If  the  feature  referred  to  were  old  and  already  patented  at  the  time  of 
the  patent  in  suit,  it  makes  no  difference  that  such  other  patent  issued  to 
the  same  patentee.  This  suit  is  brought  solely  upon  the  later  patent,  and 
the  earlier  one  was  outstanding  against  it  when  it  was  issued.  —  Doig  v. 
Morgan,  122  Fed.  460;  59  C.  C.  A.  616. 

Underwood  v.  Gerber,  149  U.  S.  224. 

In  any  case,  it  was  invented  before  the  issue  of  the  patent  in  suit.  That 
patent,  therefore,  is  not  in  a  prior  art,  properly  so-called,  and  has  priority 
only  as  a  prior  patent  issued  to  the  same  inventor.  —  Hart  v.  Anchor,  92 
Fed.  657;  34  C.  C.  A.  606. 

§  71.     Evidence  of  —  Burden  of  Proof. 

The  invention  or  discovery  relied  upon  as  a  defense,  must  have  been  com- 
plete, and  capable  of  producing  the  result  sought  to  be  accomplished;  and 
this  must  be  shown  by  the  defendant.  The  burden  of  proof  rests  upon  him, 
and  every  reasonable  doubt  must  be  resolved  against  him.  If  the  thing 
were  embryonic  or  inchoate;  if  it  rested  in  speculation  or  experiment;  if 
the  process  pursued  for  its  development  had  failed  to  reach  the  point  of 


110 


THE    FIXED    LAW    OF    PATENTS 


§  72 


consummation,  it  cannot  avail  to  defeat  a  patent  founded  upon  a  discovery 
or  invention  which  was  completed.  The  law  requires,  not  conjectures  but 
certainty.  If  the  question  relate  to  a  machine,  as  thus  exhibited,  the  con- 
ception must  have  been  clothed  in  substantial  forms  which  demonstrate 
at  once  its  practical  efficiency  and  utility.  —  Coffin  v.  Ogden,  85  U.  S.  120; 
21  L.  Ed.  821. 

Gayler  v.  Wilder,  10  How.  496;  Reed  v.  Cutter,  1  Story,  590;  Bedford  v.  Hunt, 
1  Mas.  302. 

The  defendant  must  make  out  the  allegation  satisfactorily.  The  evidence 
must  clearly  show  the  anticipation.  —  Clough  v.  Gilbert,  106  U.  S.  178;  27 
L.  Ed.  138;  1  S.  Ct.  198. 

The  burden  of  proof  is  upon  the  defendants  to  establish  this  defense. 
For  the  grant  of  letters  patent  is  prima  facie  evidence  that  the  patentee  is 
the  first  inventor  of  the  device  described  in  the  letters  patent  and  of  its 
novelty.  —  Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017;  6  S.  Ct.  970. 

Smith  v.  Goodyear,  93  U.  S.  486;   Lehnbeuter  v.  Holthaus,  105  U.  S.  94. 

Not  only  is  the  burden  of  proof  to  make  good  this  defense  upon  the  party 
setting  it  up,  but  it  has  been  held  that  "  every  reasonable  doubt  should  be 
resolved  against  him."  —  Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017; 
6  S.  Ct.  970. 

Coffin  v.  Ogden,  18  Wall.  120;  Washburn  v.  Gould,  2  Story,  122,  142. 

Anticipation  is  a  question  of  fact,  and  the  burden  of  establishing  it  is 
on  the  appellant.  —  Busch  v.  Jones,  184  U.  S.  598 ;  46  L.  Ed.  707 ;  22  S.  Ct.  511. 

It  will  be  noticed  that  Dusenbury's  application  was  first  filed;  so  that  it  is 
settled  law  that  the  burden  was  thrown  on  the  complainant  below  to  prove 
priority  in  behalf  of  his  patent  to  the  satisfaction  of  the  courts  and  by  evi- 
dence which  shall  strongly  outweigh  that  of  the  respondents  below,  if  not 
beyond  a  reasonable  doubt.  —  Brooks  v.  Sacks,  81  Fed.  403;  26  C.  C.  A.  456. 

Mfg.  Co.  v.  Sprague,  123  U.  S.  249;  Clark  v.  Willimantic,  140  U.  S.  481;  Walk. 
Pat.  Sec.  70. 

Inasmuch  as  defendants'  contention  is  based  on  the  claim  that  the  Buller 
or  other  devices  of  the  prior  art  were  capable  of  practical  successful  operation 
when  made  of  lava  or  steatite,  the  burden  was  upon  the  defendants  to  prove 
this  fact  as  part  of  their  prima  facie  case.  —  Kirchberger  v.  American,  128 
Fed.  599;  64  C.  C.  A.  107. 

When  the  defense  of  anticipation  is  set  up,  it  is  unquestionable  that  the 
defendant  is  charged,  not  only  with  the  burden  of  proof  upon  that  issue, 
but  priority  of  conception  and  reduction  to  practice  must  be  clearly  made 
out,  by  well-authenticated  evidence,  to  defeat  the  patent.  —  Consolidated  v. 
Adams,  161  Fed.  343;  88  C.  C.  A.  355. 


§  72.     Evidence  of  —  Device  or  Exhibit. 

These  seven  original  sketches  are  undoubtedly  rude  and  imperfect,  and 
do  not  show,  or  attempt  to  show,  an  organized  working  machine.  But  we  do 
not  regard  this  as  a  vital  defect.  The  claims  put  in  interference  do  not 
involve  anything  more  than  certain  improvements  upon  machines  well 
known  in  the  art,  and  contemplate  a  combination  of  certain  novel  features 
with  the  loading  tools  and  other  devices  of  the  old  Peters  machine.  The  ques- 
tion as  to  whether  these  sketches  so  clearly  show  the  novel  features  as  that 


§72  ANTICIPATION  111 

one  |  familiar  with  the  construction  and  operation  of  the  Peters  machine 
could  from  these  construct  a  machine  embodying  the  endless  belt  feature 
is  one  addressed  to  persons  possessing  a  mass  of  information  about  the  old 
art.  If  such  persons,  from  these  sketches,  could  construct  a  machine  con- 
taining the  improvements  conceived  by  Ligowsky,  without  the  further 
exercise  of  the  inventive  faculty,  then  it  is  very  clear  that  Ligowsky  must 
be  held  to  have  had  a  sufficient  conception  in  1887  to  entitle  him,  on  a  ques- 
tion of  priority,  to  carry  the  date  of  his  invention  back  to  the  date  of  these 
drawings.  That  they  are  incomprehensible  to  one  unacquainted  with  such 
machinery,  or  to  a  mechanic  unaware  of  what  they  purported  to  be  is  no 
answer.  That  they  do  not  in  all  respects  show  the  relation  of  the  novel 
features  to  the  old  loading  tools,  nor  describe  precisely  the  mode  of  attach- 
ment, nor,  with  scientific  exactness,  show  other  details  of  the  combination, 
is  not  fatal,  if  the  absent  features  are  such  as  would  be  readily  supplied  by 
a  mechanic  familiar  with  the  subject,  and  without  requiring  further  inven- 
tion. The  well-known  statement  of  the  doctrine  touching  the  sufficiency 
of  description  in  the  specifications  and  drawing  of  an  application  for  a 
patentable  novelty  by  Justice  Bradley,  in  Loom  Co.  v.  Higgins,  105  U.  S.  586, 
applies  with  even  greater  force  to  the  adequacy  of  such  sketch  drawings, 
when  the  question  is  one  of  carrying  back  the  date  of  an  invention  to  the 
time  of  first  conception.  —  Standard  v.  Peters,  77  Fed.  630;  23  C.  C.  A.  367. 

The  following  extended  quotation  from  the  opinion  of  Judge  Coxe  (La- 
combe  and  Townsend  concurring)  appears  to  sum  up  and  conclude  the  ques- 
tion of  the  evidential  value  of  models  in  proving  anticipation. 

It  is  urged  by  the  complainant  that  novelty  of  the  combination  of  the 
ninth  claim  cannot  be  negatived  by  the  Yost  model,  and  in  support  of  this 
•proposition  we  are  referred  to  Walker  on  Patents,  Sec.  61,  and  cases  there 
cited. 

Cahoon  v.  Ring,  1  Cliff.  592,  was  a  trial  of  certain  feigned  issues  of  fact  by 
a  jury  to  determine  whether  complainants'  patent  for  an  improved  seeding 
machine  was  valid  and  infringed.    At  page  611  Judge  Clifford  charged  the 

iUTy-  .       .  .     . 

"  You  are  accordingly  instructed  to  inquire  and  determine,  from  the  evi- 
dence, whether  Luce  made  his  alleged  invention  of  the  vertical  machine 
public,  and  if  he  did  not,  but  had  used  it  for  no  purpose,  except  simply  for 
his  own  private  experiments,  and  if  it  had  been  broken  up  prior  to  the  14th 
of  May,  1857  (the  date  of  Cahoon 's  application)  and  its  materials  used  for 
other  purposes,  and  its  essential  parts  lost,  and  the  invention  forgotten 
or  abandoned,  that  such  an  invention  and  use  would  be  no  obstacle  to  the 
taking  out  of  a  patent  by  Cahoon,  or  those  claiming  under  him,  and  that  the 
model,  or  machine,  now  in  evidence,  on  that  state  of  facts,  would  not  in- 
validate the  Cahoon  patent,  if  he  was  an  original  inventor  of  his  improve- 
ments, without  any  knowledge  of  said  machine,  and  did  not  derive  any  of 
them   from   Luce." 

In  Stainthorp  v.  Humiston,  4  Fish.  P.  C.  107,  the  court  says: 

"  The  machine  of  Whitfield  never  went  into  practical  use.  Although  a 
working  model  was  made  in  or  about  the  year  1849,  and  was  soon  after  used 
for  two  or  three  hours  in  making  candles,  by  way  of  experiment,  the  machin- 
ery may  well  be  considered  as  but  an  abandoned  experiment." 

In  Johnson  v.  McCullough,  4  Fish.  P.  C.  170,  the  court  said: 

"  I  have  also  examined  all  the  testimony  relating  to  the  Shaw  model, 
and  find  it  does  not  show  more  than  the  making  of  a  model,  and  not  of  any 
practical  working  machine,  which  is  necessary  to  overthrow  a  patent." 

In  Stilwell  v.  Cincinnati,  1  Ban  &  A.  610,  the  court  said  of  a  model  made 
prior  to  the  invention  in  question: 

"  That  (the  making  of  a  mere  model)  does  not  constitute  invention,  and 


112  THE    FIXED    LAW    OF    PATENTS  §72 

it  can  only  be  used  as  an  item  of  testimony,  reflecting  upon  the  making  and 
using  of  the  wooden  heater  in  1845  or  1846.  Taking  it  in  connection  with 
the  testimony  on  that  point,  and  weighing  all  the  testimony  together,  I 
cannot  say,  that  it  is  of  that  clear  and  satisfactory  character,  as  requires 
me  to  find  that  James  Armstrong  invented  the  device,  as  claimed,  in  1845 
or   1846." 

In  Bowers  v.  Von  Schmidt,  63  Fed.  572,  the  court,  at  page  577,  says : 

"  That  models  or  drawings  will  not  constitute  invention,  so  as  to  amount 
to  anticipation,  may  be  true,  but  models  or  drawings  may  constitute  in- 
vention to  avoid  anticipation." 

Non  constat  models  and  drawings  may  be  used  to  establish  an  invention 
prior  to  that  of  the  patentee. 

These  are  all  the  authorities  cited  by  Mr.  Walker,  and  we  are  convinced 
that  they  do  not  sustain  the  broad  contention  of  the  complainant.  The  law, 
section  4886  of  the  Revised  Statutes,  provides  that  any  person  may  obtain 
a  patent,  inter  alia,  for  a  machine  invented  by  him  "  not  known  or  used  by 
others  in  this  country  before  his  invention  or  discovery  thereof."  It  is 
clear,  as  pointed  out  by  Mr.  Walker,  that  knowledge  of  a  model  of  a  machine 
is  not  knowledge  of  the  machine  itself  any  more  than  knowledge  of  a  model 
of  Brooklyn  Bridge  is  knowledge  of  that  structure.  But  we  think  the  rule 
should  be  restricted  to  a  model  pure  and  simple  as  the  word  is  understood 
in  common  parlance,  viz.,  a  pattern,  a  copy,  a  representation  usually  upon 
a  reduced  scale.  The  word  "  model  "  should  not  be  construed  to  mean 
the  identical  device  which  is  covered  by  the  patent.  If  this  were  otherwise 
a  defendant  who  produces  the  exact  structure  of  the  claims  and  proves 
that  it  was  known  prior  to  the  date  of  the  alleged  invention  is  completely 
answered  if  the  complainant  can  show  that  the  anticipating  structure  was 
filed  as  a  model.  In  other  words,  the  question  is  not  one  of  nomenclature 
but  of  fact.  In  the  case  of  a  complicated  machine  a  small  model  incapable' 
of  actual  use  may  be  filed  for  the  purpose  of  explaining  and  illustrating  the 
drawing;  that  such  a  model  alone  would  not  anticipate  is,  of  course,  per- 
fectly clear.  On  the  other  hand,  it  frequently  happens  that  the  applicant 
files  as  his  model  not  a  pattern  or  reproduction  of  the  thing  invented  by  him 
but  the  thing  itself.  Take,  for  illustration,  an  application  for  a  patent  for 
a  horse-shoe  nail  when  one  of  the  nails  made  by  the  inventor  is  filed  as 
a  model,  can  it  be  that  a  subsequent  applicant  can  hold  a  patent  for  that 
nail  or  any  feature  thereof  after  proof  of  its  prior  existence  and  the  knowl- 
edge thereof  by  the  public?  During  the  pendency  of  an  application  a  model 
filed  in  the  Patent  Office  is  supposed  to  be  inaccessible  to  the  public  and 
therefore  proof  of  its  filing  date  is  not  alone  proof  of  public  knowledge  at 
that  time,  but,  on  the  other  hand,  such  knowledge  having  been  shown  by 
extrinsic  evidence,  the  model  is  not  open  to  the  suspicion  that  it  has  been 
altered  and,  until  proof  to  the  contrary  is  adduced,  must  be  presumed  to  be 
in  the  condition  it  was  at  the  date  of  filing.  As  before  stated,  we  think 
the  Yost  model  was  something  more  than  a  mere  model,  for  the  reason 
that  it  is  a  full  operative  embodiment  of  the  tabulating  mechanism,  and 
for  the  further  reason  that  its  existence  and  purpose  is  established  by  evi- 
dence independent  of  its  connection  with  the  Patent  Office.  —  American  v. 
Wagner,  151  Fed.  576;  81  C.  C.  A.  120. 

Note:  Compare  this  clear  statement  with  the  opinion  in  Buser  v.  Novelty, 
151  Fed.  478. 

With  reference  to  this  model,  it  is  sufficient  to  say  that  it  was  proven  on 
the  trial  of  the  case  that  it  was  not  an  original  model  of  the  press  which  it 
purported  to  represent,  but  was  made  by  the  defendant  Livengood  about 
six  months  after  the  institution  of  the  suit  at  bar  for  the  purpose  of  being 
used  as  evidence  to  invalidate  the  claims  of  the  Power  patent.     It  was  so 


§§73-74  ANTICIPATION  113 

made  merely  from  the  witness'  recollection  of  the  structure  of  the  press  that 
it  purported  to  represent,  which  he  had  not  seen  for  eight  or  ten  years,  and 
the  fact  that  it  was  not  an  original  model  was  not  disclosed  when  it  was 
offered  in  evidence,  but  was  intentionally  concealed  until  the  fact  was  de- 
veloped on  cross-examination.  Under  the  circumstances,  we  cannot  accept 
the  model  in  question  as  sufficient  evidence  to  invalidate  the  claims  of  the 
Power  patent.  —  Kansas  City  v.  Devol,  81  Fed.  726;  26  C.  C.  A.  578. 

That  when  counsel  is  called  upon  by  the  court  to  differentiate  the  device 
of  the  patent  in  suit,  his  failure  to  do  so  will  not  be  looked  upon  with  favor, 
see  Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70. 

No  writing  supports  the  defendant's  contention,  and  human  memory  is 
not  to  be  relied  upon  as  to  minute  details  of  transactions  occurring  twenty- 
five  years  before.  —  United  v.  Beattie,  149  Fed.  736;  79  C.  C.  A.  442. 

Keasby  v.  Carey,  139  Fed.  571. 


§  73.    Evidence  of  —  Expert. 

It  is  perhaps  possible  for  an  expert,  having  the  patent  in  suit  before  him, 
to  build  up  the  structure  covered  by  these  claims,  by  selecting  and  deftly 
adapting  appliances  theretofore  known,  "  yet  it  would  still  be  true  that 
neither  the  same  combination  in  its  entirety  nor  the  same  operation  "  had 
previously  been  described  or  in  any  manner  exemplified.  — -  McMichael  v. 
Ruth,  128  Fed.  706;   63  C.  C.  A.  304. 

Parks  v.  Booth,  102  U.  S.  96;  Bates  v.  Coe,  98  U.  S.  31;  Mast  v.  Stover,  177 
U.  S.  497. 


§  74.     Evidence  of  —  Parol. 

Evidence  of  anticipation  consisting  wholly  of  the  recollection  of  witnesses, 
especially  when  contradicted  and  when  at  variance  and  when  not  substan- 
tiated, but  impaired  by  the  production  of  one  of  the  alleged  anticipating 
articles  is  not  sufficient  to  negative  novelty.  —  Untermeyer  v.  Freund,  58 
Fed.  205;  7  C.  C.  A.  183. 

The  personal  recollection  of  a  number  of  unimpeached  and  disinterested 
witnesses  of  an  anticipating  device,  fully  described  and  identical,  though 
the  device  itself  has  passed  out  of  existence,  is  sufficient  to  establish 
prior  invention.  —  American  v.  Weston,  59  Fed.  147;  8  C.  C.  A.  56. 

Washburn  v.  Beat  Em.  All.  143  U.  S.  275;  Fruit  Jar  Co.  v.  Wright,  94  U.  S. 
92;  Egbert  v.  Lippmann,  104  U.  S.  333;  Andrews  v.  Hovey,  124  U.  S.  694;  Jones 
v.  Barker,  11  Fed.  597. 

The  inherent  dangers  of  oral  proofs  in  this  class  of  cases  are  explained  in 
the  Barbed  Wire  Patent,  143  U.  S.  275,  and  in  Deering  v.  Harvester  Works, 
155  U.  S.  286.  —  Brooks  v.  Sacks,  81  Fed.  403;  26  C.  C.  A.  456. 

The  unsupported  oral  testimony  which  will  warrant  a  finding  of  prior 
use,  should  be  clear  and  satisfactory.  It  is  also  open  to  suspicion.  It  ought 
to  be  sufficient  to  establish  such  a  use  beyond  a  reasonable  doubt.  —  Mast 
v.  Dempster,  82  Fed.  327;  27  C.  C.  A.  191. 

Barbed  Wire  Pat.  143  U.  S.  275;    Deering  v.  Harvester,  155  U.  S.  286. 

The  brief  and  fragmentary  testimony  of  the  two  witnesses  is  unpersuasive, 
especially  in  view  of  the  circumstance  that  no  one  whose  business  made 
him  familiar  with  the  chest,  rather  than  its  contents,  was  called.    The  evi- 


114  THE    FIXED    LAW    OF    PATENTS  §74 

dence  of  Meade  indicated  where  the  best  witnesses  on  this  subject  were  to 
be  sought  for,  and  their  non-production  would  seem  to  require  greater  caution 
in  accepting  the  statements  of  others.  —  Acme  v.  Cary,  101  Fed.  269;  41 
C.  C.  A.  338. 

Unsupported  oral  testimony  of  a  prior  use  is  always  open  to  suspicion, 
and  it  cannot  prevail  over  the  legal  presumption  of  validity  which  accom- 
panies the  patent,  unless  it  is  sufficient  to  establish  such  a  use  beyond  a 
reasonable  doubt.  —  National  v.  Interchangeable,  106  Fed.  693 ;  45  C.  C.  A. 
544. 

Mast  v.  Dempster,  82  Fed.  327;  In  re  Barbed-Wire  Patent,  143  U.  S.  275; 
Deering  v.  Harvester,  155  U.  S.  286;  Miller  v.  Handley  (C.  C.)  61  Fed.  100. 

This  (alleged  prior  public  use)  was  more  than  20  years  after  the  event. 
Under  the  circumstances  of  the  case,  this  not  only  throws  the  practical 
burden  on  the  complainant,  but  it  also  requires  that  the  proofs  offered  by 
him  should  be  "  full,  unequivocal,  and  convincing."  The  strictness  with 
which  this  rule  is  applied,  and  the  unwillingness  of  the  courts  to  regard 
unsupported  oral  testimony,  given  after  a  lapse  of  many  years,  as  consti- 
tuting "  full,  unequivocal  and  convincing  "  proof,  are  practically  illustrated 
by  the  Supreme  Court  in  (cases  cited).  —  Swain  v.  Holyoke,  111  Fed.  408; 
49  C.  C.  A.  419. 

Clark  v.  Willimantic,  140  U.  S.  481;  Barbed  Wire  Patent,  143  U.  S.  275;  Mor- 
gan v.  Daniels,  153  U.  S.  120;  Deering  v.  Harvester,  155  U.  S.  286;  Brooks  v. 
Sacks,  81  Fed.  403. 

He  failed  to  so  describe  the  said  apparatus  that  this  court  can  determine 
whether  they  did  in  fact  embody  in  structure  and  practical  operation  the 
specific  form  of  apparatus  used  by  the  defendant.  Such  evidence,  under 
the  familiar  rule,  called  either  for  corroboration  or  for  some  explanation 
why  corroboration  was  impossible.  —  Westinghouse  v.  Catskill,  121  Fed.  831 ; 
58  C.  C.  A.  167. 

Testimony  that  something  occurred  "  about  a  month  "  preceding  a  day 
unestablished,  except  by  the  unsupported  recollection  of  an  interested 
witness  twelve  years  after,  is  too  indefinite  and  uncertain  to  be  accepted 
as  establishing  a  five  days'  anticipation  of  a  patent.  —  Bettendorf  v.  Little, 
123  Fed.  433;  59  C.  C.  A.  473. 

Clark  v.  Willimantic,  140  U.  S.  481;  Brooks  v.  Sacks,  81  Fed.  403;  Westing- 
house  v.  Saranac,  108  Fed.  221. 

Courts  have  frequently  taken  the  ground  that  where  a  long  time  has 
elapsed  since  the  alleged  use,  and  the  fact  depends  upon  the  fading  recol- 
lection of  a  single  witness,  that  an  exhibit  of  the  device  or  thing  actually 
used  must  accompany  the  affidavit.  There  is,  however,  no  hard  and  fast 
rule  as  to  this.  In  this,  as  in  other  cases,  the  weight  and  effect  of  testimony 
must  be  passed  upon  and  a  conclusion  as  to  the  existence  of  an  alleged 
prior  use  will  be  reached  if  the  evidence  thereof  is  clear  and  satisfactory 
to  the  judicial  mind.  —  Sipp  v.  Atwood-Morrison,  142  Fed.  149;  73  C.  C.  A. 
367. 

In  order  to  invalidate  a  patent  by  oral  testimony  of  prior  invention,  it 
must  be  such  as  to  convince  one  bevond  a  reasonable  doubt  of  that  fact.  — 
Buser  v.  Novelty,  151  Fed.  478;  81  C  C.  A.  16. 

Barbed  Wire  Case,  143  U.  S.  275;  American  v.  Weston.  59  Fed.  147;  Columbus 
v.  Standard,  148  Fed.  622. 


§§75-76  ANTICIPATION  115 

The  anticipation  relied  upon  was  the  oral  testimony  of  one  witness  whose 
testimony  was  collaterally  but  not  directly  supported.  In  holding  such 
testimony  sufficient  to  anticipate,  the  court  said :  we  are  clearly  of  the  opin- 
ion that  such  a  rejection  (i.  e.  of  his  testimony)  would  be  unjustifiable  for 
the  following  reasons:  (1)  the  witness  occupies  an  important  position  in 
which  mendacity  would  not  be  countenanced,  and  there  is  no  stain  upon 
his  character.  (2)  He  is  in  the  prime  of  life,  of  sound  mind  and  memory, 
and  therefore  likely  to  remember  the  important  details  in  a  business  in 
which  he  has  been  engaged  for  over  20  years.  (3)  He  was  a  disinterested 
witness,  and  when  he  imparted  his  knowledge  of  the  prior  use,  he  did  not 
know  of  the  pendency  of  this  action.  (4)  In  view  of  the  undisputed  prior  use 
of  the  illusion  for  a  very  analogous  use,  the  use  he  describes  seems  the  natu- 
ral thing  to  have  done.  (5)  This  is  not  the  case,  which  so  frequently  occurs, 
where  a  witness,  having  no  knowledge  of  the  art  in  question,  testifies  as 
to  the  minute  details  of  a  complicated  machine  or  a  complex  chemical  process 
which  he  saw  years  before.  We  are  now  dealing  with  a  witness  concededly 
familiar  with  the  art,  who  narrates  acts  of  his  own,  so  simple  in  character 
that  he  can  hardly  be  mistaken  regarding  them.  (6)  He  is  corroborated  by  a 
number  of  witnesses  whose  testimony  though  relating  to  different  instances, 
is  substantially  to  the  same  effect.  (7)  His  inability  to  remember  the  rela- 
tive fineness  of  the  illusion  as  compared  with  the  weave  of  the  exhibit  in 
suit,  does  not  militate  against  his  truthfulness.  —  National  v.  Stolts,  157 
Fed.  392;  85  C.  C.  A.  300. 


§  75.     Evidence  of  —  Prior  Patent. 

Every  invention  disclosed  in  a  patent,  and  not  claimed,  is  dedicated  to 
the  public,  and  no  one  may  thereafter  appropriate  it.  It  becomes  thence- 
forth as  much  a  part  of  the  art  as  does  the  invention  disclosed  in  the  same 
patent  and  also  claimed  therein.  The  question  whether  an  individual  is 
or  is  not,  an  original  and  first  inventor  and  discoverer,  can  only  be  deter- 
mined by  comparing  what  he  did  or  discovered  with  that  body  of  informa- 
tion upon  the  subject  with  which  he  and  all  the  world  are  chargeable,  and 
which  is  called  the  "  state  of  the  art."  —  Saunders  v.  Allen,  60  Fed.  610: 
9  C.  C.  A.  157. 


§  76.     Evidence  of  —  Rebuttal. 

As  against  the  defense  of  anticipation,  it  is  well  settled  a  patentee  may 
show,  if  he  can,  the  fact  of  invention  by  drawings,  sketches,  models,  or  any 
other  competent  proof.  —  Von  Schmidt  v.  Bowers,  80  Fed.  121 ;  25  C.  C.  A. 
323. 

Walk.  Pat.  Sec.  70;  Loom  Co.  v.  Higgins,  105  U.  S.  594;  Bates  v.  Coe,  98  U.  S. 
34;    Smith  v.  Vulcanite,  92  U.  S.  486;   Apparatus  Co.  v.  Woerle,  29  Fed.  451. 

To  avoid  the  defense  which  this  design  patent  establishes,  it  is  necessary 
for  complainant  to  show  that  his  invention  antedates  the  date  of  his  appli- 
cation by  several  months.  The  burden  of  proving  this  is  upon  complainant. 
—  Lein  v.  Myers,  105  Fed.  962;  45  C.  C.  A.  148. 

That  the  proof  to  anticipate  an  anticipation  must  be  clear  and  con- 
vincing, see  Westinghouse  v.  Catskill,  121  Fed.  831 ;  58  C.  C.  A.  167. 

For  a  general  discussion  of  the  character  of  proofs  necessary  to  overcome 
substantial  evidence  of  anticipation,  see  with  authorities  Westinghouse  v. 
Stanley,  133  Fed.  167;  68  C.  C.  A.  523. 


116  THE   FIXED   LAW   OF   PATENTS  §77 

§  77.     Evidence  of  —  Miscellaneous  Holdings. 

Proof  of  such  foreign  manufacture  and  use,  if  known  to  the  applicant  for 
a  patent,  may  be  evidence  tending  to  show  that  he  is  not  the  inventor  of 
the  alleged  improvement;  but  it  is  not  sufficient  to  supersede  the  patent 
if  he  did  not  borrow  his  supposed  invention  from  that  source,  unless  the 
foreign  inventor  obtained  a  patent  for  his  improvement,  or  the  same  was 
described  in  some  printed  publication.  —  Roemer  v.  Simon,  95  U.  S.  214; 
24  L.  Ed.  384. 

It  is,  therefore,  impossible  to  say  that  the  sulphuric  acid  process  was  a 
known  equivalent  at  the  time.  It  is  easy  now,  after  the  event,  for  scientific 
men  to  say,  with  the  knowledge  of  today,  that  the  thing  was  obvious.  But 
the  crucial  facts  contradict  the  assumption.  —  Cochrane  v.  Badische,  111 
U.  S.  293;  28  L.  Ed.  433;  4  S.  Ct.  455. 

Anticipation  is  a  question  of  fact,  and  the  burden  of  establishing  it  is  on 
the  appellant.  The  patent  bears  a  presumption  of  novelty  and  invention, 
and  the  lower  courts,  having  passed  on  the  evidence,  found  against  appel- 
lant's construction.  Such  united  judgment  this  court  accepts  unless  there 
is  a  clear  showing  to  the  contrary.  —  Busch  v.  Jones,  184  U.  S.  598 ;  46  L.  Ed. 
707;  22  S.  Ct.  511. 

Brainard  v.  Buck,  184  U.  S.  99. 

During  a  quarter  of  a  century,  the  scientific  world  was  struggling  with  the 
problem  and  could  not  solve  it ;  and  yet,  if  the  claim  asserted  be  well  founded, 
it  had  already  been  solved,  and  the  discoverer  had  made  public  demon- 
stration of  it  in  the  commercial  metropolis  of  the  Union;  the  scientific 
world,  however,  and  the  public  generally  remaining  in  total  ignorance  of 
it.  How  he  could  thus  hide  his  light  under  a  bushel  passes  comprehension. 
The  mind  cannot  readily  yield  assent  to  the  assertion  of  a  claim  under  such 
circumstances,  and  when  it  is  supported  solely  by  ex  parte  evidence.  — 
Electric  v.  Edison,  61  Fed.  834;  10  C.  C.  A.  106. 

There  was  no  attempt  to  secure  the  protection  of  the  law  for  an  invention 
that,  had  it  been  known  would  have  startled  the  world  and  made  him  a  mil- 
lionaire. That  he  should  have  been  so  careful  to  secure  his  rights  with 
respect  to  trifling  matters,  and  evidence  such  utter  disregard  of  his  interests 
in  a  matter  of  great  moment  challenges  belief.  This  renders  the  more  im- 
probable the  story  of  his  invention.  —  Electric  v.  Edison,  61  Fed.  834;  10 
C.  C.  A.  106. 

Telephone  Cases,  126  U.  S.  556;   Barbed  Wire  Patent,  143  U.  S.  275. 

The  positive  testimony  of  several  witnesses  produced  on  the  trial  is  cor- 
roborated by  the  actual  presence  of  the  machine  in  court,  and  yet  the  testi- 
mony was  apparently  rejected  on  the  ground  that  if  Brown,  who  was  man- 
ufacturing corn-planters,  and  who  was  in  the  business  of  obtaining  patents 
on  similar  machinery,  had  constructed  this  machine,  he  would  have  ap- 
plied fqr  a  patent  and  continued  to  manufacture  the  machine.  Such  a 
reason  might  be  sufficient  if  the  testimony  were  doubtful  or  conflicting.  If 
the  evidence  on  the  question  of  anticipation  were  conflicting  or  doubtful 
then,  no  doubt,  the  circumstance  that  Brown  had  never  applied  for  a  patent 
or  continued  the  manufacture  of  the  machine,  might  be  allowed  to  turn 
the  scale.  —  Parlin  v.  Moline,  89  Fed.  329;  32  C.  C.  A.  221. 

From  the  similarity  of  the  two  patents,  it  seemed  wellnigh  manifest 
that  the  French  patent  had  been  read  by  the  patentee,  who  was  urged 


§78  ANTICIPATION  117 

by  the  first  patentee  of  the  patent  in  suit  to  invent  an  economical  method 
of  repairing  asphalt  pavements.  —  U.  S.  v.  Standard,  95  Fed.  137;  37  C.  C.  A. 
28. 

Note:  This  is  an  excellent  illustration  of  the  way  in  which  a  court  may 
be  mistaken  as  to  conclusions  inferentially  drawn  from  the  record.  As  a 
matter  of  fact,  (the  writer  having  prepared  the  defense  in  this  case),  the 
French  patent  was  not  only  unknown  to  the  patentee,  but  was  absolutely 
unknown  to  the  American  art.  The  French  patent  to  Crochet  had  been 
misclassified  in  the  patent  office  and  was  discovered  only  after  three  searches 
had  been  made  and  then  almost  accidentally,  among  the  classes  relating 
to  stuccoes  and  similar  objects  made  from  plaster  and  cements.  The  point 
to  be  observed  is  that  an  inference  of  this  character  is  generally  unsafe; 
and  when  allowed  to  turn  the  weight  of  evidence,  when  a  question  is  in 
doubt,  renders  the  decision  of  no  more  value  than  the  inference  itself. 

It  will  therefore  be  observed  that,  while  the  Cleveland  Company  is  now 
denying  the  priority  of  the  Hebbard  use,  it  formerly  asserted  such  priority 
solemnly  and  repeatedly,  by  declarations  of  record,  by  offering  evidence 
in  support  thereof,  and  by  the  earnest  arguments  of  its  counsel,  in  a  suit 
involving  substantially  the  same  question  as  is  now  presented.  It  may  be 
admitted  that  no  estoppel  is  made  out  by  the  foregoing  facts,  but  we  can- 
not agree  that  they  should  have  no  influence  upon  the  burden  or  degree  of 
proof  required  of  the  defendant  in  the  present  case.  At  the  least,  they  called 
upon  the  Cleveland  Company  for  a  satisfactory  explanation  why  witnesses 
whom  it  formerly  relied  upon  as  truthful  and  accurate  were  now  challenged 
as  untrustworthy  and  not  to  be  believed.  In  the  absence  of  such  explana- 
tion, we  think  that  the  court  should  not  have  treated  the  facts  referred 
to  as  if  they  involved  merely  some  unimportant  inconsistency  between 
the  position  taken  then  and  the  position  taken  now  by  the  Cleveland  Com- 
pany. It  does  not  agree  with  our  sense  of  fair  dealing  that  in  one  juris- 
diction a  party  should  succeed  by  upholding  the  truthfulness  and  reliability 
of  witnesses,  and  should  thereafter  attack  the  same  witnesses  in  another 
jurisdiction  as  persons  not  credible,  merely  because  the  exigencies  of  his 
case  require  a  change  of  attitude.  We  do  not  deny  that  such  change  is  per- 
missible where  the  element  of  estoppel  or  other  sufficient  objection  does  not 
exist,  but  to  treat  the  change,  when  no  satisfactory  explanation  has  been 
offered,  as  without  influence  upon  the  burden  or  the  degree  of  proof,  seems 
to  us  to  be  going  too  far.  —  Empire  v.  Cleveland,  102  Fed.  354;  42  C.  C.  A. 
393. 

The  courts  uniformly  require  strict  and  convincing  proof  of  a  prior  use 
not  thus  set  up  for  the  purpose  of  defeating  a  patent,  and  especially  when 
the  invention  has  been  a  long  time  in  general  use,  and  has  several  times 
been  through  the  ordeal  of  litigation.  —  Loew  v.  German-American,  107 
Fed.  949;  47  C  C.  A.  94. 


§  78.     Experiment. 

It  is  freely  admitted  that  the  patent  of  an  originator  of  a  complete  and 
successful  invention  cannot  be  avoided  by  proof  of  any  number  of  incom- 
plete and  imperfect  experiments  made  by  others  at  an  earlier  date.  This  is 
true,  though  the  experimenters  may  have  had  the  idea  of  the  invention  and 
may  have  made  partially  successful  efforts  to  embody  it  in  a  practical  form. 
And  though  this  doctrine  has  been  more  frequently  asserted  when 
patents  for  machines  have  been  under  consideration,  we  see  no  reason 
why  it  should  not  be  applied  in  cases  arising  under  patents  for  chemical 
products.  —  American  v.  Fiber,  90  U.  S.  566;  23  L.  Ed.  31. 


118  THE    FIXED    LAW    OF    PATENTS  §79 

We  are  satisfied  Smith's  invention  did  not  anticipate  Reynolds'.  He  and 
Reynolds  had  conferences  on  the  subject  of  their  work,  and  Smith  sketched 
something,  but  whatever  it  was  no  one  can  tell;  the  sketches  were  evi- 
dently considered  unimportant,  for  they  were  not  even  preserved.  He  had 
ideas  on  this  subject,  but  he  certainly  had  not  perfected  such  invention. 
Reynolds'  conduct  was  not  an  admission  that  he  had.  It  may  be  that  the 
latter  feared  litigation  and  delay  in  the  patent  office,  because  of  something 
Smith  said,  and  for  that  reason  wanted  Smith  to  delay  his  application. 
If  he  induced  such  delay  it  did  not  invalidate  his  patent.  He  was  the  orig- 
inal inventor  and  was  lawfully  entitled  to  the  patent.  His  conduct  was 
not  fraudulent,  either  as  respects  Smith  or  the  public.  —  National  v.  Belcher, 
71  Fed.  876;  18  C.  C.  A.  375. 

Nothing  is  shown  but  occasional,  tentative  experiments  by  the  Farn- 
hams,  made  years  ago  to  meet  their  personal  and  temporary  wants.  Pre- 
cisely what  they  accomplished  is  uncertain;  no  sample  of  their  device 
is  exhibited.  Whatever  it  may  have  been  it  was  never  applied  to  nor  in- 
tended for  the  public  use;  it  was  a  mere  makeshift  for  a  temporary  purpose, 
which  disappeared  with  the  occasion  that  called  for  it,  never  known  to 
anybody  but  the  Farnhams,  and  now  is  almost  forgotten  by  them.  —  Schenck 
v.  Diamond,  77  Fed.  208;  23  C.  C.  A.  122. 

Thus  the  respondent's  patent  points  out,  on  mathematical  principles, 
exactly  what  was  required  to  make  a  last  operative.  The  result  is  that, 
so  far  as  claim  2  is  concerned,  the  patent  in  suit  accomplished  only  a  crude 
experiment,  without  practical  success.  As  the  latter  was  reached  in  the 
respondent's  last,  the  complainant  is  not  entitled  to  stand  in  its  way.  — 
Miller  v.  Mawhinney,  105  Fed.  523;  44  C.  C.  A.  581. 

For  nearly  20  years  it  remained  nothing  but  an  ambiguous  description 
of  incomprehensible  drawings.  It  emerged  from  oblivion  solely  to  meet 
the  exigencies  of  this  litigation.  The  inquiry  is  pertinent,  why  was  it  that 
this  machine  was  permitted  to  remain  unused?  Since  the  success  of  the 
device  of  the  patent  in  suit  every  effort  has  been  made  by  infringers  to 
evade  it  by  introducing  specious  changes  of  form,  and  yet,  if  we  are  to 
accept  the  contention  of  appellant,  there  is  an  operative  machine  in  exist- 
ence doing  the  work  as  well  as  the  machine  of  the  patent  in  suit  and  free 
to  anyone  who  desires  to  use  it.  Is  not  the  presumption  almost  conclusive 
that  it  was  not  used  because  it  was  not  usable?  —  Cimiotti  v.  American,  115 
Fed.  498;  53  C.  C.  A.  230. 

Considering  this  patent  as  an  alleged  limiting  or  anticipating  document, 
what  would  a  person  skilled  in  the  art  of  barrel  making  produce  from  in- 
specting the  drawings  of  the  patent  and  following  it?  Nothing  but  a  tight, 
unventilated  barrel,  with  a  cylindrical  center  and  cones  at  the  ends.  For 
nearly  30  years  it  had  been  on  the  public  record  without  producing  any 
effect  on  the  art  or  trade  of  barrel  making.  It  cannot  be  said  that  a  patent 
for  a  device  which  fails  to  accomplish  the  desired  end  is  an  anticipation 
of  one  which  successfully  accomplishes  it.  —  Farmers'  v.  Spruks,  127  Fed. 
691 ;  62  C.  C.  A.  447. 

Note:  This  and  other  similar  holdings  are  in  absolute  contradiction  of 
the  rule  that  a  mere  paper  patent,  if  it  discloses  the  principle,  anticipates. 
It  is,  to  my  mind,  an  approximation  to  the  proper  rule. 

§  79.     Foreign  Invention. 

That  testimony  of  a  witness  that  he  had  seen  the  device  used  abroad, 
and  that  the  same  had  been  imported  along  with  chests  of   tea  ever  since 


§§80-82  ANTICIPATION  119 

he  had  known  of  China  teas,  is  not  sufficient  to  defeat  a  patent  through 
public  use  by  importation,  see  Acme  v.  Cary,  101  Fed.  269;  41  C.  C.  A.  338. 

Much  time  and  space  have  been  devoted  to  an  effort  to  establish  "  prior 
use  "  in  Germany.  Since  such  prior  use  if  established,  would  be  no  defense, 
under  sec.  4923,  it  is  difficult  to  understand  why  the  record  is  thus  encum- 
bered. —  Badische  v.  Kalle,  104  Fed.  802;  44  C.  C.  A.  201. 

There  is  no  proof  which  would  warrant  a  conclusion  that  the  patentee 
at  the  time  of  his  application  did  not  believe  himself  to  be  the  original 
and  first  inventor  and  discoverer.  Therefore,  under  sec.  4923,  testimony 
tending  to  show  knowledge  or  use  in  a  foreign  country  need  not  be  discussed. 
—  Badische  v.  Kalle,  104  Fed.  802;  44  C.  C.  A.  201. 

The  French  machine,  of  which  the  machine  of  the  patent  was  a  close 
copy,  was  imported  a  year  and  a  half  prior  to  the  filing  of  the  patent  appli- 
cation. No  proof  was  offered  to  carry  the  date  of  invention  back  of  the 
date  of  filing.  The  patentee  made  machines,  prior  to  his  application,  which 
were  copies  of  the  French  machine.  Held:  Anticipation.  —  Stuart  v.  Auger, 
149  Fed.  748;  79  C.  C.  A.  60. 

§  8o.     Foreign  Patent  or  Publication  —  Burden  of  Proof. 

One  of  the  joint  inventors  had  taken  out  foreign  patents  on  the  same 
invention.  Held:  Upon  these  patents  being  proved  by  the  defendant, 
the  burden  of  proof  was  cast  upon  the  complainant  to  show  that  the  joint 
inventors  were  the  earlier  inventors.  —  De  Laval  v.  Vermont,  135  Fed.  772; 
68  C.  C.  A.  474. 

The  burden  was  on  appellant  to  establish  that  he  invented  his  device 
prior  to  the  date  of  issuance  of  the  foreign  patent,  and  that  beyond  a  rea- 
sonable doubt.  It  is  well  settled  that,  if  a  defendant  seeks  to  invalidate 
the  patent  in  suit  by  showing,  by  oral  testimony,  prior  invention,  the  proof 
must  be  clear,  satisfactory,  and  beyond  a  reasonable  doubt.  Barbed  Wire 
Case,  143  II.  S.  275;  American  v.  Weston,  59  Fed.  147.  It  is  also  the  law 
that,  if  a  plaintiff  seeks  to  maintain  the  patent  in  suit  by  showing  by  oral 
testimony  invention  prior  to  a  patent  which  anticipates  it  and  would  other- 
wise invalidate  it,  the  proof  must  be  of  the  same  character.  —  Columbus  v. 
Standard,  148  Fed.  622;  78  C.  C.  A.  394. 

Thayer  v.  Hart,  20  Fed.  693. 

§  8i.     Foreign  Patent  or  Publication  —  Date  of. 

But  in  order  that  the  foreign  patent  may  invalidate  the  patent  in  suit, 
it  is  not  sufficient  that  it  antedates  that  patent.  If,  notwithstanding  such 
antedating,  the  patentee  invented  his  device  prior  to  the  date  of  the  foreign 
patent,  then  his  patent  is  not  invalidated  thereby.  —  Columbus  v.  Standard, 
148  Fed.  622;   78  C.  C.  A.  394. 

Seymour  v.  Osborne,  11  Wall.  555. 

§  82.     Foreign  Patent  or  Publication  —  Invention. 

The  act  of  Congress  provides  that  when  the  patentee  believes  himself 
to  be  the  first  inventor,  a  previous  discovery  in  a  foreign  country  shall 
not  render  his  patent  void,  unless  such  discovery,  or  some  substantial  part 
of  it,  had  been  before  patented  or  described  in  a  printed  publication.  — 
O'Reilly  v.  Morse,  15  How.  62;   14  L.  Ed.  601. 


120  THE    FIXED    LAW    OF    PATENTS  §  82 

This  is  not  the  case  of  an  interference  in  the  patent  office,  or  of  a  contest 
in  the  courts  between  two  original  inventors  for  priority  of  invention,  in 
which  it  is  the  established  rule  under  Sec.  4923,  Rev.  St.  U.  S.,  that  an 
original  inventor,  who  applies  for  letters  patent  of  the  United  States,  cannot 
be  deprived  of  his  right  to  a  patent  by  the  fact  that  an  inventor  had  made 
in  a  foreign  country,  at  a  prior  date,  the  same  original  invention,  but  which 
had  not  been  described  at  a  prior  date  in  a  patent  or  in  a  printed  publication. 
This  question  then  arises:  Can  an  infringer  defeat  letters  patent  of  the 
United  States  to  an  original  inventor  in  'a  foreign  country  by  proof  that 
a  few  days  before  the  date  of  a  prior  foreign  patent  to  the  same  inventor, 
but  not  before  the  date  of  the  application  for  such  patent,  and  less  than 
two  years  before  the  date  of  the  application  for  a  United  States  patent, 
the  invention  was  used  in  this  country  by  a  person  who  did  not  invent  it? 

It  is  contended  by  the  defendant  that,  under  section  4886  of  the  Revised 
Statutes,  the  Rawson  patent  was  void,  on  the  ground  that  the  improvement 
was  known  and  used  in  this  country  before  the  invention  thereof,  because 
the  actual  inventor  is  not  permitted  to  show  that  the  date  of  his  invention 
was  prior  to  the  date  of  his  foreign  patent. 

The  section  gives  to  an  inventor,  foreign  or  domestic,  the  right  to  a  patent 
unless  certain  conditions  existed,  neither  of  which  in  fact  existed  in  this 
case.  The  Rawson  invention  had  not  been  patented  or  described  in  any 
country  before  the  patentees  invented  it,  had  not  been  in  public  use  or  on 
sale  for  more  than  two  years  prior  to  their  application,  had  not  been  aban- 
doned, and  had  not  been  known  or  used  in  this  country  by  anyone  before 
the  date  of  the  invention.  If  no  other  disabilities  prevent,  an  inventor 
may  obtain  a  patent  of  the  United  States  for  an  invention  made  and  pre- 
viously patented  in  a  foreign  country,  unless  the  same  has  been  introduced 
into  public  use  in  the  United  States  for  more  than  two  years  prior  to  the 
application  (section  4887),  which  is,  in  substance,  the  qualification  which 
exists  in  section  4886,  as  applicable  to  any  invention;  and  it  is  not  neces- 
sary that  the  introduction  shall  have  been  made  with  the  consent  of  the 
inventor.  It  is,  however,  said  that  the  section  requires  that  the  invention 
must  not  have  been  known  or  used  in  this  country  before  the  date  of  the 
invention,  and  that  the  date  of  the  publication  of  the  foreign  Rawson  patent 
is  the  date  de  jure.  The  section  applies  to  all  inventions,  irrespective  of 
the  place  of  their  origin,  and  the  term  "  date  of  invention  "  is  used  without 
discrimination  between  classes  of  inventions.  The  theory  of  the  defendant 
is  that,  as  to  the  domestic  inventor,  knowledge  in  this  country  must  pre- 
cede the  actual  date  of  the  invention,  but  that,  as  to  a  foreign  inventor, 
knowledge  in  this  country  need  only  precede  the  date  of  the  publication 
of  his  foreign  patent.  We  are  of  opinion  that  the  language  of  the  section 
refers  to  the  actual,  and  not  an  artificial  date,  and  that,  where  there  is  no 
contest  between  inventors,  if  knowledge  in  this  country  did  not  precede 
the  actual  date  of  the  invention,  unless  it  had  been  used  in  this  country 
for  two  years  before  the  application,  the  inventor  was  entitled  to  a  patent. 
This  question  was  before  Judge  Dallas  in  Hanifen  v.  Godshalk  Co.,  78  Fed. 
811,  and  before  Judge  Townsend  in  Hanifen  v.  Price,  96  Fed.  435,  whose 
opinions  are  in  conformity  with  those  herein  expressed.  Our  conclusion 
is  that,  as  against  an  infringer,  the  patentee  in  a  United  States  patent  for 
an  invention  previously  made  by  him  and  patented  in  a  foreign  country 
may,  to  avoid  alleged  use  in  this  country  by  an  infringer  before  the  date 
of  the  foreign  patent,  show  the  date  of  the  application  for  the  foreign  patent, 
for  the  purpose  of  showing  the  actual  date  of  his  invention  in  a  foreign 
country.  —  Welsbach  v.  American,  98  Fed.  613;  39  C.  C.  A.  185. 

Ireson  v.  Pierce,  39  Fed.  797;  Roemer  v.  Simon,  95  U.  S.  214;  Elizabeth  v. 
Pavement,  97  U.  S.  126;  Lander  v.  Cowles,  16  O.  G.  405;  Andrews  v.  Hovev 
123  U.  S.  267;  id.  124  U.  S.  694. 


§§83-85  ANTICIPATION  121 

§  83.     Foreign  Patent  or  Publication  —  Publication  —  Date. 

A  foreign  patent,  or  other  foreign  printed  publication  describing  an  in- 
vention, is  no  defense  to  a  suit  upon  a  patent  of  the  United  States,  unless 
published  anterior  to  the  making  of  the  invention  or  discovery  secured  by 
the  latter,  provided  that  the  American  patentee,  at  the  time  of  mating 
application  for  his  patent,  believed  himself  to  be  the  first  inventor  or  dis- 
coverer of  the  thing  patented.  He  is  obliged  to  make  oath  to  such  belief 
when  he  applies  for  his  patent ;  and  it  will  be  presumed  that  such  was  his 
belief  until  the  contrary  is  proven.  —  Elizabeth  v.  American,  97  U.  S.  126; 
24  L.  Ed.  1000. 

Act  1836,  55  S.  at  L.  117,7,  15;  Act  1870, 16  S.  at  L.  198,  24,  25,  61;  R.  S,  4886, 
4887,  4920.    Curt  Pat.  Sec.  375,  375a. 

§  84.     Foreign  Patent  or  Publication  —  Same  Inventor. 

Under  section  4887,  an  existing  foreign  patent  is  not  a  bar  to  a  subse- 
quent United  States  patent  for  the  same  invention  to  the  same  inventor, 
unless  the  invention  has  been  in  public  use  in  this  country  for  two  years 
prior  to  the  application.  —  Electric  v.  Brush,  52  Fed.  130;  2  C.  C.  A.  682. 

§  85.     Foreign  Patent  or  Publication  —  Sufficiency. 

If  a  foreign  invention  had  been  printed  or  patented,  it  was  already  given 
to  the  world  and  open  to  the  people  of  this  country,  as  well  as  of  others 
upon  reasonable  inquiry.  They  would  therefore,  derive  no  advantage 
from  the  (this)  invention  here.  It  would  confer  no  benefit  upon  the  com- 
munity, and  the  inventor  therefore,  is  not  considered  to  be  entitled  to  the 
reward.  But  if  the  foreign  discovery  is  not  patented,  nor  described  in  any 
printed  publication,  it  might  be  known  and  used  in  remote  places  for  ages, 
and  the  people  of  this  country  be  unable  to  profit  by  it.  The  means  of 
obtaining  knowledge  would  not  be  within  their  reach,  and  so  far  as  their 
interest  is  concerned,  it  would  be  the  same  thing  as  if  the  improvement 
had  not  been  discovered.  It  is  the  inventor  here  that  brings  it  to  them 
and  places  it  in  their  possession,  and  as  he  does  this  by  the  effort  of  his  own 
genius,  the  law  regards  him  as  the  first  and  original  inventor,  and  protects 
his  patent,  although  the  improvement  had  in  fact  been  invented  before, 
and  used  by  others.  —  Gayler  v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

The  statutes  authorize  the  granting  of  patents  only  for  such  inventions  as 
have  not  been  patented  or  described  in  any  printed  publication  in  this  or 
any  foreign  country  before  the  applicant's  embodiment  of  his  own  concep- 
tion. It  may  be  a  hardship  to  meritorious  inventors,  who,  at  the  expendi- 
ture of  much  time  and  thought,  have  hit  upon  some  ingenious  combination 
of  mechanical  devices,  which  for  aught  they  know,  is  entirely  novel,  to  find 
that,  in  some  remote  time  and  place,  someone  else,  of  whom  they  never 
heard,  had  published  to  the  world,  in  a  patent  or  a  printed  publication, 
a  full  description  of  the  very  combination  over  which  they  have  been  puzzling; 
but  in  such  cases  the  act,  none  the  less,  refuses  them  a  patent.  —  New 
Departure  v.  Bevin,  73  Fed.  469;  19  C.  C.  A.  534. 

It  is  a  well  settled  and  familiar  doctrine  that  an  invention  patented  here 
is  not  to  be  defeated  by  a  prior  foreign  patent  unless  its  descriptions  or 
drawings  contain  or  exhibit  a  substantial  representation  of  the  patented 
invention  in  such  full,  clear,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  without  the  necessity 
of  making  experiments,  to  practise  the  invention.  —  Hanifen  v.  Godshalk, 
S4  Fed.  649;  28  C.  C.  A.  507. 

Seymour  v.  Osborne,  11  Wall.  516;  Cahill  v.  Brown,  Fed.  Cas.  2,291;  Rob. 
Pat.  sec.  329. 


122  THE    FIXED    LAW    OF    PATENTS  §  86 

Great  stress  is  laid  upon  the  English  patent  to  Rose  as  embodying  antici- 
patory features,  but  the  Rose  device  did  not  do  the  thing  that  this  device 
does.  It  did  not  undertake  to  do  it,  and,  so  far  as  appears,  no  one  ever 
thought  of  its  being  applied  to  such  a  situation,  and  doing  the  work  in  the 
manner  in  which  the  device  in  question  does  it.  Quite  likely  the  Rose  patent 
had  some  of  the  ideas  involved  in  the  patent  in  question,  —  as,  for  instance, 
the  idea  of  radiating  heat  by  means  of  coils  of  wire,  —  but  it  did  not  de- 
scribe, or  even  suggest,  the  distribution  of  heat,  either  in  detail  or  in  sub- 
stance, in  the  manner  and  by  the  means  emplo}'ed  in  the  complainants' 
device.  As  was  said  by  the  circuit  court,  under  the  rules  applying  to  foreign 
patents  it  cannot  be  viewed  as  anticipating  the  McElroy  invention.  —  Con- 
solidated v.  West  End,  85  Fed.  662;  29  C.  C.  A.  386. 

That  the  patent  was  allowed  by  the  patentee  to  expire  in  1891  (when 
only  four  years  old)  through  non-payment  of  a  renewal  fee,  required  by 
British  law,  is  cogent  evidence  that  the  patent  was  found  to  be  inoperative 
or  valueless.  —  Streator  v.  Wire-Glass  Co.,  97  Fed.  950;   38  C.  C.  A.  573. 

If  the  light  thrown  by  Nicholl's  provisional  specifications  on  the  art 
30  years  ago  met  the  test  laid  down  by  the  court  in  reference  to  a  prior 
foreign  patent,  that  it  must  be  "  sufficient  to  enable  those  skilled  in  the  art 
to  understand  the  nature  and  operation  of  the  invention,  and  to  carry  it 
into  practical  use,"  and  "  that  it  must  be  an  account  of  a  complete  and 
operative  invention,  capable  of  being  put  into  practical  operation  "  (Sey- 
mour v.  Osborne,  11  Wall.  516)  it  is  inconceivable  that  the  device  suggested 
would  not  have  been  seized  upon  in  the  20  odd  years  ensuing  before  Firm's 
patent,  and  embodied  in  a  practical  press.  The  fact  that  it  did  not  so  in- 
struct press  builders  proves  the  disclosures  were  not  sufficient  to  so  instruct. 

—  Goss  v.  Scott,  110  Fed.  402;  49  C.  C.  A.  97. 

The  Galand  device  complies  fully  and  clearly  with  all  the  requisites  ne- 
cessary to  constitute  a  foreign  anticipation.  Not  only  is  its  essential  prin- 
ciple described  in  his  patent,  but  the  details  are  also  fully  set  out,  and  a 
pistol  constructed  substantially  in  accordance  therewith  has  gone  into  ex- 
tensive use  in  the  French  army.  —  Colt  v.  Wesson,  127  Fed.  333;  62  C.  C.  A. 
167. 

Being  a  foreign  publication,  it  does  not  contain  a  substantial  repre- 
sentation of  the  patent  improvement  in  such  clear  and  exact  terms  as  to 
enable  a  person  skilled  in  the  art  to  construct  and  practise  the  invention. 

—  Kirchberger  v.  American,  128  Fed.  599;  64  C.  C.  A.  107. 

Seymour  v.  Osborne,  11  Wall.  516;  Eames  v.  Andrews,  122  U.  S.  40;  Chase  v. 
Fillebrown,  58  Fed.  374. 

§  86.     "  Infringe-if-Later  "  Test. 

That  which  infringes  if  later  would  anticipate  if  earlier.  —  Knapp  v. 
Morss,  150  U.  S.  221 ;  37  L.  Ed.  1059;  14  S.  Ct.  81. 

Peters  v.  Active,  129  U.  S.  530;  Thatcher  v.  Burtis,  121  U.  S.  286;  Grant  v. 
Walter,  148  U.  S.  547;  Gordon  v.  Warder,  150  U.  S.  47. 

That  which  infringes  if  later  anticipates  if  earlier.  —  Miller  v.  Eagle  Mfg. 
Co.  151  U.  S.  186;  38  L.  Ed.  121 ;  14  S.  Ct.  310. 

If  one  invention  infringes  another  if  later,  it  anticipates  it  if  earlier.  — 
Wells  v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Peters  v.  Active,  129  U.  S.  530;  Knapp  v.  Morss,  150  U.  S.  221;  Miller  v.  Mfg. 
Co.  151  U.  S.  186. 


§§87-88  ANTICIPATION  123 

If  it  would  infringe,  it  would  anticipate  if  earlier.  —  Eames  v.  Worcester, 
123  Fed.  67;  60  C.  C.  A.  37. 

Miller  v.  Eagle,  151  U.  S.  186. 

A  person  making,  using,  or  selling  the  patented  device  would  infringe, 
and  he  would  not  be  permitted  to  escape  on  the  plea  that  it  was  not  intended 
for  use  on  an  underwaist  or  a  belt  (the  patent  being  for  a  hose  supporter). 
It  follows,  as  a  necessary  corollary,  that  such  a  structure  in  the  prior  art 
will  anticipate  irrespective  of  its  connection,  use  or  lack  of  use.  —  Parra- 
more  v.  Siegel-Cooper,  143  Fed.  516;  74  C.  C.  A.  386. 

Rule  followed  in  Standard  v.  Ramsay,  143  Fed.  972;  75  C.  C.  A.  158. 

We  are  fully  convinced  that  these  motors  if  later  in  time  would  infringe 
the  Eikemeyer  patent;  and,  since  they  were  in  fact  prior  in  the  art,  the 
patent  must  be  held  void  for  lack  of  invention.  —  General  v.  Corliss,  160 
Fed.  672;   87  C.  C.  A.  560. 

§  87.     Inoperative  Device. 

That  this  was  a  comparatively  small  machine  and  used  only  for  applying 
moldings  to  combs  is  not  material.  —  Peters  v.  Active,  129  U.  S.  530;  32 
L.  Ed.  738;  9  S.  Ct.  389. 

Woodbury  v.  Keith,  101  U.  S.  490. 

That  the  fact  that  the  devices  of  the  prior  art  were  not  commercially 
successful  until  after  the  invention  of  the  electric  generator,  does  not  bar 
the  devices  of  the  prior  art  from  anticipating  subsequent  devices  invented 
after  the  generator  invention  made  such  devices  commercially  successful, 
see  Kelly  v.  Springfield,  92  Fed.  614;  34  C.  C.  A.  570. 

That  a  device  which  is  essentially  a  toy,  without  practical  use,  and  not 
known  and  suggesting  the  invention  will  not  be  held  to  anticipate,  see 
Westinghouse  v.  New  England,  110  Fed.  753;  49  C.  C.  A.  151. 

We  are  not  satisfied  that  the  apparatus  is  inoperative,  but  incline  to  the 
opinion  that  the  alleged  defects  are  merely  in  details  of  construction,  which 
would  be  readily  obviated  by  the  skilled  mechanic.  The  presumption 
arising  from  the  grant  of  the  United  States  patent  must  prevail  in  the  ab- 
sence of  proof  to  overthrow  it,  —  Edison  v.  American,  114  Fed.  926;  52 
C.  C.  A.  546. 


§  88     Knowledge. 

The  fact  that  the  inventor  obtained  all  the  assistance  and  information 
possible  from  writings  and  from  persons  skilled  in  the  art,  obtained  the 
best  counsel  obtainable  and  acted  upon  it,  does  not  detract  from  his  in- 
vention. —  O'Reilly  v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

The  fact  that  the  inventor  had  no  prior  knowledge  of  the  anticipating 
patent  may  entitle  him  to  claim  the  quality  of  invention,  but  as  he  is  deemed 
in  a  legal  point  of  view  to  have  had  this  and  all  prior  patents  before  him 
his  invention  rests  upon  a  modification  of  these  too  trivial  to  be  the  subject 
of  serious  consideration.  —  Duer  v.  Corbin,  149  U.  S.  216;  37  L.  Ed.  707; 
13  S.  Ct,  850. 


124  THE   FIXED    LAW   OF   PATENTS  §  89 

That  a  single  instance  incontrovertibly  established  a  prior  knowledge 
and  use  by  a  single  person,  is  sufficient  to  defeat  a  patent,  see  Bannerman  v. 
Sanford,  99  Fed.  294;  39  C.  C.  A.  534. 

Coffin  v.  Ogden,  18  Wall.  124. 

Giving  to  Deprez's  theorem  all  the  value  to  which  it  is  entitled,  its  appli- 
cation by  Tesla  to  the  production  of  a  new,  original  and  most  beneficial 
practical  result  by  new  and  described  means  and  the  use  of  polyphase  alter- 
nating currents,  —  in  brief,  by  the  polyphase  system,  —  and  the  apparatus 
of  Tesla  was  an  invention  of  a  very  high  order.  The  defense  of  non-patent- 
ability was  elaborated  in  the  record  in  the  most  painstaking  manner,  and 
with  abundant  reference  to  statements  and  theories  of  scientists  who  pre- 
ceded Tesla,  and  who  were  trying  to  discover  the  laws  of  a  mysterious  force, 
the  utilization  of  which  is  still  far  from  complete  development.  Each  was 
prospecting  in  a  mine  not  thoroughly  explored,  and  dimly  lighted,  and  each 
produced  something  of  value;  but  the  attempt  to  minimize  Tesla 's  invention 
of  the  method  of  successfully  using  electricity  for  very  important  purposes 
by  means  theretofore  thought  to  be  impracticable  rested  upon  a  very  in- 
adequate foundation.  —  Westinghouse  v.  New  England,  110  Fed.  753; 
49  C.  C.  A.  151. 

There  is  no  evidence  in  the  record  which  indicates  that  Gilmour  obtained 
the  conception  from  Brown  of  fastening  the  two  tables  together.  As  the 
means  for  embodying  this  arrangement  in  the  machine  are  the  essence  of 
the  invention  described  in  the  patent,  and  all  that  was  new  in  the  existing 
state  of  the  art,  we  are  of  opinion  that  the  defense  interposed  was  not  proven. 
Brown  did  not  communicate  anything  new  or  patentable  to  Gilmour.  He 
only  communicated  that  which  was  accessible  to  all  who  might  have  chosen 
to  familiarize  themselves  with  the  prior  art.  —  Lincoln  v.  McWhirter,  142 
Fed.  967;  74  C.  C.  A.  229. 

The  Watts  patent  is  a  design  patent.  It  illustrates  and  describes  an 
interlocking  tile  of  precisely  the  form  of  one  of  the  figures  in  the  patent  in 
suit.  The  tiles  manufactured  under  this  patent  were  of  pottery  ware,  and 
were  used  for  wainscoting.  Watts,  the  inventor,  is  the  owner  of  one-third 
of  the  present  patent.  Furness  (the  inventor  of  the  patent  in  suit)  had  seen 
this  Watts  pottery  tile  before  he  applied  for  his  patent.  It  is  apparent, 
therefore,  that  what  Furness  did  —  and  all  that  he  did  —  was  to  make  the 
Harland  yielding  but  not  interlocking  tile  in  the  form  of  the  Watts  unyield- 
ing and  interlocking  tile.  Was  it  invention  to  apply  the  old  interlocking 
device  to  yielding  tile?  Was  it  invention  to  change  the  material  of  the  old 
interlocking  tile  and  make  it  yielding?  From  whichever  point  of  view  we 
examine  the  present  case  no  patentable  invention  is  to  be  found.  There 
was  no  original  conception  in  applying  the  old  interlocking  device  to  yielding 
tiles.  Conversely,  there  was  no  invention  in  changing  the  material  of  the 
old  interlocking  tiles.  —  New  York  v.  Sierer,  158  Fed.  819;  86  C.  C.  A.  79. 

Aron  v.  Manhattan,  132  U.  S.  90;  Higgin  v.  Murdock,  132  Fed.  810;  General 
v.  Yost,  139  Fed.  568;  Florsheim  v.  Schilling,  137  U.  S.  64;  Phillips  v.  Detroit, 
111  U.  S.  604;  Brown  v.  D.  C.  130  U.  S.  87;  Potts  v.  Creager,  155  U.  S.  605. 


§  89.     Old  Elements  or  Device  —  Different  Uses. 

The  structure  was  not  designed  for  the  same  purpose;  no  person  looking 
at  it  or  using  it  would  understand  that  it  was  to  be  used  in  the  way  the 
device  in  suit  is  used,  and  it  is  not  shown  to  have  been  really  used  and  oper- 
ated in  that  way.  —  Clough  v.  Gilbert,  106  U.  S.  166;  27  L.  Ed.  138;  1  S.  Ct. 
198. 


§§  90-91  ANTICIPATION  125 

With  a  strong  disinclination  to  permit  the  remains  of  old  experiments 
to  destroy  the  pecuniary  value  of  a  patent  for  a  useful  and  successful  in- 
vention, and  remembering  that  the  defendants  must  assume  a  weighty 
burden  of  proof,  I  am  of  the  opinion  that  the  patentee's  invention  has  been 
clearly  proved  to  have  been  anticipated.  —  Brush  v.  Condit,  132  U.  S.  39; 
33  L.  Ed.  251;   10  S.  Ct.  1. 

Coffin  v.  Ogden,  85  U.  S.  120;  Reed  v.  Cutter,  1  Story,  590;  Pickering  v.  McCul- 
lough,  104  U.  S.  310;  Curtis  on  Patents,  sees.  89-92;  Hall  v.  Macneale,  107 
U.  S.  90. 

A  prior  device  which  in  some  degree  performs  the  function  of  the  patent 
in  suit,  but  the  purpose  and  function  of  which  was  wholly  different,  and 
which  in  no  way  pointed  out  the  function  of  the  device  in  suit  cannot  be 
construed  as  an  anticipation.  —  Edison  v.  Electric,  66  Fed.  309;  13  C.  C.  A. 

487. 

The  patent  in  suit  is  for  a  dress  stay.  The  alleged  anticipation  is  a  corset 
patent.  The  two  subject  matters  seem  to  be  essentially  dissimilar.  The 
respective  inventors  were  dealing  with  plainly  distinct  problems.  The 
difficulty  which  the  one  proposed  to  overcome  was  very  different  from  that 
which  the  other  desired  to  surmount.  Their  improvements  were  not  both  for 
use  upon  the  same  article  or  in  the  same  way,  and  the  means  which  they 
severally  employed  were  not,  in  any  admissible  sense,  identical.  —  Lublin 
v.  Stewart,  77  Fed.  303;  23  C.  C.  A.  176. 

Its  (the  Goldie  nail)  use  and  functions  are  different.  It  was  adapted  to 
an  entirely  different  art  from  a  spike.  —  Diamond  v.  Goldie,  84  Fed.  972 ; 
28  C.  C.  A.  589. 

Electric  Co.  v.  LaRue,  139  U.  S.  601;   Potts  v.  Creager,  155  U.  S.  606. 

§  90.     Old  Elements  or  Device  —  Function. 

The  court  did  not  err  in  refusing  the  instruction  that  before  the  invention 
could  be  held  invalid  by  reason  of  a  prior  patent  it  was  not  sufficient  to  find 
one  element  in  one  patent  and  another  in  another.  If  the  patent  had  been 
for  a  combination  of  new  and  old  elements  producing  a  new  result  such 
instructions  might  have  been  correct,  but  as  it  was  merely  a  new  aggre- 
gation of  old  elements  in  which  each  element  performed  its  old  function 
and  no  new  result  was  produced  by  their  combination  the  instruction  was 
properly  refused.  —  Adams  v.  Bellaire,  141  U.  S.  539;  35  L.  Ed.  849;  12 
S.  Ct.  66. 

To  constitute  anticipation  of  a  later  patent  it  is  enough  that  such  con- 
struction had  been  in  well-established  use,  whether  it  originated  in  design 
or  by  accident.  —  National  v.  Quick,  74  Fed.  236;  20  C.  C.  A.  410. 

The  fact  that  the  device  of  the  prior  patent  was  intended  to,  and  will, 
accomplish  more  than  the  device  of  the  patent  in  suit,  does  not  prevent  its 
being  an  anticipation  of  the  latter.  It  is  sufficient  that  in  part  it  was  in- 
tended to,  and  will,  accomplish  the  same  result,  and  that  in  the  same  way. 
—  Columbus  v.  Standard,  148  Fed.  622;  78  C.  C.  A.  394. 

§91.     Old  Elements  or  Device  —  Requiring  Adaptation. 

It  is  not  sufficient  to  constitute  an  anticipation  that  the  device  relied 
upon  might,  by  modification,  be  made  to  accomplish  the  function  performed 
by  the  patent  in  question,  if  it  were  not  designed  by  its  maker  nor  adapted, 
nor  actually  used,  for  the  performance  01  such  functions.  —  Topliff  v.  Topliff, 
145  U.  S.  156;  36  L.  Ed.  658;  12  S.  Ct.  825 


126  THE    FIXED    LAW    OF    PATENTS  §§  92-93 

There  is  generic  sameness,  we  concede,  but  there  are  differences,  and  the 
Patent  Office  and  both  lower  courts  found  novelty  and  invention  in  those 
differences.  —  Busch  v.  Jones,  184  U.  S.  598;  46  L.  Ed.  707;  22  S.  Ct.  511. 

We  are  not  satisfied  from  the  rebuttal  testimony  of  complainant's  expert 
that  it  will  not  flow  in  this  way.  The  most  that  he  says  is  that  the  small 
packing  will  have  to  be  so  large  that  there  would  probably  be  a  waste  of 
oil.  But  that  does  not  eliminate  his  patent  from  the  prior  art.  —  Nathan  v. 
D.  L.  &  W.  157  Fed.  685;  85  C.  C.  A.  453. 

An  alleged  infringer  is  far  from  maintaining  anticipation  by  showing 
what  more  or  less  approximates  the  patented  article,  but  which,  nevertheless, 
requires  to  be  adjusted  so  as  to  accomplish  a  new  purpose  before  it  can 
come  into  the  same  field  with  it.  —  O'Brien  v.  Foster,  159  Fed.  710;  86 
C.  C.  A.  464. 

§  92.     Paper  Patent  —  Insufficient. 

The  contention  that  these  prior  patents  must  be  treated  as  failures  — 
as  mere  paper  patents  of  no  especial  value  —  is  untenable.  "  The  very 
fact  "  of  the  grant  of  a  patent  for  the  process  described,  "  is  some  evidence 
of  its  operativeness,  as  well  as  of  its  utilitv,"  when  introduced  by  wav  of 
anticipation.  —  National  v.  Swift,  104  Fed/87;  43  C.  C.  A.  421. 

On  the  one  hand,  in  Packard  v.  Lacing  Stud  Co.  70  Fed.  66,  we  explained 
why,  under  some  circumstances,  a  prior  device  cannot  be  rejected  as  an 
anticipation,  although  it  has  not  been  perfected  into  a  practical  and  mer- 
chantable machine.  On  the  other  hand,  the  entire  topic  of  inventive 
suggestions  which  have  not  been  put  into  useful  operation,  including  what 
is  known  as  "  paper  patents,"  is  a  difficult  one,  so  that  in  each  case  a  practi- 
cal rule  of  judicial  determination  can  rarely  be  worked  out,  except  by  a  thor- 
ough and  keen  analysis  of  all  the  surrounding  circumstances.  —  Dececo  v. 
Gilchrist,  125  Fed.  293;  60  C.  C.  A.  207. 

Park's  History  of  Medicine  (2d  Ed.)  p.  312. 

In  determining  the  question  of  identity  of  the  inventive  idea,  it  is  not 
a  sufficient  answer  to  say  of  any  alleged  anticipation  that  it  was  a  mere 
paper  patent,  and  that  the  same  had  not  been  operative  or  commercially 
successful;  for  prior  existing  conditions  might  not  have  stimulated  full 
development.  —  Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436. 

In  these  circumstances,  the  rule  frequently  invoked  in  the  case  of  mere 
paper  patents  may  with  much  greater  force  be  applied  to  these  machines, 
which,  even  though  they  may  have  worked  imperfectly,  were  confessedly 
capable  of  a  limited,  successful,  practical  operation.  Where  such  patents, 
or  machines  constructed  under  them,  embody  the  principle  covered  by  a  later 
patent;  the  mere  fact  that  they  are  not  capable  of  successful  practical 
working  because  of  objections  as  to  minor  matters  of  detail  in  construction 
will  not  deprive  them  of  their  effect  as  defenses  where  they  sufficiently 
disclose  the  invention  claimed  in  the  later  patent.  —  Van  Epps  v.  United,  143 
Fed.  869;    75  C.  C.  A.  77. 

Pickering  v.  McCullough,  104  U.  S.  310. 

§  93.     Paper  Patent  —  Sufficient. 

It  may  be  assumed  that  these  were  paper  patents,  not  capable  of  success- 
ful operation.  But  this  does  not  defeat  their  relevancy  as  limitations  upon 
the  scope  of  the  patent  in  suit,  provided  they  sufficiently  embody  the  ele- 


I 


§1  94-95  ANTICIPATION  127 

merits  and  disclose  the  principle  of  operation  of  said  patent.  —  Westinghouse 
v.  Christensen,  128  Fed.  437;  63  C.  C.  A.  179. 

Pickering  v.  Lomax,  104  U.  S.  310;  Packard  v.  Lacing-Stud,  70  Fed.  66; 
Dashiell  v.  Grosvenor,  162  U.  S.  425. 

Under  ordinary  circumstances,  a  patent  which  caused  no  advance  in  the 
art  should  have  small  effect  upon  a  successful  patent  of  20  years  later.  — 
—  Daylight  v.  American,  142  Fed.  454;  73  C.  C.  A.  570. 

The  Healy  device  was  to  some  extent  a  paper  patent,  since  it  never  came 
into  general  or  extensive  use.  Although  issued  about  18  years  prior  to  the 
patent  in  suit,  it  never  seems  to  have  suggested  to  anyone  a  construction 
like  that  of  the  Robins  patent,  which  was  designed  to,  and  does  substantially, 
obviate  all  of  the  disadvantages  of  the  Healy  patent.  —  Robins  v.  American, 
145  Fed.  923;   76  C.  C.  A.  461. 

If  the  new  function  existed  in  the  machines  made  under  the  patent, 
it  was  accidental,  unrecognized  by  the  patentee  and  no  disclosure  thereof 
made  to  the  public.  —  Hillard  v.  Fisher,  159  Fed.  439;  86_C.  C.  A.  469. 

Tilghman  v.  Proctor,  102  U.  S.  711. 

§  94.     Prior  Art  —  Insufficient. 

The  prophetical  suggestions  in  English  patents  of  what  can  be  done, 
when  no  one  has  ever  tested  by  actual  and  hard  experience  and  under  the 
stress  of  complication  the  truth  of  these  suggestions,  or  the  practical  diffi- 
culties in  the  way  of  their  accomplishment,  or  even  whether  the  suggestions 
are  feasible,  do  not  carry  conviction  of  the  truth  of  these  frequent  and 
vague  statements,  and  the  result  which  was  then  reached  is  not  shaken  by 
merely  a  single  sentence  in  the  English  patent.  —  Westinghouse  v.  Great 
Northern,  88  Fed.  258;  31  C.  C.  A.  525. 

A  machine  or  combination  which  is  not  designed  by  its  maker,  nor  actu- 
ally used  nor  apparently  adapted  to  perform  the  function  of  a  patented 
machine,  or  combination,  but  which  is  discovered  in  a  remote  art  and  was 
used  under  radically  different  conditions  to  perform  another  function, 
neither  anticipates  nor  limits  the  scope  of  the  patent.  —  National  v.  Inter- 
changeable, 106  Fed.  693;  45  C.  C.  A.  544. 

Ansonia  v.  Electrical,  144  U.  S.  11;  Topliff  v.  Topliff,  145  U.  S.  156;  Potts  v. 
Creager,  155  U.  S.  597;  Westinghouse  v.  Air-Brake  Co.  (C.  C.)  59  Fed.  581; 
Walk.  Pat.  (2d  Ed.)  p.  54,  sec.  68. 

Where  mechanical  improvements  have  moved  so  fast  as  they  have  in 
the  last  half  century,  great  caution  is  required  in  investigating  alleged 
anticipations  which  date  back  nearly  the  whole  of  that  period:  and,  so  far 
as  they  did  not  go  into  use,  so  there  was  no  practical  exhibition  of  them, 
it  is  often  difficult  to  determine  whether  they  disclosed  such  full,  clear, 
and  exact  terms  as  are  necessary  to  anticipate.  —  Draper  v.  American,  161 
Fed.  728;  88  C.  C.  A.  588. 

§  95.     Prior  Art  —  Sufficient. 

Devices,  though  not  claimed  to  fully  anticipate  the  patent  in  suit,  are 
important  in  their  bearing  upon  the  construction  of  this  patent  and  upon 
the  alleged  infringement  by  the  defendants.  —  Deering  v.  Winona,  155  U.  S. 
286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

We  must  presume  the  patentee  was  fully  informed  of  everything  which 
preceded  him,  whether  such  were  the  actual  fact  or  not.    There  is  no  doubt 


128  THE   FIXED   LAW   OF   PATENTS  §§96-97 

that  the  patent  laws  sometimes  fail  to  do  justice  to  an  individual  who  may, 
with  the  light  he  had  before  him,  have  exhibited  inventive  talent  of  a  high 
order,  and  yet  be  denied  a  patent  by  reason  of  antecedent  devices  which 
actually  existed,  but  not  to  his  knowledge,  and  are  only  revealed  after  a 
careful  search  in  the  Patent  Office.  But  the  statute  (4886)  is  inexorable. 
It  denies  the  patent  if  the  device  were  known  or  used  by  others  in  this 
country  before  his  invention.  Congress  having  created  the  monopoly, 
may  put  such  limitations  upon  it  as  it  pleases.  —  Mast  Co.  v.  Stover  Co.  177 
U.  S.  485;  44  L.  Ed.  856;  20  S.  Ct.  708. 

In  view  of  the  prior  art,  of  which  his  own  prior  patent  must  be  deemed 
a  part,  the  claims  in  question  must  be  confined  to  combinations  substan- 
tially embodying  the  specific  elements  claimed.  —  Davis  v.  Morris,  81  Fed. 
407;  26  C.  C.  A.  460. 

James  v.  Campbell,  104  U.  S.  382;   McCreary  v.  Canal  Co.  141  U.  S.  459. 

That  the  court  is  not  limited  in  its  examination  of  the  prior  art  to  the 
specific  class  to  which  the  invention  belongs,  see  Kelly  v.  Clow,  89  Fed.  297 ; 
32  C.  C.  A.  205. 

We  have  no  doubt  that  Hardy  had  no  knowledge  of  any  of  these  former 
patents,  for  they  had  not  been  much  extended  in  use  or  public  notice ;  but 
the  consequence  of  their  existence  no  less  affects  his  claim  for  novelty  than 
if  he  had  known  all  about  them,  notwithstanding  their  obscurity.  —  Sanders 
v.  Hancock,  128  Fed.  424;  63  C.  C.  A.  166. 

Evans  v.  Eaton,  3  Wheat.  454;  Stearns  v.  Russell,  85  Fed.  218;  Sewall  v. 
Jones,  91  U.  S.  171;  Crompton  v.  Knowles,  7  Fed.  199. 

§  96.     Prior  Patent  —  Date. 

It  is  true  Bishop's  patent  was  not  set  up  by  way  of  defense  in  the  answer; 
but  there  is  no  dispute  as  to  the  time  it  was  issued,  and  that  fact,  together 
with  Bishop's  testimony,  makes  it  clear  that  his  invention  which  was  ex- 
emplified in  the  Wiggins  Ferry,  was  made  as  far  back  as  1858,  anticipating 
Brady  according  to  his  own  showing  for  at  least  seven  or  eight  years.  — 
Atlantic  v.  Brady,  107  U.  S.  192;  27  L.  Ed.  438;  2  S.  Ct.  225. 

Defendant  may  show  that  the  invention  claimed  was  patented  or  described 
in  some  printed  publication  (not  before  the  American  patent  was  granted 
—  nor  before  the  application  was  filed  but)  before  the  patentee's  supposed 
invention  or  discovery  thereof.  —  Clark  v.  Willimantic,  140  U.  S.  481 ;  35 
L.Ed.  521;  US.  Ct.  846. 

U.  S.  R.  S.  4920. 

It  is  indispensable  to  the  maintenance  of  the  defense  that  the  combina- 
tion had  been  patented  prior  to  his  invention  or  discovery  thereof  that  the 
defensive  patent  should  have  been  issued  before  the  patentee  under  the 
patent  in  suit  made  his  invention.  As  the  patent  was  not  issued  until  after 
complainant  conceived  and  perfected  his  device,  nor  until  after  he  had  applied 
for  a  patent  for  it,  it  is  neither  competent  nor  material  evidence  upon  the 
issues  in  this  case.  —  Anderson  v.  Collins,  122  Fed.  451;   58  C.  C.  A.  669. 

Bates  v.  Coe,  98  U.  S.  31;  DuBois  v.  Kirk,  158  U.  S.  58;  Walk.  Pat.  sec.  55. 

§  97.     Prior  Patent  —  Insufficient. 

The  fact  that  a  former  patent  cited  suggests  the  possibility  or  advantage 
of  performing  the  function  of  the  patent  in  suit  is  not  sufficient  to  be  con- 
strued as  anticipation.  —  Gordon  v.  Warder,  150  U.  S.  47;  37  L.  Ed.  992; 
14  S.  Ct.  32. 


§§  98-99  ANTICIPATION  129 

The  Dodson  patent  was  an  instance  of  the  intermeshing  of  projections 
on  the  surface  of  an  abutment  with  corresponding  projections  on  the  sur- 
face of  a  cylinder.  It  is  not  shown  to  have  produced  disintegrations  of  the 
clay,  and  is  one  of  those  wrecks  and  failures  of  inventive  genius  that  are 
constantly  found  lining  the  path  of  the  successful  inventor,  who  takes  the 
last  step  which  wins.  —  Potts  v.  Creager,  97  Fed.  78 ;  38  C.  C.  A.  47. 

Nor  can  we  think  that  the  existence  in  the  Patent  Office  of  something 
which  might  merely  supply  a  hint,  but  was  not  specifically  described  or 
claimed  as  intended  to  be  covered  by  a  patent,  ought  to  be  held  as  an  an- 
ticipation of  an  otherwise  valid  invention.  Inventors  are  not  precluded 
by  the  embryonic  and  shapeless  ideas  found  in  former  patents,  any  more 
than  they  are  by  such  undeveloped  matter  existing  elsewhere.  —  Canda  v. 
Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 


§  98.     Prior  Patent  —  Sufficient. 

The  learned  judge  who  decided  this  case  in  circuit  apparently  laid  stress 
on  the  proposition  that  the  respondent  could  not  defend  itself  against  a 
suit  for  infringement  brought  by  Mann  (the  owner  of  the  foreign  patent 
set  up  in  anticipation)  provided  Mann's  patent  were  in  vigor  in  this  country. 
Even  if  this  were  true,  and  even  if  the  complainant  also,  were  in  a  similar 
position  with  reference  to  Mann,  it  would  not  necessarily  be  decisive  of  this 
case.  This  litigation  is  not  with  Mann,  or  with  Mann's  patent,  but  it  is 
in  favor  of  those  who,  in  the  most  adverse  view  of  them,  have  improved 
on  Mann,  so  that,  if  the  improvement  amounts  to  invention,  the  respond- 
ent, if  he  has  used  the  improvement,  cannot  shield  itself  behind  Mann. — 
Dececo  v.  Gilchrist,  125  Fed.  293 ;  60  C.  C.  A.  207. 

The  Buller  patent  does  not  anticipate  the  patent  in  suit  because:  (1)  The 
defendants  have  failed  to  show  that  it  is  capable  of  successful  practical 
operation,  or  that  the  objections  thereto  were  such  as  could  be  obviated 
without  the  exercise  of  the  faculty  of  invention.  (2)  Because,  being  a  for- 
eign publication,  it  does  not  contain  a  substantial  representation  of  the  patent 
improvement  in  such  clear  and  exact  terms  as  to  enable  a  person  skilled 
in  the  art  to  construct  and  practise  the  invention.  (3)  It  appears  that  it 
does  not  operate  upon  the  theory  or  in  the  manner  covered  by  the  invention 
in  suit.  —  Kirchberger  v.  American,  128  Fed.  599;  64  C.  C.  A.  107. 

Sage  v.  Wyncoop,  104  U.  S.  319;  Seymour  v.  Osborne,  11  Wall.  516;  Eames  v. 
Andrews,  122  U.  S.  40;  Chase  v.  Fillebrown,  58  Fed.  374. 

It  may  be  true  that  the  patented  can  was  the  first  which  was  ever  actually 
manufactured  and  put  upon  the  market;  but  whether  such  as  are  described 
in  the  prior  patents  were  ever  actually  made  or  not  is  an  immaterial  con- 
sideration. These  patents  show  so  plainly  what  they  purport  to  show  that 
he  who  runs  can  read;  and  their  effect  in  negativing  novelty  of  the  claim 
cannot  be  impaired  by  any  argument  that  they  are  impracticable  structures. 
—  Ironclad  v.  Dairyman's,  143  Fed.  512;  74  C.  C.  A.  372. 


§  99.     Prior  Patent  —  Reference  on  Application. 

That  a  prior  patent  cited  as  a  reference  against  the  claim  of  the  patent  in 
suit,  while  the  application  was  before  the  commissioner,  followed  by  allow- 
ance of  the  claim,  is  evidence  of  novelty  and  patentable  difference,  see 
Warren  v.  Casey,  93  Fed.  963;  36  C.  C.  A.  29. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94. 


130  THE    FIXED    LAW    OF    PATENTS  §§  100-103 

§  ioo.     Process  —  Machine. 

A  process  patent  can  only  be  anticipated  by  a  similar  process.  It  is  not 
sufficient  to  show  a  piece  of  mechanism  by  which  the  process  might  have 
been  performed.  —  Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22 
S.  Ct.  698. 

A  process  patent,  such  as  that  of  Jones,  is  not  anticipated  by  mechanism 
which  might  with  slight  alterations  have  been  adapted  to  carry  out  the 
process,  unless,  at  least,  such  use  of  it  would  have  occurred  to  one 
whose  duty  it  was  to  make  particular  use  of  the  mechanism  described.  In 
other  words,  a  process  patent  can  be  anticipated  by  a  similar  process.  A 
mechanical  patent  is  anticipated  by  a  prior  device  of  like  construction 
and  capable  of  performing  the  same  function  but  it  is  otherwise  with  a  proc- 
ess patent.  The  mere  possession  of  an  instrument  or  piece  of  mechanism 
contains  no  suggestion  whatever  of  all  the  possible  processes  to  which  it  may 
be  adapted.  (New  Process  v.  Maus,  122  U.  S.  413.)  If  the  mere  fact  that 
a  prior  device  might  be  made  effective  for  carrying  on  a  particular  process 
were  sufficient  to  anticipate  such  process,  the  assured  result  would  follow 
that,  if  the  process  consisted  merely  of  manipulation,  it  would  be  antici- 
pated by  the  mere  possession  of  a  pair  of  hands.  —  Carnegie  v.  Cambria, 
185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

That  where  complainant  held  a  patent  for  a  process  and  for  a  machine 
for  carrying  out  that  process,  and  the  distinguishing  novel  feature  of  the 
process  lay  in  the  use  of  the  patented  machine,  and  not  in  the  steps  of  the 
process,  the  steps  of  the  process  being  all  old  and  old  in  combination,  the 
novelty  of  the  result  of  the  operation  of  the  machine  could  not  impart 
patentable  novelty  to  the  process,  see  United  States  v.  Assyrian,  100  Fed. 
965;  41  C.  C.  A.  123. 

That  a  patent  for  a  process  is  anticipated  by  a  machine  capable  of  per- 
forming the  process  and  so  used,  see  Johnson  v.  Chisholm,  115  Fed.  625; 
53  C.  C.  A.  123. 

§  ioi.     Process  —  Process  Rule. 

A  process  patent  can  only  be  anticipated  by  a  similar  process.  —  Johnson 
v.  Foos,  141  Fed.  73;   72  C.  C.  A.  105. 
Carnegie  v.  Cambria,  185  U.  S.  403. 

§  102.     Process  —  Miscellaneous. 

The  method  of  Burnham,  whether  workable  or  not,  was  not  the  process 
of  Johnson,  and  his  patent  is  not  an  anticipating  patent  for  that  reason  as 
well  as  because  it  had  not  been  issued  at  the  date  of  the  Johnson  application. 
—  Johnson  v.  Foos,  141  Fed.  73 ;  72  C.  C.  A.  105. 

Bates  v.  Coe,  98  U.  S.  31;  Dubois  v.  Kirk,  158  U.  S.  64;  Anderson  v.  Collins, 
122  Fed.  451. 

There  can,  of  course,  be  no  anticipation  of  Johnson's  method,  which  was 
purely  mechanical,  by  one  which  involved  chemical  agencies  alone.  — 
Johnson  v.  Foos,  141  Fed.  73;   72  C.  C.  A.  105. 

§  103.     Public  Use  —  Sufficient. 

The  identical  combinations  having  been  previously  used  for  the  same 
purpose,  there  is  no  invention.  —  Dane  v.  Chicago,  131  U.  S.  cxxvi;  23  L.  Ed. 

82. 


§104  ANTICIPATION  131 

If  the  hoe  made  by  the  Tool  Company  infringes  the  patent  of  the  appli- 
cant, it  was  an  anticipation  of  the  invention,  and  the  patent  is  void,  for  the 
testimony  leaves  no  doubt  whatever  in  our  minds  that  the  Company  made 
and  sold  its  hoes  long  before  the  date  of  the  invention  patented.  If  it  is 
not  an  anticipation,  it  is  not  an  infringement.  —  Cook  v.  Sandusky,  28 
L.  Ed.  124. 

When  defendant  assumed  and  proved  that  he  had  made  and  used  the 
device  shown  and  claimed  by  complainant  for  five  years,  four  years  of  which 
time  was  prior  to  complainant's  patent,  the  answer  and  defense  were  held 
good.  —  Anderson  v.  Miller,  129  U.  S.  70;  32  L.  Ed.  635;   9  S.  Ct.  224. 

Prior  public  use  of  a  single  device  in  a  store,  used  by  a  number  of  em- 
ployees for  more  than  two  years  is  anticipation.  —  American  v.  Weston,  59 
Fed.  147;  8  C.  C.  A.  56. 

There  can  be  no  doubt  that,  under  the  decisions  of  the  supreme  court, 
if  these  witnesses  are  to  be  believed,  the  making  of  the  machine  and  its 
public  use,  more  than  two  years  before  the  complainant's  patent  was  applied 
for,  would  constitute  a  complete  anticipation.  —  Parlin  v.  Moline,  89  Fed. 
329;  32  C.  C.  A.  221. 

Aiken  v.  Dolan,  Fed.  Cas.  110;  Coffin  v.  Ogden,  18  Wall.  120;  Worley  v. 
Tobacco  Co.  104  U.  S.  343;  Manning  v.  Glue  Co.  108  U.  S.  465;  Magin  v.  Karle, 
150  U.  S.  388;  Brown  v.  Davis,  116  U.  S.  237. 

150  sample  cans  were  sent  to  the  French  government  in  response  to  a 
request  for  cans  of  that  character,  before  the  date  of  invention  of  the  patent 
in  suit.  But  no  commerce  with  the  French  government  resulted.  Held: 
Sec.  4886,  R.  S.  voids  a  patent  for  a  thing  that  has  been  known  or  used  by 
others  in  this  country  prior  to  the  alleged  invention.  No  clearer  case  for 
the  application  of  the  statute  can  be  found  in  the  books.  —  American  v. 
Morris,  142  Fed.  166;  73  C.  C.  A.  384. 

Brush  v.  Condit,  132  U.  S.  39. 


§  104.     Public  Use  —  Miscellaneous. 

The  action  of  the  commissioner  of  patents  in  granting  a  patent  is  not 
conclusive  either  as  to  novelty,  utility  or  prior  use.  —  Reckendorfer  v.  Faber, 
92  U.  S.  347;  23  L.  Ed.  719. 

The  fact  that  the  anticipating  device  was  concealed  from  view  and  could 
not  have  come  to  public  notice  does  not  constitute  a  secret  device  such  as 
would  take  it  outside  the  law  of  public  use.  —  Brush  v.  Condit,  132  U.  S.  39; 
33  L.  Ed.  251;  10  S.  Ct.  1. 

Conceding  that  there  was  sufficient  evidence  of  use  in  England  (of  the 
patented  article  for  more  than  two  years)  we  think  this  does  not  vitiate 
the  patent.  Sec.  4886  declares,  "  Any  person  who  has  invented  any  new  and 
useful  art,  machine,  etc.,  and  not  in  public  use  or  on  sale  for  more  than  two 
years  prior  to  his  application  may  obtain  a  patent  therefor."  While  it  is 
true  there  is  no  restriction  as  to  place  or  country,  sec.  4887  provides  "  unless 
the  same  has  been  introduced  into  public  use  in  the  United  States  for  more 
than  two  years  prior  to  the  application."  We  think  that  the  public  use  or 
sale  contemplated  by  sec.  4886  must  be  limited  to  a  use  or  sale  in  this  country. 
Sec.  4923  providing  that  foreign  use  does  not  void  a  patent  and  sec.  4920 
providing  that  defendant  may  plead  use  or  sale  in  this  country  for 
more  than  two  years  establishes  the  intent  of  sec.  4886,  that  the  right  of 


132  THE    FIXED    LAW   OF    PATENTS  §§  105-106 

the  patentee  should  not  be  denied  by  reason  of  the  fact  that  he  had  made 
use  of  it  or  put  it  on  sale  abroad  for  more  than  two  years,  provided  it  were 
not  so  used  or  sold  in  this  country.  —  Gandy  v.  Main,  143  U.  S.  587;  36 
L.  Ed.  272;  12  S.  Ct.  598. 

§  105.     Publication  —  Insufficient. 

A  description  in  an  encyclopedia  before  patent  of  an  improvement  claimed 
to  be  anticipatory,  unsupported  by  any  proof  that  it  was  operative,  is  not 
sufficient  to  defeat  a  patent.  —  Seymour  v.  McCormick,  60  U.  S.  96;  15 
L.  Ed.  557. 

It  must  be  admitted  that,  unless  the  earlier  printed  and  published  de- 
scription does  exhibit  the  later  patented  invention  in  such  a  full  and  in- 
telligible manner  as  to  enable  persons  skilled  in  the  art  to  which  the  in- 
vention is  related  to  comprehend  it  without  assistance  from  the  patent, 
or  to  make  it  or  repeat  the  process  claimed,  it  is  insufficient  to  invalidate 
the  patent.  —  Cohn  v.  U.  S.  93  U.  S.  366;  23  L.  Ed.  907. 

Some  of  the  expressions  taken  by  themselves,  seem  to  foreshadow  the 
Jones  idea;  but  there  was  nothing  in  any  of  these  discoveries  that  filled 
the  requirement  of  the  law  (Rev.  Stat.  sec.  4886)  of  a  description  in  a  publi- 
cation sufficient  to  anticipate  the  patent.  —  Carnegie  v.  Cambria,  185  U.  S. 
403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

It,  therefore,  serves  no  useful  purpose  to  strive  to  show  that  the  Brush 
patent  was  anticipated  because  some  pre-existing  scientist  has  described 
a  battery  which  corresponds  with  the  general  phraseology  of  the  claims, 
provided  their  language  should  be  so  construed  as  to  include  the  class  of 
batteries  which  has  been  mentioned,  a  construction  which  is  forbidden  by 
the  historv  of  the  invention  and  by  a  disinterested  examination  of  the  patent. 
—  Electric  v.  Brush,  52  Fed.  130;  2  C.  C.  A.  682. 

The  description  must  be  such  as  to  show  that  the  article  described  in  the 
patent  can  be  certainly  arrived  at  by  following  the  description,  without 
the  assistance  of  local  prior  knowledge  or  local  prior  use  in  the  foreign  country 
where  the  description  is  published.  —  Badische  v.  Kalle,  104  Fed.  802; 
44  C.  C.  A.  201. 

Atlantic  v.  Parker,  16  Blatch.  295. 

Of  all  these  publications,  so  far  as  they  contain  suggestions  which  Mouras 
did  not  indicate,  they  are  "  mere  vague  and  general  representations  not 
sufficient  to  enable  those  skilled  in  the  art  or  science  to  understand  the 
nature  and  operation  of  the  invention  and  to  carry  it  into  practical  use."  — 
Cameron  v.  Saratoga,  159  Fed.  453 ;  86  C.  C.  A.  483. 

Seymour  v.  Osborne,  11  Wall.  555. 

§  106.     Publication  —  Sufficient. 

A  prior  publication  which  describes  a  process  or  machine  with  sufficient 
exactness  to  enable  one  skilled  in  the  art  to  employ  it  is  a  publication  which 
will  anticipate.  —  Downton  v.  Yaeger,  108  U.  S.  466;  27  L.  Ed.  789;  3  S.  Ct. 
10. 

Seymour  v.  Osborne,  11  Wall.  516;  Cohn  v,  Corset,  93  U.  S.  366. 

The  "  description  in  a  printed  publication  "  of  the  statute  is  to  be  found 
within  the  four  corners  of  such  printed  publication.  —  Badische  v.  Kalle, 
104  Fed.  802;  44  C.  C.  A.  201. 


§§  107-108  ANTICIPATION  133 

§  107.     Uncontemplated  Use  or  Function. 

The  fact  that  incidentally  the  process  of  the  patent  in  suit  was  performed 
by  the  accidental  operation  of  certain  substances,  which  was  not  understood, 
and  which  accidental  phenomenon  gave  no  hint  to  the  discoverer  of  the 
process  in  suit  will  not  be  regarded.  —  Tilghman  v.  Proctor,  102  U.  S.  707 ; 
26  L.  Ed.  279. 

The  case  is  one  for  the  application  of  the  doctrine,  well  settled  in  the  law 
of  patents,  that  novelty  is  not  negatived  by  a  prior  accidental  production 
of  the  same  thing,  when  the  operator  does  not  recognize  the  means  by  which 
the  accidental  result  is  accomplished  and  no  knowledge  of  them  or  of  the 
method  of  its  employment  is  derived  from  it  by  anyone.  —  Wickelman  v. 
Dick,  88  Fed.  264;  31  C.  C.  A.  530. 

Pittsburgh  v.  Cowles,  55  Fed.  301;  Chase  v.  Fillebrown,  58  Fed.  377;  Topliff 
v.  Topliff,  145  U.  S.  161;  Tilghman  v.  Proctor,  102  U.  S.  707. 

The  essence  of  the  invention  was  the  provision  of  new  means  to  accom- 
plish a  new  result  in  a  new  way  by  a  radical  departure  from  the  prior  art. 
In  these  circumstances,  the  fact  that  the  old  Gorge  pocket  of  1878  might 
be  forced  around  to  a  position  in  which  it  might  receive  and  hold  the  promi- 
nence of  the  abdomen  instead  of  that  of  the  hip  bone  is  immaterial.  —  Young 
v.  Wolfe,  130  Fed.  891 ;  65  C.  C.  A.  199. 

We  are  brought  to  the  argument  that  these  prior  constructions  do  not 
negative  invention  because  they  were  not  designed  to  be  used  for  the  pur- 
pose stated  in  the  patent  in  suit.  In  the  consideration  of  this  question 
we  are  not  unmindful  of  the  rule  as  stated  by  this  court  in  Wickelman  v. 
Dick,  S8  Fed.  264,  266.  See  also  Boyd  v.  Cherry,  50  Fed.  279,  283;  Clough 
v.  Barker,  106  U.  S.  166. 

But  in  order  to  apply  this  doctrine  to  the  case  at  bar,  we  must  not  only 
treat  the  device  of  the  prior  patent  as  an  accidental  construction,  but  we 
must  ignore  the  evidence  that  it  was  used  in  the  manner  contemplated  in 
the  patent  in  suit.  —  American  v.  Carter-Crume,  150  Fed.  333;  80  C.  C.  A. 
339. 

To  assert  that  Moran's  invention  (air-locks  for  caissons)  is  anticipated 
by  freight  elevators  which  pass  through  several  stories  of  a  building,  the 
openings  on  each  floor  being  closed  by  two-part  doors,  is  tantamount  to  as- 
serting that  he  who  solves  the  problem  of  aerial  navigation  will  be  entitled 
to  no  credit  because  similar  vehicles  with  the  same  motive  power  have  trav- 
eled successfully  over  the  land  and  through  the  water.  —  O'Rourke  v.  Mc- 
Mullen,  160  Fed.  933;  88  C.  C.  A.  115. 

§  108.     Miscellaneous  Rulings. 

So  far  as  the  defense  of  anticipation  is  concerned,  it  must  be  established 
as  of  a  date  anterior  to  the  patentee's  invention  or  discovery;  not  merely 
prior  to  the  application  for,  or  the  dating  of  his  patent.  —  Von  Schmidt  v. 
Bowers,  80  Fed.  121 ;  25  C.  C.  A.  323. 

R.  S.  4886,  4920;  Plow  Works  v.  Starling,  140  U.  S.  198;  Clark  v.  Willimantic, 
140  U.  S.  492;  Loom  Co.  v.  Higgins,  105  U.  S.  592;  Kneeland  v.  Sheriff,  2  Fed.  901; 
Woodman  v.  Stimpson,  Fed.  Cas.  17,979;    Merw.  Pat.  Inv.  sec.  323. 

His  long  delay  in  making  application  for  the  patent  creates  a  strong 
countervailing  presumption,  but  is  reasonably  and  adequately  explained 
by  the  surrounding  facts  and  circumstances,  and  thus  explained,  ought  not  to 
prevail  against  the  very  convincing  evidence  that  has  been  adduced  by  the 
complainants.  —  Frost  v.  Cohn,  119  Fed.  505;  56  C.  C.  A.  185. 


134 


THE    FIXED    LAW    OF   PATENTS 


§  109 


Burdick  was  the  first  to  make  an  air  brush  on  the  plan  of  concentric 
nozzles;  and  the  primary  character  of  his  invention  is  not  to  be  destroyed 
by  references  to  patents  for  oil  burners.  Of  course  the  oil  burners  cannot  be 
used  in  painting  pictures.  And  if  the  arts  are  analogous  enough  to  charge 
Burdick  with  notice  of  the  concentric  nozzles  in  oil-burners,  nevertheless  it 
required  invention  to  adapt  them  to  co-operate  with  other  elements,  not 
present  in  the  oil-burners,  so  as  to  produce  Burdick 's  unquestionably  new 
combination.  —  Wold  v.  Thayer,  148  Fed.  227;  78  C.  C.  A.  350. 


APPEALS. 

The  Statutes 

Appeals  to  the  Supreme  Court  §109 
Appeals  to  Circuit  Court  of  Appeals 

§  no 

Assignments  of  Error 

Sufficiency  §  111 
Miscellaneous  Rules  §  112 
Certification  §  113 

Commissioner  of  Patents  —  Actions 
of  §  114 

Cross- Appeals  §  115 
Decrees  (see  §  301) 

Final  — What  Constitute  §  116 

Interlocutory  —  Denned  §  117 

Interlocutory  —  What  Determined 

on  Appeal  §  118 

Interlocutory  —  When  Appealable 

§  H9 

Interlocutory     —     Miscellaneous 

Rules  §  120 

Stipulation  §  121 
Demurrer  —  Injunction    §    122    (see 
§  323) 
Dismissal 

On  Motion  §  123 

Without  Prejudice  §  124 


Exceptions 

Master's  Report  §  125 

Sufficiency  §  126 

Waiver  §  127 
Finality  §  128 
Findings  §  129 
Jurisdiction  §  130  (see  §  713) 
Law  Actions  (see  §  733) 

What  considered  on  §  131 

Miscellaneous  §  132 
Orders  §  133 
Parties  §  134 
Record 

Encumbering  §  135 

Stipulated  §  136 

Miscellaneous  Rules  §  137 
Rehearings  §  138  (see  §  868) 
Remanding  §  139 
Second  Appeal  §  140 
Subject-Matter  §  141 
Supersedeas  §  142 
Supreme  Court  §  143 
Miscellaneous  Rules  §  144 
See  — Comity   §  250;    Costs   §   273; 
Decrees    §301;      Injunction    §§535- 
45;   Interferences   §  583;  Jurisdiction 
§713 


§  109.     The  Statutes  —  Appeals  to  the  Supreme  Court. 

Prior  to  the  Circuit  Court  of  Appeals  Act  of  Mar.  3,  1891,  all  appeals 
in  patent  causes  were  from  the  circuit  courts  directly  to  the  Supreme  Court 
by  sec.  690,  R.  S.  By  the  act  of  19  Feb.  1897,  the  paragraph  of  said  section 
providing  for  appeals  to  the  Supreme  Court  in  patent  causes  was  repealed; 
but  the  section  following  (699,  R.  S.)  was  not  so  amended,  and  consequently, 
by  the  first  paragraph  of  sec.  699,  an  appeal  lies  directly  from  the  Court 
of  Appeals,  D.  C,  to  the  Supreme  Court.  Herein  lies  the  reason  why  the 
decisions  of  the  Court  of  Appeals,  D.  C,  are  not  included  in  this  work  as 
a  part  of  the  fixed  law.  That  court  ranks  with  the  several  circuit  courts 
of  appeals  in  the  estimation  of  those  courts  and  in  the  estimation  of  the  bar. 
But,  in  patent  causes,  it  is  not  a  court  of  last  resort;  its  decisions  in  patent 
causes  are  always  reviewable  by  the  Supreme  Court;  they  are,  therefore, 
not  fixed  law.  In  the  opinion  of  the  writer,  this  is  not  as  it  should  be.  That 
court  is  as  much  entitled  to  rank  as  a  court  of  last  resort  in  patent  causes 
as  any  circuit  court  of  appeals.  It  is  believed  that  the  Court  of  Appeals, 
D.  C.  will  not  only  be  given  its  proper  rank  in  patent  matters,  but  the  writer 
anticipates  the  day  when  this  court  will  be  the  final  appellate  tribunal 
in  patent  causes  for  all  of  the  circuits.  The  present  chaos  and  conflict  of 
decision  between  the  several  circuit  courts  of  appeals  will  hasten  that  day. 


§§  110-111  APPEALS  135 

Appeals  do,  however,  reach  the  Supreme  Court  in  patent  causes,  either  by 
the  following  section  of  the  C.  C.  A.  Act,  19  Feb.  1897,  — 

And  excepting  that  in  any  such  case  as  is  hereinbefore  made  final  in  the 
circuit  court  of  appeals,  it  shall  be  competent  for  the  Supreme  Court  to 
require,  by  certiorari  or  otherwise,  any  such  case  to  be  certified  to  the  Su- 
preme Court  for  its  review  and  determination  with  the  same  power  and 
authority  in  the  case  as  if  it  had  been  carried  by  appeal  or  writ  of  error 
to  the  Supreme  Court;   and  also  the  following: 

*  *  *  Also  in  cases  arising  under  the  patent  laws,  *  *  *  excepting  that  in  every 
such  subject  within  its  appellate  jurisdiction,  the  circuit  court  of  appeals 
at  any  time  may  certify  to  the  Supreme  Court  of  the  United  States  any 
questions  or  propositions  of  law  concerning  which  it  desires  the  instruction 
of  that  court  for  its  proper  decision.  And  thereupon  the  Supreme  Court 
may  either  give  its  instruction  on  the  questions  and  propositions  certified 
to  it,  which  shall  be  binding  upon  the  circuit  court  of  appeals  in  such  case, 
or  it  may  require  that  the  whole  record  and  cause  may  be  sent  up  to  it  for  its 
consideration,  and  thereupon  shall  decide  the  whole  matter  in  controversy 
in  the  same  manner  as  if  it  had  been  brought  there  for  review  by  writ  of 
error  or  appeal. 

§  no.     The  Statutes  —  Appeals  to  Circuit  Court  of  Appeals. 

That  there  is  hereby  created  in  each  circuit  a  circuit  court  of  appeals, 
which  shall  consist  of  three  judges,  of  whom  two  shall  constitute  a  quorum, 
and  which  shall  be  a  court  of  record  with  appellate  jurisdiction,  as  hereafter 
limited  and  established.    C.  C.  A.  Act,  19  Feb.  1897. 

That  the  circuit  court  of  appeals  established  by  this  act  shall  exercise 
appellate  jurisdiction  to  review  by  appeal  or  by  writ  of  error  final  decision 
in  the  district  court  and  the  existing  circuit  courts  in  all  cases  other  than 
those  provided  for  in  the  preceding  section  of  this  act,  unless  otherwise 
provided  by  law,  and  the  judgments  or  decrees  of  the  circuit  court  of  appeals 
shall  be  final  in  all  cases  in  which  the  jurisdiction  is  dependent  entirely  upon 
the  opposite  parties  to  the  suit  or  controversy,  being  aliens  and  citizens  of 
the  United  States  or  citizens  of  different  States;  also  in  cases  arising  under 
the  patent  laws  *  *  *  —  C.  C.  A.  Act,  19  Feb.  1897. 

When,  however,  the  subject-matter  of  the  appeal  is  a  question  of  juris- 
diction, appeal  lies  directly  to  the  Supreme  Court,  even  when  the  cause 
of  action  arises  under  the  Patent  Laws. 

From  a  final  decree  of  a  Circuit  or  District  Court  on  a  question  of  juris- 
diction, whether  of  the  cause  or  of  the  person,  the  appeal  lies  directly  to 
the  Supreme  Court,  and  this  Court  is  without  jurisdiction  to  entertain  it. 
—  Waterman  v.  Parker,  107  Fed.  141 ;  46  C.  C.  A.  203. 

Shepard  v.  Adams,  168  U.  S.  618. 

Preliminary  injunction  appeals  have  been  a  most  fruitful  source  of  appel- 
late decision  since  the  passage  of  the  C.  C.  A.  Act.  The  law  has  been  amended, 
and  the  entire  subject-matter  is  so  closely  related  to  —  and  in  fact  of  the 
very  essence  of  —  the  right  to  a  preliminary  injunction,  that  such  appeals 
are  best  considered  in  connection  with  Injunctions. 

§ni.     Assignments  of  Error  —  Sufficiency. 

A  writ  of  error  covers  all  questions  which  arose  on  the  trial.  —  Hogg  v. 
Emerson,  6  How.  437;   12  L.  Ed.  505. 

Note:    It  is  thought  that  this  rule  has  not  always  been  followed. 

Nothing  can  be  assigned  for  error  which  contradicts  the  record;  nor  can 
any  appellant  be  allowed  to  assign  for  error  the  ruling  of  the  court  in  respect 


136  THE    FIXED    LAW    OF    PATENTS  §  111 

to  any  defense  not  set  up  in  his  plea  or  answer.  —  Bates  v.  Coe,  98  U.  S.  31 ; 
25  L.  Ed.  68. 

The  complainant  has  filed  twenty  assignments  of  error.  It  is  hardly 
conceivable  that  the  court  below  could  have  fallen  into  as  many  as  twenty 
distinct  different  errors  in  passing  upon  the  two  questions  at  issue;  and  this 
court  will  not  enter  seriatim  into  an  examination  of  these  several  assignments, 
but  will  treat  the  matter  in  a  more  compendious  manner.  —  Ashton  v.  Coale, 
52  Fed.  314;  3  C.  C.  A.  98. 

Assignments  of  error  ought  to  be  strictly  confined  to  the  subject  brought 
before  the  appellate  court,  whether  on  appeal  or  by  writ  of  error.  —  Game- 
well  v.  Municipal,  61  Fed.  208;  9  C.  C.  A.  450. 

Error  is  assignable  upon  an  order  or  ruling,  but  not  upon  the  opinion 
of  a  court  or  the  reasons  given  for  a  ruling.  —  Russell  v.  Kern,  69  Fed.  94 ; 
16  C.  C.  A.  154. 

Caverly  v.  Deere,  66  Fed.  305. 

Where  counsel  for  an  appellant  or  plaintiff  in  error  files  a  brief  and  makes 
an  oral  argument,  and  does  not  allude  in  either  to  any  of  his  assignments 
of  error,  he  must  be  taken  to  have  waived  it.  —  American  v.  Buckskin,  72 
Fed.  508;  18  C.  C.  A.  662. 

The  assignments  of  error  are  three  in  number,  and  are  set  forth  in  the 
statement  which  precedes  this  opinion.  The  first  assignment  is  not  dis- 
tributive or  severable  as  between  the  five  claims.  The  proposition  to  which 
appellants  commit  themselves  is  that  their  construction  is  not  an  infringe- 
ment of  any  one  of  the  five  claims.  This  court  cannot  sustain  the  assign- 
ment in  form  and  effect  as  made  without  declaring  that  no  one  of  the  claims 
is  infringed.  So,  also,  as  to  the  second  assignment.  The  proposition  therein 
put  forward  by  appellants  is  that  neither  of  the  patents  is  valid.  The  court 
cannot  sustain  this  assignment  without  holding  that  both  are  invalid.  But 
two  of  the  claims  were  infringed,  and  one  of  the  patents,  namely,  that  num- 
bered 456,122,  is  valid.  Assuming  that  the  two  assignments  of  error  meet 
the  technical  rules  of  this  court,  —  a  matter  not  here  decided,  since  a  court 
of  error  may,  of  its  own  motion,  reverse  for  an  error  not  assigned,  —  this 
court  must  necessarily  overrule  said  assignments.  The  situation  here  is 
plain  enough  without  elaboration.  —  Standard  v.  Crane,  76  Fed.  767;  22 
C.  C.  A.  549. 

The  assignment  is  predicated,  not  as  it  ought  to  have  been,  upon  the 
ruling  of  the  court,  but  upon  the  reason  given  for  the  decision.  That,  we 
have  more  than  once  declared,  is  improper  and  unavailing.  —  Clark  v.  Deere, 
80  Fed.  534;  25  C.  C.  A.  619. 

Caverly  v.  Deere,  66  Fed.  305;    Russell  v.  Kern,  69  Fed.  94. 

An  assignment  of  error  which  is  predicated  upon  the  opinion  of  the  court, 
or  upon  a  reason  given  by  the  court  for  its  ruling  or  decree,  is  not  available. 
It  is  something  done  by  the  court,  —  a  ruling,  judgment,  order  or  decree,  — 
and  not  a  reason  therefor,  which  may  be  assigned  as  error.  A  sufficient 
assignment  in  this  case  would  have  been  simply  that  the  court  erred  in  dis- 
missing the  bill.  —  Evans  v.  Suess,  83  Fed.  706;  28  C.  C.  A.  24. 

Caverly  v.  Deere,  66  Fed.  305;  Russell  v.  Kern,  69  Fed.  94;  Clark  v.  Deere, 
80  Fed.  534. 


112-115 


APPEALS 


137 


§  112.     Assignments  of  Error  —  Miscellaneous  Rules. 

The  appellate  court  reversed  the  trial  court  holding  that  the  claims  were 
too  broad,  and,  properly  construed,  the  patent  was  not  infringed.  This 
defense  was  not  raised  by  the  assignment  of  errors.  Held:  The  first  assign- 
ment is  that  "  the  court  erred  in  not  dismissing  the  bill  of  complaint," 
and  it  is  said  to  be  too  general.  But  if  this  be  so,  we  think  the  error  is  plain, 
and  that  we  may,  in  the  exercise  of  our  discretion,  and  ought  to,  notice  it. 
This  defense  was  distinctly  raised  by  the  answer,  the  issue  is  vital  to  the 
merits  of  the  controversy,  and  the  case  cannot  be  rightlv  decided  without 
adverting  to  it.  —  Wessel  v.  United,  139  Fed.  11 ;  71  C.  C.  A.  423. 

C.  C.  A.  Rules,  90  Fed.  cxlvii;  Andrews  v.  National,  77  Fed.  774;  National  v. 
Spiro,  78  Fed.  774. 

The  assignment  of  errors  is  to  be  filed  in  the  court  below  before  the  court 
loses  jurisdiction.  It  follows  that,  when  these  later  assignments  were  filed, 
the  case  was  no  longer  pending  in  the  court  below,  and  the  filing  them  there 
was  a  futile  act.  —  Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

§  113.     Certification. 

The  circuit  court,  on  division  certified  the  single  question  of  fact  of  in- 
fringement. Held:  That  it  could  not  be  entertained.  —  Wilson  v.  Barnum, 
8  How.  258;  12  L.  Ed.  1070. 

It  is  only  a  difference  on  a  special  point  of  law  which  can  be  distinctly 
stated  that  may  be  certified  to  this  court  under  sec.  652  R.  S.  —  California  v. 
Molitor,  113  U.  S.  609;  28  L.  Ed.  1106;  5  S.  Ct.  618. 

Wayman  v.  Southard,  10  Wheat.  20;  Denniston  v.  Stewart,  18  How.  565; 
Wilson  v.  Barnum,  8  How.  258;  U.  S.  v.  Briggs,  5  How.  208;  U.  S.  v.  Bailey,  9 
Pet.  257;  Adams  v.  Jones,  12  Pet.  207;  Nesmith  v.  Sheldon,  6  How.  41;  Webster 
v.  Cooper,  10  How.  54;    Daniels  v.  R.  R.  3  Wall.  250. 

It  was  long  ago  settled  under  the  statutes  authorizing  questions  upon  which 
two  judges  of  the  circuit  court  were  divided  in  opinion  to  be  certified  to 
this  court,  that  each  question  so  certified  must  be  a  distinct  point  or  propo- 
sition of  law  clearly  stated,  so  that  it  could  be  definitely  answered.  —  Co- 
lumbus v.  Robbins,  148  U.  S.  266 ;  37  L.  Ed.  445 ;  13  S.  Ct.  594. 

Perkins  v.  Hart,  24  U.  S.  237;  Sadler  v.  Hoover,  48  U.  S.  646;  Jewell  v.  Knight, 
123  U.  S.  426;    Fire  Ins.  Assn.  v.  Wickman,  128  U.  S.  426. 

Whether  the  supreme  court  will  review  a  decision  of  the  circuit  court  of 
appeals  solely  on  the  grounds  that  another  circuit  has  held  otherwise,  with- 
out division  and  certificate,  quaery.  —  Columbus  v.  Robbins,  148  U.  S.  266 ; 
37  L.  Ed.  445;   13  S.  Ct.  594. 

§  114.     Commissioner  of  Patents  —  Actions  of. 

In  matters  of  this  description,  in  which  the  action  of  the  Commissioner 
is  quasi  judicial,  the  fact  that  no  appeal  is  expressly  given  to  the  Secretary 
of  the  Interior  is  conclusive  that  none  is  to  be  implied.  —  Butterworth  v. 
Hoe,  112  U.  S.  50;  28  L.  Ed.  656;  5  S.  Ct.  25. 

9  O.  G.  403;    12  O.  G.  475;    13  O.  G.  771;    16  O.  G.  220. 


§  115.     Cross-Appeals. 

When  a  complainant  has  a  decree  in  his  favor,  but  not  to  the  extent 
prayed  for  in  his  bill,  and  the  respondent  appeals:  if  the  complainant  de- 
sires a  more  favorable  decree,  he  must  enter  a  cross  appeal,  that  when  the 


138  THE    FIXED    LAW    OF    PATENTS  §  116 

decree  comes  before  the  appellate  court  he  may  be  heard.  For  when  the 
decree  is  affirmed  or  reversed  by  the  appellate  court,  it  becomes  the  decree 
of  that  court,  and  cannot  be  the  subject  of  another  appeal.  —  Corning  v. 
Troy,  15  How.  451;    14  L.  Ed.  768. 

That  a  decree  holding  certain  claims  sued  on  invalid,  and  certain  other 
claims  sued  on  valid  and  infringed  and  ordering  an  injunction,  is  not  a  final 
decree,  and  is  not  appealable  by  complainant  by  cross-appeal,  see  Ex  parte 
National,  201  U.  S.  156;  26  S.  Ct.  404. 

On  an  interlocutory  decree  declaring  certain  claims  void  and  others 
valid,  the  complainant  is  not  entitled  to  a  cross  appeal  or  to  the  decrees 
holding  certain  claims  void.  —  Marden  v.  Campbell,  67  Fed.  809;  15  C.  C.  A. 
26. 

Gamewell  v.  Municipal,  61  Fed.  208. 

That  decree  allowed  an  injunction,  and  for  that  reason  the  defendants 
had  a  right  to  review  it  by  appeal,  and  this  court  had  jurisdiction  to  con- 
sider and  determine  upon  that  appeal  what  kind  of  a  decree  ought  to  be 
rendered.  The  complainant  had  no  right  to  maintain  a  cross-appeal,  be- 
cause no  injunction  was  granted  against  it,  and  the  decree  was  not  final.  — 
Minnesota  v.  Dowagiac,  126  Fed.  746;  61  C.  C.  A.  352. 

Both  parties  appealed  from  interlocutory  decree,  holding  one  claim 
valid  and  another  void.  Held:  Inasmuch  as  the  decree  of  the  circuit  court 
is  not  final,  the  only  appeal  which  can  be  considered  is  from  so  much  of 
such  decree  as  grants  an  injunction.  —  Kilmer  v.  Griswold,  67  Fed.  1017; 
15  C.  C.  A.  161. 


§  1 1 6.     Decrees  —  Final  —  What  Constitute. 

As  it  is  admitted  that  the  court  below  has  not  yet  acted  upon  the  man- 
date of  this  court,  and  entered  a  final  decree  in  pursuance  thereof,  there  is 
no  final  decree,  from  which  only  an  appeal  can  be  taken.  —  Corning  v.  Troy, 
15  How.  451 ;   14  L.  Ed.  768. 

The  Palmyra  10  Wheat  502;    Chace  v.  Vasquez,  11  Wheat  429. 

In  the  Federal  courts  no  appeal  can,  as  a  general  rule,  be  taken,  except 
from  a  final  decree.  —  Ex  parte  National,  201  U.  S.  156;   26  S.  Ct.  404. 
Forgay  v.  Conrad,  6  How.  201;   McLish  v.  Roff,  141  U.  S.  661. 

Complainant  Brush  Co.,  as  co-complainant  with  licensee  moved  to  be 
dismissed  as  a  party.  Motion  denied.  Brush  Co.,  appeals.  Held:  That  the 
decision  below  on  "the  question  was  a  final  decision  in  the  sense  of  giving 
the  right  of  appeal  under  the  act.  —  Brush  v.  Electric,  51  Fed.  557;  2  C.  C.  A. 
373. 

2  Dan.  Ch.  1192  ;  Williams  v.  Morgan,  111  U.  S.  689;  Forgay  v.  Conrad, 
6  How.  203;  Bronson  v.  Railroad,  2  Black.  530;  Trust  Co.  v.  Grant,  135  U.  S. 
209;   Sharon  v.  Sharon,  67  Cal.  195;  Terry  v.  Sharon,  131  U.  S.  46. 

Although  there  may  be  an  interlocutory  decree  declaring  certain  claims 
void  and  others  valid,  yet  there  is  only  one  final  decree.  It  would  be  con- 
trary to  all  well-conceived  notions  to  imagine  two  final  decrees  in  a  patent 
cause  of  this  character.  —  Marden  v.  Campbell,  67  Fed.  809;  15  C.  C.  A.  26. 

Whatever  was  before  this  court  by  virtue  of  that  appeal,  and  was  dis- 
posed of,  has  been  finally  done,  and  must  be  regarded  as  settled.    The  cir- 


$  116  APPEALS  139 

cuit  court  is  bound  by  such  decree  as  the  law  of  the  case,  and  must  carry- 
it  into  execution  according  to  the  mandate.  The  decree  of  this  court  upon 
any  matter  within  its  jurisdiction  can  neither  be  modified,  reversed,  enlarged, 
nor  suspended  by  circuit  court;  nor  can  any  other  or  less  or  greater  relief 
be  accorded  than  that  prescribed  by  its  decree  and  mandate.  Any  matter 
undecided  and  left  open  by  the  mandate  the  court  below  may  hear  and 
decide,  and  its  decree  in  relation  to  such  new  matters  can  be  examined  here 
only  upon  a  new  appeal.  That  the  decree  and  mandate  of  this  court  have 
precisely  the  same  finality  as  was  attached  to  the  decree  and  mandates 
of  the  supreme  court,  before  the  establishment  of  the  circuit  courts  of  appeals, 
is  too  obvious  for  elaboration.  —  Bissell  v.  Goshen,  72  Fed.  545;  19  C.  C.  A. 
25. 

The  injunction  decree  appealed  from  was  not  a  mere  preliminary  injunc- 
tion granted  in  the  exercise  of  the  discretion  of  the  circuit  court.  The  case 
had  been  fully  prepared  by  both  parties.  It  came  on  regularly  to  be  heard 
on  the  merits  and  was  so  heard.  The  court  was  obliged  to  decide,  and  did 
decide  that  the  complainant's  patent  was  valid  and  infringed.  Upon  this 
basis  the  court  awarded,  as  it  was  bound  to  do,  a  perpetual  injunction  and 
an  accounting.  Under  the  rule  of  the  supreme  court  as  to  an  appealable 
final  decree,  this  was  not  one,  although  the  merits  had  been  determined  and 
nothing  remained  to  be  done  except  to  ascertain  the  damages.  —  Bissell  v. 
Goshen,  72  Fed.  545;   19  C.  C.  A.  25. 

Forgay  v.  Conrad,  6  How.  204;  Barnard  v.  Gibson,  7  How.  656;  Humiston  v. 
Stainthorp,  2  Wall.  106;  Railroad  v.  Swasey,  23  Wall.  405;  Bronson  v.  Railroad, 
2  Black  528;  Bostwick  v.  Brinkerhoff,  106  U.  S.  3;  Grant  v.  Ins.  Co.  106  U.  S. 
429;  Parsons  v.  Robinson,  122  U.  S.  112;  St.  Louis  v.  Southern,  108  U.  S.  24; 
Iron  Co.  v.  Martin,  132  U.  S.  91;  McGourkey  v.  Railway,  146  U.  S.  536;  Elder 
v.  McClaskey,  70  Fed.  557. 

A  decree  on  the  merits  sustaining  infringement  (without  injunction) 
is  not  a  final  decree  for  the  purpose  of  an  appeal.  —  Lockwood  v.  Wickes, 
75  Fed.  118;  21  C.  C.  A.  257. 

Perkins  v.  Tourniquet,  6  How.  206;  Barnard  v.  Gibson,  7  How.  650;  Humis- 
ton v.  Stainthorp,  2  Wall.  106;  Crawford  v.  Points,  13  How.  11;  Iron  v.  Martin, 
132  U.  S.  91. 

One  portion  of  a  given  decree  may  be  final,  and  for  that  reason  reviewable 
on  appeal,  while  the  remainder  may  be  interlocutory,  and  for  that  reason 
not  appealable.  —  Standard  v.  Crane,  76  Fed.  767;  22  C.  C.  A.  549. 

Forgay  v.  Conrad,  6  How.  202;  Iron  Co.  v.  Meeker,  109  U.  S.  180;  McFarland 
v.  Hall,  17  Tex.  691;  Malone  v.  Marriott,  64  Ala.  486;  Williamson  v.  Field,  2 
Barb.  Ch.  281;    Dickerson  v.  Codwise,  11  Paige,  189. 

A  decree  finding  title,  infringement  and  awarding  an  injunction  and  ac- 
counting is  not  an  interlocutory  decree  and  is  not  appealable  under  sec.  7 
but  is  a  final  decree  and  is  appealable  under  sec.  6.  —  Standard  v.  Crane,  76 
Fed.  767;  22  C.  C.  A.  549. 

Disapproving, 

Bissell  v.  Goshen,  72  Fed.  545;  Watch  Co.  v.  Robbins,  52  Fed.  337;  s.  c. 
64  Fed.  384;   Richmond  v.  Atwood,  52  Fed.  10;  Green  v.  Mills,  69  Fed.  852. 

That  after  a  case  has  been  to  the  master  and  determined,  and  the  final 
decree  corrected  and  determined  on  appeal,  the  appellate  court  will  not 
entertain  a  second  appeal  on  evidence  insufficient  to  materially  change  the 
status  of  the  case,  see  Tuttle  v.  Clafflin,  82  Fed.  744;  27  C.  C.  A.  255. 


140  THE   FIXED   LAW   OF    PATENTS  §§  117-118 

It  is  further  contended,  that  as  the  decree  finally  disposes  of  the  first 
claim  of  the  patent,  an  appeal  would  lie  independently  of  the  statute.  But 
as  that  part  of  the  decree  did  not  finally  dispose  of  the  whole  case,  which 
was  retained  for  the  purpose  of  an  accounting  upon  the  claims  held  valid, 
the  right  to  appeal  from  the  dismissal  of  the  bill  as  to  the  first  claim,  would 
be  suspended  until  the  final  decree.  —  Western  v.  Williams-Abbott,  108  Fed. 
952;  48  C.  C.  A.  159. 

Harden  v.  Printing  Press,  67  Fed.  809. 

As  the  case  below  passed  off  on  demurrer,  no  testimony  having  been 
heard,  we  are  at  liberty  to  consider  only  the  allegations  of  the  bill  and  the 
specification  and  claim  of  the  patent.  We  are  at  liberty,  however,  to  ex- 
amine the  patent  in  the  light  of  that  common  knowledge  of  facts  and  prin- 
ciples which  is  possessed  by  all  persons  of  average  intelligence.  —  Mahler  v. 
Animarium,  111  Fed.  530;  49  C.  C.  A.  431. 

Brown  v.  Piper,  91  U.  S.  37;  Richards  v.  Elevator,  158  U.  S.  299;  Engraving 
v.  Hoke,  30  Fed.  444. 

§  117.     Decrees  —  Interlocutory  —  Defined. 

A  decree  sustaining  a  patent,  awarding  an  injunction  and  ordering  an 
accounting,  is  an  interlocutory  decree  and  is  appealable  under  the  act  of 
1891.  —  Jones  v.  Munger,  50  Fed.  785;  1  C.  C.  A.  668. 

Iron  Co.  v.  Martin,  132  U.  S.  91;  Daniell  Ch.  Pr.  5  ed.  986-1019;  Richmond 
v.  Atwood,  48  Fed.  910. 

The  "  interlocutory  order  or  decree  "  made  appealable  by  amended 
section  7  must  be  one  wherein  the  court  grants,  continues,  refuses,  dissolves, 
or  refuses  to  dissolve  an  injunction.  The  state  of  the  record  or  progress 
of  the  cause  must  be  such,  when  said  appealable  "  interlocutory  order  or 
decree  "  is  entered,  that  a  "  final  decree  "  upon  the  matter  with  which  said 
"  interlocutory  order  or  decree  "  has  to  do  may  yet  be  made.  The  contrast 
suggested  by  the  words  "  interlocutory  order  or  decree  "  and  "  final  decree  " 
as  used  in  the  first  paragraph  of  amended  section  7,  is  between  a  decree  which 
is  preliminary  to  a  hearing  on  the  merits,  and  hence  discretionary  in  the 
court,  and  one  which  follows  a  hearing  on  the  merits,  and  is  hence  final, 
conclusive,  and  as  of  right  in  the  prevailing  party;  between  a  decree  which 
is  meant  to  preserve  the  subject-matter  of  the  litigation,  or  prevent  irrepa- 
rable injury,  till  a  hearing  on  the  merits  can  be  had,  and  a  decree  which 
follows  the  hearing  on  the  merits,  and  ultimately  determines  the  rights  of 
the  litigants.  The  "  interlocutory  order  or  decree  "  made  appealable  by 
amended  section  7  must  be  one  which  leaves  the  cause  pending  on  the  issues 
in  the  court  of  original  jurisdiction.  —  Standard  v.  Crane,  76  Fed.  767;  22 
C.  C.  A.  549. 

§  118.     Decrees  —  Interlocutory  —  What  Determined  on  Appeal. 

Appeals  from  orders  are  not  to  be  confounded  with  appeals  from  final 
decrees,  and  the  rule  stated  (as  to  the  force  and  effect  to  be  given  a  prior 
adjudication)  will  not  prevent  our  review  of  the  adjudication  itself,  when- 
ever it  and  the  record  upon  which  it  was  made,  shall  be  presented  upon 
appeal.  The  tendency  of  any  different  rule  would  be  to  produce  confusion, 
and  convert  the  review  of  the  interlocutory  order  into  a  review  of  the  final 
adjudication  upon  which  it  was  founded.  —  American  v.  National,  51  Fed. 
229;  2  C.  C.  A.  165. 

The  record  before  us  is  complete.  Everything  is  here  for  our  considera- 
tion which  was  before  the  court  below.  We  must  go  to  the  full  merits,  as 
shown  by  the  record,  in  order  to  determine  whether  the  interlocutory  decree 


§  118  APPEALS  141 

for  a  perpetual  injunction  is  founded  in  error,  and,  if  we  determine  the  prop- 
erty right  adversely  to  the  complainant  the  injunction  should  be  dissolved; 
and  no  sufficient  reason  has  been  suggested  why  the  accounting,  —  to  which 
the  complainant  is  not  entitled,  and,  which  would  be  an  evasion  of  a  right, 
and  therefore,  inequitable  and  improper,  under  our  view  of  the  case  — 
should  proceed.  —  Richmond  v.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

While  an  appellate  court  interferes  reluctantly  with  discretionary  in- 
junctions, on  an  appeal  from  an  interlocutory  decree  for  a  perpetual  in- 
junction and  an  accounting,  upon  a  complete  record  the  court  will  decide  the 
appeal  upon  its  merits  without  waiting  for  an  accounting.  —  Richmond  v. 
Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

As  to  what  the  court  will  consider  on  appeal  from  an  interlocutory  order, 
see  note  in  Consolidated  v.  Pacific,  53  Fed.  385;  3  C.  C.  A.  570. 

The  case  came  here  on  appeal  from  an  interlocutory  decree  granting  an 
injunction  but  was  heard  as  well  on  the  merits.  The  court  had  jurisdiction 
to  review  the  case  on  its  merits.  —  Consolidated  v.  Pacific,  58  Fed.  226;  7 
C.  C.  A.  195. 

Iron  Works  v.  Smith,  (no  opinion  filed.) 

It  is  a  rule  of  equitable  convenience  that  when  the  whole  record  touching 
the  decree  so  far  as  it  supports  the  injunction  comes  up  before  the  court  of 
appeals,  or  can  come  there,  so  that  the  court  has  before  it  everything  in  this 
respect  which  the  circuit  court  had  or  which  the  court  of  appeals  would 
have  on  an  appeal  from  a  final  decree,  the  court  will  go  fully  into  the  merits 
of  the  appeal.  —  Marden  v.  Campbell,  67  Fed.  809;  15  C.  C.  A.  26. 

Richmond  v.  Atwood,  52  Fed.  10. 

Inasmuch  as  the  hearing  of  the  merits  of  the  bill,  answer,  and  proofs, 
and  the  whole  record  is  before  us,  we  are  able  to  dispose  finally  of  the  case 
in  accordance  with  what  is  now  the  settled  rule  of  practice.  —  Crosby  v~ 
Ashton,  94  Fed.  516;  36  C.  C.  A.  335. 

The  appeal  being  from  an  interlocutory  decree,  it  was  attempted  to  dis- 
pose of  the  issue  on  the  ground  that  no  recovery  could  be  had  because  com- 
plainant had  failed  to  mark  its  articles  patented.  Held:  the  decree  below 
not  having  as  yet  become  final,  the  appeal  brings  before  this  court  for  review 
only  so  much  of  the  decree  as  awarded  an  injunction.  —  Metallic  v.  Brown, 
104  Fed.  345;  43  C.  C.  A.  568. 

Several  issues  of  fact  are  raised  by  the  pleadings,  a  consideration  of  which 
at  this  time  would  tend  to  embarrass  the  trial  court  in  the  consideration 
of  the  case  on  the  final  hearing,  and  this  court,  should  the  case  be  again 
brought  here  by  appeal.  The  cause  is  not  in  condition  to  be  heard  as  to 
these  matters  now,  and  it  must  be  understood  that  what  is  said  is  upon  the 
record  as  now  before  this  court,  and  not  as  to  the  merits  as  they  may  be 
hereafter  presented.  —  American  v.  Phoenix,  113  Fed.  629;  51  C.  C.  A.  339. 

Loew  v.  Filter  Co.  107  Fed.  950. 

In  addition  to  a  defense  of  the  novelty  of  the  claims  of  the  patent,  the  ap- 
pellees contend  that,  inasmuch  as  this  is  only  an  appeal  from  an  order  allowing 
an  injunction  pendente  lite,  this  court  may  not  consider  any  other  question 
than  whether  the  court  below  has  abused  its  legal  discretion  in  allowing  the 
injunction,  all  other  defenses  being  postponed  until  a  final  hearing.  (After 
holding  the  contrary,  citing  Knoxville  v.  Africa,  77  Fed.  501  ■  Mast  v  Stover 
177  U.  S.  485;  Smith  v.  Vulcan,  165  U.  S.  518;  Bissell  v.  Goshen,  72  Fed.  545; 
Watch  v.  Robbins,  52  Fed.  337 ;  Blount  v.  Societe,  53  Fed.  98 ;  Duplex  v. 
Campbell,  69  Fed.  250  the  court  added) :    But  it  must  be  conceded  that  upon 


142 


THE    FIXED    LAW    OF    PATENTS 


§§  119-122 


such  an  appeal  the  case  against  the  patent  must  be  a  very  plain  one  before  the 
court  would  be  justified  in  holding  it  void  for  want  of  novelty  upon  its  face, 
or  in  reaching  the  same  result  upon  a  contested  question  of  anticipation  aris- 
ing upon  prior  patents  and  their  exemplification  by  ex  parte  affi  avits  of 
patent  experts.  —  Co-operating  v.  Hallock,  128  Fed.  596;  64  C.  C.  A.  104. 
Milner  v.  Yesbera,  111  Fed.  386;    Higgins  v.  Scherer,  100  Fed.  459. 

§  1 1 9.    Decrees  —  Interlocutory  —  When  Appealable. 

The  decree  appealed  from  is  one  dissolving  pro  tanto  the  perpetual  in- 
junction heretofore  in  force,  and  is  an  appealable  interlocutory  order  or 
decree,  within  the  act  of  Feb.  18,  1895,  which  amends  sec.  7  of  Mar.  3,  1891, 
so  as  to  allow  appeals  from  interlocutory  orders  or  decrees  dissolving  in- 
junctions. —  Bissell  v.  Goshen,  72  Fed.  545;   19  C.  C.  A.  25. 

Note:    Not  appealable  under  later  amendment  to  the  statute. 

§  120.    Decrees  —  Interlocutory  —  Miscellaneous  Rules. 

It  is  equally  clear  that  congress  intended,  by  allowing  an  appeal  from  an 
interlocutory  decree,  to  allow  an  appeal  from  a  perpetual  injunction  ordered, 
and  allowed  upon  a  final  hearing  of  the  merits,  where  the  same  decree  refers 
the  cause  to  a  master  for  an  accounting.  —  Bissell  v.  Goshen,  72  Fed.  545 ; 
19  C.  C.  A.  25. 

Richmond  v.  At  wood,  52  Fed.  10;  Dudley  v.  Munger,  50  Fed.  785;  Marden  v. 
Mfg.  Co.  67  Fed.  809;  Mfg.  Co.  v.  Griswold,  67  Fed.  1017;  American  v.  National, 
51  ^Fed.  229;  Curtis  v.  Wheel  Co.  58  Fed.  784;  Consolidated  v.  Accumulator, 
55  Fed.  485;  Blount  v.  Societe,  53  Fed.  98;  Watch  Co.  v.  Robbins,  52  Fed.  337; 
Industrial  v.  Electric,  58  Fed.  732;  Consolidated  v.  Pacific,  58  Fed.  226;  Andrews 
v.  Pipe,  61  Fed.  782. 

We  conclude  that  the  question  whether  a  complainant  should  be  per- 
mitted, in  a  given  case,  to  waive  his  right  to  an  injunction  and  thereby 
postpone  the  right  of  appeal  until  the  decree  becomes  in  all  respects  final, 
is  one  which  may  be  safely  remitted  to  the  discretion  of  the  trial  court.  — 
Lockwood  v.  Wicks,  75  Fed.  118;  21  C.  C.  A.  257. 

Following, 

Richmond  v.  Atwood,  52  Fed.  10;   Jones  v.  Munger,  50  Fed.  785. 

The  interlocutory  decree  held  one  of  the  claims  of  the  patent  valid  and 
infringed,  and  the  other  claims  invalid  or  not  infringed,  and  the  complainant 
appealed  from  so  much  thereof  as  related  to  the  claims  which  were  adjudged 
invalid  or  not  infringed.  Thereupon  the  respondent  below,  now  the  appellee, 
filed  a  motion  to  dismiss  on  the  ground  that  the  appeal  was  premature. 
The  respondent  below  took  an  appeal  from  so  much  of  the  interlocutory 
decree  as  adjudged  one  of  the  claims  valid  and  infringed.  The  motion  to 
dismiss  this  appeal  must  be  allowed  on  the  authority  of  our  decision  in 
Marden  v.  Campbell,  67  Fed.  809;  and  also  Ex  parte  National  Enameling, 
201  U.  S.  156.  —  Library  v.  Yawman,  147  Fed.  245;  77  C.  C.  A.  387. 

§121.    Decrees  —  Stipulation. 

A  stipulation  has  been  agreed  upon  between  the  parties  that  a  decree 
might  be  entered  in  this  case  in  conformity  with  and  upon  the  filing  of  a 
decree  in  another  suit  between  the  same  parties.  Held:  The  court  below 
having  entered  a  decree  conformable  to  that  stipulation,  the  appellants 
cannot  maintain  an  assignment  of  error.  —  McCafferty  v.  Celluloid,  104  Fed. 
305;   43  C.  C.  A.  540. 

Railroad  v.  Ketchum,  101  U.  S.  289. 

§  122.    Demurrer  —  Injunction. 

Complainants,  although  they  were  prepared  to  go  on  with  the  motion  they 
had  made  (for  a  preliminary  injunction)  were  subjected  on  appeal  to  the  same 


§§  123-124  APPEALS  143 

consequences  as  if  the  preliminary  hearing  had  been  a  final  one.  If  complain- 
ants in  every  case  must  understand  that  a  motion  for  preliminary  injunction 
requires  the  same  showing  as  on  final  hearing,  very  few  motions  of  that  sort 
would  be  made.  We  think  the  case  comes  within  the  exceptions  pointed  out 
in  Mast  v.  Stover,  177  U.  S.  485,  and  are  impressed  with  the  conviction  that 
complainants  have  not  had  their  day  in  court,  and  that  it  ought  to  be  accorded 
them.  —  Brill  v.  Peckham,  189  U.  S.  57;  47  L.  Ed.  706;  23  S.  Ct.  562. 

§  123.    Dismissal  —  On  Motion. 

An  appellant  cannot  as  of  right  dismiss  his  own  appeal.  U.  S.  v.  Minn.  18 
How.  241 ;  That  ordinarily,  on  a  dismissal  on  his  own  motion,  the  appellant 
is  not  entitled  to  an  order  expressed  without  prejudice,  follows  from  what  is 
said  in  the  case  cited  at  page  242,  that  usually  the  court  will  not  allow  such 
a  dismissal  if  the  appellant  intends  at  some  future  time  to  bring  another 
appeal.  How  very  cautious  the  Supreme  Court  usually  is  to  shut  out  pre- 
sumptions of  any  qualification  in  connection  with  such  orders  appears  from 
U.  S.  v.  Griffith,  141  U.  S.  212. 

Where,  after  a  hearing,  a  cause  is  disposed  of  by  the  court  on  appeal, 
for  some  reason  not  touching  the  merits,  it  is  now  well  settled  that  the 
judgment  should  usually  show  that  it  is  without  prejudice.  So,  on  his  own 
motion  to  dismiss,  an  appellant  may  sometimes  show  inadvertence  or  mis- 
take or  some  other  special  reason  which  may  entitle  him  to  equitable  con- 
sideration and  a  special  order.  But  we  have  no  suggestion  of  any  such 
exceptional  matter  here.  We  have  no  judicial  knowledge  of  anything  except 
what  we  have  stated,  and  that  there  has  been  no  hearing  by  us  on  the  merits. 
Whether,  under  our  expressions  in  Gamewell  Fire-Alarm  Telegraph  Co.  v. 
Municipal  Signal  Co.  61  Fed.  208  and  in  Marden  v.  Mfg.  Co.  67  Fed.  809, 
the  appellant  is  not,  in  any  event,  sure  of  all  he  desires  to  reserve,  is  for  him 
to  consider.  As  he  moves  to  dismiss  his  appeal  of  his  own  volition,  we  have 
no  occasion  whatever  to  aid  him,  under  the  circumstances  of  the  case,  either 
by  any  special  order,  or  by  any  expressions  of  opinion.  —  Donallan  v. 
Tamage  Patent,  79  Fed.  585;  24  C.  C.  A.  647. 

§  124.    Dismissal  —  Without  Prejudice. 

The  Supreme  Court  has  shown  a  growing  tendency  to  approve  the  prac- 
tice of  making  it  clear  that  a  dismissal  is  without  prejudice,  or  without  a 
hearing  on  the  merits,  where  there  has  been  no  such  hearing.  —  Greene  v. 
United,  124  Fed.  961 ;  60  C.  C.  A.  93. 

Manifestly,  whether  the  court  below  erred  or  did  not  err  in  entering  a  cer- 
tain decree  is  a  question  to  be  presented  upon  review  of  such  decree.  It  has 
nothing  to  do  with  a  motion  to  dismiss  appeal  from  such  decree.  The  facts 
and  circumstances  which  make  the  appeal  effective  or  not  all  arise  subsequent 
to  the  entry  of  the  decree.  —  Bradley  v.  Eccles,  126  Fed.  945 ;  61  C.  C.  A.  669. 

We  are  not  able  to  see  that  the  court  below  violated  any  rule  of  equity  prac- 
tice, or  abused  its  legal  discretion,  in  making  the  decree  here  complained  of. 
No  testimony  had  been  taken  in  the  case,  and  there  had  been  no  hearing 
or  decree  upon  the  merits.  The  hearing  of  the  motion  for  a  preliminary 
injunction  upon  opposing  ex  parte  affidavits  and  the  denial  of  the  motion 
did  not  bar  the  dismissal  of  the  bill  by  permission  of  the  court  in  the  exer- 
cise of  its  sound  discretion.  Nor  was  leave  to  dismiss  precluded  because  the 
defendant  was  called  on  to  answer  the  bill  under  oath,  and  did  so.  The 
appellant,  we  think,  was  deprived  of  no  substantial  right  by  the  dismissal. 
We  cannot  agree  that  future  litigation  thus  made  possible  amounted  to 
legal  prejudice.  —  Penn  v.  Columbia,  132  Fed.  808;  66  C.  C.  A.  127. 


144  THE    FIXED   LAW   OF    PATENTS  §§  125-129 

§125.    Exceptions  —  Master's  Report. 

It  is  too  late  to  raise  exceptions  here  upon  ruling  of  master  on  damages. 

—  Kinsman  v.  Parkhurst,  59  U.  S.  289;  15  L.  Ed.  385. 

Exceptions  to  a  master's  report  raised  for  the  first  time  in  the  Supreme 
Court  will  not  be  entertained.  —  Topliff  v.  Topliff,  145  U.  S.  156;  36  L.  Ed. 
658;  12  S.  Ct,  825. 

McMicken  v.  Perin,  59  U.  S.  507. 

§  126.    Exceptions  —  Sufficiency. 

An  appeal  lies  only  upon  a  bill  of  exceptions,  certified,  allowed  and  signed 
by  the  judge  which  constitutes  a  writ  of  error.  —  Phoenix  v.  Lanier,  95  U.  S. 
171 ;  24  L.  Ed.  383. 

Pomeroy  v.  Bk.  1  Wall.  592. 

As  no  exception  appears  to  have  been  taken  thereto  these  findings  must 
be  accepted  as  conclusive.  —  Kirk  v.  U.  S.  163  U.  S.  49;  41  L.  Ed.  66; 
16  S.  Ct.  911. 

That  exceptions  under  rule  11  must  be  definite,  clear  and  specific,  and  not 
vague  and  general  —  see  Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

§127.    Exceptions  —  Waiver. 

When  a  party  excepts  to  a  ruling  upon  the  trial  but  does  not  stand  upon 
such  exception,  and  elects  to  proceed,  he  thereby  waives  his  exception.  — 
Campbell  v.  Haverhill,  155  U.  S.  610;  39  L.  Ed.  280;   15  S.  Ct.  217. 

§  128.    Finality. 

It  seems  to  us  that  the  opinions  and  decrees  of  this,  as  a  court  of  appellate 
jurisdiction,  are  final  and  conclusive  upon  every  point  actually  decided, 
and  that  it  is  the  clear  duty  of  the  lower  court  to  give  effect  to  the  decree 
here  rendered.  —  Bissell  v.  Goshen,  72  Fed.  545;  19  C.  C.  A.  25. 

Sibbald  v.  U.  S.  12  Pet.  488;  Stewart  v.  Solomon,  97  U.  S.  361;  Metcalf  v. 
City,  68  Fed.  859;  Sanford,  Petitioner,  160  U.  S.  247;  16  Sup.  Ct.  291;  Southard 
v.  Russell,  16  How.  547;  Durant  v.  Essex,  101  U.  S.  555;  Kingsbury  v.  Buckner, 
134  U.  S.  650;   Smelting  v.  Billings,  150  U.  S.  31;   Gaines  v.  Rugg,  148  U.  S.  228. 

Whatever  was  before  the  court,  and  is  disposed  of,  is  considered  as  finally 
settled.    The  inferior  court  is  bound  by  the  decree  as  the  law  of  the  case. 

—  In  re  Gamewell,  73  Fed.  908;   20  C.  C.  A.  111. 

Sibbald  v.  U.  S.  12  Pet.  488;  Gaines  v.  Rugg,  148  F.  S.  228;  In  re  Sanford, 
160  U.  S.  247;  Southard  v.  Russell,  16  How.  547. 

§  129.    Findings. 

The  lower  courts  found  that  the  invention  was  a  broad  one,  and  that  the 
machine  used  by  the  Continental  Company  was  an  infringement.  And  these 
were  questions  of  fact  upon  which,  both  of  the  courts  concurring,  their 
findings  will  not  be  disturbed  unless  clearlv  wrong.  —  Continental  v.  Eastern, 
210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748. 

Deslions  v.  LaCompagnie,  210  U.  S.  95. 

An  appeal  in  a  case  tried  before  a  judge  without  a  jury  (under  sec.  649  R.  S.) 
taken  upon  the  findings  of  fact,  can  present  no  other  question  on  appeal.  — 
Klein  v.  Seattle,  77  Fed.  200;  23  C.  C.  A.  114. 

Trust  Co.  v.  Wood,  60  Fed.  346;  Blanchard  v.  Bank,  75  Fed.  249;  Grayson 
v.  Lynch,  163  U.  S.  468. 


§§  130-131  APPEALS  145 

Again,  the  court  below  has  considered  this  question  in  the  light  of  the  state 
of  the  art,  and  of  the  conflicting  testimony  of  the  witnesses,  and  has  decided 
that  Seeley's  combination  was  an  invention.  This  conclusion  is  presump- 
tively correct,  and  ought  not  to  be  reversed  unless  an  obvious  error  has 
intervened  in  the  application  of  the  law,  or  some  serious  mistake  has  been 
made  in  the  consideration  of  the  facts  by  the  circuit  court.  —  Kinloch  v. 
Western,  113  Fed.  659;  51  C.  C.  A.  369. 

National  v.  Interchangeable,  106  Fed.  693;  Mann  v.  Bank,  86  Fed.  51;  Tilgh- 
man  v.  Proctor,  125  U.  S.  136;  Kimberlv  v.  Arms,  129  U.  S.  512;  Furrer  v. 
Ferris,  145  U.  S.  132;  Warren  v.  Burt,  5S  Fed.  101;  Plow  v.  Carson,  72  Fed.  387; 
Trust  Co.  v.  McClure,  78  Fed.  209;    Exploration  v.  Adams,  104  Fed.  404. 

These  findings  of  fact  by  the  court  below  (that  neither  an  express  contract 
nor  a  presumption  that  such  contract  existed  had  been  proved)  must  receive 
the  respect  and  consideration  to  which  such  findings  are  always  entitled  in 
a  reviewing  court.  They  are  prima  facie  conclusive,  and  nothing  but  a 
showing  that  the  preponderance  of  evidence  is  clearly  and  unmistakably 
against  them,  would  justify  this  court  in  reversing  them.  —  Pressed  Steel  v. 
Hansen,  137  Fed.  403;  71  C.  C.  A.  207. 

§  130.    Jurisdiction. 

Neither  can  the  allowance  of  the  writ  by  the  circuit  court  give  jurisdiction, 
where  the  only  question  is  the  amount  of  costs  to  be  taxed ;  and  the  amount 
allowed  is  less  than  $2000.  The  discretionary  power  in  this  respect  vested 
in  the  circuit  court  by  the  Act  of  July  4,  1836,  sec.  17,  is  evidently  confined 
to  cases  which  involve  the  construction  of  the  patent  laws,  and  the  claims 
and  rights  of  the  patentees  under  them.  But  the  amount  of  costs  which 
either  party  shall  be  entitled  to  recover  is  not  regulated  by  these  laws.  The 
costs  claimed  are  allowed  or  refused  in  controversies  arising  under  the 
Patent  Acts  upon  the  same  principle  and  by  the  same  laws  which  govern 
the  court  in  the  taxation  of  costs  in  any  other  case  that  may  come  before 
it.  The  same  laws,  therefore,  must  be  applied  to  them  in  relation  to  the 
writ  of  error,  and  must  limit  the  jurisdiction  of  this  court  as  in  other  cases. 
—  Sizer  v.  Many,  16  How.  98;   14  L.  Ed.  861. 

The  sum  taxed  being  less  than  $2000,  no  writ  of  error  will  lie  under  the 
Act  of  1789.  This  Act  gives  no  jurisdiction  to  this  court  over  the  judgment 
of  a  circuit  court,  when  the  judgment  is  for  less  than  that  sum.  —  Sizer  v. 
Many,  16  How.  98;  14  L.  Ed.  861. 

A  decree  sustaining  the  validity  of  a  patent,  awarding  injunction  and 
an  accounting  is  an  interlocutory  decree ;  and  upon  appeal  from  such  decree 
the  court  will  not  pass  upon  the  merits  of  the  case  as  from  a  final  decree.  — 
Columbus  v.  Robbins,  52  Fed.  337;  3  C.  C.  A.  103. 

(Overruled  in  Bissell  v.  Goshen,  72  Fed.  545.)    See  148  U.  S.  266. 

Disapproving, 

Richmond  v.  Atwood,  48  Fed.  910;  Jones  v.  Munger,  50  Fed.  785;  Barnard 
l'.  Gibson,  7  How.  650;  Humiston  v.  Stainthorp,  2  Wall.  106;  Iron  Co.  v.  Martin, 
132  U.  S.  91;  Tourniquet  v.  Perkins,  16  How.  84;  Beebe  v.  Russell,  19  How. 
283;  Craighead  v.  Wilson,  18  How.  199;  Farrelly  v.  Woodfolk,  19  How.  288; 
Green  v.  Fisk,  103  U.  S.  518. 

§  131.    Law  Actions  —  What  Considered  on. 

In  a  suit  at  law  where  evidence  was  taken  and  the  question  of  infringement 
was  determined,  this  court  will  not  review  the  evidence  as  if  it  were  a  suit 
in  equity.  —  St.  Paul  v.  Starling,  140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct.  803. 


146 


THE    FIXED    LAW    OF    PATENTS 


§  132 


Since  the  adoption  of  the  seventh  amendment  to  the  Constitution,  declaring 
that  no  fact  tried  by  a  jury  shall  be  otherwise  re-examined  by  any  court  of 
the  United  States  than  according  to  the  rules  of  the  common  law,  the  Supreme 
Court  has  repeatedly  affirmed  the  doctrine  that  upon  writ  of  error  the  Federal 
courts  are  confined  to  the  consideration  of  exceptions  to  the  evidence  and  to 
the  instructions  given  or  refused  to  the  jury,  and  that  they  have  no  concern 
with  questions  of  fact,  or  the  weight  to  be  given  to  the  evidence  which  was 
properly  admitted.  —  Singer  v.  Brill,  54  Fed.  380;  4  C.  C.  A.  374. 

Parsons  v.  Bedford,  3  Pet.  436;  Barreda  v.  Silsbee,  21  How.  167;  Railroad  v. 
Fraloff,  100  U.  S.  31;  Ins.  Co.  v.  Ward,  140  U.  S.  91. 

It  is  impossible  for  us  to  say  that  the  jury  disregarded  the  instructions. 
There  is  nothing  in  the  bill  of  exceptions  to  show  that  they  did.  The  pre- 
sumption is,  on  the  other  hand,  that  they  strictly  observed  it.  —  Harper  v. 
Wilgus,  56  Fed.  587;  6  C.  C.  A.  45. 

The  only  recognized  exception  to  the  statutory  rule  which  in  common  law 
cases  tried  without  a  jury  limits  the  review,  on  writ  of  error,  to  "  rulings  of 
the  court  in  the  progress  of  the  trial  "  and  to  the  question  "  of  the  sufficiency 
of  the  facts  found  to  support  the  judgment,"  is  that  "  a  party  may  insist 
upon  a  finding  in  his  favor  on  the  ground  that  there  is  a  total  lack  of  evi- 
dence to  support  a  contrary  finding,  or,  if  he  have  the  burden  of  the  issue, 
on  the  ground  that  the  evidence  in  his  favor  is  inadequate,  unimpeached, 
and  without  conflict  or  uncertainty."  But,  to  raise  such  a  question  as  one 
of  law,  the  exception  or  motion  must  be  specific  to  that  effect,  distinguishing 
it  from  a  question  of  the  weight  of  evidence.  —  Keene  v.  Barratt,  100  Fed. 
590;  40  CCA.  571. 

Exposition  v.  Republic,  96  Fed.  687;  Martinton  v.  Fairbanks,  112  U.  S.  670. 

Where  the  parties  consent  that  the  case  be  tried  before  a  judge  or  referee, 
the  only  question  presented  by  the  writ  of  error  is  whether  there  is  any  error 
of  law  in  the  judgment  upon  the  facts  as  found  by  the  judge  or  referee.  The 
court's  findings  upon  questions  of  fact  are  not  subject  to  review  in  the 
appellate  court  if  there  is  any  legal  evidence  upon  which  such  findings 
could  be  made.  —  American  v.  Bullivant,  117  Fed.  255;  54  C  C.  A.  287. 

U.  S.  v.  Dawson,  101  U.  S.  569;  Boogher  v.  Insurance  Co.  103  U.  S.  90;  Miles 
v.  IT.  S.  103  U.  S.  304;  Paine  v.  Railroad,  118  U.  S.  152;  Stanley  v.  Board,  121 
U.  S.  535;  Hathaway  v.  Bank,  134  IT.  S.  494;  Rogers  v.  U.  S/141  U.  S.  548; 
7  Enc.  PI.  &  Prac.  847-8;   Myers  v.  Brown,  102  Fed.  250. 


§132.    Law  Actions — Miscellaneous. 

For  a  general  statement  as  to  requirements  as  to  exceptions  and  as  to 
briefs  in  the  first  circuit,  see  National  v.  Leland,  94  Fed.  502 ;  37  C  C  A.  372. 

It  is  the  rule  that,  if  the  bill  of  exceptions  does  not  contain  all  of  the 
evidence,  the  question  whether  a  general  verdict  or  finding  of  the  lower  court 
was  supported  by  the  evidence,  will  not  be  considered.  —  Leslie  v.  Standard, 
98  Fed.  827;  39  C  C  A.  314. 

It  must  always  be  presumed  in  such  a  case,  that  any  defect  in  the  evi- 
dence presented  would  be  removed  by  a  full  statement,  but,  while  every 
presumption  must  be  indulged  in  favor  of  the  judgment,  it  should  be  a 
reasonable  presumption,  not  inconsistent  with  what  is  shown  in  the  record; 
and  when  a  finding  has  been  directed  in  favor  of  the  defendant  in  a  case, 
and  the  bill  of  exceptions,  though  not  purporting  to  contain  all  of  the  evi- 
dence, contains  a  statement  of  evidence  in  behalf  of  the  plaintiff,  sufficient 


§§  133-135  APPEALS  147 

on  every  issue  to  have  justified  a  verdict  in  his  favor,  the  rule  manifestly 
ou°-ht  not  to  apply,  especially  if  it  be  apparent  that  the  action  of  the  court 
was  the  result  of  a  misapprehension  of  the  bearing  of  the  proof  adduced.  — 
Leslie  v.  Standard,  98  Fed.  827;  39  C.  C.  A.  314. 

§  133-    Orders. 

Orders  relating  to  the  conduct  of  a  trial  and  to  amendments  adjusting 
the  parties  to  a  controversy  are  generally  treated  as  orders  made  in  the 
exercise  of  discretion,  and  not  subject  to  exception  and  review.  In  an 
equity  case,  however,  where  the  appeal  brings  up  questions  of  law  and  of 
fact,  the  court  of  review  may  doubtless  examine  to  see  whether  the  case, 
as  presented,  is,  either  upon  the  law,  the  facts,  or  the  pleadings,  an  inequi- 
table case;  and  if,  for  any  reason,  it  so  appears,  relief  may  and  should  be 
withheld.  —  Consolidated  v.  West  End,  85  Fed.  662;  29  C.  C.  A.  386. 

We  cannot  review  the  order  of  the  court  below  refusing  to  stay  the  taxa- 
tion of  costs,  or  in  fixing  the  amount  of  the  bond  to  be  given  on  appeal. 
The  order  is  not  reviewable,  unless  upon  an  appeal  from  the  final  decree.  — ■ 
Crown  v.  Baltimore,  136  Fed.  184;  69  C.  C.  A.  519. 

Martin  v.  Hazard,  93  U.  S.  302. 

§  134.    Parties  to. 

The  law  gives  the  party  aggrieved  an  appeal  from  a  final  decree  of  an 
inferior  court.  But  it  does  not  give  the  party  who  is  not  aggrieved  an  appeal 
from  a  decree  in  his  favor,  because  the  judge  has  given  no  reasons,  or  recited 
insufficient  ones  for  a  judgment  admitted  by  the  appellant  to  be  correct.  — 
Corning  v.  Troy,  15  How.  451 ;   14  L.  Ed.  768. 

All  the  parties  against  whom  a  joint  judgment  or  decree  is  rendered,  must 
unite  in  the  writ  of  error  or  appeal,  or  it  will  be  dismissed,  unless  there  has 
been  a  summons  and  severance,  or  some  like  proceeding,  or  sufficient  cause  is 
shown  for  the  non-joinder.  —  Hedges  v.  Seibert,  50  Fed.  643;  1  C.  C.  A.  594. 

Masterson  v.  Herndon,  10  Wall.  416;  Feibelman  v.  Packard,  108  IT.  S.  15; 
Estis  v.  Trabue,  128  U.  S.  225. 

As  a  patentee  may  be  joined  as  a  co-complainant  against  his  consent 
originally,  no  good  reason  is  perceived  why  he  may  not  be  so  retained  for 
the  prosecution  of  the  rights  of  his  licensee,  after  judgment  once  rendered, 
and  the  cause  remanded  for  further  proceedings.  The  patentee  may  be 
content  with  a  decree  against  him ;  but  when  his  co-complainant  is  not,  and 
has  the  right  of  appeal,  the  doctrine  of  summons  and  service  may  be  invoked, 
and  upon  the  refusal  of  the  patentee  to  join  in  the  appeal  after  being  duly 
notified  to  do  so,  the  appeal  of  his  licensee  may  be  allowed  upon  the  entry 
of  such  refusal  of  record,  the  judgment  remaining  conclusive  as  to  the  party 
refusing.  —  Excelsior  v.  City  of  Seattle,  117  Fed.  140;  55  C.  C.  A.  156. 

Masterson  v.  Herndon,  10  Wall.  416;    Fost.  Fed.  Prac.  sec.  505. 

§  135.    Record  —  Encumbering. 

The  record  contains  embodied  in  the  bill  of  exceptions,  the  whole  of  the 
testimony  and  evidence  offered  at  the  trial  by  each  party  in  support  of  the 
issue.  It  is  very  voluminous,  and  as  no  exception  was  taken  to  its  compe- 
tency or  sufficiency  either  generally  or  for  a  particular  purpose,  it  is  not 
properly  before  this  court  for  consideration,  and  forms  an  expensive  and 
unnecessary  burden  upon  the  record.  This  court  has  had  occasion  in  many 
cases  to  express  its  regret  on  account  of  irregular  proceedings  of  this  nature. 
—  Pennock  v.  Dialogue,  2  Pet.  1 ;  7  L.  Ed. "327. 


148  THE    FIXED   LAW   OF    PATENTS  §§  136-137 

Where  appellee  needlessly  encumbers  record  with  some  50  immaterial 
patents,  under  Rule  10  half  of  the  costs  of  printing  will  be  assessed  upon, 
appellee.  —  B.  &  S.  Fastener  v.  Kraetzer,  150  U.  S.  Ill;  37  L.  Ed.  1019; 
14  S.  Ct.  48. 

We  deem  it  proper  to  say  that  in  view  of  the  size  which  oftentimes  in 
patent  cases  the  zeal  of  counsel  and  the  ingenuity  of  experts  unduly  swell 
the  records  and  briefs,  so  called  (in  this  case  the  record  contained  2,200 
pages  and  one  of  the  briefs  4S4  pages),  it  is  not  to  be  expected  that  courts, 
and  especially  appellate  ones,  will  follow  the  lead  thus  set  and  discuss  every 
question  raised.  —  Goss  v.  Scott,  110  Fed.  402;  49  C.  C.  A.  97. 

§  136.    Record  —  Stipulated. 

An  appeal  is  good  taken  upon  a  judgment  rendered  upon  an  agreed  state- 
ment of  facts.  —  Stimpson  v.  Railroad,  10  How,  329;   13  L.  Ed.  441. 
3  Blackstone,  377;   Stephens  Plead.  92;   U.  S.  v.  Eliason,  16  Pet.  291. 

As  the  parties  to  this  suit  have  stipulated  as  to  what  the  record  is  in  this 
suit,  and  the  clerk  of  the  circuit  court  certifies  the  transcript,  it  must  be 
accepted  as  sufficient  for  the  purposes  of  this  suit.  —  Lake  Shore  v.  National, 
110  U.  S.  229;  28  L.  Ed.  129;  4  S.  Ct.  33. 

The  proper  course  of  the  clerk  was  for  him  to  observe  the  agreement 
of  counsel,  and  leave  the  parties  to  abide  the  consequences.  The  endeavor 
of  counsel  to  eliminate  matter  which  has  been  found  to  be  superfluous  and 
unnecessary  to  a  review  in  the  appellate  court  is  one  to  be  encouraged.  — 
Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247. 

The  jurisdiction  of  this  court  is  appellate  only.  Its  review  in  law  or 
equity  is  limited  to  the  record  of  matters  which  were  before  the  trial  court, 
and  cannot  be  enlarged  or  affected  by  subsequent  stipulations  between  the 
parties.  —  Austin  v.  American,  121  Fed.  76;  57  C.  C.  A.  330. 

Maxwell  Land-Grant  Case,  122  U.  S.  365;  Randolph  v.  Allen.  73  Fed.  23;  Case 
v.  Hall,  94  Fed.  300. 

§  137.    Record  —  Miscellaneous  Rules. 

The  Peck  patent,  which  is  printed  in  the  record,  cannot  be  considered 
by  the  court,  for  the  reason  that  it  was  not  set  up  in  the  answer,  and  was  first 
introduced  as  evidence  in  the  court  below  in  support  of  a  motion  for  rehear- 
i  na;  and  to  reopen  the  case,  which  was  denied.  —  Andrews  v.  Thum,  67  Fed. 
911;   15  C.  C.  A.  67. 

Apart  from  any  authority,  it  would  seem  that  on  principle  the  decision 
of  this  court  upon  a  defective  presentation  of  the  case  should  not  be  con- 
clusive of  it  in  all  respects.  An  amended  bill  is  a  continuation  of  the  original 
bill,  and  forms  a  part  of  it.  The  original  and  amended  bills  constitute  one 
pleading  and  one  record.  It  is  clear  that  at  the  time  these  parties  were 
heard  in  this  court  upon  the  original  bill  the  controversy  between  them  was 
no  longer  presented  by  the  original  bill,  but  was  contained  in  a  record  made 
up  of  the  original  bill  and  the  amended  and  supplemental  bills.  So  the  dis- 
missal of  the  original  bill  did  not  work  a  dismissal  of  the  controversy.  — 
Berliner  v.  Gramophone,  113  Fed.  750;  51  C.  C.  A.  440. 

1  Dan.  Ch.  PI.  &  Pr.  402,  c.  6,  sec.  7;  French  v.  Hay,  22  Wall.  246;  Phosphate 
Co.  v.  Brown,  74  Fed.  323;   Miller  v.  Melntyre,  6  Tet.  62. 

The  court  finds  itself  unable,  upon  the  transcript  from  the  court  below, 
to  determine  with  any  degree  of  certainty  the  rights  of  the  parties  to  this 


§§  138-140  APPEALS  149 

litigation.  Ordered  that  the  decree  of  the  court  below  be  set  aside,  and  the 
case  remanded,  with  direction  to  remand  the  rules  with  leave  to  both  par- 
ties to  take  such  additional  proofs  as  they  may  be  advised.  —  Standard  v. 
Computing,  145  Fed.  627;   76  C.  C.  A.  384. 

§  138.    Rehearings. 

The  refusal  of  the  circuit  court  to  grant  a  rehearing  is  not  open  to  considera- 
tion here.  —  Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787;  10  S.  Ct.  378. 

Buffington  v.  Harvey,  95  U.  S.  99;  Steines  v.  Franklin,  81  U.  S.  15;  Pittsburgh 
v.  Heck,  102  U.  S.  20;  Kennen  v.  Gilmer,  131  U.  S.  22. 

The  petition  was  not  filed  within  the  15  days  limited  by  rule  16  of  the  cir- 
cuit court,  and  therefore  did  not  operate  to  extend  the  time  within  which 
the  defendants  below  could  appeal,  under  the  circumstances  found  to  exist 
bv  this  court  in  Andrews  v.  Thum,  64  Fed.  149.  —  Marden  v.  Campbell, 
67  Fed.  809;   15  C.  C.  A.  26. 

On  a  motion  for  a  rehearing  the  final  decree  is  suspended  and  an  appeal 
therefrom  does  not  lie  until  such  motion  is  decided.  —  Andrews  v.  Thum, 
72  Fed.  290;  18  C.  C.  A.  566. 

In  the  opinion  announcing  an  allowance  of  a  rehearing,  the  court  de- 
scribes the  disclaimer  as  one  by  which  the  complainant  "  seeks  to  restrict 
the  claims  in  controversy  "  so  as  to  "  avoid  the  effect  of  the  anticipating 
devices  referred  to  by  the  Court  of  Appeals."  And  then,  after  recognition 
of  the  rule  that  the  Circuit  Court  has  no  power,  upon  the  ground  of  newly 
discovered  evidence,  to  reopen  a  question  which  has  been  finally  decided 
by  the  Court  of  Appeals,  without  the  permission  of  the  appellate  tribunal, 
the  opinion  proceeds  thus:  "  But  in  the  present  case  the  complainant's 
patent,  as  it  now  stands,  has  never  been  before  the  Circuit  Court  of  Appeals, 
and  has  therefore  never  been  considered.  It  is  in  effect  a  new  patent,  and 
the  subject  of  its  validity  or  invalidity  has  never  been  decided  by  any 
tribunal."  Do  these  considerations  justify  the  action  of  the  Circuit  Court 
in  granting  a  rehearing  without  leave  of  this  court?  The  decisions  of  the 
Supreme  Court  require  a  negative  answer.  —  American  v.  Sample,  136  Fed. 
857;  70  C.  C.  A.  415. 

Ex  parte  Sibbald,  12  Pet.  488:  Ex  parte  Dubuque,  1  Wall.  69;  Stewart  v. 
Solomon,  97  U.  S.  361;    In  re  Potts,  166  U.  S   263. 

§  139.    Remanding. 

While  the  appellate  court  is  not  bound  so  to  do,  it  may,  in  its  discretion, 
and  should,  when  equity  so  requires,  make  full  direction  as  to  the  manner 
in  which  the  case  shall  be  disposed  of  below.  —  Richmond  v.  Atwood,  52 
Fed.  10;   2  C.  C.  A.  596. 

This  court,  however,  has  no  power  to  remand  except  for  the  purpose 
of  giving  effect  to  some  judgment  of  its  own.  —  Marden  v.  Campbell,  67 
Fed.  809;   15  C.  C.  A.  26. 

Roemer  v.  Simon,  91  U.  S.  149;   Smith  v.  Weeks,  53  Fed.  758. 

§  140.    Second  Appeal. 

A  second  appeal  lies  only  when  the  court  below,  in  carrying  out  the  man- 
date of  this  court,  is  alleged  to  have  committed  an  error.  But  on  an  appeal 
from  the  mandate,  it  is  well  settled,  that  nothing  is  before  the  court  but  the 
proceedings  subsequent  to  the  mandate.  Whatever  was  formally  before 
the  court,  and  was  disposed  of  by  its  decree,  is  considered  as  finallv  disposed 
of.  —  Corning  v.  Troy,  15  How.  451 ;   14  L.  Ed.  768. 


150  THE   FIXED   LAW   OF    PATENTS  §§  141-142 

Himley  r.  Rose,  5  Cranch,  313;  Canter  v.  Ocean,  1  Pet.  511;  The  Santa  Maria, 
10  Wheat.  431;    Rice  v.  Wheatley,  9  Dana,  272. 

It  has  been  settled  by  the  decisions  of  this  court,  that  after  a  case  has 
been  bi'ought  here  and  decided,  and  a  mandate  issued  to  the  court  below, 
if  a  second  writ  of  error  is  sued  out  it  brings  up  for  revision  nothing  but  the 
proceedings  subsequent  to  the  mandate.  None  of  the  questions  which 
were  before  the  court  on  the  first  writ  of  error  can  be  reheard  or  reexamined 
upon  the  second ;  and  there  is  nothing  now  before  the  court  but  the  taxation 
of  costs.  —  Sizer  v.  Many,  16  How.  98;   14  L.  Ed.  861. 

7  Wheat.  58;  12  Pet.  488. 

§  141.    Subject-Matter. 

A  point  not  taken  in  the  court  below  cannot  be  made  here.  —  Klein  v. 
Russell,  86  U.  S.  433;  22  L.  Ed.  116. 

No  appeal  lies  from  a  mere  decree  respecting  costs  and  expenses.  — 
Glendale  v.  Smith,  100  U.  S.  110;  25  L.  Ed.  547. 
Canter  v.  Ins.  Co.  3  Pet.  307. 

It  is,  of  course,  well  understood  that  a  court  of  equity  is  to  decide  on  the 
law  and  fact,  and  that  an  appeal  in  equity  is  an  appeal  upon  the  law  and  fact 
involved  in  the  cause.  —  Richmond  ?>.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

LeGuen  v.  Gouveneur,  1  Johns.  Cas.  500;  Adams  Equity,  375;  Briggs  Petition, 
29  N.  H.  553;   Blake  v.  Oxford,  64  N.  H.  302. 

This  court  cannot  now  upon  this  assignment  of  error,  enter  into  the  con- 
sideration of  the  question  whether  or  not  the  patent  in  suit  was  anticipated 
by  the  Gauthier  patent  and,  therefore,  was  itself  void.  That  inquiry  in- 
volved a  question  of  fact  for  the  jury,  and  it  was  properly  submitted  to  the 
jury.  No  exception  was  taken  in  the  trial,  either  to  the  submission  of  the  case 
to  the  jury,  or  to  the  charge  of  the  court.  On  the  writ  of  error  to  this  court 
we  are  confined  to  the  consideration  of  questions  of  law,  —  the  rulings  of 
the  trial  court  upon  questions  of  evidence,  and  the  instructions  given  or 
referred  to  the  jury.  We  have  no  concern  with  the  weight  to  be  given  to 
evidence  which  has  been  properly  admitted.  —  Harper  v.  Wilgus,  56  Fed. 
587;  6C.  C.  A.  45. 

The  objections  made  by  the  appellants,  touching  the  form  of  the  bill, 
whether  supplemental  or  original,  and  those  as  to  the  sufficiency  of  the  alle- 
gations of  the  bill,  were  not  raised  in  the  court  below,  and  cannot  be  taken 
for  the  first  time  in  this  court.  —  Herrick  v.  Giant  Leveller,  60  Fed.  80; 
8  C.  C.  A.  475. 

The  only  question  open  is  as  to  whether  the  court  erred  in  holding  that 
the  plea  was  sustained  by  the  evidence.  If  it  was  not  supported,  it  should 
have  been  overruled,  and  the  defendant  ordered  to  answer.  —  Hartz  u. 
Cleveland,  95  Fed.  681 ;   37  C.  C.  A.  227. 

Dalzell  v.  Mfg.  Co.  149  U.  S.  315;   Farley  v.  Kittson,  120  U.  S.  303. 

§  142.    Supersedeas. 

The  circuit  court  had  a  discretion  to  grant  or  refuse  a  supersedeas  and 
its  discretion  cannot  be  controlled  by  a  mandamus.  —  Re  Haberman,  147 
U.  S.  525;   37  L.  Ed.  266;   13  S.  Ct.  527. 

Ex  parte  Hawkins,  147  II.  S.  486. 

When  an  appeal  was  allowed  from  the  decree  granting  the  perpetual 
injunction  the  circuit  court,  as  it  was  authorized  to  do  under  sec.  7  of  the 
court  of   appeals  act,  granted  an  appeal  with  supersedeas,  on  a  bond  con- 


§§  143-144  APPEALS  151 

ditioned  that  the  defendant  should  prosecute  the  said  appeal  to  effect  and 
pay  all  costs  and  damages  if  it  failed  to  make  said  appeal  good,  "  as  well 
as  all  damages  and  profits  resulting  from  its  manufacture  and  sale  of  the 
infringing  sweepers  after  the  date  of  the  said  decree."  This  only  operated 
to  stay  or  suspend  the  injunction  pending  the  appeal.  It  had  no  effect 
or  operation  as  a  license  to  defendant.  The  status  of  the  defendant  was 
simply  that  of  persons  engaged  in  infringing  and  not  restrained  by  operation 
of  the  injunction.  —  Bissell  v.  Goshen,  72  Fed.  545;  19  C.  C.  A.  25. 

§  143.    Supreme  Court. 

In  order  to  invoke  the  exercise  of  our  jurisdiction  in  the  instruction  of 
the  circuit  court  of  appeals  as  to  the  proper  decision  of  questions  or  propo- 
sitions of  law  arising  in  the  classes  of  cases  mentioned,  it  is  necessary  that 
such  questions  or  propositions  should  be  clearly  and  distinctly  certified, 
and  that  the  certificate  should  show  that  the  instruction  of  this  court  as 
to  their  proper  decision  is  desired.  —  Columbus  v.  Robbins,  148  U.  S.  266; 
37  L.  Ed.  445;   13  S.  Ct.  594. 

An  appeal  to  the  Supreme  Court  does  not  lie  in  an  action  to  compel  the 
Commissioner  to  issue  a  patent,  because  it  neither  involves  a  question 
affecting  a  patent  right  nor  a  sum  of  $5000.  —  Durham  v.  Seymour,  161 
U.  S.  235;  40  L.  Ed.  682;  16  S.  Ct.  452. 

This  court  will  not  consider  questions  not  presented  to  and  passed  upon  by 
the  lower  court.  —  U.  S.  v.  Am.  Bell  Tel.  167  U.  S.  224;  42  L.  Ed.  144; 
17  S.  Ct.  809. 

Statement:  The  examiners-in-chief  affirmed  the  decision  of  the  primary 
examiner,  "  requiring  a  division  of  these  claims  for  an  art  and  for  an  inde- 
pendent machine  used  to  perform  the  art;  "  and  on  appeal  the  Commissioner 
affirmed  the  examiners-in-chief  in  part  only.  Rehearing  was  denied  and  an 
appeal  taken  to  the  court  of  appeals  D.  C,  which  affirmed  the  decision  of  the 
Commissioner.  An  appeal  and  a  writ  of  error  were  allowed,  the  court  stating: 
"  We  are  inclined  to  the  view  that  this  case  is  not  appealable  to  the  Supreme 
Court  of  the  United  States,  but,  as  the  question  has  never  been  directly 
decided,  so  far  as  we  are  advised,  we  shall  grant  the  petition  in  order  that 
the  question  of  the  right  of  appeal  in  such  a  case  may  be  directly  presented 
for  the  determination  of  the  court  of  last  resort."  Held:  The  opinion  or 
decision  of  the  court,  reviewing  the  Commissioner's  decision,  is  not  final, 
because  it  does  not  preclude  any  person  interested  from  contesting  the 
validity  of  the  patent  in  court;  and,  if  the  decision  of  the  Commissioner 
grants  the  patent,  that  is  the  end  of  the  matter  as  between  the  government 
and  the  applicant ;  and  if  he  refuses  it,  and  the  court  of  appeals  sustains  him, 
that  is  merely  a  qualified  finality,  for,  as  we  have  seen,  the  decision  of  that 
court  may  be  challenged  generally  and  a  refusal  of  patent  may  be  reviewed 
and  contested  by  bill  as  provided. — Frasch  v.  Moore,  211  U.  S.  1;  L.  Ed.; 
29  S.  Ct.  6. 

Steinmetz  v.  Allen,  192  U.  S.  543;  Butterworth  v.  IT.  S.  112  IT.  S.  60;  Rous- 
seau v.  Brown,  21  App.  D.  C.  73. 

The  rule  of  Frasch  v.  Moore,  211  U.  S.  1,  followed  in  Johnson  v.  Mueser, 
212  U.  S.  283;  L.  Ed.;  29  S.  Ct.  390. 

It  is  believed  by  this  court  that  the  practice  of  certification  is  intended  to 
be  availed  of  onlv  when  the  certifying  court  is  in  doubt  about  the  specific-ques- 
tion or  questions  certified.  —  Sigafus  v.  Porter,  85  Fed.  689;  29  C.  C.  A.  391. 

§  144.    Miscellaneous  Rules. 

Defenses  mentioned  in  a  brief  but  not  raised  upon  the  argument  will 
not  be  considered  here.  —  Agawam  v.  Jordan,  74  U.  S.  583;   19  L.  Ed.  177- 


152 


THE    FIXED    LAW    OF    PATENTS 


§§  145-147 


Where  the  record  shows  that  complainant  declared  infringement  for  cer- 
tain claim  or  claims  and  waived  the  others,  only  the  claims  declared  upon 
will  be  considered  on  appeal.  —  Doze  v.  Smith,  69  Fed.  1002;  16  C.  C.  A.  581. 

It  appears  that,  where  the  validity  of  a  patent  is  the  main  question  in 
a  co-pending  suit,  the  court  will,  if  possible  so  to  do,  leave  such  question 
to  a  full  determination  in  such  co-pending  suit,  see  Hunt  v.  Milwaukee,  148 
Fed.  220;  78  C.  C.  A.  116. 

Upon  this  appeal  the  appellant  only  has  appeared.  Being,  therefore,  with- 
out the  benefits  accruing  from  a  presentation  of  both  sides  of  the  case,  we 
deem  it  advisable  only  to  consider  the  particular  grounds  upon  which  the  Cir- 
cuit Court  acted,  and  shall  not  consider  ourselves  precluded  from  examining 
anew  other  questions  and  reaching  a  different  conclusion  should  another  case 
be  fully  presented.  —  Hartford  v.  Hollander,  163  Fed.  948;  C.  C.  A. 

ARBITRATION. 

Decision  of  Arbitrator  —  Force  and  |      Effect  §  1 15 

§  145.    Decision  of  Arbitrator  —  Force  and  Effect. 

Nothing  is  exhibited  in  the  record  to  show  that  the  arbitrator  erred  in  the 
construction  of  the  patent,  and  if  he  did  not  and  his  finding  as  to  the  character 
of  the  machine  manufactured  by  the  respondent  is  correct,  it  is  settled  law 
that  his  decision  is  correct.  —  Reedy  v.  Scott,  90  U.  S.  352;  23  L.  Ed.  109. 

Gill  v.  Wells,  89  U.  S.  1;  Gould  v.  Rees,  15  Wall.  194;  Vance  v.  Campbell, 
1  Black.  428;  Prouty  v.  Ruggles,  16  Pet.  341;  Carver  v.  Hyde,  16  Pet.  514; 
Brooks  v.  Fiske,  15  How.  212;  Stimpson  v.  R.  R.  10  How.  329. 


ART. 

Statutory  Provision  §  146 
Definition  5  147 


I    Art  and  Process  §  148 
J   See  —  Process  §  813 


§  146.    Statutory  Provision. 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new  and  useful 
improvements  thereof  *  *  *.  —  4886,  R.  S. 

§  147.    Definition. 

No  one  has,  and  I  think  no  one  ever  will,  give  a  satisfactory  definition 
of  the  word  "  art  "  as  used  in  the  Patent  Statute.  The  Supreme  Court  has 
thus  defined  it  by  illustration : 

In  this  art  —  or,  what  is  the  same  thing  under  the  patent  law,  this  process, 
this  way  of  transmitting  speech  —  electricity,  one  of  the  forces  of  nature, 
is  employed;  but  electricity,  left  to  itself,  will  not  do  what  is  wanted.  The 
art  consists  in  so  controlling  the  force  as  to  make  it  accomplish  the  purpose. 
It  had  long  been  believed  that  if  the  vibrations  of  air  caused  by  the  voice 
in  speaking  could  be  reproduced  at  a  distance  by  means  of  electricity,  the 
speech  itself  would  be  reproduced  and  understood.  How  to  do  it  was  the 
question.  Bell  discovered  that  it  could  be  done  by  gradually  changing  the 
intensity  of  a  continuous  electric  current,  so  as  to  make  it  correspond  ex- 
actly to  the  changes  in  the  density  of  the  air  caused  by  the  sound  of  the 
voice.  This  was  his  art.  He  then  devised  a  way  in  which  these  changes 
of  intensity  could  be  made  and  speech  actually  transmitted.  Thus  his  art 
was  put  in  practical  use.  —  Telephone  Cases,  126  U.  S.  1;  31  L.  Ed.  863; 
8  S.  Ct.  778. 

But  the  thing  which  Bell  patented  was  a  machine  —  a  telephone.  Is 
an"  art,"  therefore,  a  "  machine?  "  The  process  of  making  nitro-glycerine 
was  a  new  and  useful  "  art,"  and  patentable;  and  the  article  itself,  as  a 
manufacture,  was  patentable.  Aerial  navigation  is  a  new  and  useful  art; 
but  it  is  self-evident  that  no  one  will  be  granted  a  patent  on  the  art  of  flying. 


§  148  ASSIGNMENT  153 

Many  patents  will  be  issued  on  machines  used  in  the  art.  Nor  does  it  help 
matters  to  say  that  it  means  the  "  mechanical  arts,"  for  so  defined,  in  spite 
of  the  qualifications  of  novelty  and  utility  imposed  by  the  statute,  it  is  still 
too  broad;  for  it  would  include  many  things  that  are  merely  mechanical 
skill.  We  have  all  of  us  seen  persons  possessed  of  some  remarkable  mechan- 
ical art,  such  as  turning  an  almost  perfect  sphere,  or  giving  a  tool  a  remark- 
ably fine  temper,  or  dyeing  an  article  with  remarkable  exactness.  These  are 
mechanical  arts  —  arts  of  individuals  —  but  they  are  not,  per  se,  patentable. 
And  yet,  the  use  of  the  term  in  the  statute  has  been  a  most  desirable  one, 
since  its  very  vagueness  has  produced  a  resiliency  in  the  otherwise  hard- 
and-fast  terms  of  the  statute,  and  has  enabled  the  Patent  Office  and  the 
courts  to  reward  those  pioneers  whose  basic  discoveries  have  often  been  too 
large,  too  simple,  too  generic  to  be  limited  to  a  specific  machine  or  the 
specific  steps  of  a  process.  It  would  not  be  far  from  the  truth  to  say,  that 
the  term  "  art,"  as  used  in  the  statute,  has  opened  the  way  for  the  courts 
to  build  up  the  doctrine  of  equivalents  and  establish  that  aristocracy  among 
inventors  known  as  "  Pioneers." 

§  148.     Art  and  Process. 

We  think  that  the  method  or  art  covered  by  the  patent  is  patentable  as 
a  process,  irrespective  of  the  apparatus  or  instrumentality  for  carrying  it 
out.  —  New  Process  v.  Maus,  122  U.  S.  413;  30  L.  Ed.  1193;  7  S.  Ct.  1304. 

Corning  v.  Burden,  56  U.  S.  252;  Cochrane  v.  Deener,  94  U.  S.  780;  Tilghman 
v.  Proctor,  102  U.  S.  707. 

The  patent  for  the  art  does  not  necessarily  involve  a  patent  for  the  par- 
ticular means  employed  for  using  it.  Indeed,  the  mention  of  any  means, 
in  the  specification  or  descriptive  portion  of  the  patent,  is  only  necessary 
to  show  that  the  art  can  be  used ;  for  it  is  only  useful  arts  —  arts  which  may 
be  used  to  advantage  —  that  can  be  made  the  subject  of  a  patent.  The 
language  of  the  statute  is  that  "  any  person  who  has  invented  or  discovered 
any  new  and  useful  art,  machine,  manufacture  or  composition  of  matter  " 
may  obtain  a  patent  therefor.  Thus  an  art  —  a  process  —  which  is  useful 
is  as  much  the  subject  of  a  patent  as  a  machine,  manufacture  or  composition 
of  matter.  —  Telephone  Cases,  126  U.  S.  1 ;  31  L.  Ed.  863 ;  8  S.  Ct.  778. 

Corning  v.  Burden,  56  U.  S.  252;  Cochrane  v.  Deener,  94  U.  S.  780;  Tilghman 
v.  Proctor,  102  U.  S.  708;    New  Process  v.  Maus,  122  U.  S.  413. 

It  is  manifest  that  the  subject-matter  of  the  claims  (a  system  for  hotel 
and  restaurant  checks)  is  not  a  machine,  manufacture  or  composition  of 
matter.  If  within  the  language  of  the  statute  at  all,  it  must  be  as  a  "  new  and 
useful  art."  One  of  the  definitions  given  by  Webster  of  the  word  "  art  " 
is  as  follows:  "  The  employment  of  means  to  accomplish  some  desired  end; 
the  adaptation  of  things  in  the  natural  world  to  the  uses  of  life ;  the  appli- 
cation of  knowledge  or  power  to  practical  purposes."  In  the  sense  of  the 
patent  law,  an  art  is  not  a  mere  abstraction.  A  system  of  transacting 
business  disconnected  from  the  means  for  carrying  out  the  system  is  not, 
within  the  most  liberal  interpretation  of  the  term,  an  art.  Advice  is  not 
patentable.  —  Hotel  v.  Lorraine,  160  Fed.  467;  87  C.  C.  A.  451. 

Fowler  v.  City  of  N.  Y.,  121  Fed.  747. 


ASSIGNMENT. 

Statutory  Provisions  §  149 
Definition  §  150 

Action  to  Compel  §  151  (see  §  24) 
Before  Patent  §  152 


Conditions  and  Reservations  §  153 
Construction  §  154 
Copartnership  §   155  (see  §  270) 
Corporation  §  156  (see  §  271) 


154 


THE    FIXED    LAW    OF    PATENTS 


§§  149-150 


Debtor  and  Creditor  §  157 

Evidence  §  158  (see  §  388) 

Execution  §  159 

Future  Inventions 
Legality  §  160 
Recording  §  161 
What  are  Not  §  162 
Miscellaneous  Rules  §  163 

Interests  Assignable  §  164 

License  §  165  (see  §  749) 

Notice 

Bona  Fide  Purchaser  §  166 
Constructive  §   167 

Parol  §  168 

Part  Interest  §  169 


Pendente  Lite  §  170 
Power  of  Attorney  §  171 
Recording  §  172  (see  §  388) 
Reissue  §  173  (see  §  869) 
Specific  Performance  §  174 
Territorial  §  175 
Miscellaneous  Ridings  §  176 
See  —  Attorneys  §   179;    Bankruptcy 
§    182;     Employer  and  Employe    §§ 
365-6;     Evidence    §    394;     Infringe- 
ment   §§    449-51,    509-13;    License 
§  749;   Licensor  and   Licensee  §  765; 
Mortgage    §    778;     Royalties    §    897; 
State  Statutes  §  920;    title  §  925 


§  149.     Statutory  Provisions. 

Sections  4895,  4897,  4898,  4899,  4934  and  5046  provide  for  the  assignment 
and  recording  assignments  of  inventions  and  of  letters  patent. 

§  150.     Definition. 

The  monopoly  thus  granted  is  one  entire  thing  and  cannot  be  divided 
into  parts  except  as  authorized  by  law. 

The  patentee  or  his  assigns  may,  by  instrument  in  writing,  assign,  grant 
and  convey,  either  (1)  the  whole  patent  comprising  the  exclusive  right  to 
make,  use  and  vend  the  invention  throughout  the  U.  S. ;  or,  (2)  an  undivided 
part  or  share  of  that  exclusive  right;  or,  (3)  the  exclusive  right  under  the 
patent  within  and  throughout  a  specified  part  of  the  United  States.  (Rev. 
Stat.  sec.  4898.)  A  transfer  of  either  of  these  three  kinds  of  interests  is  an 
assignment  properly  speaking,  and  vests  in  the  assignee  a  title  in  so  much 
of  the  patent  itself,  with  a  right  to  sue  infringers;  in  the  second  case  jointly 
with  the  assignor,  in  the  first  and  third  cases  in  the  name  of  the  assignee  alone. 
Any  assignment  or  transfer  short  of  one  of  these,  is  a  mere  license,  giving  the 
licensee  no  title  in  the  patent ;  and  no  right  to  sue  at  law  in  his  own  name  for 
infringement.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923; 
11  S.  Ct.  334. 

R.  S.  sec.  4919;   Gayler  v.  Wilder,  51  U.  S.  477;   Moore  v.  Marsh,  74  U.  S.  515. 

A  grant,  transfer,  or  conveyance  of  these  exclusive  rights  throughout 
the  United  States,  or  a  grant  of  an  undivided  part  of  these  exclusive  rights, 
or  a  grant  of  these  exclusive  rights  throughout  a  specified  part  of  the  United 
States,  is  an  assignment  of  an  interest  in  the  patent,  by  whatever  name  it 
may  be  called.  A  grant,  transfer,  or  conveyance  of  any  right  or  interest 
less  than  these  is  a  license.  —  Paulus  v.  Buck,  129  Fed.  594;  64  C.  C.  A.  162. 

Waterman  v.  Mackenzie.  138  U.  S.  252;  Union  v.  Johnson,  61  Fed.  940;  Pick- 
hardt  v.  Packard,  22  Fed.  530. 

An  assignment  which  is  neither  an  undivided  interest  in  the  whole  patent, 
nor  of  an  exclusive  right  within  a  certain  territory,  is  a  mere  license.  — 
Pope  v.  Gormully,  144  U.  S.  238;  36  L.  Ed.  420;  12  S.  Ct.  637. 

Whether  a  transfer  of  a  particular  right  or  interest  under  a  patent  is  an 
assignment  or  license  does  not  depend  upon  the  name  by  which  it  calls 
itself,  but  upon  the  legal  effect  of  its  provisions.  —  Waterman  v.  Mackenzie, 
138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

Wilson  v.  Rousseau,  45  U.  S.  646;  Gayler  v.  Wilder,  51  U.  S.  477;  Mitchell 
v.  Hawley,  83  U.  S.  544;  Hayward  v.  Andrews,  106  U.  S.  672;  Oliver  v.  Rumford, 
109  U.  S.  75. 


§  151  ASSIGNMENT  155 

§  151.     Action  to  Compel. 

Unquestionably,  a  contract  for  the  purchase  of  any  portion  of  a  patent 
right  may  be  good  as  between  the  parties  as  a  license,  and  enforced  as  such 
in  the  courts  of  justice.  — Gayler  v.  Wilder,  10  How.  477;   13  L.  Ed.  504. 

Where  the  invention  belonged  to  the  employer  and  the  employee  obtained 
the  patent  by  fraud  in  his  own  name,  an  action  to  compel  a  surrender  will  lie. 
—  Appleton  v.  Bacon,  67  U.  S.  699;   17  L.  Ed.  338. 

The  clause  of  the  decree  below,  appointing  a  trustee  to  execute  an  assign- 
ment, if  the  patentee  should  not  himself  execute  one  as  directed  by  the  decree, 
was  clearly  within  the  chancery  powers  of  the  court  as  defined  by  the  statute 
of  Maryland.  —  Ager  v.  Murray,  105  U.  S.  126;  26  L.  Ed.  942. 

As  the  patent  upon  plaintiff's  own  showing  conferred  no  title  or  right 
upon  the  defendant,  a  court  of  equity  will  not  order  him  to  assign  it  to  the 
plaintiff  —  not  only  because  that  would  be  to  decree  a  conveyance  of  prop- 
erty in  which  the  defendant  has,  and  can  confer,  no  title ;  but  also  because 
its  only  possible  value  or  use  to  the  plaintiff  would  be  to  enable  him  to  im- 
pose upon  the  public  by  asserting  rights  under  a  void  patent.  —  Kennedy  v. 
Hazelton,  128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct.  202. 

Post  v.  Marsh,  L.  R.  16  Ch.  Div.  395;   Oldham  v.  James,  14  Irish  Ch.  81. 

If  it  appears  by  the  bill  or  otherwise,  that  the  want  of  title  (even  if  caused 
by  the  defendant's  own  act,  as  by  his  conveyance  to  a  bona  fide  purchaser) 
was  known  to  the  plaintiff  at  the  time  of  beginning  the  suit,  the  bill  will 
not  be  retained  for  assessment  of  damages,  but  must  be  dismissed  and  the 
plaintiff  left  to  his  remedy  at  law.  —  Kennedy  v.  Hazelton,  128  U.  S.  667 ; 
32  L.  Ed.  576;  9  S.  Ct.  202. 

Columbine  v.  Chichester,  2  Phil.  27;  Ferguson  v.  Wilson,  L.  R.  2  Ch.  77; 
Morse  v.  Elmendorf,  11  Paige,  277;    Milkman  v.  Ordway,  106  Mass.  232,  256. 

The  proceedings  supplementary  to  execution,  as  authorized  by  the  laws 
of  New  York,  are  a  substitute  for,  and  in  all  respects  have  the  same  force 
and  effect  as,  an  ordinary  creditor's  bill.  The  receiver,  in  such  proceedings, 
becomes  invested  with  the  title  to  all  the  property  —  equitable  as  well  as 
legal  —  belonging  to  the  judgment  debtor  at  the  time  of  their  institution; 
and  the  court  has  the  power  of  a  court  of  equity  in  such  a  suit  to  compel 
him  to  appropriate  his  property,  including  that  out  of  the  state  (see  Fenner 
v.  Sanborn,  37  Barb.  610),  and  transfer  it  to  the  receiver  towards  the  satis- 
faction of  the  judgment.  In  Ager  v.  Murray,  105  U.  S.  126,  it  was  decided 
that,  notwithstanding  a  patent  cannot  be  seized  and  sold  on  execution, 
it  can  be  reached  by  a  creditor's  bill,  and  applied  to  satisfy  a  judgment 
against  the  owner,  and  a  transfer  by  him  be  compelled  for  that  purpose 
by  the  court.  Although  in  the  present  case  the  court  did  not  —  as  it  might 
have  done  —  compel  Newton  to  make  a  written  transfer  to  the  receiver 
of  his  title  to  the  patent,  it  is  entirely  clear  that  any  equitable  title  which  he 
may  have  had  vested  in  the  receiver,  and  passed  by  the  sale  to  Vermilyea, 
and  from  Vermilyea  to  the  defendant,  by  the  assignment  from  Vermilyea. 
Newton  never  acquired  anything  but  an  equitable  title  to  the  patent,  the 
right  to  compel  a  reformation  of  the  agreement  of  March  6,  1889.  He  did 
not  acquire  the  legal  title,  because,  without  an  assignment  such  as  the  statute 
requires  to  effect  the  transfer  of  a  patent  interest,  that  title  remained  in  the 
prior  owner,  the  present  defendant.  Gayler  v.  Wilder,  10  How.  498.  As 
that  equitable  title  had,  at  the  date  of  his  assignment  to  Dooley,  passed 
to  the  receiver,  and  the  complainant's  title  is  derived  through  that  assign- 


156  THE    FIXED    LAW    OF    PATENTS  §  152 

ment,  she  took  nothing  by  the  instrument.  —  Newton  v.  Buck,  77  Fed.  614; 
23  C.  C.  A.  355. 

Facts:  Defendant  was  employed  by  complainant  as  engineer  in  charge 
of  its  plant  to  manufacture  and  to  improve  its  product.  He  was  paid  from 
$4000  to  $10,000  a  year  for  his  services.  He  made  several  improvements 
and  assigned  several  patents  thereon  to  complainant  absolutely;  in  fact 
he  made  no  claim  to  the  title  of  any  of  his  improvements  until  about  the 
time  he  left  the  employ  of  the  complainant,  when  he  claimed  as  his  own  and 
refused  to  assign  title  to  the  six  inventions  in  suit.  There  was  no  written 
agreement  between  the  parties,  and  no  parol  agreement  specifically  agree- 
ing to  assign  title  was  proved.  Held:  We  do  not  think  that  the  complainant 
here,  in  the  absence  of  express  contract  to  that  effect,  from  the  mere  relation 
of  employer  and  employee,  in  connection  with  the  facts  and  circumstances 
disclosed  in  the  record,  is  entitled,  in  equity  and  good  conscience,  to  an 
assignment  from  the  defendant  of  his  whole  right,  title  and  property  in 
the  inventions  in  question.  If  entitled  to  anything,  complainant  is  only 
entitled  to  a  shop  right  or  license  that  would  enable  it  to  use  these  inventions 
without  paying  a  royalty  therefor,  a  right  which  does  not  strip  defendant 
of  his  entire  property  right  in  the  product  of  his  own  inventive  faculty. 
It  is  by  distinguishing  between  claims  for  mere  shop  rights  or  license,  and 
claims  for  the  entire  and  exclusive  property  right  in  the  inventions  of  the 
employee,  that  the  cases  cited  are  to  be  profitably  read.  This  distinction 
has  been  observed  in  many  cases,  both  federal  and  state.  —  Pressed  Steel  v. 
Hansen,  137  Fed.  403;  71  C.  C.  A.  207. 

Opinion  by  Gray,  C.  J.,  Dallas,  C.  J.  concurring;    and  Acheson,  C.  J. 
dissenting  and  holding  that  the  facts  bring  the  case  within  the  rule  in  Solo- 
mons v.  U.  S.,  137  U.  S.  342;  McAleer  v.  U.  S.,  150  U.  S.  424;  Gill  v.  U.  S., 
160  U.  S.  426. 
Citg.  and  reviewing  fully  main  authorities, 

McClurg  v.  Kingsland,  1  How.  202;  Dalzell  v.  Dueber,  149  U.  S.  315;  Lane  v. 
Locke,  150  U.  S.  193;  Bensley  v.  N.  W.  Horsenail  Co.  26  Fed.  250;  Hermann  v. 
Hermann,  29  Fed.  92;  Boston  v.  Allen,  91  Fed.  248;  Joliet  v.  Dice,  105  111.  649; 
Fuller  v.  Bartlett,  68  Wis.  73. 

Note:  This  decision  is  conclusive,  it  seems  to  me,  upon  this  point:  Re- 
gardless of  the  character  of  the  services  rendered  by  the  employee,  in  the  ab- 
sence of  a  written  agreement  or  a  parol  agreement  unmistakably  proven 
by  which  the  employee  agreed  to  pass  the  title  of  his  inventions  to  his  em- 
ployer, such  employer  will  secure  only  a  shop  right  or  license ;  and  that  a  sharp 
distinction  must  be  drawn  between  the  ordinary  conditions  of  private  em- 
ployment and  the  special  conditions  of  government  employment,  such  as  dis- 
closed in  the  Solomons,  McAleer,  and  Gill  cases  above  cited  by  Acheson,  J. 
dissenting. 

§  152.     Before  Patent. 

The  thing  to  be  assigned  is  not  the  mere  parchment  on  which  the  grant 
is  written.  It  is  the  monopoly  which  the  grant  confers ;  the  right  of  property 
which  it  creates.  And  when  the  party  has  acquired  an  inchoate  right  to  it, 
and  the  power  to  make  that  right  perfect  and  absolute  at  his  pleasure,  the 
assignment  of  his  whole  interest,  whether  executed  before  or  after  the  patent 
is  issued  is  equally  within  the  provisions  of  the  act  of  Congress.  —  Gayler 
v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

It  is  well  settled  that  a  recorded  assignment  of  a  perfected  invention, 
made  before  a  patent  has  been  issued,  carries  with  it  the  patent  when  it  is 
issued.  —  Littlefield  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

Gayler  v.  Wilder,  10  How.  477. 


§  153  ASSIGNMENT  157 

While  it  is,  perhaps,  not  necessary  to  decide  whether  in  any  case  a  sale 
of  an  invention  which  is  never  patented  carries  with  it  anything  of  value, 
we  are  of  opinion  that  the  rights  growing  out  of  an  invention  may  be  sold, 
and  that  in  the  present  case  the  sale,  with  the  right  to  use  it  in  connection 
with  the  existing  patent  and  its  reissue  or  renewals,  protects  defendants 
from  liability.  —  Hammond  v.  Mason,  92  U.  S.  724;  23  L.  Ed.  767. 

Such  an  instrument,  though  executed  before  the  patent  is  granted,  trans- 
fers the  legal  title  to  the  assignee.  —  Hendrie  v.  Sayles,  98  U.  S.  546 ;  25 
L.  Ed.  176. 

Gayler  v.  Wilder,  10  How.  477;  Rathbone  v.  Orr,  5  McLean,  131;  Rich  v. 
Lippincott,  2  Fish.  1;  Herbert  v.  Adams,  4  Mas.  15;  Dixon  v.  Moyer,  4  Wash.  72. 

An  assignment  of  a  patent  is  good  if  made  before  the  patent  is  actually 
obtained  and  should  not  be  treated  as  a  sale  of  personal  property  that  was 
not  in  existence.  —  Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 

Gayler  v.  Wilder,  10  How.  477;   Littlefield  v.  Perry,  21  Wall.  205. 


§  153.     Conditions  and  Reservations. 

It  would  seem  that  conditions  and  reservations  stated  in  the  recorded 
assignments  are  sufficient  to  charge  purchasers  with  notice  as  to  such  matters. 
—  Littlefield  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

The  concluding  provision,  that  the  net  profits  arising  from  sales,  royalties, 
or  settlements,  or  other  sources,  are  to  be  divided  between  the  parties  to 
the  assignment  so  as  to  give  the  patentee  one  fourth  thereof,  does  not  in  any 
respect,  modify  or  limit  the  absolute  transfer  of  title.  It  is  a  provision  by 
which  the  consideration  for  the  transfer  is  to  be  paid  to  the  grantor  out  of 
the  net  profits  made ;  it  reserves  to  him  no  control  over  the  patents  or  their 
use  or  disposal,  or  any  power  to  interfere  with  the  management  of  the  busi- 
ness growing  out  of  their  ownership.  The  clause  appointing  the  assignees 
attorneys  of  the  grantor,  with  authority  to  use  his  name  whenever  they 
deem  proper  in  such  management,  does  not  restrict  in  any  way  the  power 
of  the  assignee  after  the  transfer  of  the  property.  —  Rude  v.  Westcott, 
130  U.  S.  152;  32  L.  Ed.  888;  9  S.  Ct.  463. 

Tilghman  v.  Proctor,  125  U.  S.  136. 

An  adequate  assignment  is  not  defeated  by  a  subsequent  conditional 
agreement,  conditioning  the  assignment  with  specified  requirements,  where 
such  conditions  have  been  fulfilled.  —  Boesch  v.  Graff,  133  U.  S.  697;  33 
L.Ed.  787;  10S.Ct.378. 

An  assignment  of  the  entire  patent,  or  of  an  undivided  part  thereof, 
or  of  the  exclusive  right  under  the  patent  for  a  limited  territory  may  be 
either  absolute  or  by  way  of  mortgage  and  liable  to  be  defeated  by  non 
performance  of  a  condition  subsequent,  as  clearly  appears  in  the  provision 
of  the  Statute,  that  "  an  assignment  grant  or  conveyance  shall  be  void 
as  against  any  subsequent  purchaser  or  mortgagee  for  a  valuable  considera- 
tion without  notice,  unless  it  is  recorded  in  the  Patent  Office  within  three 
months  from  the  date  thereof."  R.  S.  sec.  4898.  —  Waterman  v.  Mackenzie, 
138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

The  title  was  conveyed  to  complainant  subject  only  to  certain  conditions, 
and  the  assignor  had  no  more  right  to  it  than  a  stranger  so  long  as  the  con- 
ditions should  remain  unbroken.  If  the  complainant  should  fail  to  keep  his 
covenants,  then  the  conditions  would  be  broken,  and  the  property  would 
revert.    Until  this  event  happens  the  complainant  has  the  right  to  jDrotect 


158  THE    FIXED    LAW    OF    PATENTS  §  154 

his  interests  by  suing  infringers  of  the  patent.  —  Piatt  v.  Fire  Extinguisher,  59 
Fed.  897;  8  C.  C.  A.  357. 

Littlefield  v.  Perry,  21  Wall.  205. 

§  154.     Construction. 

When  there  is  doubt  as  to  the  proper  construction  of  an  instrument, 
the  intention  of  the  parties  is  entitled  to  great  consideration.  But  when  its 
meaning  is  clear  in  the  eye  of  the  law,  the  error  of  the  parties  cannot  control 
its  effect.  —  Railroad  v.  Trimble,  77  U.  S.  367;  19  L.  Ed.  949. 

The  assignment  transferred  the  patent  together  with  alterations,  improve- 
ments for  the  terms  for  which  patents  had  theretofore  been  or  might  there- 
after be  granted.  Held:  to  mean  precisely  what  it  said.  —  Railroad  v. 
Trimble,  77  U.  S.  367;  19  L.  Ed.  949. 

Gayler  v.  Wilder,  10  How.  477;  distinguishing  Wilson  v.  Rousseau,  4  How.  682. 

An  assignment  of  an  interest  in  an  invention  secured  by  letters  patent,  is 
a  contract,  and,  like  all  other  contracts,  is  to  be  construed  so  as  to  carry  out 
the  intention  of  the  parties  to  it.  —  Nicholson  v.  Jenkins,  81  U.  S.  452;  20 
L.  Ed.  777. 

Two  contracts  were  made  at  the  same  time.  The  one,  on  its  face  assigning 
the  patent  but  referring  to  the  other  agreement  as  part  of  the  same  contract, 
was  recorded.  The  other  was  not.  Held:  for  the  purpose  of  ascertaining 
the  intention  of  the  parties  in  making  their  contract,  the  two  instruments, 
executed  as  they  were  at  the  same  time,  and  each  referring  to  the  other  are 
to  be  construed  together.  —  Littlefield  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

The  suggestion  that  "  the  test  "  of  whether  title  passed  by  the  assignment 
in  question  is  "  whether  such  paper  could  be  recorded  "  under  sec.  4898 
has  been  attentively  considered,  but  cannot  be  accepted.  That  section 
provides  that  "  every  patent  *  *  *  shall  be  assignable  in  law  by  an 
instrument  in  writing,"  and  makes  an  assignment  void  for  omission  to 
record  only  "  as  against  any  subsequent  purchaser  or  mortgagee,"  etc. 
In  this  instance  we  have  a  writing  which,  as  was  said  by  the  learned  judge 
below,  is  an  assignment,  in  terms,  "  of  all  the  property  of  the  company 
executing  it,  *  *  *  specifically  including  also  '  the  good  will,  patents, 
trademarks  '  "  etc.  Of  course,  the  word  "  patents  "  included  every  patent 
which  was  assignable  by  the  assignor  (Herring-Hall-Marvin  v.  Hall,  208 
U.  S.  554);  and  with  respect  to  the  parties  to  this  cause,  it  is  immaterial 
whether  the  instrument  was  or  was  not  eligible  for  record.  —  Delaware  v. 
Shelby,  160  Fed.  928;  88  C.  C.  A.  110. 

To  preserve  their  joint  property  and  prevent  its  practical  destruction 
by  co-owners,  it  is  imperative  that  all  should  be  permitted  to  simply  vest 
the  legal  title  in  one  without  imposing  any  active  duties  on  such  holding 
trustee,  and  this  shows  that,  while  there  are  no  express  duties  for  the  trustee 
to  perform,  it  by  no  means  follows  the  trust  is  a  dry  or  inactive  one.  As 
holder  of  the  legal  title  he  can  bring  suit,  enjoin  infringers  from  destroying 
the  patent,  and  the  mere  holding  of  the  legal  title  in  trust  per  se  preserves 
the  patent  for  the  common  good  and  prevents  its  destruction  by  each  co- 
owner.  We  are  of  opinion  that  these  views  have  actuated  patent  practi- 
tioners in  thus  vesting  the  legal  titles  to  patents  in  trustees,  and  that  a 
holding  that  such  an  instrument,  contrary  to  its  plain  intent,  executed  it- 
self and  left  the  equitable  owners  as  free  to  use  and  license  as  before  would 
be  most  unfortunate  in  its  unsettling  effects.  The  intent  and  effect  of  this 
instrument  we  therefore  hold  was  to  vest  and  retain  the  legal  title  to  this 


§§  155-157  ASSIGNMENT  159 

patent  in  McDuffee,  as  trustee;  but  the  equitable  ownership  thereof  re- 
mained in  his  cestuis  que  trustent,  and  without  their  consent  he  could  not 
convey  such  legal  title,  or  any  part  thereof.  —  McDuffee  v.  Hestonville,  162 
Fed.  36;  89  C.  C.  A.  76. 

Duncan  v.  Jandow,  82  U.  S.  165;   Flitcraft  v.  Com.  Title,  211  Pa.  119. 

§  155.     Copartnership. 

An  assignment  of  a  patent  by  one  of  two  copartners  to  the  other,  for  the 
use  of  the  copartnership  terminates  with  the  copartnership.  —  Denning  v. 
Bray,  61  Fed.  651 ;  10  C.  C.  A.  6. 

We  think  the  effect  of  the  assignment  was  to  transfer  a  one-half  interest 
to  the  other  partner,  nothing  appearing  to  show  that  the  partners  stood  upon 
unequal  terms.  —  Canada  v.  Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 

§  156.     Corporation. 

Assignments  of  patents  made  by  corporations  need  not  be  under  seal.  — 
Gottfried  v.  Miller,  104  U.  S.  521 ;  26  L.  Ed.  851. 

Bank  v.  Patterson,  7  Cranch,  299;  Fleckner  v.  Bank,  8  Wheat.  338;  Turnpike 
v.  Hay,  7  Mass.  102;  Dunn  v.  Rector,  14  Johns,  118;  Kennedy  v.  Ins.  Co.  3  Har. 
&  J.  367;  Stanley  v.  Hotel,  13  Me.  51;  Fanning  v.  Gregorie,  16  How.  524;  Mott 
v.  Hicks,  1  Cow.  513;  Bowen  v.  Morris,  2  Taunt.  374;  Shelton  v.  Darling,  2  Conn. 
435;    Brockway  v.  Allen,  17  Wend.  40. 

The  attachment  of  the  stock  of  a  stockholder  in  a  corporation  does  not 
in  any  way  prevent  such  corporation  from  executing  an  assignment  of  a 
patent.  —  Gottfried  v.  Miller,  104  U.  S.  521 ;  26  L.  Ed.  851. 

It  is  alleged  that  the  conveyance  from  the  Firm  Company  to  Firm  was 
void  by  reason  of  the  N.  Y.  statute  which  so  declares  to  be  certain  transfers 
to  its  officers  for  the  payment  of  any  debts.  We  have  been  cited  to  no 
decision  of  the  courts  of  that  state  holding  that  when  the  transfer  has  been 
made,  and  is  unchallenged  by  the  corporation,  its  receiver,  its  judgment 
creditors,  or  any  stockholder,  the  transfer  shall,  at  the  instance  of  a  stran- 
ger in  interest  and  title,  and  against  an  innocent  purchaser  from  the  cor- 
poration's grantee,  be  adjudged  absolutely  void.  In  the  absence  of  such 
construction,  we  are  of  the  opinion  that  the  title  acquired  by  the  complain- 
ant was,  if,  indeed,  questionable,  not  void,  but  voidable,  and,  in  the  absence 
of  any  step  to  avoid  it,  must,  for  the  purpose  of  this  case,  be  deemed  to  vest 
the  legal  title  to  the  patent  in  question  in  the  complainant.  —  Goss  v.  Scott, 
108  Fed.  253;  47  C.  C.  A.  302. 

§  157.     Debtor  and  Creditor. 

Under  the  copyright  law,  the  sale  on  execution  of  a  copper  plate  does  not 
entitle  the  purchaser  to  produce  and  sell  the  copyrighted  matter.  But  the 
copyright  may  be  reached  by  a  creditor's  bill.  —  Stephens  v.  Cady,  14  How. 
528;   14  L.  Ed.  528. 

See  Stevens  v.  Gladding,  58  U.  S.  447,  to  same  effect. 

It  is  within  the  general  jurisdiction  of  a  court  of  chancery  to  assist  a  judg- 
ment creditor  to  reach  and  apply  to  the  payment  of  his  debt  any  property 
of  the  judgment  debtor,  which  by  reason  of  its  nature  only,  and  not  by 
reason  of  any  positive  rule  exempting  it  from  liability  from  debt,  cannot 
be  taken  on  execution  at  law;  as  in  the  case  of  trust  property  in  which  the 
judgment  debtor  has  the  entire  beneficial  interest,  of  snares  of  a  corpora- 
tion, or  of  choses  in  action.  —  Ager  v.  Murray,  105  U.  S.  126;  26  L.  Ed.  942. 


160  THE    FIXED    LAW    OF    PATENTS  §  158 

McDermutt  v.  Strong,  4  Johns.  Ch.  687;  Spader  v.  Davis,  5  Johns.  Ch.  280; 
Hadden  v.  Spader,  20  Johns.  Ch.  554;  Edmeston  v.  Lyde,  1  Paige,  637;  Wiggin 
v.  Heywood,  118  Mass.  514;  Sparhawk  v.  Cloon,  125  Mass.  263;  Daniels  v.  El- 
dredge,  125  Mass.  356;  Dake  v.  Rice,  130  Mass.  410;  Stephens  v.  Cady,  14  How. 
528;    Stevens  v.  Gladding,  17  How.  447. 

A  patent  or  copyright  which  vests  the  sole  and  exclusive  right  of  making, 
using  and  vending  the  invention  or  of  publishing  and  selling  the  book,  in 
the  person  to  whom  it  has  been  granted  by  the  government,  as  against  all 
persons  not  deriving  title  through  him,  is  property,  capable  of  being  assigned 
by  him  at  his  pleasure,  although  his  assignment,  unless  recorded  in  the 
proper  office,  is  void  against  subsequent  purchasers  or  mortgagees  for  a  valu- 
able consideration  without  notice.  R.  S.  4884,  4898,  4952,  4955.  And  the 
provisions  of  the  patent  and  copyright  Acts,  securing  a  sole  and  exclusive 
right  to  the  patentee,  do  not  exonerate  the  right  and  property  thereby 
acquired  by  him,  of  which  he  receives  the  profits,  and  has  the  absolute  title 
and  power  of  disposal,  from  liability  to  be  subjected  by  suitable  judicial 
proceedings  to  the  payment  of  his  debts.  —  Ager  v.  Murray,  105  U.  S.  126; 
26  L.  Ed.  942. 

There  are  decisions  in  the  circuit  courts  that  an  assignee  in  insolvency, 
or  a  receiver,  of  all  the  property  of  a  debtor,  appointed  under  the  laws  of 
the  state,  does  not,  by  virtue  of  the  general  assignment  or  apportionment 
merely,  without  any  conveyance  made  by  the  debtor  or  specifically  ordered 
by  the  court  acquire  a  title  in  patent  rights.  But  in  Ashcroft  v.  Walworth, 
1  Holmes,  152,  Judge  Shepley  clearly  intimated  that  the  courts  of  the  state 
might  have  compelled  the  debtor  to  execute  such  a  conveyance.  And  the 
highest  courts  of  New  York  and  California  have  affirmed  the  power,  upon  a 
creditor's  bill,  to  order  the  assignment  and  sale  of  a  patent  right  for  the 
payment  of  the  patentee's  judgment  debts.  —  Ager  v.  Murray,  105  U.  S.  126 : 
26  L.  Ed.  942. 

Gordon  v.  Anthony,  16  Blatchf.  234;  Gillett  v.  Bate,  86  N.  Y.  87;  Bank  v. 
Robinson,  57  Cal.  520. 

The  present  license  contained  no  words  which  show  that  it  was  intended 
to  be  assigned,  and  was  purely  a  personal  license.  Consequently  the  receiver 
could  not  acquire  it.  —  Waterman  v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371. 

§  158.     Evidence. 

The  appellee  produced  a  license  in  its  possession,  absolute  on  its  face 
and  without  any  limitation  or  condition.  The  burden  of  proof  is  upon 
the  appellants  to  show  that  it  was  delivered  as  an  escrow.  —  Mellon  v. 
D.  L.  &  W.,  154  U.  S.  673;  26  L.  Ed.  929;  14  S.  Ct.  1194. 

Certified  copies  of  patent  office  records  of  instruments  filed  for  record 
are  not  prima  facie  proof  of  either  the  execution  or  the  genuineness  of  the 
original.  The  assignment  of  a  patent  is  not  a  public  document,  but  is  merely 
a  private  writing.  There  is  no  statutory  provision  requiring  it  to  be  recorded 
in  the  patent  office.  Section  4898  R.  S.  permits  this  to  be  done  for  the  pro- 
tection of  the  assignee  against  a  subsequent  bona  fide  purchaser  or  mort- 
gagee. The  section  does  not  make  the  recorded  instrument  evidence,  does 
not  require  the  assignment  to  be  executed  in  the  presence  of  any  public 
officer,  or  to  be  acknowledged  or  authenticated  in  any  way  before  recording, 
and  does  not  provide  or  contemplate  that  it  shall  remain  subsequently  in 
the  custody  of  the  office.  It  devolves  upon  the  patent  office  merely  the 
clerical  duty  of  recording  any  instrument  which  purports  to  be  the  assign- 
ment of  a  patent.    We  are  aware  of  no  principle  which  gives  to  such  a  record 


§  158  ASSIGNMENT  161 

the  effect  of  primary  evidence,  or  of  prima  facie  proof  of  the  execution  or 
the  genuineness  of  the  original  document.  —  Mayor  v.  American,  60  Fed. 
1016;  9  C.  C.  A.  336. 
Disapproving  and  reviewing  in  substance, 

Brooks  v.  Jenkins,  3  McLean,  432;  Parker  v.  Haworth,  4  McLean,  370;  Lee  v. 
Blandy,  1  Bond.  361;  Dederick  v.  Agricultural,  26  Fed.  763;  National  v.  Ameri- 
can, 55  Fed.  488;    Approving  Paine  v.  Trask,  56  Fed.  233. 

Section  4898  does  not  require  that  any  instrument  in  the  chain  of  title 
to  a  patent  shall  be  recorded,  but  all  such  assignments  may  be  recorded. 
The  sense  —  the  essential  significance  and  intent  —  of  this  section  is  that 
the  record  or  official  copy  of  any  assignment  shall  give  to  any  person  in- 
terested the  prima  facie  assurance  that  an  original  assignment  was  made 
in  terms  as  shown  in  the  record,  that  such  instrument  was  subscribed  as 
shown,  that  it  was  delivered,  that  the  signature  thereto  is  the  genuine  sig- 
nature of  the  assignor,  and  that  such  assignor  had  an  assignable  interest 
according  to  the  purport  of  the  instrument.  The  record  of  assignments  in  the 
patent  office  is  a  record  "  belonging  to  the  patent  office,"  within  the  literal 
terms  of  sec.  892.  But,  in  the  absence  of  that  section,  and  on  the  general 
principles  of  evidence,  a  paper  purporting  to  be  a  copy  of  a  record  in  the 
patent  office  could  be  proven  to  be  such  copy  by  the  sworn  testimony  of 
the  person  who  made  it,  or  of  a  person  who  had  compared  it  with  the  origi- 
nal record  in  the  patent  office.  The  view  here  stated  as  to  the  prima  facie 
probative  force  of  a  copy  from  the  record  of  an  assignment  in  the  patent 
office  has  been  substantiallv  taken  in  many  reported  decisions.  Brooks  v. 
Jenkins,  Fed.  Cas.  No.  1,953;  Parker  v.  Haworth,  Fed.  Cas.  No.  10,738; 
Lee  v.  Blandy,  Fed.  Cas.  No.  8,182;  Dederick  v.  Agricultural  Co.,  26 
Fed.  763 ;  National  v.  American,  55  Fed.  488.  The  only  question  presented 
by  the  record  is  the  prima  facie  probative  force  of  the  patent  office  record 
of  an  assignment.  In  New  v.  American,  60  Fed.  1016,  the  federal  court 
of  appeals  at  N.  Y.,  following  an  obiter  dictum  by  the  federal  court  of  appeals 
at  Boston  in  Paine  v.  Trask,  56  Fed.  233,  decided  that  under  the  sections 
above  quoted  from  the  Revised  Statutes  a  certified  copy  from  the  records 
in  the  patent  office  would  not  prima  facie  prove  the  assignment  without  a 
further  showing  as  to  the  execution  of  the  original  instrument.  It  is  argued 
that  the  statute  does  not  require  an  assignment  to  be  recorded,  that  the 
original  is  not  left  in  the  custody  of  the  patent  office,  and  that  no  certificate 
of  acknowledgment  or  proof  of  execution  is  required  by  the  statute  to  be 
made  in  connection  with  such  instrument.  But  the  line  of  reasoning  upon 
which  the  courts  have  developed  the  rule  already  stated  does  not  involve 
any  one  of  the  conditions  named.  The  statute  makes  it  the  duty  of  the 
commissioner  of  patents  to  record  assignments  that  are  genuine.  He  has 
no  authority  to  record  a  spurious  instrument.  A  spurious  assignment  re- 
corded in  the  patent  office  would  not  be  in  law  a  record  of  that  office.  The 
record  of  an  assignment  is,  in  law,  tantamount  to  a  finding  or  certificate 
by  the  commissioner  that  the  original  is  genuine.  It  matters  not  that  the 
commissioner  may  act  on  the  mere  assumption  that  whatever  paper  of  this 
kind  is  presented  for  record  is  genuine.  He  is  a  public  officer,  charged  by 
law  with  the  duty  of  recording  only  such  as  are  genuine.  The  argument 
that  a  spurious  assignment  may  be  mistakenly  put  upon  the  record  might 
be  urged  against  the  policy  of  the  statute,  but  not  against  the  obvious  sense 
of  it.  Such  an  argument  might  also  be  urged  against  the  ordinary  statutes 
for  recording  deeds.  This  court  cannot  accede  to  the  view  announced  in 
N.  Y.  v.  American,  supra.  The  rule  as  understood  and  acted  upon  prior 
to  that  decision,  is  considered  by  this  court  to  be  law.  For  52  years  (Brooks 
v.  Jenkins,  supra,  was  decided  in  1844)  that  rule  has  prevailed.  As  pointed 
out  by  Judge  Coxe  in  National  v.  American,  supra,  a  holding  that  the  patent 
office  record  of  an  assignment  shall  have  no  force  as  prima  facie  proof  of 


162  THE    FIXED    LAW    OF    PATENTS  §§  159-160 

the  original  writing  would  often  entail  great  and  useless  expense,  if  not  an 
entire  defeat  of  the  rights  of  the  complainant  in  a  patent  case.  A  spurious 
or  counterfeit  assignment  put  on  record  in  the  patent  office  would  be  easily 
and  certainly  detected  by  any  person  interested  in  the  inquiry,  especially 
in  the  case  of  any  patent  of  real  value.  The  possible  gain  from  such  a  ras- 
cality would  not  be  worth  the  risk.  The  complainant  in  a  patent  suit  is 
ordinarily  making  actual  use  of  the  patent.  What  may  be  called  his  pos- 
session of  the  patent  property  is  usually  open  and  notorious.  It  is  no  hard- 
ship upon  an  infringer  who,  claiming  no  right  in  himself,  proposes  to  dispute 
the  showing  of  the  patent  office  on  the  matter  of  title,  to  require  from  him 
such  proof  as  may  at  least  raise  a  fair  presumption  that  the  original  of  some 
assignment  shown  of  record  in  the  chain  of  title  is  spurious.  —  Standard  v. 
Crane,  76  Fed.  767;  22  C.  C.  A.  549. 
Woods  dissenting. 

§  159.     Execution. 

Need  not  be  under  seal.  —  Gottfried  v.  Miller,  104  U.  S.  521 ;  26  L.  Ed. 
851. 

It  is  always  open  to  show  that  an  instrument  produced  in  evidence,  whether 
in  an  action  at  law  or  a  suit  in  equity  in  support  of  a  claim  or  defense,  was 
never  executed  by  the  person  whose  signature  it  bears.  —  Marsh  v.  Nichols, 
128  U.  S.  605;  32  L.  Ed.  538;  9  S.  Ct.  168. 

Section  5  of  the  act  of  Mar.  3,  1897  is  a  statute  which  was  intended  to 
declare  the  evidential  effect  to  be  given  to  acknowledgments  before  a  notary, 
after  a  given  date,  without  special  reference,  however,  to  the  time  when 
the  acknowledgment  was  taken;  and  in  the  absence  of  any  specific  pro- 
vision that  it  should  apply  only  to  acknowledgments  taken  subsequently 
to  Jan.  1,  1898,  we  perceive  no  sufficient  reason  why  it  should  be  limited 
in  its  operation  to  acknowledgments  so  taken.  —  Lanyon  v.  Brown,  115 
Fed.  150;  53  C.  C.  A.  354. 

DeLaval  v.  Vermont,  109  Fed.  813. 

Section  4898  of  the  Revised  Statutes,  as  amended  by  Act  March  3,  1897, 
simply  provides  a  new  method  of  proof.  The  evident  intent  of  the  act 
was  to  substitute  proof  of  execution  by  acknowledgment,  instead  of  by 
the  production  of  the  subscribing  witness,  if  there  were  one,  or  proof  of  the 
handwriting  of  the  assignor,  if  there  were  no  subscribing  witness.  In  De- 
Laval  v.  Vermont,  109  Fed.  813  it  was  held  that  assignments  which  were 
acknowledged  before  the  passage  of  that  act  were  admissible  in  evidence 
thereunder,  and  that  the  act  referred  "  to  the  time,"  to  use  the  language 
of  the  court,  "  when  the  acknowledgment  is  produced  in  evidence,  rather 
than  to  the  time  when  it  was  taken."  The  rule  thus  laid  down  was  approved 
by  the  Circuit  Court  of  Appeals  for  the  Eighth  Circuit  in  Lanyon  v.  Brown, 
115  Fed.  150.  —  Murray  v.  Continental,  149  Fed.  989;  79  C.  C.  A.  499. 

§  160.     Future  Inventions  —  Legality. 

An  assignment  including  "  with  all  the  improvement  which  he  hath 
made  or  shall  make  in  the  same  "  is  a  covenant  which  bound  the  inventor 
to  convey  his  improvement.  Though  the  assignment  was  not  made  until 
several  years  after  it  was  patented  the  assignees  were  equitably  entitled  to 
it  before.  —  Troy  v.  Corning,  14  How.  193;  14  L.  Ed.  383. 

An  assignment  of  an  unperfected  invention,  with  all  improvements  upon 
it  the  inventor  may  make,  is  equivalent  in  equity  to  an  assignment  of  the 
perfected  results.  —  Littlefield  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 


§  161  ASSIGNMENT  163 

An  assignment  of  an  invention  and  of  future  improvements  to  be  made 
passes  title  to  the  improvements.  —  Regan  v.  Pacific,  49  Fed.  68 ;  1  C.  C.  A. 
169. 

Littlefield  v.  Perry,  21  Wall.  226. 

An  agreement  to  assign  future  inventions  is  valid.  —  Regan  v.  Pacific, 
49  Fed.  68;  1  C.  C.  A.  169. 

Curtis  Sec.  160;    Robinson  Sec.  771. 

The  defense  is  set  up  that  such  contracts  for  an  indefinite  period,  covering 
inventions  to  be  afterwards  made,  are  against  public  policy.  On  the  other 
hand,  whether  based  on  agreements  for  employment  or  other  valuable  con- 
siderations, such  contracts  have  been  extensively  made,  and  have  never  been 
doubted  until  of  late.  They  are  essential  to  the  business  of  the  contracting 
parties,  and  are  not  unjust.  A  person  may  purchase  an  invention,  and  pay 
therefor  a  very  large  sum,  and  proceed  to  make  use  of  it.  The  inventor,  ac- 
cording to  a  practice  not  uncommon,  may  subsequently  overlap  that  inven- 
tion by  improvements  which,  though  small,  may  be  enough,  in  these  days  of 
sharp  competition,  to  build  up  a  successful  hostile  business.  —  Reece  v.  Fen- 
wick,  140  Fed.  287;  72  C.  C.  A.  39. 

Thibodeau  v.  Hildreth,  124  Fed.  892. 

Parties  may  lawfully  assign  inventions  not  yet  patented,  and  even  future 
inventions,  so  far  as  such  future  inventions  are  tributary  to  the  inventions 
assigned.  —  American  v.  Pungs,  141  Fed.  923;  73  C.  C.  A.  157. 

§  161.     Future  Inventions  —  Recording. 

An  agreement  to  "  license,  grant  and  convey  "  future  inventions  is  not 
an  assignment,  is  not  recordable  and  gives  the  grantee  only  an  equitable 
right  subject  to  defeat  by  an  assignment  to  a  bona  fide  purchaser  for  value. 
—  Regan  v.  Pacific,  49  Fed.  68;  1  C.  C.  A.  169. 

That  an  assignment  of  a  patent,  together  with  any  future  improvements 
thereon,  is  recordable  and  operative  as  notice  to  subsequent  assignees  of 
patents  for  improvements,  may  be  conceded.  —  National  v.  New  Columbus, 
129  Fed.  114;  63  C.  C.  A.  616. 

Littlefield  v.  Perry,  21  Wall.  205;   Aspinwall  v.  Gill,  32  Fed.  697. 

The  patentee  had  previously  assigned  an  interest  in  his  patent,  and  the 
patent  had  issued  to  him  and  his  assignees.  Subsequent  to  issue  the  patentee 
executed  an  assignment  of  a  part  interest  in  all  future  inventions.  Held: 
Near  having  by  his  prior  recorded  assignments,  which  did  not  include  im- 
provements, conveyed  to  Reynolds  the  one  undivided  third  in  all  existing 
patents,  and  there  being  no  application  pending  for  any  patent,  there  was 
nothing  upon  which  this  document  could  operate  which  entitled  it  to  regis- 
tration as  an  assignment,  grant  or  conveyance  under  sec.  4898  R.  S.  What 
we  decide  is  that  an  instrument  which  was  not  intended  to  convey  any  present 
interest  in  any  existing  patent  is  not  an  "  assignment,  grant,  or  convey- 
ance," within  the  meaning  of  the  statute,  and  that  its  registration  did  not 
operate  as  constructive  notice  to  the  complainant.  —  National  v.  New 
Columbus,  129  Fed.  114;  63  C.  C.  A.  616. 

Rob.  Pat.  sees.  411,  769,  785;  Wright  v.  Randel,  8  Fed.  591;  Carpenter  v. 
Dexter,  8  Wall.  513;    Lynch  v.  Murphy,  161  U.  S.  247. 

In  actual  fact,  an  assignment,  had  been  spread  upon  the  registry  of  the 
Patent  Office,  by  which  he  had  assigned  to  Reynolds  a  one-third  interest 


164  THE    FIXED    LAW    OF    PATENTS  §§  162-163 

in  all  of  his  improvements  and  inventions  in  cash  registers  which  he  had 
been  working  on,  and  for  which  he  contemplated  filing  applications.  (There 
was  no  pending  application  at  the  time  it  was  filed.)  This  assignment  did 
not  operate  as  a  constructive  notice,  because  it  was  not  such  a  grant  or 
conveyance  as  was  entitled  to  registration.  Neither  did  it  request  the 
commissioner  to  issue  any  particular  patent  to  an  assignee,  and  the  com- 
missioner therefore  properly  ignored  it  when  he  came  to  issue  the  patent. 
—  National  v.  New  Columbus,  129  Fed.  114;  63  C.  C.  A.  616. 

Lynch  v.  Murphy,  161  U.  S.  247;  Carpenter  v.  Dexter,  8  Wall.  513;  Prentice 
v.  Duluth,  58  Fed.  437;  Rob.  Pat.  sec.  785;  Wright  v.  Randel,  8  Fed.  591;  R.  S. 
sec.  4895;  Rob.  Pat.  sees.  411,  769,  785. 

§  162.    Future  Inventions  —  What  are  Not. 

Complainant  agreed  to  supply  defendant  with  certain  tackle  blocks, 
and  to  assign  patents  for  improvements,  defendant  agreeing  to  pay  all 
expenses  of  patenting,  dies,  patterns,  etc.,  and  to  pay  complainant  for  all 
articles  as  ordered.  Defendant  lived  up  to  the  contract  for  a  time  and  com- 
plainant assigned  the  patent  upon  the  invention  made  during  that  period. 
Subsequently,  when  complainant  had  made  further  improvements  and 
expended  some  $8000  on  dies  and  machinery,  defendants  refused  to  take 
the  articles  made.  Later,  defendants  infringed  the  subsequent  patented 
improvements  of  complainant  and  attempted  to  justify  under  implied  li- 
cense, growing  out  of  said  contract.  Held:  That  the  agreement  was  such 
as  stated  in  the  plea  is  highly  improbable  and  the  agreement  made  by  the 
evidence  still  more  so.  The  company  was  not  bound  to  continue  their 
agreement  for  a  day,  nor  obliged  to  reimburse  Hartz  for  cost  of  experiments 
or  of  plant  essential  in  making  his  new  devices.  Such  a  contract  is  incon- 
ceivable and  unconscionable.  Even  if  clearly  proven,  it  is  not  such  a  con- 
tract as  a  court  of  equity  should  specifically  enforce.  —  Hartz  v.  Cleveland, 
95  Fed.  681 ;  37  C.  C.  A.  227. 

Dalzell  v.  Mfg.  Co.  149  U.  S.  315. 

That  when  an  employee  agreed  to  assign  inventions  made  while  in  the 
employ  of  defendant  and  to  assign  any  future  improvements  on  specific 
inventions  already  patented  and  assigned,  such  agreement  covers  improve- 
ment on  said  patents  made  after  employment  ceased,  but  not  other  im- 
provements relating  to  defendant's  business,  see  Frick  v.  Geiser,  100  Fed. 
94;  40  C.  C.  A.  291. 

That  an  assignment  including  along  with  pending  applications,  "  inven- 
tions of  like  nature  or  similar  thereto  which  I  have  already  completed  or 
which  may  hereafter  be  completed  by  me,"  cannot  be  construed  to  include 
inventions  conceived  after  the  assignment,  see  Davis  v.  Tagliabue,  159  Fed. 
712;  86  C.  C.  A.  466. 

§  163.     Future  Inventions  —  Miscellaneous  Rules. 

The  assignee  of  an  agreement  to  assign  future  inventions  takes  it  subject 
to  all  defenses  against  his  assignor.  —  Regan  v.  Pacific,  49  Fed.  68 ;  1 
C.  C.  A.  169. 

An  agreement  existed  by  which  the  joint  inventors  agreed  and  did  "  bind 
themselves  that  in  case  they  shall  by  invention  or  purchase  become  the 
owners  of  any  invention  or  improvement  upon  carving  machines  they  will 
transfer  and  assign  a  like  exclusive  right."  Upon  such  title  suit  was  brought. 
Held:  While  the  terms  of  this  agreement  in  reference  to  subsequent  "  in- 
vention in  or  improvement  upon  carving  machines  "  are  probably  applicable 


§  164  ASSIGNMENT  165 

to  the  device  shown  in  patent  No.  447,796  (one  of  the  patents  in  suit),  and 
may  be  enforcible  between  the  parties,  as  authorized  in  Littlefield  v.  Perry, 
21  Wall.  205,  it  is  plain  that  such  agreement  is  executory  only,  and  not 
an  assignment,  within  the  statute,  so  that  no  legal  title  is  conferred.  The 
subject-matter  was  not  then  in  being,  was  incapable  of  sale  and  delivery, 
and,  however  binding  the  contract  was  upon  the  inventors  to  grant  the 
right  or  title  in  their  subsequent  invention,  it  is  not  a  legal  assignment, 
and,  at  the  utmost,  confers  upon  the  appellant  a  mere  equity,  with  the  legal 
title  in  the  patentees.  Suit  by  an  assignee  for  infringement  is  authorized 
only  when  the  assignment  is  complete  within  the  statutory  requirement. 
—  Milwaukee  v.  Brunswick-Balke,  126  Fed.  171 ;  61  C.  C.  A.  175. 

Rob.  Pat.  sec.  771;  Curtis  Pat.  sees.  171-2;  Regan  v.  Pacific,  49  Fed.  68; 
Waterman  v.  Mackenzie,  138  U.  S.  252;   Pope  v.  Gormully,  144  U.  S.  248. 

A  contract  for  the  assignment  of  future  inventions  existed.  The  bill 
asked  for  discovery  of  undisclosed  inventions.  The  proofs  gave  no  evidence 
whether  such  existed  or  what  they  were.  Held:  We  are  not  justified  in 
granting  an  order  in  the  air  for  a  discovery,  involving  parties  in  the  hazards 
of  ascertaining  whether  their  proceedings  may  be  in  contempt  or  not.  — 
Reece  v.  Fenwick,  140  Fed.  287;  72  C.  C.  A.  39. 

Swift  v.  U.  S.  196  U.  S.  375. 

Defendant  having  agreed  to  assign  future  inventions,  was  later  discharged 
by  complainant  from  its  employ.  Defendant  then  invented  certain  im- 
provements and  consulted  officers  of  complainant  with  reference  to  getting 
them  interested  in  complainant's  proposed  new  business.  Complainant's 
officers  simply  turned  their  backs  on  defendant  without  making  any  claim 
to  the  invention.  Held:  Inasmuch  as  defendant  thereafterwards  expended 
his  time,  efforts  and  money  on  the  faith  of  the  mutual  understanding  thus 
expressed  by  each  party,  equity  cannot  give  the  complainant  relief  with 
regard  to  any  inventions  on  which  defendant  had  expended  his  time,  efforts 
and  money  with  reference  to  developing  and  exploiting  them,  subsequently 
to  the  conversation  referred  to.  —  Reece  v.  Fenwick,  140  Fed.  287 ;  72  C.  C.  A. 
39. 

§  164.     Interests  Assignable. 

The  monopoly  granted  to  the  patentee  is  for  one  entire  thing;  it  is  the 
exclusive  right  of  making,  using  and  vending  to  others  to  be  used  the  im- 
provement he  has  invented,  and  for  which  the  patent  is  granted.  The 
monopoly  did  not  exist  at  common  law,  and  the  rights  which  may  be  exer- 
cised under  it  cannot  be  regulated  by  the  rules  of  the  common  law.  It  is 
created  by  the  act  of  Congress;  and  no  rights  can  be  acquired  in  it  unless 
authorized  by  statute,  and  in  the  manner  the  statute  provides.  —  Gayler 
v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

Both  assignees  and  grantees  have  an  interest  in  the  patent,  but  the  terms 
are  not  synonymous,  as  used  in  the  patent  law.  —  Moore  v.  Marsh,  74  U.  S. 
515;  19  L.  Ed.  37. 

Potter  v.  Holland,  4  Blatchf.  157. 

This  power  of  assignment  has  been  so  construed  by  the  courts  as  to  con- 
fine it  to  the  transfer  of  an  entire  patent,  an  undivided  part  thereof  or  the 
entire  interest  of  the  patentee  or  undivided  part  thereof  within  and  through- 
out a  certain  specified  portion  of  the  United  States.  One  holding  such  an 
assignment  is  an  assignee  within  the  meaning  of  the  statute  and  may  prose- 
cute in  the  circuit  court  any  action  which  may  be  necessary  for  the  pro- 


166  THE    FIXED    LAW    OF    PATENTS  §  165 

tection  of  his  rights  under  the  patent.  —  Littlefield  v.  Perry,  88  U.  S.  205 ; 
22  L.  Ed.  577. 

That  husband  and  wife  may  deal  as  strangers,  see  Waterman  v.  Mackenzie, 

138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

» 

By  the  law  of  the  State  of  New  York  where  all  the  instruments  were  made 
and  all  the  parties  to  them  resided,  husband  and  wife  are  authorized  to 
make  conveyances  and  contracts  of  and  concerning  personal  property  to 
and  with  each  other  in  the  same  manner  and  to  the  same  effect  as  if  they 
were  strangers.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923; 
11  S.  Ct.  334. 

Armitage  v.  Mace,  96  N.  Y.  538;   Adams  v.  Adams,  91  N.  Y.  381. 

This  case  really  involves  the  question,  which  is  one  of  considerable  im- 
portance, whether  a  patentee  can  split  up  his  patent  into  as  many  different 
parts  as  there  are  claims,  and  vest  the  legal  title  to  those  claims  in  as  many 
different  persons.  This  question  has  never  before  been  squarely  presented 
to  this  court,  but  in  view  of  our  prior  adjudications,  it  presents  no  great 
difficulty.  The  leading  case  upon  this  subject  is  that  of  Gayler  v.  Wilder, 
51  U.  S.  477,  and  while  that  case  involved  a  different  question  from  the  one 
in  this  case,  the  trend  of  the  entire  opinion  is  to  the  effect  that  the  monopoly 
granted  by  law  to  the  patentee  is  for  one  entire  thing,  and  that  in  order 
to  enable  the  assignee  to  sue,  the  assignment  must  convey  to  him  the  entire 
and  unqualified  monopoly  which  the  patentee  held,  in  the  territory  speci- 
fied, and  that  any  assignment  short  of  that,  is  a  mere  license ;  for  it  was  ob- 
viously not  the  intention  of  the  legislature  to  permit  several  monopolies 
to  be  made  out  of  one  and  divided  among  different  persons  within  the  same 
limits.  —  Pope  v.  Gormully,  144  U.  S.  248;  36  L.  Ed.  420;   12  S.  Ct.  63. 

The  assignment  ran  to  "  J.  B.  Bartholomew,  et  al."  It  not  appearing 
that  any  other  interest  had  ever  been  asserted  or  claimed  than  that  of 
Bartholomew,  it  was  held  that  for  the  purpose  of  asserting  title  for  the 
purpose  of  an  infringement  suit,  the  defendant  having  failed  to  show  any 
adverse  interest,  that  the  expression  "  et  al  "  was  mere  surplusage.  —  Bliss 
v.  Reed,  106  Fed.  314;  45  C.  C.  A.  304. 

It  is  urged  that  the  use  of  the  expression  "  may  terminate  this  license  " 
qualifies  the  language  of  the  grant,  and  converts  it  into  a  mere  license.  We 
cannot  concur  in  this  view.  It  is  a  circumstance  to  be  considered  in  the 
construction  of  the  instrument  as  a  whole,  and  in  ascertaining  whether 
there  be  provisions  subsequent  to  the  granting  clause  which  are  so  repug- 
nant to  it  that  both  cannot  stand  together.  But  the  calling  of  an  instru- 
ment which  conveys  the  whole  title  of  the  grantor  a  license  cannot  qualify 
or  limit  the  grant,  —  Sichler  v.  Deere,  113  Fed.  285;  51  C.  C.  A.  242. 

Signal  Co.  v.  Signal  Co.  59  Fed.  20;   Newton  v.  Buck,  72  Fed.  777. 

§  165.     License. 

A  mere  license  to  a  party  without  having  his  assigns  or  equivalent  words 
to  them,  showing  that  it  is  meant  to  be  assignable,  is  only  the  grant  of  a 
personal  power  to  the  licensees,  and  is  not  transferrable  to  another.  — 
Troy  v.  Corning,  14  How.  193;  14  L.  Ed.  383. 

Curt.  Pat.  198;    2  Story.  525,  554. 

An  assignment  of  a  right  to  use,  make  and  sell  for  a  limited  time  in  a 
limited  territory,  in  the  absence  of  express  words,  is  unassignable.  —  Oliver 
v.  Rumford,  109  U.  S.  75;  27  L.  Ed.  862;  3  S.  Ct.  61. 

Iron  v.  Corning,  14  How.  193;  Gayler  v.  Wilder,  10  How.  477. 


§  166  ASSIGNMENT  167 

The  grant  of  an  exclusive  right  under  the  patent  within  a  certain  district, 
which  does  not  include  the  right  to  make,  and  the  right  to  use,  and  the  right 
to  sell  is  not  a  grant  of  a  title  in  the  whole  patent  right  within  the  district,  and 
is  therefore  only  a  license.  Such,  for  instance,  is  a  grant  of  the  "  full  and  ex- 
clusive right  to  make  and  vend  "  within  a  certain  district,  reserving  by  the 
grantor  the  right  to  make  within  the  district,  to  be  sold  outside  of  it.  Gayler 
v.  Wilder,  51  U.  S.  477.  So  is  a  grant  of  "  the  exclusive  right  to  make  and 
use,"  but  not  to  sell,  patented  machines  within  a  certain  district.  Mitchell 
v.  Hawley,  83  U.  S.  544.  So  is  an  instrument  granting  "  the  sole  right  and 
privilege  of  manufacturing  and  selling  "  patented  articles,  and  not  expressly 
authorizing  their  use,  because,  though  this  might  carry  by  implication  the 
right  to  use  the  articles  made  under  the  patent  by  the  licensee,  it  certainly 
would  not  authorize  him  to  use  such  articles  made  bv  others.  —  Water- 
man v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

Hayward  v.  Andrews,  106  U.  S.  672;  Oliver  v.  Rumford,  109  U.  S.  75. 

In  equity  as  at  law,  when  the  transfer  amounts  to  a  license  only,  the  title 
remains  in  the  owner  of  the  patent ;  and  suit  must  be  brought  in  his  name, 
and  never  in  the  name  of  the  licensee  alone,  unless  that  is  necessary  to  pre- 
vent an  absolute  failure  of  justice,  as  when  the  patentee  is  the  infringer  and 
cannot  sue  himself.  Any  rights  of  licensee  must  be  enforced  through,  or  in  the 
name  of  the  owner  of  the  patent,  and  perhaps,  if  necessary  to  protect  the 
rights  of  all  parties,  joining  the  licensee  with  him  as  a  plaintiff.  —  Water- 
man v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

R.  S.  sec.  4921;  Littlefield  v.  Perry,  88  U.  S.  205;  Paper  Bag  Cases,  105  U.  S. 
766,  771;  Birdsell  v.  Shaliol,  112  U.  S.  485;  Renard  v.  Levinstein,  2  Hem.  &  M. 
628. 

An  assignment  or  grant  conveys  (1)  the  whole  patent,  comprising  the 
exclusive  right  to  make,  use  and  vend  the  invention  throughout  the  United 
States;  or  (2)  an  undivided  part  or  share  of  that  exclusive  right;  or  (3) 
the  exclusive  right  under  the  patent  within  and  throughout  a  specified  part 
of  the  United  States.  "  A  transfer  of  either  of  these  three  kinds  of  interest 
is  an  assignment,  properly  speaking,  and  vests  in  the  assignee,  a  title  in  so 
much  of  the  patent  itself,  with  a  right  to  sue  infringers ;  in  the  second  case, 
jointly  with  the  assignor;  in  the  first  and  third  cases,  in  the  name  of  the 
assignee  alone.  Any  assignment  or  transfer  short  of  one  of  these  is  a  mere 
license,  giving  the  licensee  no  title  in  the  patent,  and  no  right  to  sue  at  law 
in  his  own  name  for  infringement."  Waterman  v.  McKenzie,  138  U.  S. 
252 ;  Gayler  v.  Wilder,  10  How.  477 ;  Pope  v.  Gormully,  144  U.  S.  248.  In  the 
construction  of  this  instrument,  seeking  to  ascertain  the  intention  of  the 
parties  to  it,  we  must  be  governed  by  the  familiar  canons  of  interpretation. 
We  must  gather  the  intention  from  within  the  four  corners  of  the  instrument, 
giving  the  language  employed  its  usual  significance,  and,  if  possible,  reconcile 
discrepancies  and  avoid  repugnancy,  having  regard  also  to  the  ancient 
rule  that  general  words  in  one  clause  may  be  restricted  by  the  particular 
words  in  a  subsequent  clause.  —  Sichler  v.  Deere,  113  Fed.  285;  51  C.  C.  A. 
242. 

Johnson  v.  Union,  59  Fed.  20;  Newton  v.  Buck,  72  Fed.  777. 

§  1 66.     Notice  —  Bona  Fide  Purchaser. 

An  assignee  of  a  patent  takes  it  subject  to  the  legal  consequences  of  the 
previous  acts  of  the  assignee.  —  McClurg  v.  Kingsland,  1  How.  202 ;  1 1  L.  Ed. 
102. 

The  owner  of  an  equitable  interest  in  a  patent  cannot  set  up  such  title 
against  a  bona  fide  purchaser  of  the  legal  title  without  notice  of  any  prior 
outstanding  equitable  interest,  and  the  title  thus  obtained  is  good  as  against 


168 


THE    FIXED    LAW    OF    PATENTS 


§167 


such  equity  in  the  hands  of  a  subsequent  purchaser  even  if  they  had  notice. — 
Faulkner  v.  Empire,  67  Fed.  913;  15  C.  C.  A.  69. 

A  person  taking  title  through  an  assignment  indicating  another  interest 
takes  at  his  risk,  and  is  bound  to  make  every  inquiry  to  avoid  the  charge 
of  notice.  —  Mills  v.  Whitehurst,  72  Fed.  496;  19  C.  C.  A.  130. 

Chamberlain  was  Neer's  attorney,  and  had  charge  of  his  application.  He 
was  asked  to  find  out  whether  Neer  would  sell,  and  at  what  price.  He  bought 
the  application  from  his  client  for  himself,  not  disclosing  to  his  client  that  he 
was  buying  for  complainant,  and  then  assigned  the  application  to  com- 
plainant at  more  than  double  the  price  he  had  paid.  In  the  whole  transaction 
he  was  acting  in  his  own  interest,  and  in  such  circumstances  there  is  no  pre- 
sumption that  he  would  disclose  his  information  to  his  ostensible  principal.  — 
National  v.  New  Columbus,  129  Fed.  114;  63  C.  C.  A.  616. 

Thomson-Houston  v.  Capitol,  56  Fed.  849;  Pine  v.  Bailey,  94  Fed.  258. 

We  are  unable  to  hold,  as  against  the  defendant  Tagliabue,  a  purchaser  for 
value  of  the  patents  in  question,  that  the  verb  "  completed  "  should  be  given 
any  other  than  its  ordinary  meaning.  Assuming  Tagliabue 's  actual  knowl- 
edge of  the  assignment,  he  is  not  chargeable  with  notice  that  its  language 
should  receive  an  extraordinary  interpretation.  (The  attempted  interpre- 
tation being  to  make  "  completed  or  which  may  be  hereafter  completed  by 
me  "  cover  inventions  made  after  the  assignment  was  made).  —  Davis  v. 
Tagliabue,  159  Fed.  712;  86  C.  C.  A.  466. 


§  167.     Notice  —  Constructive. 

Where  the  recorded  agreement  and  assignment  made  reference  to  a  second 
and  unrecorded  agreement  and  reservations  and  conditions  therein  contained, 
such  record  was  sufficient  to  put  bona  fide  purchasers  on  their  inquiry  as  to 
the  contents  of  the  unrecorded  agreement.  —  Littlefield  v.  Perry,  88  U.  S. 
205;  22  L.  Ed.  577. 

It  is  well  established  that  one  who  has  reason  to  believe  that  another  is 
offering  property  for  sale,  which  he  holds  either  as  trustee  or  agent  for  a 
third  person,  cannot  become  a  bona  fide  purchaser  of  the  property  for  value 
by  reliance  on  the  statements  of  the  suspected  trustee  or  agent,  either  as  to 
his  authority,  or  as  to  his  beneficial  ownership  of  the  thing  sold.  —  Mills 
v.  Whitehurst,  72  Fed.  496;  19  C.  C.  A.  130. 

Trust  Co.  v.  Boynton,  71  Fed.  797. 

He  is  a  voluntary  purchaser,  and  having  notice  of  a  fact  which  casts  doubt 
upon  the  validity  of  his  title,  the  rights  of  innocent  persons  are  not  to  be 
prejudiced  through  his  negligence.  —  Mills  v.  Whitehurst,  72  Fed.  496;  19 
C.  C.  A.  130. 

Brush  v.  Ware,  15  Pet.  93,  112,  114;  Oliver  v.  Piatt,  3  How.  333;  Cordova  v. 
Hood,  17  Wall.   1. 

The  defendants  Weaver  and  Emminger  were  purchasers  of  the  interest  of 
Mrs.  West  for  a  valuable  consideration  after  the  alleged  assignment  to  the 
partnership,  and  the  oral  unrecorded  grant  to  the  firm  was  void  as  against 
them  and  their  licensee,  the  Buck  Manufacturing  Co.,  unless  they  had  notice 
of  its  existence  before  they  purchased  from  Mrs.  West.  —  Paulus  v.  Buck, 
129  Fed.  594;  64  C.  C.  A.  162. 

Gates  v.  Fraser,  153  U.  S.  332. 


§§  168-169  ASSIGNMENT  169 

That  where  an  assignee  knew  that  other  parties  had  been  in  some  way 
interested  in  the  development  of  a  prior  invention  with  the  inventor 
and  in  the  invention  in  question,  or  might  have  known  such  facts  from  the 
Patent  Office  records,  such  assignee  is  put  upon  his  guard,  see  National  v. 
New  Columbus,  129  Fed.  114;  63  C.  C.  A.  616. 

Cordova  v.  Hood,  17  Wall.  8;  Jonathan  v.  Whitehurst,  72  Fed.  496. 

§  1 68.     Parol. 

An  oral  agreement  for  the  sale  and  assignment  of  the  right  to  obtain  a 
patent  for  an  invention  is  not  within  the  statute  of  frauds,  nor  within  section 
4898  R.  S.  requiring  assignments  of  patents  to  be  in  writing;  and  may  be 
specifically  enforced  in  equity  upon  sufficient  proof  thereof.  —  Dalzell  v. 
Dueber,  149  U.  S.  315;  37  L.  Ed.  749;  13  S.  Ct.  886. 

Somerby  v.  Buntin,  118  Mass.  279;  Gould  v.  Banks,  8  Wend.  562;  Burr  v. 
De  La  Vergne,  102  N.  Y.  415;   Blakeney  v.  Goode,  30  Ohio  St.  350. 

Complainant  who  had  a  series  of  patents  and  inventions,  assigned  to 
defendant  those  appertaining  to  his  established  business.  The  invention  of 
the  patent  in  suit  was  at  that  time  unpatented  but  was  in  esse.  Complainant 
claims  that  he  reserved  this  invention  (apparently  mentally).  Held:  It 
would  be  difficult  to  conceive  that  intelligent  men  would  omit  from  the  cal- 
culation an  element  so  essential  to  the  success  of  the  enterprise.  To  hold 
otherwise  would  be  to  credit  the  cunning  of  appellant  a  success,  and  to  the 
committee  that  dealt  with  him  a  stupidity,  that  the  care  shown  in  all  the  other 
branches  of  the  negotiation  clearly  discredit.  —  Cook  v.  Sterling,  150  Fed. 
766;  80  C.  C.  A.  502. 

An  arrangement  entered  into,  in  contemplation  of  incorporation,  and  fol- 
lowed by  incorporation,  is  binding  upon  the  parties,  when  all  the  terms  of 
the  contract  except  the  one  in  dispute  have  been  fully  and  in  good  faith 
executed,  and  the  disputed  term  fails  of  execution  through  the  fraud,  mis- 
take, or  inadvertence  of  the  parties.  To  hold,  in  this  respect,  as  we  are  asked 
to  hold,  would  be  to  make  all  agreements  preliminary  to  incorporation  of  no 
avail,  notwithstanding  the  completion  of  the  transaction  by  incorporation  — 
a  doctrine  that  in  the  present  development  of  the  law  has  no  standing  what- 
ever. —  Cook  v.  Sterling,  150  Fed.  766;  80  C.  C.  A.  502. 

As  a  general  rule,  a  parol  contract  reduced  to  writing,  is  to  be  held  as 
fully  expressed  in  the  writing.  But  this  does  not  exclude  a  court  of  equity 
from  the  inquiry  whether,  by  fraud,  mistake,  or  inadvertence,  the  writing 
fails  to  express  the  agreement;  or  (such  fraud,  mistake,  or  inadvertence 
appearing)  from  giving  force  to  the  oral  agreement.  —  Cook  v.  Sterling,  150 
Fed.  766;  80  C.  C.  A.  502. 

§  169.     Part  Interest. 

If  the  owner  assigns  a  part  of  his  invention  it  must  be  an  undivided  por- 
tion of  his  entire  interest  under  the  patent,  placing  the  assignee  upon  an 
equal  footing  with  himself  for  the  part  assigned.  Upon  such  an  assignment, 
the  patentee  and  his  assignees  become  joint  owners  of  the  whole  interest 
secured  by  the  patent,  according  to  the  respective  proportions  which  the 
assignment  creates.  —  Gayler  v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

The  assignment  of  a  part  interest  of  a  patent  pending  suit  does  not  defeat 
the  action.  —  Moore  v.  Marsh,  74  U.  S.  515;   19  L.  Ed.  37. 

Kilborn  v.  Rewes,  8  Gray,  415;   Eades  v.  Harris,  1  Younge  &  C.  230. 


170  THE    FIXED    LAW    OF    PATENTS  §§  170-171 

How  a  patent  monopoly  may  not  be  divided.  —  Pope  v.  Gormully,  144 
U.  S.  238;  36  L.  Ed.  420;  12  S.  Ct.  637. 

§  170.     Pendente  Lite. 

The  fact  of  the  assignment  of  the  Hofman  patent  pendente  lite,  and  of 
all  rights  thereunder  to  any  claims  for,  profits  or  damages,  was  not  known 
to  the  circuit  court.  The  defendant  definitely  learned  of  this  assignment 
on  Nov.  28,  1894,  and  thereafter,  and  before  the  argument  upon  the  appeal, 
moved  this  court  to  remand  the  case  to  the  circuit  court  with  directions 
to  dismiss  the  bill,  but  without  prejudice  to  the  rights  of  the  assignee  to 
apply  for  leave  to  file  an  original  bill  in  the  nature  of  a  supplemental  bill. 
This  motion  was  properly  denied.  A  peremptory  dismissal  of  the  bill,  as 
will  be  seen  hereafter,  was  not  permissible;  and  furthermore,  while  Appleton 
and  others  were  complainants,  Ecaubert  was  seeking  affirmative  relief  against 
them  by  his  cross  bill,  and  his  right  to  relief,  if  any  he  had,  could  not  be 
injuriously  affected  by  the  complainant's  assignment.  If  the  court  should 
decree  adversely  to  the  validity  of  the  Hofman  patent,  its  assignees  would 
be  bound  by  the  decree,  because,  irrespective  of  the  question  whether  they 
had  become  the  actual  parties,  they,  being  assignees  were  charged  with 
notice  of  the  suit,  and  bound  by  its  results.  Thus,  where  a  plaintiff  —  who 
as  owner  of  a  patent,  had  brought  suit  for  infringement  and  had  assigned 
his  interest  in  the  patent  pendente  lite  —  asked  the  court  to  dismiss  his  bill, 
after  an  answer  praying  for  affirmative  relief,  it  was  held  that  a  possible 
right  in  the  defendant  to  have  a  decree  in  his  favor  could  not  be  defeated 
by  such  an  assignment  and  by  permission  to  dismiss  the  bill.  —  Ecaubert  v. 
Appleton,  67  Fed.  917;  15  C.  C.  A.  73. 

Electrical  v.  Brush,  44  Fed.  602. 

If  a  sole  plaintiff,  suing  in  his  own  right,  assigns  the  whole  interest  to 
another,  he  is  no  longer  able  to  prosecute  the  suit  because  he  is  without 
interest  in  the  litigation. 

Nor  would  the  fact  that  the  assignment  included  collateral  considera- 
tions, such  as  increase  of  consideration  to  be  paid  in  the  event  of  success  of 
the  litigation,  or  agreement  to  prosecute  the  action  by  the  assignor,  alter 
the  condition  of  title.  —  Automatic  v.  Cutler-Hammer,  147  Fed.  250;  77 
C.  C.  A.  176. 

Ecaubert  v.  Appleton,  67  Fed.  917. 

§  171.     Power  of  Attorney. 

He  undertook  to  give  them  an  exclusive  license,  embracing  the  entire 
territory  covered  by  the  patent,  and  running  for  the  full  period  of  its  life. 
We  agree  with  the  circuit  court  that  this  was  a  virtual,  if  not  actual  sale, 
and  was  therefore  in  excess  of  his  authority  (of  working  and  developing  the 
business  of  the  said  patent).  What  constitutes  a  sale  of  a  patent,  as  an 
abstract  question  need  not  be  discussed.  It  is  sufficiently  considered  in 
Nellis  v.  Mfg.  Co.,  13  Fed.  451;  Pickhardt  v.  Packard,  22  Fed.  532;  Water- 
man v.  MacKenzie,  138  U.  S.  252;  2  Rob.  Pat,  Sec.  763;  Curt,  Pat.  pp.  241- 
243.  —  Union  v.  Johnson,  61  Fed.  940;  10  C.  C.  A.  176. 

There  can  be  no  question  that,  under  the  power  of  attorney,  the  agent 
had  full  authority  to  assign  the  patent,  But  it  is  equally  clear  that  his 
authority  could  be  exercised  only  upon  terms  that  should  be  first  communi- 
cated to  and  accepted  by  his  principal.  The  purported  assignment,  there- 
fore, was  clearly  insufficient  to  transfer  a  title  to  the  patent,  not  only  be- 
cause it  was  the  act  and  deed  of  the  agent,  and  not  of  the  principal  (Ma- 
chesney  v.  Brown,  29  Fed.  145,  and  cases  there  cited)  but  for  the  further 


§§  172-175  ASSIGNMENT  171 

reason  that  the  agent  exercised  a  power  not  conferred  upon  him,  in  that 
he  made  a  transfer  of  the  patent  without  communicating  the  terms  of  the 
sale  to  his  principal,  or  obtaining  his  approval  thereof.  —  Chauche  v.  Pare, 
75  Fed.  283;  21  C.  C.  A.  329. 

Johnson  v.  Union,  59  Fed.  20;   Union  v.  Johnson,  61  Fed.  940. 

§  172.     Recording. 

The  record  is  intended  for  the  benefit  of  the  public.  Bona  fide  purchasers 
look  to  it  for  their  protection.  The  record  of  the  grant  alone,  therefore, 
furnishes  the  strongest  evidence  of  the  intention  of  the  parties.  —  Little- 
field  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

An  agreement  to  "  license,  grant  and  convey  "  future  inventions,  is  not 
an  assignment  of  a  patent,  and  is  not  recordable.  —  Regan  v.  Pacific,  49 
Fed.  68;  1  CCA.  169. 

§  173.     Reissue. 

The  words  "  to  the  full  end  of  the  term  for  which  the  said  letters  patent 
are  or  may  be  granted  "  embraced  in  an  assignment  carries  both  reissues 
and  extensions  of  the  patent.  —  Nicholson  v.  Jenkins,  81  U.  S.  452 ;  20 
L.  Ed.  777. 

R.  R.  v.  Trimble,  10  Wall.  367. 

Reissues  are  not  patents  for  new  inventions,  but  amendments  of  old 
patents.  If  a  reissue  is  obtained  with  the  consent  of  an  assignee,  it  inures 
at  once  to  his  benefit ;  if  without  he  has  his  election  to  accept  or  reject 
it.  —  Littlefield  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

§  174.     Specific  Performance. 

A  court  of  equity  will  not  enforce  an  assignment  from  employee  to  em- 
ployer upon  a  proved  oral  agreement  which  is  unconscionable.  —  Dalzell  v 
Dueber,  149  U.  S.  315;  37  L.  Ed.  749;  13  S.  Ct.  886. 

Cathcart  v.  Robinson,  30  U.  S.  264;  Mississippi  v.  Cromwell,  91  U  S  643- 
Pope  v.  Gormully,  144  U.  S.  224. 

A  court  of  chancery  will  not  decree  specific  performance,  unless  the  agree- 
ment is  "  certain,  fair,  and  just  in  all  its  parts."  —  Dalzell  v.  Dueber  149 
U.  S.  315;  37  L.  Ed.  749;  13  S.  Ct.  886. 

Buxton  v.  Lister,  3  Atk.  383;  Underwood  v.  Hitchcox,  1  Ves.  sec.  279-  Franks 
v.  Martin,  1  Eden,  309. 

Uncertainty  as  to  the  meaning  of  a  contract  is  fatal  to  a  claim  for  its 
specific  performance.  —  Davis  v.  Tagliabue,  159  Fed.  712;  86  C  C  A.  466. 

§  175.     Territorial. 

The  holder  of  a  territorial  right,  if  exclusive  although  limited  as  to  number 
of  machines,  holds  such  an  interest  as  will  enable  him  to  sue  for  infringement 
in  his  own  territory.  —  Wilson  v.  Ronsseau,  4  How.  646;   11  L.  Ed.  1141. 

The  assignment  of  an  exclusive  right  to  make  and  use,  and  to  vend  to 
others  machines  within  a  given  territory  only,  authorizes  the  assignee  to 
vend  elsewhere  out  of  the  said  territory,  the  product  of  said  machines.  — 
Simpson  v.  Wilson,  4  How.  709;   11  L.  Ed.  1169. 

The  patentee  may  assign  his  exclusive  right  within  and  throughout  a 
specified  part  of  the  United  States,  and  upon  such  an  assignment,  the 


172  THE   FIXED   LAW   OF   PATENTS  §  176 

assignee  may  sue  in  his  own  name  for  an  infringement  of  his  rights.  But  in 
order  to  enable  him  to  sue,  the  assignment  must  undoubtedly  convey  to 
him  the  entire  and  unqualified  monopoly  which  the  patentee  held  in  the 
territory  specified  —  excluding  the  patentee  himself  as  well  as  others.  And 
any  assignment  short  of  this  is  a  mere  license.  —  Gayler  v.  Wilder,  10  How. 
477;   13  L.  Ed.  504. 

§  176.     Miscellaneous  Rulings. 

An  assignment  made  and  recorded,  based  upon  a  definite  consideration 
never  paid,  and  which  is  treated  as  a  nullity  by  the  parties,  is  void.  —  Rail- 
road v.  Trimble,  77  U.  S.  367;  19  L.  Ed.  949. 

See  Emerson  v.  Slater,  22  How.  41. 

An  assignment  made  subsequent  to  a  mortgage  assignment  duly  recorded 
within  the  three  months  is  subject  to  the  mortgage,  though  not  in  terms 
so  expressed.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11 
S.  Ct.  334. 

When  a  patentee  contracts  for  the  use  or  sale  of  the  patented  article  upon 
the  payment  of  certain  royalties,  he  cannot,  as  against  such  licensee,  main- 
tain a  suit  for  infringement  simply  upon  the  ground  that  the  licensee  has 
failed  to  pay  the  agreed  sum.  —  Atkins  v.  Parke,  61  Fed.  593;  10  C.  C.  A. 
189. 

Hartell  v.  Tilghman,  99  U.  S.  547. 

That  where  the  evidence  shows  that  the  inventor  agreed  to  assign  his 
invention,  and  afterward  refused  so  to  do,  he  cannot  recover  for  infringe- 
ment, see  Schmitt  v.  Nelson,  125  Fed.  754;  60  C.  C.  A.  522. 

Acheson,  J.  dissenting  (and  I  think  most  properly). 

The  assignment  by  the  patentee  who  resided  in  England  was  made  for 
the  express  purpose  of  enabling  the  assignee-trustee  and  his  associates  to 
exploit  the  invention,  the  assignee-trustee  and  his  associates  to  license  the 
use  of  the  device,  but  not  to  sell  or  assign  any  part  of  the  patent,  and  to 
pay  the  assignor  one-third  of  all  license  fees.  The  successor  of  the  assignee- 
trustee  subsequently  manufactured  and  sold  the  devices  and  did  not  account 
for  all  of  the  same,  but  did  account  in  part,  and  the  assignee  accepted  pay- 
ments thereunder.    Held: 

We  incline  to  agree  with  the  court  below  that  the  correspondence  between 
complainant  and  the  patents  company  shows  a  sufficient  acquiescence 
on  the  part  of  the  complainant,  in  this  mode  of  conducting  business  under 
the  agreement,  to  estop  him  from  now  objecting  thereto. 

Sufficient  evidence  has  been  adduced,  as  to  suppression  of  facts  in  regard 
to  the  amount  of  license  fees  collected  and  not  accounted  for,  and  under- 
charges in  license  fees  due  for  devices  made  by  defendants,  accompanied  by  a 
refusal  to  make  full  disclosure  of  the  books  and  accounts  of  said  company, 
to  clothe  the  complainant  with  a  right  to  pursue  defendants  for  redress  in 
some  form  of  action. 

Equity  and  good  conscience  clearly  require  that  these  defendants,  as 
trustees  of  these  license  fees,  should  be  charged  with  the  highest  rate  ever 
collected  from  outsiders  for  similar  articles.  —  Duff  v.  Gilliland,  139  Fed.  16; 
71  C.  C.  A.  428. 

We  are  of  the  opinion  that  the  short  description  in  the  title  head  is  re- 
quired for  the  purposes  of  Patent  Office  classification,  that  a  conveyance 
by  reference  to  the  title  head  alone  would  be  uncertain  because  applicable 
to  any  of  the  class,  and  that  the  name  of  the  patentee  and  the  serial  number 


§§177-179  ATTORNEYS  173 

afford  a  clear  and  definite  description.  There  can  be  but  one  Maginn  patent 
numbered  415,212.  —  Maginn  v.  Standard,  150  Fed.  139;  80  C.  C.  A.  15. 
Note:  This  is  good  law  very  poorly  stated.  The  "  title  head  "  includes 
name,  number  and  short  title.  "  Short  title  "  is  what  the  court  meant. 
The  use  of  the  word  "  serial  "  is  error;  that  word  applies  to  the  number 
of  the  application.    What  was  meant  was  the  patent  number. 

The  assignment  of  the  patent  carried  no  such  right.  (The  right  to  use 
the  inventor's  name  and  a  certain  mark  in  connection  with  it.)  The  name 
was  not  an  essential  part  of  the  trademark,  and,  if  the  conveyance  gave 
any  right  to  use  the  name,  it  was  only  in  connection  with  the  particular 
representation  of  a  shoe  upon  a  cushion.  —  Reed  v.  Frew,  162  Fed  887* 
89  C.  C.  A.  577. 


ATTORNEYS 

Statutory  Provision  §  177 
Actions  Binding  §  178  {see  §  52) 
Assignment  by  —  Notice  §  179  (see 
§  149) 


Statements  on  Argument  — Not  Evi- 
dence §  180 
Miscellaneous  §  181 
See  —  Amendment  §  52 


§  177.     Statutory  Provision. 

The  only  statutory  provision  as  to  attorneys  or  solicitors  in  the  Patent 
Statute  is  sec.  487,  which  gives  the  Commissioner  power  to  refuse  recog- 
nition for  gross  misconduct.  Under  the  powers  given  the  Commissioner 
to  establish  regulations  (sec.  483)  some  slight  qualifications  for  practice 
before  the  Office  have  been  provided;  but,  as  elsewhere  noted,  these  pro- 
visions are  wholly  inadequate. 


§  178.     Acts  Binding. 

The  court  could  not  distinguish  between  the  patentee  and  his  counsel  as 
to  what  occurred  during  the  pendency  of  the  application  for  the  patent, 
and,  as  to  the  acceptance  by  the  latter,  the  patentee  must  be  regarded  as 
bound  by  the  acts  of  his  counsel.  —  Dobson  v.  Lees,  137  U.  S.  258;  34  L.  Ed. 
652;  HS.Ct.  71. 

That  the  negligence  of  an  attorney  in  prosecuting  an  application  is  no 
excuse  for  defects  which  may  exist  in  the  patent,  see  Lay  v.  Indianapolis,  120 
Fed.  831 ;  57  C.  C.  A.  313. 

It  will  hardly  be  contended  that  the  mistaken  advice  of  a  patent  solicitor 
can  override  a  statute  of  the  United  States.  —  Eastman  v.  Mayor,  134  Fed. 
844;  69  C.  C.  A.  628. 


§  179.    Assignment  by  —  Notice. 

Chamberlain  was  Neer's  attorney,  and  had  charge  of  his  application.  He 
was  asked  to  find  whether  Neer  would  sell,  and  at  what  price.  He  bought 
the  application  from  his  client  for  himself,  not  disclosing  to  his  client  that 
he  was  buying  for  complainant,  and  then  assigned  the  application  to  com- 
plainant at  more  than  double  the  price  he  had  paid.  In  the  whole  trans- 
action he  was  acting  in  his  own  interest,  and  in  such  circumstances  there  is 
no  presumption  that  he  would  disclose  his  information  to  his  ostensible 
principal.  —  National  v.  New  Columbus,  129  Fed.  114;  63  C.  C.  A.  616. 

Thomson-Houston  v.  Capitol,  56  Fed.  849;  Pine  v.  Bailey,  94  Fed.  258. 


174 


THE    FIXED    LAW    OF    PATENTS 


§§  180-183 


§  180.     Statements  on  Argument  —  Not  Evidence. 

That  the  mere  argument  of  a  solicitor  found  in  the  file-wrapper,  in  the 
absence  of  any  amendment  to  conform  thereto,  cannot  be  held  to  limit  or 
extend  the  claim,  see  Boyer  v.  Keller,  127  Fed.  130;  62  C.  C.  A.  244.  ■ 

Acme  v.  Carey,  96  Fed.  344;  Society  v.  Rehfuss,  75  Fed.  657;  Daylight  v. 
Marcus,    110  Fed.  980. 

§  181.     Miscellaneous. 

The  commissioner  of  patents  has  no  right  to  make  the  former  misconduct 
of  an  attorney  or  solicitor  a  ground  for  refusing  him  his  rights  upon  proper 
demand.  He  cannot  enforce  an  apology  by  withholding  rights.  Ill  manners 
or  bad  manners  do  not  work  a  forfeiture  of  men's  civil  rights.  —  Boyden  v. 
Burke,  14  How.  575;   14  L.  Ed.  548. 

Right  to  amend.  —  Eagleton  v.  West,  111  U.  S.  490;  28  L.  Ed.  493;  4 
S.  Ct.  593. 

Distinguished,  De  La  Vergne  v.  Featherstone,  147  U.  S.  209. 


BANKRUPTCY. 

Statutory  Provision  §  182 


Title  to  Patent  §  183 


§  182.     Statutory  Provision. 

Sec.  5046,  R.  S.  provided  for  the  vesting  of  the  title  to  letters  patent  in 
the  assignee  in  bankruptcy  under  the  old  act.  The  Act  of  July  1,  1898  (30 
Stat.  565)  in  sec.  70,  provides  for  the  vesting  of  the  title  in  the  trustee  of 
the  bankrupt  under  the  present  act.  It  will  be  noted  that  the  following 
rules  were  made  with  reference  to  conditions  arising  under  the  old  act. 

§  183.     Title  to  Patent. 

If  the  existence  of  a  patent  had  been  concealed  by  the  bankrupt,  or  the 
assignee  had  discovered  it  subsequently  —  after  his  discharge  —  and  de- 
sired to  take  possession  of  it  for  the  benefit  of  the  estate,  it  is  possible  the 
bankruptcy  court  might  reopen  the  case  and  vacate  the  discharge  for  that 
purpose.  —  Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;  12  S.  Ct.  799. 

Clark  v.  Clark,  58  U.  S.  315. 

While,  under  the  provisions  of  the  bankrupt  law,  the  title  to  this  patent 
passed  undoubtedly  to  the  assignee  in  bankruptcy,  it  passed  subject  to  an 
election  on  his  part  not  to  accept  it,  if,  in  his  opinion,  it  was  worthless,  or 
would  have  proved  to  be  burdensome  and  unprofitable.  And  he  was  en- 
titled to  a  reasonable  time  to  elect  whether  he  would  accept  it  or  not.  — 
Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;  12  S.  Ct.  799. 

American  v.  Garrett,  110  U.  S.  288;  Sparhawk  v.  Yerkes,  142  U.  S.  1;  Amory 
v.  Lawrence,  3  Cliff.  523. 


CLAIMS  (see  §  249) 

Statutory  Provision  §  184 

Purpose  of  the  Claim  §  185 

Ambiguity  §  186 

Combination  §  187 

Construction 

Beneficial  Use  §  188 
Broad  and  Narrow  §  189 


Comparison  §  190 
Dissecting  §  191 
Drawings  §  192  (see  §  362) 
Duplication  §  193 
Equivalents  §  194  (see  §  373) 
Expanding  §  195 
Functional  §  196  (see  §  426) 


184-185 


CLAIMS 


175 


Generic  §  197 

Improvement  §  198  (see  §  430) 

Limitation 

Broadening      by     Amendment 

§  199  (see  §  52) 

Disclaimer  §  200  (see  §  339) 

By  Applicant  §  201 

Elements  of  Claim  §  202 

Failure  to  Claim  §  203  (see  §  1) 

General  Rules  §  204 

Improvement  §  205  (see  §  430) 

Narrow  Improvement  §  206 

Patent   Office   Action   Limiting 

§207 

Patent  Office  Action  Not  Limit- 
ing §  208 

Patent  Office  Action  —  Protest 

§  209 

Patent    Office  Action  —  Rule 

§210 

Specific  Claims  §  211 

Specification  and   Drawings 

§  212  (see  §  900) 

State  of  Art  §  213 

Words  of  Limitation  §  214  (see 

§936) 

Miscellaneous  Rules  §  215 
Limitation  to  Avoid  Anticipation 
§216 

Narrow  §  217 

Omitting  Element  §  218 

Plain  Intent  and  Meaning  §  219 

Reading  in  Elements  §  220 

Reference  Characters  §  221 

Rules  —  General  §  222 


Specification  §  223  (see  §  900) 

State  of  Art  §  224 

Unclaimed  Elements  §  225 

Undue    Limitation    by    Patentee 

§226 

Unduly  Broad  §  227 

Valeat  quam  Pereat  Rule  §  228 

Words    and    Phrases    §  229   (see 

§936) 

Miscellaneous  Rulings  §  230 
Designs  §  231  (see  §  328) 
Elements  (see  §  249) 

Essential  §  232 

Redundant  §  233 

Reference  Characters  §  234 

Terminology  §  235 
Excessive 

Duplication  §  236 

Effect  of  §  237 

Foreclosing  Improvement  §  238 
Expansion  §  239 
Failure  to  Claim  §  240 
Generic  §  241 
Novelty  §  242 
Process  §  243  (see  §  813) 
Purpose  of  §  244 
Scope  §  245 
Specific  §  246 
Sufficiency  §  247 
Void  §  248 

See  —  Divisional  Patenting  §  348; 
Double  Patenting  §  356;  Equivalents 
§  373;  Improvement  §  432;  Invention 
§§  603-12;  Process  §§  814,  820; 
Words  and  Phrases  §  936 


§  184.     Statutory  Provisions. 

Before  any  inventor  or  discoverer  shall  receive  a  patent  for  his  invention 
or  discovery,  he  shall  make  application  therefor,  in  writing,  to  the  Commis- 
sioner of  Patents,  and  shall  file  in  the  Patent  Office  a  written  description  of 
the  same,  and  of  the  manner  and  process  of  making,  constructing,  compound- 
ing and  using  it,  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable  any 
person  skilled  in  the  art  or  science  to  which  it  appertains,  or  with  which  it 
is  most  nearly  connected,  to  make,  construct,  compound  and  use  the  same ; 
and  in  case  of  a  machine,  he  shall  explain  the  principle  thereof,  and  the  best 
mode  in  which  he  has  contemplated  applying  that  principle,  so  as  to  dis- 
tinguish it  from  other  inventions;  and  he  shall  particularly  point  out  and 
distinctly  claim  the  part,  improvement,  or  combination  which  he  claims  as 
his  invention  or  discovery.  The  specification  and  claim  shall  be  signed  by 
the  inventor  and  attested  by  two  witnesses.    R.  S.  4888. 


§  185.     Purpose  of  the  Claim. 

Probably  no  better  definition  of  the  object  and  purpose  of  the  claim  is 
to  be  found  than  that  given  almost  at  the  inception  of  patent  decisions,  in 
Evans  v.  Eaton,  7  Wheat.  356. 

The  specification  has  two  objects:  one  is  to  make  known  the  manner  of 
construction  so  as  to  enable  the  artisans  to  make  and  use  it,  and  thus  to  give 
the  public  the  full  benefit  of  the  discovery  after  the  expiration  of  the  patent. 
The  other  is  to  put  the  public  in  possession  of  what  the  party  claims  as  his 
invention,  so  as  to  ascertain  if  he  claim  anything  that  is  in  common  use,  or 


176  THE   FIXED   LAW   OF    PATENTS  §§  186-188 

is  already  known,  and  to  guard  against  prejudice  or  injury  from  the  use  of 
an  invention,  which  the  party  may  otherwise  innocently  suppose  not  to  be 
patented.  It  is  therefore,  for  the  purpose  of  warning  an  innocent  purchaser, 
or  other  persons  using  a  machine,  of  his  infringement  of  the  patent;  and  at 
the  same  time  taking  from  the  inventor  the  means  for  practicing  upon  the 
credulity,  or  the  fears  of  other  persons  by  pretending  that  his  invention  is  for 
more  than  what  it  really  is,  or  different  from  its  ostensible  objects. 

§  186.     Ambiguity. 

Without  deciding  that  a  repetition  of  substantially  the  same  claim  in 
different  words  will  vitiate  a  patent,  we  hold  that  where  a  specification  by 
ambiguity  and  needless  multiplication  of  nebulous  claims  is  calculated  to 
deceive  and  mislead  the  public  the  patent  is  void.  —  Carlton  v.  Bokee,  8 1 
U.  S.  463;  21  L.  Ed.  517. 

There  is  here  no  sufficient  foundation  upon  which  to  rest  a  claim  which,  if 
construed  as  broadly  as  the  complainant  insists  it  should  be,  practically 
makes  all  pay  tribute  who  stir  the  mixture  in  question  by  machinery  and  by 
hand  also,  provided  substantially  the  same  movement  can  be  produced.  — 
Marchand  v.  Emken,  132  U.  S.  195;  33  L.  Ed.  332;  10  S.  Ct.  65. 

§  187.     Combination. 

In  case  of  a  claim  for  a  combination,  where  all  the  elements  of  the  invention 
are  old,  and  where  the  invention  consists  merely  in  the  new  combination  of 
old  elements  or  devices  whereby  a  new  and  useful  result  is  attained,  such 
combination  is  sufficiently  described  if  the  elements  or  devices  of  which  it  is 
composed  are  all  named  and  their  mode  of  operation  given,  and  the  new  and 
useful  result  to  be  accomplished  pointed  out,  so  that  those  skilled  in  the  art 
and  the  public  may  know  the  extent  and  nature  of  the  claims,  and  what  the 
parts  are  which  cooperate  to  produce  the  described  new  and  useful  result.  — 
Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Curt.  Pat.  sec.  489;   Seymour  v.  Osborne,  11  Wall.  542. 

The  claims  of  the  patents  sued  on  in  this  case  are  claims  for  combinations. 
In  such  claims,  if  the  patentee  specifies  any  element  as  entering  into  the  com- 
bination either  directly  by  the  language  of  the  claim  or  by  such  a  reference 
to  the  descriptive  part  of  the  specification  as  carries  such  element  into  the 
claim,  he  makes  such  element  material  to  the  combination  and  the  court 
cannot  declare  it  to  be  immaterial.  It  is  his  province  to  make  his  own  claim 
and  his  privilege  to  restrict  it.  If  it  be  a  claim  to  a  combination,  and  be 
restricted  to  specified  elements,  all  must  be  regarded  as  material,  leaving  open 
only  the  question,  whether  an  omitted  part  is  supplied  by  an  equivalent  device 
or  instrumentality.  —  Fay  v.  Cordesman,  109  U.  S.  408;  27  L.  Ed.  979; 
3  S.  Ct.  236. 

Water  v.  Desper,  101  U.  S.  332;   Gage  v.  Herring,  107  U.  S.  640. 

An  attempt  to  incorporate  into  a  claim  for  a  combination  a  feature  which 
had  not  been  claimed  in  connection  with  the  combination  before,  and  thereby 
make  a  new  combination  will  not  be  heard.  —  Albany  v.  Worthington,  79 
Fed.  966;  25  C.  C.  A.  258. 

§  188.     Construction  —  Beneficial  Uses. 

A  patentee  who  is  first  to  make  an  invention  is  entitled  to  his  claim  for 
all  the  uses  and  advantages  which  belong  to  it.  —  Stow  v.  Chicago,  104  U.  S. 
547;   26  L.  Ed.  816. 


§§  189-190  CLAIMS  177 

Woodman  v.  Stisapson,  3  Fish.  P.  C.  98;  Tucker  v.  Spalding,  80  U.  S.  453; 
Graham  v.  Mason,  5  Fish.  P.  C.  1. 

An  inventor  is  entitled  to  a  beneficial  function  of  his  invention,  whether  he 
knew  all  its  beneficial  uses  or  not.  —  Goshen  v.  Bissell,  72  Fed.  67;  19  C. 
C.  A.  13. 

McCormick  v.  Aultman,  69  Fed.  371;  Roberts  v.  Ryer,  91  U.  S.  150;  Brown 
v.  D.  C.  130  U.  S.  87-103;  Eames  v.  Andrews,  122  U.  S.  40;  Miller  v.  Mfg.  Co. 
151  U.  S.  201;  Stow  v.  Chicago,  104  U.  S.  550;  Tucker  v.  Spalding,  13  Wall.  453; 
Appleton  v.  Star,  60  Fed.  411;  Western  v.  Sperry,  58  Fed.  186;  Gait  v.  Parlin, 
60  Fed.  422;   Dixon  v.  Pfeifer,  55  Fed.  390;   Thompson  v.  National,  65  Fed.  427. 


§  189.     Construction  —  Broad  and  Narrow. 

It  is  possible,  and  perhaps  probable,  that  the  second  claim  might  be  con- 
strued as  covering  not  only  non-conducting  material  placed  between  the 
spiral  layers,  but  such  other  means  as  might  occur  to  the  skilled  mechanic 
as  useful  for  that  purpose,  but  it  does  not,  it  seems  to  us,  necessarily  follow 
that  the  inventor  is  bound  to  rely  upon  such  scope  as  would  probably  result 
from  construction.  He  may,  for  the  purpose  of  describing  the  extent  of  his 
claims,  not  only  state  the  general  principles  and  requisite  features  of  the  in- 
vention in  one  claim,  but  the  general  principles  and  requisite  features  in 
another  claim,  supplementing  this  with  a  more  particular  description  of 
the  details  involved  in  the  contemplated  structure.  We  do  not  consider 
the  claims  identical,  and  therefore,  one  or  the  other  superfluous,  but  view 
the  first  claim  as  broader  than  the  second  in  the  respect  which  we  have  stated 
and  not  inconsistent  therewith.  —  Consolidated  v.  West  End,  85  Fed.  622 ; 
29  C.  C.  A.  386. 

Where  there  are  several  claims,  if  some  of  the  claims  are  limited  to  details, 
those  which  remain  are  prima  facie  not  to  be  fettered  by  insisting  that  they 
contain  as  necessary  elements,  the  particulars  which  are  specifically  covered 
elsewhere.  —  Bresnahan  v.  Tripp,  102  Fed.  899;  43  C.  C.  A.  48. 


§  190.     Construction  —  Comparison. 

In  our  opinion,  the  special  office  of  the  second  and  third  claims  was  to 
secure  combinations  containing  the  pivoted  pitman  and  the  pitman 
rod  described  in  the  specification  and  omitted  from  the  first  claim,  and  the 
fact  these  claims  were  added  is  a  very  persuasive  argument  that  the  addi- 
tional elements  they  protect  were  not  secured  by  the  first  claim.  Any  con- 
struction which  would  read  into  the  first  claim  these  additional  elements, 
renders  it  useless  and  unmeaning,  because  it  gives  it  the  same  effect  as  the 
claims  which  follow  it,  and  in  this  way  shows  that  neither  the  patentee  nor  the 
patent  office  contemplated  such  an  interpretation.  —  Mast  v.  Dempster,  82 
Fed.  327;  27  C.  C.  A.  191. 

It  is  necessary  where  the  complainant  limited  its  suit,  to  one  claim  out  of 
the  many  in  the  patent,  to  make  sure  that  the  claim  in  issue  does  not  receive 
improper  color  or  breadth  from  those  not  in  issue.  —  Eppler  v.  Campbell, 
86  Fed.  141;  29  C.  C.  A.  616. 

The  very  fact  that  the  other  elements  mentioned  in  the  specification,  while 
expressly  embraced  in  the  other  claims,  were  not  mentioned  in  the  sixth 
claim,  demonstrates  an  intention  to  cover  by  that  claim  any  and  all  forms  of 
disintegrators  in  the  construction  of  which  that  cylinder  should  be  used.  — 
Anderson  v.  Potts,  108  Fed.  379;  47  C.  C.  A.  409. 


178  THE    FIXED    LAW    OF    PATENTS  §§  191-194 

Separate  claims  are  not  to  be  construed  as  identical  unless  fairly  unavoid- 
able. —  Lamson  v.  Hillman,  123  Fed.  416;  59  C.  C.  A.  510. 

United  v.  California,  25  Fed.  475;  Cohansey  v.  Wharton,  28  Fed.  189;  Ton- 
deur  v.  Stewart,  28  Fed.  561;  Smead  v.  Union,  44  Fed.  614;  National  v.  American, 
53  Fed.  367;   Felix  v.  Ledos,  54  Fed.  163. 

That  a  construction  which  would  render  two  claims  substantially  identical 
should  be  avoided  where  possible,  see  O'Rourke  v.  McMullen,  160  Fed.  933. 

Bresnahan  v.  Tripp,  102  Fed.  899;  Thomson-Houston  v.  Nassau,  110  Fed. 
647, 

§  191.     Construction  —  Dissecting. 

It  is  manifestly  just  to  a  patient  and  meritorious  inventor  that  the  court 
should  be  careful  not  to  regard  with  too  much  importance  the  mere  mechani- 
cal resemblance  in  the  parts  of  the  combination,  or  the  combination  as  a 
whole,  to  the  neglect  of  the  result,  and  the  success  and  efficiency  with  which 
the  object  aimed  at  is  accomplished.  —  Kalamazoo  v.  Duff,  113  Fed.  264; 
51  C.  C.  A.  221. 

§  192.     Construction  —  Drawings. 

When  a  drawing  merely  shows  one  special  construction  not  pointed  out 
and  defined  as  to  its  value,  and  the  device  is  broadly  claimed,  the  drawing 
alone  will  not  serve  to  limit  the  claim  so  as  to  save  it  from  being  void  for 
broadness.  —  Consolidated  v.  Metropolitan,  60  Fed.  93 ;  8  C.  C.  A.  485. 

DeLamater  v.  Heath,  58  Fed.  414. 

We  know  of  no  principle  of  patent  construction  which,  in  such  a  case  (the 
improvement  being  novel)  would  require  the  court  to  read  into  the  claim  the 
particular  concrete  form  of  improvement  shown  in  the  drawings  and  in  the 
descriptions  of  such  drawings.  —  Consolidated  v.  Littaner,  84  Fed.  164; 
28  C.  C.  A.  133. 

§  193.     Construction  —  Duplication. 

While,  according  to  strict  rules  of  law,  two  distinct  claims  for  the  same 
substantial  matter,  differing  only  in  nonessentials,  cannot  both  be  sustained, 
yet  out  of  regard  to  the  frailty  of  human  methods  of  expression,  and  the 
variety  of  views  among  different  legal  judicial  tribunals  as  to  the  construc- 
tion of  instruments  of  the  character  of  letters  patent,  and  conceding  also, 
the  difficulty  of  always  correctly  defining  what  one's  invention  really  is,  the 
practice  has  become  settled  to  allow  the  same  substantial  invention  to  be 
stated  in  different  ways,  very  much  as  the  same  cause  of  action,  or  the  same 
offense  intended  to  be  covered  by  indictment,  are  permitted  to  be  propounded 
in  different  counts,  with  a  general  verdict  on  all  of  them.  —  Dececo  v.  Gil- 
christ, 125  Fed.  293;  60  C.  C.  A.  207. 

§  194.     Construction  —  Equivalents. 

Though  a  claim  is  not  entitled  to  the  broad  construction  it  would  appear 
to  imply,  it  still  may  be  held  to  be  infringed  by  a  construction  which  comes 
within  a  limited  construction  of  such  claim.  —  Lawther  v.  Hamilton,  124 
U.  S.  1 ;  31  L.  Ed.  325;  8  S.  Ct.  342. 

Among  cases  which  run  to  the  other  extreme,  where  the  range  of  equiva- 
lents is  held  to  be  verv  narrow  are  Masten  v.  Hunt,  51  Fed.  216;  55  Fed.  78; 
Ball  v.  Ball,  58  Fed.  818;  Ball  v.  Edgarton.  96  Fed.  489:  Millard  ».  Chase, 
108  Fed.  399.  In  some  of  this  class  the  nature  of  the  invention  prohibited 
anything  except  the  narrowest  range  of  equivalents,  it  being  a  practical  rule 


§  195  CLAIMS  179 

that  the  range  is  proportionate  to  the  extent  of  the  invention ;  but  some  are 
within  the  expressions  of  Reece  v.  Globe,  61  Fed.  958,  to  the  effect  that  words 
and  phrases  which  might  have  been  omitted  may  be  so  introduced  as  to  leave 
the  courts  no  option  except  to  regard  them  as  limitations.  —  U.  S.  Peg- 
Wood  v.  Sturtevant,  125  Fed.  382;  60  C.  C.  A.  248. 

Where  two  patents  like  those  in  question  relate  to  improved  mechanical 
arrangement,  and  where  the  structural  and  mechanical  adaptations  are  so 
entirely  different,  and  the  modes  of  operation  so  entirely  unlike,  the  situation 
does  not  admit  of  the  doctrine  of  equivalents  as  a  foundation  for  finding  and 
holding  infringement.  Each  should  stand  upon  its  merits,  unaided  by  a 
liberal  rule  of  judicial  construction  extending  the  claims  beyond  the  mechani- 
cal arrangement  described.  —  Yawman  v.  Library,  147  Fed.  246;  77  C.  C. 
A.  388. 

§  195.     Construction  —  Expanding. 

It  is  well  known  that  the  terms  of  the  claim  in  letters  patent  are  carefully 
scrutinized  in  the  Patent  Office.  Over  this  part  of  the  specification  the  chief 
contest  generally  arises.  It  defines  what  the  office,  after  a  full  examination 
of  previous  inventions  and  the  state  of  the  art,  determines  the  applicant 
is  entitled  to.  The  courts  therefore  should  be  careful  not  to  enlarge  by 
construction  the  claim  which  the  Patent  Office  has  admitted,  and  which 
the  patentee  has  acquiesced  in,  beyond  the  fair  interpretation  of  its  terms.  — 
Burns  v.  Meyer,  100  U.  S.  671 ;  25  L.  Ed.  738. 

Court  will  not  import  elements  that  would  operate  to  so  enlarge  its  scope 
as  to  cover  an  invention  not  indicated  upon  its  face.  —  Wollensak  v. 
Sargent,  151  U.  S.  221;  38  L.  Ed.  137;   14  S.  Ct.  291. 

Day  v.  Fairhaven,  132  U.  S.  98. 

While  this  may  be  done  (reading  an  old  element  into  a  claim)  with  a  view 
of  showing  the  connection  in  which  a  device  is  used,  and  proving  that  it 
is  an  operative  device,  we  know  of  no  principle  of  law  which  would  authorize 
us  to  read  into  a  claim  an  element  which  is  not  present,  for  the  purpose  of 
making  out  a  case  of  novelty  or  infringement.  The  difficulty  is  that,  if  we  once 
begin  to  include  elements  not  mentioned  in  the  claim,  in  order  to  limit  such 
claim,  and  avoid  a  defense  of  anticipation,  we  should  never  know  when  to  stop. 
—  McCarty.v.  Lehigh,  160  U.  S.  110;  40  L.  Ed.  358;  16  S.  Ct.  240. 

The  patent  was  for  an  improvement  in  burglar-proof  safes.  There  was  no 
claim  made  upon  the  lock,  but  any  suitable  locking  device  was  specified. 
Defendant  applied  the  lock  shown  in  the  patent  in  suit  to  a  jail  cage.  Held: 
In  this  case  there  was  no  claim  for  a  lock  or  locking  device,  but  for  an  im- 
provement in  safes;  and  it  would  unquestionably  be  extending  the  terms 
of  the  patent  to  afford  protection  against  infringement  in  the  use  of  a  lock 
omitting  the  principal  element  mentioned  in  the  specifications  and  claim.  — 
Gerard  v.  Diebold,  54  Fed.  889 ;  4  C.  C.  A.  644. 

Keystone  v.  Phcenix,  95  U.  S.  274;   McClain  v.  Ortmayer,  141  U.  S.  419. 

The  enlargement  of  a  claim  to  cover  infringement  beyond  the  scope  of  the 
application  would  render  the  patent  void.  —  Erie  v.  American,  70  Fed.  58 ; 
16  C.  C.  A.  632. 

De  La  Vergne  v.  Valentine,  66  Fed.  771. 

We  do  not  entertain  any  doubt  that  there  must  be  incorporated  into  these 
claims,  by  implication,  means  for  maintaining  the  contact  device  and  the 
conductor  in  their  normal  working  relations.  —  Thomson  -  Houston  v. 
Union,  86  Fed.  636;  30  C.  C.  A.  313. 


180  THE    FIXED   LAW   OF    PATENTS  §  195 

The  statute  provides  for  a  correction  of  defective  patents  by  means  of 
reissue,  and  we  are  of  the  opinion  that  a  court  of  equity  has  no  power,  in  a 
suit  for  infringement,  to  give  existence  on  the  theory  of  correcting  a  mistake, 
to  a  patent  never  issued  in  the  mode  provided  by  law,  and  adjudge  damages 
for  its  infringement.  —  Chuse  v.  Ide,  89  Fed.  491;  32  C.  C.  A.  260. 

That  elements  not  clearly  indicated  as  part  of  a  combination  cannot  be 
read  into  the  claims,  see  Wilson  v.  McCormick,  92  Fed.  167;  34  C  C.  A.  280. 

While  the  patent  is  notice  of  the  claims  which  it  contains  and  allows,  it 
constitutes  an  estoppel  of  the  patentee  from  claiming  under  that  or  any  sub- 
sequent patent  any  combination  or  improvement  there  shown  which  he  has 
not  clearly  pointed  out  and  distinctly  claimed  as  his  discovery  or  invention 
when  he  received  his  patent.  It  is  a  complete  and  a  legal  notice  to  every 
one  —  notice  on  which  every  one  has  a  right  to  rely  —  that  he  may  freely 
use  such  improvements  and  combinations  without  claim  or  molestation  from 
the  patentee.  It  would  constitute  rank  injustice  to  permit  an  inventor, 
after  a  combination  or  device  that  he  did  not  distinctly  claim  in  his  patent 
had  gone  into  general  use,  and  years  after  his  patent  had  been  granted,  to 
read  that  combination  or  device  into  one  of  the  claims  of  his  patent,  and  to 
recover  for  its  infringement  of  every  one  who  had  used  it  upon  the  faith  of 
his  solemn  declaration  that  he  did  not  claim  it.  This  would  be  the  effect  of  a 
reversal  of  the  decree  below. —  M'Bride  v.  Kingman,  97  Fed.  217;  38  C.  C. 
A.  123. 

Building  v.  Eustis,  65  Fed.  804;  Stirrat  v.  Mfg.  Co.  61  Fed.  980;  Adams  v. 
Lindell,  77  Fed.  432. 

It  is  not  within  the  rightful  power  of  the  courts  to  enlarge  or  restrict 
the  scope  of  patents  which  by  mistake,  were  issued  in  terms  too  narrow  or 
too  broad  to  cover  the  invention,  however  manifest  the  fact  and  extent  of 
the  mistake  may  have  shown  to  have  been.  —  United  States  Repair  v. 
Assyrian,  100  Fed.  965;  41  C.  C.  A.  123. 

The  object  of  the  claim  in  a  patent  is  to  publish  to  the  world  the  precise 
nature  of  the  invention  which  the  patentee  seeks  to  protect.  He  cannot 
demand  that  there  shall  be  imported  into  it  an  element  which  is  not  there 
distinctly  stated  or  necessarily  implied.  —  Santa  Clara  v.  Prescott,  102  Fed. 
501 ;  42  C.  C.  A.  477. 

In  view  of  the  fact  that  the  invention  was  the  hanging  of  the  motor  below 
the  car,  one  end  being  centered  upon  the  axle,  and  the  other  end  being 
flexibly  attached  by  springs  to  the  truck  frame,  it  cannot  be  subdivided, 
and  claim  four  must  be  construed  to  include  the  flexible  support  of  the  off 
end  of  the  motor  from  an  independent  structure  which  is  the  truck  frame,  or 
from  the  independently  mounted  body  of  the  vehicle.  —  Sprague  v.  Nassau, 
102  Fed.  761;  42  C.  C.  A.  612. 

That  reference  to  a  subsequent  patent  to  the  same  inventor  may  not  be 
made  for  the  purpose  of  expanding  the  claims  of  the  patent  in  suit,  see 
Union  v.  Battle  Creek,  104  Fed.  337;  43  C.  C.  A.  560. 

The  courts  will  not,  in  the  absence  of  an  inclusive  claim,  go  into  the  history 
of  the  art,  to  ascertain  what  was  really  discovered,  and  what  might  have 
been  patented,  had  the  patentee  chosen.  The  patentee  will  be  taken  at  his 
word,  and  protected  only  according  to  the  terms  in  which  he  has  himself 
demanded  protection.  —  Consolidated  v.  Seybold,  105  Fed.  978;  45  C.  C.  A. 
152. 


§  195  CLAIMS  181 

The  court  is  not  at  liberty  by  construction  to  expand  a  claim  beyond  the 
fair  meaning  of  its  terms.  This  claim  is  for  a  combination.  Its  terms  are 
explicit  and  clear.  It  needs  no  interpretation.  It  speaks  for  itself.  The  court 
must  take  the  claim  as  it  finds  it.  —  Pittsburg  v.  Pittsburg,  109  Fed.  644; 
48  C.  C.  A.  580. 

The  claim  does  not  contain  any  apt  language  which  would  suggest  to  a 
casual  reader  that  the  patentee  intended  to  incorporate  as  one  of  the  ele- 
ments thereof  the  invention  consisting  of  the  supplemental  chamber  and  a 
slotted  partition  wall,  which  are  covered  completely  by  the  first  claim ;  and 
in  the  absence  of  words  which  do  clearly  indicate  such  a  purpose,  we  are  not 
disposed  to  import  into  a  claim  a  feature  of  construction  already  protected 
by  another  claim,  merely  for  the  purpose  of  sustaining  the  claim,  and  sub- 
jecting another  to  the  charge  of  infringement.  —  Metallic  v.  Brown,  110  Fed. 
665;  49  C.  C.  A.  147. 

McCarty  v.  Railroad,  160  U.  S.  110;  Steams  v.  Russell,  85  Fed.  218;  Wilson 
v.  Machine  Co.*  92  Fed.  167. 

The  most  liberal  rule  of  construction  known  to  the  patent  law  will  not 
sanction  such  an  interpretation  of  the  specification  and  claims  of  a  patent, 
or  such  an  expansion  of  the  invention  (viz.,  disregarding  the  specific  feature 
repeatedly  mentioned  as  the  essence  of  the  invention).  Such  a  construction 
and  enlargement  of  the  claim  are  manifestly  a  contradiction  of  its  specific 
terms,  and  an  attempt  to  read  into  the  patent  a  structure  never  contemplated 
by  the  patentee,  and  entirely  outside  of  his  invention.  —  General  v.  Webster, 
113  Fed.  756;  51  C.  C.  A.  446. 

If  this  tipping  capacity  had  been  pointed  out,  and  even  this  indefinite 
direction  given  by  the  patentee  as  to  the  mode  of  securing  the  operation,  the 
patent  might  possibly  be  saved.  But  neither  the  advantage  of  such  a  func- 
tion, nor  any  hint  that  it  is  in  any  wise  dependent  upon  the  normal  tension 
of  the  retaining  wires,  is  to  be  found  in  the  patent.  How,  then,  is  it  possible 
for  the  public  to  obtain  a  knowledge  of  this  new  function?  —  Goodyear  v. 
Rubber,  116  Fed.  363;  53  C.  C.  A.  583. 

If,  when  thus  examined,  the  specification  answers  the  calls  of  the  claim, 
there  is  no  difficulty.  But  one  may  not  read  into  a  claim  an  element  not 
contained  in  it  when  its  meaning  is  once  settled  by  construction.  —  Canda 
v.  Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 

Stillwell-Bierce  v.  Eufaula,  117  Fed.  410;  Deering  v.  Winona,  155  U.  S.  286; 
Goshen  v.  Bissell,  72  Fed.  67;  Roberts  v.  Nail,  53  Fed.  920;  Campbell  v.  Duplex, 
86  Fed.  315. 

Neither  can  a  feature  of  construction  or  an  element  covered  by  one  claim 
be  read  into  another  in  which  it  is  not  mentioned.  —  Penfield  v.  Potts,  126 
Fed.  475;  61  CCA.  371. 

Wilson  v.  McCormick,  92  Fed.  167;   Canda  v.  Michigan,  124  Fed.  486. 

We  know  of  no  authority  for  reading  into  a  claim  features  which  have  been 
omitted,  although  shown  in  the  specifications,  and  none  which  would  justify 
us  in  suffering  such  enlargement  of  this  claim  for  the  purpose  of  increasing 
the  damages  justly  recoverable  for  the  infringement  of  the  patented  portions 
of  the  infringing  machine.  We  may,  beyond  doubt,  look  to  the  specifications 
and  drawings  for  the  purpose  of  understanding  the  claims,  or  that  we  may 
see  that  the  device  is  useful  or  operative,  and  sometimes  for  the  purpose  of 
limiting  a  claim  to  the  particular  device  described,  but  we  may  not  enlarge 


182  THE    FIXED    LAW    OF    PATENTS  §§  196-197 

a  claim  by  including  therein  elements  which  are  not  claimed  as  such.  —  Pen- 
field  v.  Potts,  126  Fed.  475;  61  C.  C.  A.  371. 

McCarty  v.  Lehigh,  160  U.  S.  110;  Stearns  v.  Russell,  85  Fed.  218. 

This  is  not  a  question  of  the  construction  of  a  patent  or  of  the  application 
of  the  doctrine  of  equivalents.  It  is  a  question  whether  the  court  will  recon- 
struct the  Whitley  patent  in  order  to  cover  a  device  in  which  the  essence  of 
the  invention  covered  by  the  patent  has  been  eliminated.  —  Whitley  v. 
Winsor,  127  Fed.  338;  62  C.  C.  A.  220. 

Under  a  well-settled  rule,  mere  utility  cannot  serve  to  enlarge  the  scope 
of  an  invention  which  is  limited  to  the  structure  disclosed  in  the  patent  — 
Wilson  v.  Calculagraph,  144  Fed.  91 ;  75  C.  C.  A.  249. 

The  rule  is  fundamental,  in  the  construction  of  patents,  that  the  claim 
in  the  patent  is  the  measure  of  the  invention.  The  specification  may  be 
referred  to  to  explain  any  ambiguity  in  the  claim,  but  it  cannot' be  referred  to 
for  the  purpose  of  expanding  or  changing  the  claim.  —  National  v.  New 
England,  151  Fed.  19;  80  C.  C.  A.  485. 

Keystone  v.  Phcenix,  95  U.  S.  274;  McClain  v.  Ortmayer,  141  U.  S.  419. 

If  we  import  the  specifications  into  the  claims  it  would  seem  that  this 
characteristic  of  the  vapor  holder  should  go  with  it,  as  showing  what  vapor 
holder  the  patentee  means  by  his  claim.  —  American  v.  Cleveland,  158  Fed. 
978;  86  C.  C.  A.  182. 

§  196.     Construction  —  Functional. 

We  think  it  must  be  conceded  that  the  movement  of  a  machine  irrespective 
of  the  mechanism  which  causes  it  cannot  be  patented.  The  claim  must  be 
restricted  to  the  mechanism  which  causes  the  movement,  subject,  of  course, 
to  the  rule  of  equivalents,  which  operates  liberally  in  favor  of  the  grantee 
where  the  patent  is  primary  in  nature,  making  a  distinct  advance  in  the 
progress  of  the  art;  and  this  patent,  in  our  opinion,  is  of  that  character. 
When  we  examine  the  mechanism  we  find  in  the  appellant's  machine  described 
in  the  patent  a  rocking  or  tilting  device,  and  in  the  appellee's  a  lifting  and 
dropping  device.  The  appliances  are  essentially  different.  They  do  different 
things  in  distinct  ways.  The  one  rocks  or  tilts  the  mold  plates,  the  other 
alternately  lifts  and  drops  them.  Are  we  justified  in  holding  that  these  two 
essentially  distinct  devices  are  equivalents,  simply  because  the  ultimate 
result  is  the  same?  We  think  not,  for  that  would  be  construing  the  claim  so 
as  to  cover  the  movement  alone  and  not  the  mechanism  producing  it.  It 
would  be  virtually  giving  a  patent  for  the  result,  regardless  of  how  reached.  — 
American  v.  Sexton,  139  Fed.  564;  71  C.  C.  A.  548. 

Burr  v.  Duryea,  1  Wall.  320;  Merrill  v.  Yeomans,  94  U.  S.  568;  Wessell  v. 
United,  139  Fed.  11. 

§  197.     Construction  —  Generic. 

If  the  patent  be  for  a  whole  machine  the  party  can  maintain  a  title  to  it 
only  by  establishing  that  it  is  substantially  new  in  its  structure  and  mode 
of  operation.  —  Evans  v.  Eaton,  7  Wheat.  356 ;  5  L.  Ed.  472. 

See  s.  c.  3  Wheat.  454. 

Being  satisfied  that  he  was,  in  fact,  the  inventor  of  the  general  process 
described  and  bodied  forth  in  the  specification,  how  can  we,  by  any  fair  rule 
of  construction,  circumscribe  this  claim  in  such  a  manner  as  that  it  shall  only 
cover  the  process  applied  in  the  precise  degree  and  the  precise  means  or 


§  197  CLAIMS  183 

machinery  pointed  out?  Had  the  process  been  known  and  used  before  and 
not  been  Tilghman's  invention,  he  could  not  then  have  claimed  anything 
more  than  the  particular  apparatus  described  in  his  patent;  but  being  the 
inventor  of  the  process,  as  we  are  satisfied  was  the  fact,  he  was  entitled  to 
claim  it  as  he  did.  —  Tilghman  v.  Proctor,  102  U.  S.  707;  26  L.  Ed.  279. 

A  patentee  who  is  the  first  to  make  an  invention  is  entitled  to  his  claim 
for  all  the  uses  and  advantages  which  belong  to  it.  —  Stow  v.  Chicago,  104 
U.  S.  547;  26  L.  Ed.  816. 

Woodman  v.  Stimson,  3  Fish.  P.  C.  98;  Tucker  v.  Spalding,  80  U.  S.  453; 
Graham  v.  Mason,  5  Fish.  P.  C.  1. 

Unless  the  description  is  sufficiently  clear  and  full  to  enable  one  skilled 
in  the  art  to  use  the  invention,  the  invention,  though  it  be  a  pioneer  cannot 
have  a  broad  construction  applied  to  its  claims.  —  Bene  v.  Jeantet,  129  U.  S. 
683;  32  L.  Ed.  803;  9  S.  Ct.  428. 

In  view  of  the  fact  that  the  inventor  was  a  pioneer  in  his  art,  and  invented 
a  principle  which  had  gone  into  almost  universal  use  in  this  country,  we  think 
he  is  entitled  to  a  liberal  construction  of  his  claim,  and  that  the  infringing 
device,  containing  as  it  does  all  the  elements  of  his  combination  should  be 
held  as  an  infringement,  though  there  are  superficial  dissimilarities  in  their 
construction.  —  Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;  12  S.  Ct. 
799. 

The  Circuit  Court  of  Appeals  concurred  with  the  Circuit  Court  that  unless 
the  patents  sued  on  embodied  a  pioneer  invention,  the  defendant's  machine 
was  so  differentiated  from  either  of  the  others  that  the  charge  of  infringement 
could  not  be  maintained.  The  Circuit  Court  held  all  complainant's  patents 
to  be  only  improvements  on  the  prior  art.  The  Circuit  Court  of  Appeals 
held  that  the  patent  was  entitled  to  be  treated  as  embodying  primary  in- 
vention. We  think  that  none  of  complainant's  patents  embodied  primary 
invention,  and  we  concur  with  both  the  courts  below  that,  this  being  so, 
there  was  no  infringement.  —  Kokomo  v.  Kitselman,  189  U.  S.  8;  47  L. 
Ed.  689;  23  S.  Ct.  521. 

The  patentee  was  a  pioneer,  in  that  he  designed  a  new  way  to  accomplish 
a  desired  result,  but  upon  the  same  general  idea  which  he  had  unsuccessfully 
tried  to  work  out  in  his  earlier  patent.  His  later  patent  was  the  bridge  and 
not  a  mere  step,  which  carried  from  failure  to  success.  It  is  not  important 
now  to  determine  the  grade  of  its  pioneership,  and  whether  it  may  be  classed 
in  the  list  of  those  inventions  which  are  of  the  highest  rank;  but  it  was  an 
invention  created  to  achieve  great  necessities  and  overcome  great  hindrances, 
and  was  one  of  wide  breadth.  A  court  would  not  be  justified  in  adopting 
"  a  narrow  or  astute  construction,"  which  should  minimize  the  character  of 
the  invention,  leave  its  real  scope  open  to  trespassers  and  thus  "  be  fatal  to 
the  grant."  The  claims  of  the  patent  do  not  contract  the  grant  to  narrower 
limits  than  those,  which  the  invention  as  made  by  the  patentee,  literally 
covered;  and  the  claims,  therefore,  are  not  limited  to  the  precise  mechanical 
means  described  in  the  specification.  The  rule  which  permits,  and  indeed 
compels,  courts  to  give  a  wide  range  to  the  equivalents  which  a  broad  or 
pioneer  patent  can  include,  is  thus  expressed  in  Miller  v.  Mfg.  Co.  151  U.  S. 
186.  "  If  the  invention  is  broad  or  primary  in  its  character,  the  range  of 
equivalents  will  be  correspondingly  broad,  under  the  liberal  construction 
which  the  courts  give  to  such  inventions."  —  Westinghouse  v.  New  York, 
63  Fed.  962:   11  C.  C.  A.  528. 


184  THE    FIXED    LAW    OF    PATENTS  §  198 

On  the  whole  case,  we  are  satisfied  that  the  Gorham  binder  was  a  primary 
or  pioneer  patent  of  the  highest  merit,  that  it  attained  a  result  wholly  new 
in  a  new  way,  and  that  in  the  consideration  of  alleged  infringements  of  it, 
the  patentee  is  entitled  to  all  the  liberality  of  treatment  accorded  to  that 
comparatively  rare  class  of  patents.  —  McCormick  v.  Aultman,  69  Fed.  371 ; 
16  C.  C.  A.  259. 

It  is  conspicuously  one  of  those  pioneer  inventions  which  entitle  the  pro- 
prietor to  a  liberal  protection  from  the  courts  in  construing  the  claim.  But 
there  is  a  limit  to  the  judicial  liability  in  this  direction.  If  an  inventor  is 
ambiguous  or  obscure,  or  halt  or  limp  in  his  language  of  description,  the  courts 
will  help  him  out,  and  so  construe  the  claim  as  to  give  distinct  identity  to  his 
device.  If  there  be  a  doubt  in  the  mind  of  the  court  or  the  jury  on  the  issue 
of  mechanical  equivalency,  the  court  will  give  and  instruct  the  jury  to  give, 
the  benefit  of  the  doubt  to  the  pioneer  inventor.  But  where  the  inventor 
falls  so  far  short  in  his  description  as  to  claim  only  the  result  which  his  machine 
accomplishes,  and  omits  an  explicit  definition  of  the  means  by  which  he  does 
it,  as  in  the  case  at  bar,  the  courts  have  another  duty  to  perform,  one  which 
they  owe  to  the  public  and  to  the  worthy  fraternity  of  inventors,  and  must 
decline  to  give  him  general  rights  where  he  is  entitled  only  to  special  rights. 
—  Boyden  v.  Westinghouse,  70  Fed.  816;  17  C.  C.  A.  430. 

Limitations  upon  the  claims  by  which  the  defendant  seeks  to  avoid  in- 
fringement proceed  upon  the  initial  fallacy,  that  in  a  generic  process  patent 
every  phenomenon  observed  during  operation  and  every  minute  detail 
described  must  be  read  into  the  claims  and  that  the  least  departure  from  the 
claims  as  so  construed  avoids  infringement.  The  position  is  not  tenable.  In 
a  patent  like  Bradley's  the  claims  should  be  as  broad  as  the  invention  and, 
even  if  unnecessary  and  unreasonable  limitations  are  incorporated  in  the 
claims,  the  court  should  interpret  them  liberally  and  not  permit  a  defendant 
to  escape  who  reaches  the  same  result  by  analogous  means,  although  he  may 
employ  additional  elements  and  improve  mechanical  appliances.  —  Electric 
v.  Pittsburg,  125  Fed.  926;  60  C.  C.  A.  636. 

Ventilating  Co.  v.  Fuller,  57  Fed.  626;  Tilghman  v.  Proctor,  102  U.  S.  707. 

To  use  the  language  of  counsel,  the  court  ought  "  to  refer  back  to  the 
specifications,  and  read  into  the  claims  those  elements  which  are  therein 
specified  as  being  the  means  by  which  such  functions  are  performed."  The 
claims  of  a  patent  should  be  construed,  where  they  reasonably  may  be,  to 
cover  the  entire  invention  of  the  patentee;  and  where  a  patent  contains 
several  claims,  some  of  which  are  limited  to  details,  the  others  are,  prima 
facie,  not  to  be  restricted  by  insisting  that  they  contain,  as  necessary  ele- 
ments, the  particulars  which  are  specifically  covered  elsewhere.  —  Los 
Angeles  v.  iEolian,  143  Fed.  880;  75  C.  C.  A.  88. 

Risdon  v.  Trent,  92  Fed.  375;  Mast  v.  Dempster,  82  Fed.  327;  Bresnahan  v. 
Tripp,  102  Fed.  899. 


§  198.     Construction  —  Improvement. 

Some  inventions  embrace  only  a  part  of  a  machine,  and  in  such  case  the 
part  or  parts  claimed  must  be  specified  and  pointed  out  so  that  constructors, 
other  inventors  and  the  public  may  know  how  to  make  the  invention,  and 
what  is  withdrawn  from  general  use.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

Bailey  was  not  the  first  to  conceive  the  idea  of  the  device  in  suit.  The 
same  thing  had  been  done  by  other  means.    The  claim  must  be  confined  to 


§  199  CLAIMS  185 

the  specific  device  described  and  claimed.  —  Blake  v.  San  Francisco,  113  U.  S. 
679;  28  L.  Ed.  1070;  5  S.  Ct.  692. 

Prouty  v.  Ruggles,  16  Pet.  336;  Rowell  v.  Lindsay,  113  U.  S.  97. 

If  his  device  contains  a  patentable  invention,  it  is  but  one  in  a  series  of 
improvements  all  having  the  same  general  object  and  purpose;  and  that  in 
construing  the  claims  of  his  patent,  they  must  be  restricted  to  the  precise  form 
and  arrangement  of  parts  described  in  his  specification,  and  to  the  purpose 
indicated  therein.  —  Bragg  v.  Fitch,  121  U.  S.  478;  30  L.  Ed.  1008;  7  S.  Ct. 
978. 

If  the  complainant's  device  constituted  a  patentable  invention,  it  is 
clearly  "  one  in  a  series  of  improvements,  all  having  the  same  general  object 
and  purpose ;  and  that,  in  construing  the  claims  of  his  patent,  they  must  be 
restricted  to  the  precise  form  and  arrangement  of  parts  described  in  his 
specifications,  and  to  the  purpose  indicated  therein."  —  Fox  v.  Perkins, 
52  Fed.  205;  3  C.  C.  A.  32. 

Bragg  v.  Fitch,  121  U.  S.  483;  Caster  !».  Speigel,  133  U.  S.  360. 

That  an  element  in  a  prior  patent  to  the  same  inventor  cannot  be  imported 
into  a  claim  of  a  later  patent  to  make  that  claim  cover  a  desired  combina- 
tion, see  Boston  v.  Woodward,  82  Fed.  97;  27  C.  C.  A.  69. 

If  the  patent  alleged  to  be  infringed  had  been  of  a  primary  character, 
or  one  embodying  a  distinct  and  substantial  advance  in  the  art  to  which 
it  relates,  we  should  probably  be  able  to  find  the  equivalents  of  the  elements. 
—  Smith  v.  Ridgley,  103  Fed.  875;  43  C.  C.  A.  365. 

McCormick  v.  Aultman,  69  Fed.  371;   Bundy  v.  Detroit,  94  Fed.  524. 

The  invention  claimed  being  only  for  improvements  in  well-known  proc- 
esses, and  in  no  sense  one  of  a  pioneer  character,  the  patentee  must  be  held 
to  a  strict  construction  of  his  claims.  —  De  Lamar  v.  De  Lamar,  117  Fed.  240; 
54  C.  C.  A.  272. 

Wright  v.  Yuengling,  155  U.  S.  47;  Westinghouse  v.  Power-Brake,  170  U.  S. 
562. 

Limited  to  specific  combination  —  see  Bibb  v.  Bowers,  142  Fed.  137;  73 
C.  C.  A.  355. 

Singer  v.  Cramer,  192  U.  S.  265. 

It  must  be  remembered  that  the  patent  sued  on  is  in  no  sense  a  pioneer  one, 
but  a  mere  improvement.  In  such  cases  the  patentee  is  limited  to  the  precise 
devices  and  combinations  shown  and  claimed  in  his  patent.  —  Cumming  v. 
Baker,  144  Fed.  395;  75  C.  C.  A.  373. 

Boyd  v.  Janesville,  158  U.  S.  260;  Brown  v.  Huntington,  134  Fed.  735;  Rich 
v.  Baldwin,  133  Fed.  920;  King  v.  Bilhofer,  127  Fed.  127;  Tabor  v.  Photo- 
graph, 87  Fed.  871;  Ransome  v.  Hyatt,  69  Fed.  148;  Ney  v.  Ney,  69  Fed.  405; 
Overweight  v.  Improved,  94  Fed.  155. 

§  199.     Construction  —  Limitation  —  Broadening  by  Amendment. 

Courts  should  regard  with  jealousy  and  disfavor  any  attempts  to  enlarge 
the  scope  of  an  application  once  filed,  or  of  a  patent  once  granted,  the  effect 
of  which  would  be  to  enable  the  patentee  to  appropriate  other  inventions 
made  prior  to  such  alteration,  or  to  appropriate  that  which  has,  in  the  mean- 
time, gone  into  public  use.  —  Chicago  v.  Sayles,  97  U.  S.  554;  24  L.  Ed.  1053. 


186  THE    FIXED    LAW    OF    PATENTS  §§200-201 

§  200.     Construction  —  Limitation  —  Disclaimer. 

We  are  aware  of  no  principle  which  will  permit  a  patent  to  be  defeated  for 
want  of  novelty  in  respect  to  the  subject-matter  which  has  been  eliminated 
from  it  by  disclaimer.  It  is  also  urged  that  the  effect  of  the  disclaimer  was 
to  limit  the  method  of  the  patent  to  the  exact  elements  mentioned.  If  these 
elements  only,  instead  of  elements  such  as  these  named,  had  been  mentioned, 
there  would  be  much  force  in  the  argument.  —  Schwarzwalder  v.  N.  Y.  T36 
Fed.  152;   13  C.  C.  A.  380. 

It  is  material  to  observe  that  the  invention  claimed  is  the  combination  of 
certain  described  elements.  This  amounts  to  a  disclaimer  of  anything  new 
in  the  elements  themselves.  —  Wells  v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Corn  Planter  Pat.  23  Wall.  181;  Miller  v.  Brass  Co.  104  U.  S.  350;  Rowell  v. 
Linsay,    113   U.   S.  97. 

If  one  particular  branch  of  the  art  of  working  in  wood  —  cabinet  making, 
for  example  —  had  never  used  circular  saws,  because  they  were  supposed  to 
be  impracticable  or  useless  or  not  economical,  although  such  saws  were  used 
in  other  branches  of  the  art,  it  might  be  invention  to  introduce  them  in  cabi- 
net making;  and  the  individual  who  showed  that  they  were  useful,  prac- 
ticable, and  economical  in  that  branch  of  the  art  might  be  entitled  to  a  patent 
for  a  circular  saw  in  combination  with  the  other  parts  of  an  old  machine. 
But  his  specification  and  claim  would  be  expected  to  indicate  just  what  it 
was  he  had  invented  and  what  he  claimed.  An  individual  who  had  invented 
some  specific  improvement  in  circular  saws  generally  —  something  novel 
and  useful  and  applicable  to  those  tools  in  every  branch  of  the  wood-working 
art  —  might  also  obtain  a  patent,  with  a  claim  covering  all  circular  saws, 
which  would  be  good  to  restrain  infringement  of  his  particular  improvement. 
But  it  would  be  a  startling  proposition  that  he  could,  13  years  afterwards, 
file  a  disclaimer  of  any  combination  containing  circular  saws  so  used  (with 
his  improvement  or  without)  on  the  theory  that  no  one  had  used  them  in  that 
branch  of  the  art  before.  We  do  not  understand  that  the  statutory  pro- 
visions allowing  a  disclaimer  to  be  filed  can  be  thus  availed  of  to  change  the 
invention  claimed  in  a  patent,  and  we  are  referred  to  no  authorities  which 
sustain  complainant's  contention.  The  object  of  a  disclaimer  is  well  ex- 
pressed in  Chem.  Wks.  v.  Lauer,  Fed.  Cas.  12,135: 

"  It  is  designed  to  allow  a  patentee  to  recover  on  one  claim  of  his  patent, 
notwithstanding  other  claims  in  it  are  void  for  want  of  novelty.  But  it 
requires  that  the  parts  claimed  without  right,  and  the  parts  rightfully 
claimed,  shall  be  definitely  distinguishable,  as  a  matter  of  fact,  on  the  face 
of  the  claims;  that  is,  to  be  definitely  distinguished  from  each  other  in  the 
claims."  —  Albany  v.  Worthington,  79  Fed.  966;  25  C.  C.  A.  258. 

Whatever  may  have  been  the  transactions  between  the  applicant  and  the 
patent  office,  and  whatever  light  may  be  thrown  upon  obscurities  in  the 
patent  by  the  wrapper  and  contents,  it  is  the  patent  as  issued  by  which  the 
patentee's  right  to  a  monopoly  must  be  tested.  When  it  expressly  declares 
that  there  is  some  other  process  to  which  it  does  not  apply,  and  in  plain  and 
unambiguous  language  gives  the  earmarks  by  which  that  other  process  is  to 
be  distinguished  from  the  process  of  the  patent,  the  public  has  the  right  to 
insist  that  the  patentee  shall  abide  by  the  disclaimer  he  has  made  and  pro- 
claimed. —  Jackson  v.  Birmingham,  79  Fed.  801 ;  25  C.  C.  A.  196. 

§  201.     Construction  —  Limitation  —  By  Applicant. 

Cases  arise  not  unfrequently,  where  the  actual  invention  described  in  the 
specification  is  larger  than  the  claims  of  the  patent;  and  in  such  cases  it  is 
undoubtedly  true  that  the  patentees  in  a  suit  for  infringement  must  be 


§  201  CLAIMS  187 

limited  to  what  is  specified  in  the  claims  annexed  to  the  specification,  but  it 
is  equally  true  that  the  claims  of  the  patent,  like  other  provisions  in  writing, 
must  be  reasonably  construed,  and  in  case  of  doubt  or  ambiguity  it  is  proper 
in  all  cases  to  refer  back  to  the  descriptive  portions  of  the  specification  to 
aid  in  solving  the  doubt  or  in  ascertaining  the  true  intent  and  meaning  of 
the  language  employed  in  the  claims;  nor  is  it  incorrect  to  say  that  due 
reference  may  be  had  to  the  specification,  drawings  and  claims  of  a  patent, 
in  order  to  ascertain  its  true  legal  construction.  In  construing  patents  it  is 
the  province  of  the  court  to  determine  what  the  subject-matter  is  upon  the 
whole  face  of  the  specification  and  the  accompanying  drawings.  —  Bates 
v.  Coe,  9S  U.  S.  31 ;  25  L.  Ed.  68. 

Brooks  v.  Fisk,  15  How.  215;    Curt.  Pat.  4th  Ed.  sec.  222. 

It  is  possible  that  the  inventor  was  entitled  to  a  broader  claim  than  that  to 
which  he  limited  himself;  but  if  he  described  and  claimed  only  a  part  of  his 
invention,  he  is  presumed  to  have  abandoned  the  residue  to  the  public.  — 
Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

McClain  v.  Ortmayer,  141  U.  S.  419. 

The  patentee  having  described  in  his  specification  and  declared  to  be  an 
essential  part  of  his  invention  an  element  thereof  and  having  made  it  a  sub- 
ject of  his  claims,  is  not  now  at  liberty  to  say  it  is  immaterial,  or  that  a  device 
which  dispenses  with  it  is  an  infringement,  though  it  accomplish  the  same 
purpose  in,  perhaps,  an  equally  effective  manner.  —  Wright  v.  Yuengling, 
155  U.  S.  47;  39  L.  Ed.  64;  15  S.  Ct.  1. 

Vance  v.  Campbell,  66  U.  S.  427;  Union  v.  Desper,  101  U.  S.  332;  Gage  v.  Her- 
ring, 107  U.  S.  640;   Rees  v.  Gould,  82  U.  S.  187;   Brown  v.  Davis,  116  U.  S.  237. 

It  is  insisted  that  the  claims  of  the  patent  should  have  a  liberal  construc- 
tion, and  that  the  special  devices  described  in  the  specification  "  are  not- 
necessary  constituents  of  the  claims."  Machine  Co.  v.  Lancaster,  129  U.  S. 
263.  This  just  principle  is  one  that  is  well  recognized,  but  another  principle 
is,  at  the  present  stage  of  the  patent  law,  of  equal  force,  which  is  that  the 
construction  of  patents  must  be  in  conformity  with  the  self-imposed  limita- 
tions which  are  contained  in  the  claims.  —  Groth  v.  International,  61  Fed. 
284;  9  C.  C.  A.  507. 

Following 

McClain  v.  Ortmayer,  141  U.  S.  419. 

When  a  patentee  has  practically  disclaimed  other  devices  by  stating  in  his 
specifications  that  they  existed  before  his  own  was  contrived,  such  other 
devices  may  fairly  be  considered  to  be  part  of  the  prior  art,  when  he  brings 
suit  upon  the  patent  issued  to  him  upon  the  representation  made  in  such 
specifications.  —  Lyons  v.  Drucker,  106  Fed.  416;  45  C.  C.  A.  368. 

Where  the  patentee  specifies  a  particular  form  as  a  means  by  which  the 
effect  of  the  invention  is  produced,  or  otherwise  confines  himself  to  a  par- 
ticular form  of  what  he  describes,  he  is  limited  thereby  in  his  claim  for 
infringement.  —  Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70. 

Walker  on  Pat.  sec.  363. 

The  patentee,  having  originally  covered  his  real  invention  by  the  last 
of  the  original  10  claims,  and  having  unwarrantably  attempted  by  said  other 
claims  to  cover  a  broader  invention,  secured  a  patent  for  certain  other  claims, 
limited  to  the  definite  construction  shown  and  described  in  his  application. 
In  so  doing  he  has  committed  himself  to  a  definite  interpretation  and  limita- 
tion of  his  claims.  —  Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70. 


188 


THE    FIXED   LAW   OF   PATENTS 


§  202 


Since  the  patentee  has  deliberately  chosen  to  make  this  parallelism  a 
feature  of  these  two  claims,  it  is  not  for  the  court  to  strike  it  out.  —  Whitte- 
more  v.  Reinhardt,  159  Fed.  707;  86  C.  C.  A.  461. 

Where  one  claim  of  a  patent  specifically  names  two  elements,  and  another 
claim  specifically  names  these  two  elements  and  in  addition  thereto  a  third 
element,  it  must  be  presumed  that  the  patentee  intended  to  limit  the  claims  to 
the  elements  enumerated.  —  Marshall  v.  Pettingell- Andrews,  164  Fed.  862; 
CCA. 


§  202.    Construction  —  Limitation  —  Elements  of  Claim. 

A  claim  must  be  limited  to  the  elements  claimed,  or  their  equivalents.  — 
Gage  v.  Herring,  107  U.  S.  640;  27  L.  Ed.  601;  2  S.  Ct.  819. 

Meter  v.  Desper,  101  U.  S.  332;  Fames  v.  Godfrey,  1  Wall.  78;  Murray  v. 
Clayton,  L.  R.  10  Ch.  G75  note;  Clark  v.  Adie,  L.  R.  10  Ch.  667. 

Where  the  claims  covered  specifically  cylinders  with  chambers  or  depres- 
sions, thev  cannot  be  construed  to  cover  plain  cylinders.  —  Hendy  v.  Golden, 
127  U.  S.~370;  32  L.  Ed.  207;  8  S.  Ct.  1275. 

Fay  v.  Cordesman,  109  U.  S.  408;  Sargent  v.  Hall,  111  U.  S.  63;  Shepard  v. 
Carrigan,  116  U.  S.  593;  White  v.  Dunbar,  119  U.  S.  17;   Crawford  v.  Heysinger, 

123  U.  S.  589. 

Must  be  restricted  and  confined  to  the  specific  combination  described  and 
each  element  pointed  out  as  an  essential  part  thereof.  —  Knapp  v.  Morss, 
150  U.  S.  221;  37  L.  Ed.  1059;  14  S.  a.  81. 

Duff  v.  Sterling,  107  U.  S.  639;    Newton  v.  Furst,  119  U. 
Fitch,  121  U.  S.  478;    Crawford  v.  Heysinger,  123  U.  S.  589; 

124  U.  S.  32;    also  Sargent  v.  Hall,  114  U.  " 
McCormick  v.  Talcott,  61  U.  S.  402. 


S.  373;    Bragg  v. 
Dreyfus  v.  Wiese, 
S.  63;    Eddy  v.  Denis,  95  U.  S.  560; 


The  patentee  having  described  in  his  specification  and  declared  to  be  an 
essential  part  of  his  invention  an  element  thereof  and  having  made  it  a  subject 
of  his  claims,  is  not  now  at  liberty  to  say  it  is  immaterial,  or  that  a  device 
which  dispenses  with  it  is  an  infringement,  though  it  accomplish  the  same 
purpose  in,  perhaps,  an  equally  effective  manner.  —  Wright  v.  Yuengling, 
155  U.  S.  47;  39  L.  Ed.  64;  15  S.  Ct.  1. 

Vance  v.  Campbell,  66  U.  S.  427;  Union  v.  Desper,  101  U.  S.  332;  Gage  v.  Her- 
ring, 107  U.  S.  640;   Rees  v.  Gould,  82  U.  S.  187;   Brown  v.  Davis,  116  U.  S.  237. 

In  insisting  now  that  the  defendant  has  incorporated  this  vital  feature 
in  its  safety-valve,  the  complainant  seems  to  place  itself  precisely  within  the 
animadversion  of  the  Supreme  Court  in  the  case  of  Western  v.  Ansonia, 
114  U.  S.  447,  where  it  says,  "  It  has  been  held  by  this  court  that  the  scope 
of  letters  patent  should  be  limited  to  the  invention  covered  by  the  claim; 
and,  though  the  claim  may  be  illustrated,  it  cannot  be  enlarged  by  the 
language  of  other  parts  of  the  specification."  —  Ashton  v.  Coale,  52  Fed. 
314;3CC  A.  98. 

The  patentee  has  disclosed  only  one  particular  construction  operating  in  a 
defined  way,  and  this  construction  he  has  claimed.  It  is  idle  to  speculate 
whether  or  not  he  might  have  made  a  broader  claim.  The  court  is  powerless 
to  relieve  him  from  the  consequences  of  self-imposed  limitations.  —  Lewis 
v.  Pa.  59  Fed.  129;  8  C.  C  A.  41. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Fay  v.  Cordesman,  109  U.  S.  408;  Rowell 
v.  Lindsay,  113  IT.  S.  97;   McClain  v.  Ortmayer,  141  U.  S.  419. 

A  patent  grants  no  exclusive  right  except  to  what  is  distinctly  covered  by 
the  claims.  —  Thomasson  v.  Bumpass,  78  Fed.  491 ;  24  C  C  A.  180. 


§§  203-204  CLAIMS  189 

Grant  v.  Walter,  148  U.  S.  547;  Western  v.  Ansonia,  114  U.  S.  447;  Ashton 
v.  Coale,  52  Fed.  318;   McClain  v.  Ortmayer,  141  U.  S.  419. 

The  patent  was  for  a  narrow  improvement.  Held:  He  must  be  held  to  the 
combination  which  is  described  and  claimed  so  explicitly.  —  Hardison  v. 
Brinkman,  156  Fed.  962;  87  C.  C.  A.  8. 

Keystone  v.  Phoenix,  95  U.  S.  274. 

When  a  claim  is  explicit,  the  courts  cannot  alter  or  enlarge  it.  —  Dey  v. 
Syracuse,  161  Fed.  111. 

Keystone  v.  Phoenix,  95  U.  S.  274. 

A  patent  for  described  means  or  mechanism  to  accomplish  a  desired  end 
must  be  limited  to  the  particular  means  described  in  the  specification  or  their 
clear  mechanical  equivalents,  and  does  not  embrace  or  cover  any  other 
mechanical  structure  which  is  substantially  different  in  its  construction  or 
operation.  —  Union  v.  Diamond,  162  Fed.  148;  89  C.  C.  A.  172. 

Eames  v.  Godfrey,  1  Wall.  78;  Boyd  v.  Janesville,  158  U.  S.  260;  Westing- 
house  ».  Boyden,  170  U.  S.  537;  Bryce  v.  National,  116  P'ed.  186;  Jewell  v. 
Jackson,  140  Fed.  340. 


§  203.     Construction  —  Limitation  —  Failure  to  Claim. 

What  is  described  in  the  specification  of  a  patent  and  not  claimed  is  pre- 
sumed to  have  been  old.  —  Electric  v.  Boston,  139  U.  S.  481 ;  35  L.  Ed.  250; 
11  S.  Ct.  586. 

It  is  a  settled  principle  of  law,  enacted  by  statute  and  announced  by  the 
courts  that  a  patentee  and  his  assignees  have  no  right  to  the  exclusive  use  of 
anything  patented  which  the  inventor  has  not  distinctly  claimed  in  his  appli- 
cation for  the  patent.  —  Ashton  v.  Coale,  52  Fed.  314;  3  C.  C.  A.  98. 

A  description  in  a  specification  of  details  which  the  claim  does  not  make 
elements  of  the  combination,  and  which  are  not  essential  to  it,  simply  points 
out  one  method  of  using  it,  and  does  not  restrict  the  claim  to  these  details.  — 
Brammer  v.  Schroeder,  106  Fed.  918;  46  C.  C.  A.  41. 

It  may  be  that  Farwell's  invention  would  have  entitled  him  to  make  a 
broader  claim,  but  his  patent  makes  no  such  broad  claim.  It  is  in  this  respect 
like  the  patent  under  consideration  in  Keystone  v.  Phoenix,  95  U.  S.  274.  — 
Schreiber  v.  Adams,  117  Fed.  830;  54  C.  C.  A.  128. 

McClain  v.  Ortmayer,  141  U.  S.  419;   Seabury  v.  Johnson,  76  Fed.  456. 

If  in  truth  Harder  understood  the  now  stated  objections,  and  was  the 
first  to  conceive  and  embody  a  way  of  overcoming  them,  he  carefully  re- 
frained from  saying  so.  Now  a  patent  is  to  be  sustained  not  for  what  an 
inventor  may  have  done  in  fact,  but  only  for  what  he  "  particularly  points 
out  and  distinctly  claims  "  in  his  open  letter.  —  Harder  v.  United  States, 
160  Fed.  463;  87  C.  C.  A.  447. 

Fastener  v.  Kraetzer,  150  U.  S.  116;  Indiana  v.  Crocker,  103  Fed.  496;  Avery 
v.  Case,  148  Fed.  214. 


§  204.     Construction  —  Limitation  —  General  Rules. 

It  is  clear  that  a  party  cannot  entitle  himself  to  a  patent  for  more  than 
his  own  invention;  and  if  his  patent  includes  things  before  known,  or  before 


190  THE    FIXED    LAW    OF    PATENTS  §204 

in  use,  as  his  invention,  he  is  not  entitled  to  recover,  for  his  patent  is  broader 
than  his  invention.  —  Evans  v.  Eaton,  7  Wheat.  356;  5  L.  Ed.  472. 
See  s.  c.  3  Wheat.  454. 

It  is  obvious  that  the  inventor  claims  as  his  improvement,  not  the  whole 
of  the  engine,  nor  the  whole  of  the  wheel,  but  both  merely  in  the  superior 
form  which  he  particularly  sets  out.  He  therefore  does  not  claim  too  much, 
which  might  be  bad.  —  Hogg  v.  Emerson,  6  How.  437;   12  L.  Ed.  505. 

Hill  v.  Thompson,  2  March.  435;  4  Wash.  C.  C.  68;  Godson  on  Pat.  189;  Kay 
v.  Marshall,  1  Mylne,  373;  1  Story  R.  273;  2  Mas.  112;  4  B.  &  A.  541;  Boville 
v.  Moon,  2  March.  211. 

It  is  true  that  the  patent  cannot  be  extended  beyond  the  claim.  That 
bounds  the  patentee's  right.  —  American  v.  Fiber  Co.  90  U.  S.  566;  23  L. 
Ed.  31. 

In  making  his  claim  the  inventor  is  at  liberty  to  choose  his  own  form  of 
expression,  and  while  the  courts  may  construe  the  same,  in  view  of  the 
specifications  and  the  state  of  the  art,  they  may  not  add  to  or  detract  from 
the  claim.  And  it  is  equally  true  that,  as  the  inventor  is  required  to  enumer- 
ate the  elements  of  his  claim,  no  one  is  an  infringer  of  a  combination  claim 
unless  he  uses  all  the  elements  therein.  —  Cimiotti  v.  American,  198  U.  S. 
399;  49  L.  Ed.  1100;  25  S.  Ct.  697. 

Shepard  v.  Carrigan,  116  U.  S.  593;  Sutter  v.  Robinson,  119  U.  S.  530;  McClain 
v.  Ortmayer,  141  U.  S.  419;  Wright  v.  Yuengling,  155  U.  S.  47;  Black  Diamond 
v.  Excelsior,  156  U.  S.  611;   Walk.  Pat.  sec.  349. 

It  is  the  chief  office  of  a  claim  to  particularize  and  limit  the  monopoly 
of  use  which  is  secured  to  the  inventor  by  the  letters  patent.  Within  the 
limits  which  are  by  the  claim  marked  out  and  definitely  established  as  the 
scope  of  the  invention,  no  one  can  venture  to  intrude  without  becoming  a 
trespasser  upon  the  exclusive  rights  secured  to  the  inventor.  The  very 
purpose  of  a  claim  is  to  establish  the  line  of  demarcation  between  a  permissive 
and  lawful  use  and  the  forbidden  and  unlawful  use.  In  its  scope,  its  operative 
power,  its  comprehensive  effect,  the  public  have  no  less  interest  than  the 
inventor.  In  drafting  a  claim,  the  applicant  for  the  grant  of  a  monopoly 
is  directly  dealing  with  the  rights  of  the  public,  and,  in  such  cases,  strictness 
rather  than  elasticity  of  construction  must  obtain.  The  language  by  which 
the  comprehensive  boundaries  of  a  claim  are  to  be  made  distinctive  and  clear 
lies  wholly  within  the  selection  of  the  inventor.  He  alone  may  choose  the 
words  to  describe  and  particularize  his  invention.  When  chosen  and  used, 
such  words  must  be  held  to  be  binding  upon  him.  —  Duff  v.  Forgie,  59  Fed. 
772;  8C.  C.  A.  261. 

The  statute  requires  the  inventor  to  particularly  point  out,  and  distinctly 
claim,  the  improvement  or  combination  which  he  claims  as  his  discovery. 
Rev.  St.  sec.  4888.  The  purpose  of  a  claim  in  a  patent  is  to  notify  the  public 
of  the  extent  of  the  monopoly  secured  to  the  inventor,  and,  while  it  is  notice 
of  his  exclusive  privileges,  it  is  no  less  a  notice,  and  a  legal  notice,  upon 
which  everyone  has  a  right  to  rely,  that  he  disclaims,  and  dedicates  to  the 
public,  any  combination  or  improvement,  apparent  on  the  face  of  his  specifi- 
cation, not  a  mere  evasion  of  his  own,  which  he  has  not  there  pointed  out 
and  distinctly  claimed  as  his  discovery  or  invention.  Every  one  has  the  right 
to  use  every  machine,  combination,  device  and  improvement  not  claimed  by 
the  patentee,  without  molestation  from  him.  It  would  work  great  injustice 
to  permit  a  patentee,  after  a  combination  or  device  which  he  did  not  claim 
has  gone  into  general  use,  and  years  after  his  patent  was  granted,  to  read 


§§205-207  CLAIMS  191 

that  combination  or  device  into  one  of  the  claims  of  his  patent,  and  to  recover 
for  its  infringement  of  everyone  who  has  used  it  on  the  faith  of  his  solemn 
declaration  that  he  did  not  claim  it.  —  Adams  v.  Lindell,  77  Fed.  432 ;  23 
C.  C.  A.  223. 

Keystone  v.  Fhcenix,  95  U.  S.  274;  Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v. 
Harwood,  112  U.  S.  354;  Wollensak  v.  Reiher,  115  U.  S.  96;  Parker  v.  Yale, 
123  U.  S.  87;  Stirrat  v.  Mfg.  Co.  61  Fed.  980;  Building  Co.  v.  Eustis,  65  Fed. 
804. 

§  205.     Construction  —  Limitation  —  Improvement. 

The  invention  being,  then,  in  no  sense  a  pioneer  in  the  art,  no  unexpressed 
meaning  can  be  read  with  the  claim,  and  the  patent  must  be  limited  to  the 
specific  device  described  therein.  —  Evans  v.  Rood,  99  Fed.  990;  40  C.  C. 
A.  209. 

§  206.     Construction  —  Limitation  —  Narrow  Improvement. 

In  a  narrow  claim  elements  cannot  be  held  essential  as  infringing  which 
could  not  be  claimed.  —  Watson  v.  Cincinnati,  132  U.  S.  161 ;  33  L.  Ed.  295; 
10  S.  Ct.  45. 

Gage  v.  Herring,  107  U.  S.  640;  Fay  v.  Cordesman,  109  U.  S.  408. 

If  there  were  any  thing  more  in  this  than  mechanical  skill  or  the  aggrega- 
tion of  familiar  devices,  each  operating  in  the  old  way  to  produce  an  aggre- 
gated result,  it  was  invention  of  such  a  limited  character  as  to  require  a 
narrow  construction.  —  McCarty  v.  Lehigh,  160  U.  S.  110;  40  L.  Ed.  358; 
16  S.  Ct.  240. 

Penna.  v.  Locomotive,  110  U.  S.  490. 

That  a  claim  covering  such  an  improvement  (minor)  is  not  entitled  to 
a  broad  construction  is  too  obvious  to  require  the  citation  of  authorities.  — 
Dey  v.  Syracuse,  161  Fed.  Ill;  88  C.  C.  A.  275. 

Cimiotti  v.  Fur,  198  U.  S.  399;   Kokomo  v.  Kitselman,  189  U.  S.  8. 

§  207.    Construction  —  Limitation  —  Patent  Office  Action  Limit- 
ing. 

As  patents  are  procured  ex  parte,  the  public  is  not  bound  by  them,  but  the 
patentees  are.  If  the  office  refuses  to  allow  him  all  he  asks,  he  has  an  appeal. 
But  the  courts  have  no  right  to  enlarge  a  patent  beyond  the  scope  of  its 
claim  as  allowed  by  the  Patent  Office,  or  the  appellate  tribunal  to  which  con- 
tested applications  are  referred.  When  the  terms  of  a  claim  in  a  patent  are 
clear  and  distinct,  as  they  always  should  be,  in  a  suit  brought  upon  the  patent, 
the  patentee  is  bound  by  it.  —  Keystone  v.  Phoenix,  95  U.  S.  274;  24  L.  Ed. 
344. 

Merrill  v.  Yeomans,  94  U.  S.  568. 

In  this  case  the  description  of  appellee's  invention  is  much  broader  than  his 
claim.  It  seems  quite  clear,  from  the  present  form  of  appellee's  specifica- 
tions, and  from  the  fact  that  his  application  for  a  patent  was  twice  rejected, 
that  he  was  compelled  by  the  Patent  Office  to  narrow  his  claim  to  its  present 
limits  before  the  commissioner  would  grant  him  a  patent.  In  doing  this  he 
neglected  to  amend  the  descriptive  part  of  his  specifications.  He  cannot  go 
beyond  what  he  has  claimed  and  insist  that  his  patent  covers  something  not 
claimed,  merely  because  it  is  to  be  found  in  the  descriptive  part  of  the  specifi- 
cations. —  Lehigh  v.  Mellon,  104  U.  S.  112;  26  L.  Ed.  639. 

Burns  v.  Meyer,  100  U.  S.  671;   Keystone  v.  Phoenix,  95  U.  S.  278. 


192  THE    FIXED    LAW    OF    PATENTS  §  207 

In  patents  for  combination  of  mechanism,  limitations  and  provisos, 
imposed  by  the  inventor,  especially  such  as  were  introduced  into  an  applica- 
tion after  it  had  been  persistently  rejected,  must  be  strictly  construed  against 
the  inventor,  and  in  favor  of  the  public,  and  looked  upon  as  in  the  nature  of 
disclaimers.  —  Sargent  v.  Hall,  114  U.  S.  63;  29  L.  Ed.  67;  5  S.  Ct.  1021. 

Fay  v.  Cordesman,  109  U.  S.  408;  Water  Meter  v.  Desper,  101  U.  S.  332;  Gage 
v.  Herring,  107  U.  S.  640. 

If  an  applicant,  in  order  to  get  his  patent,  accepts  one  with  a  narrower  claim 
than  that  contained  in  his  original  application,  he  is  bound  by  it.  —  Shepard 
v.  Carrigan,  116  U.  S.  593;  29  L.  Ed.  723;  6  S.  Ct.  493. 

Where  an  applicant  for  a  patent  to  cover  a  new  combination  is  compelled 
by  the  rejection  of  his  application  by  the  Patent  Office  to  narrow  his  claim  by 
the  introduction  of  a  new  element,  he  cannot  after  the  issue  of  the  patent 
broaden  his  claim  by  dropping  the  element  which  he  was  compelled  to  include 
in  order  to  secure  his  patent.  —  Shepard  v.  Carrigan,  116  U.  S.  593;  29  L. 
Ed.  723;  6  S.  Ct.  493. 

Leggett  v.  Avery,  101  U.  S.  256;  Goodyear  v.  Davis,  102  U.  S.  222;  Fay  v. 
Cordesman,  109  U.  S.  408;  Mahn  v.  Harwood,  112  U.  S.  354;  Cartridge  v.  Cart- 
ridge, 112  U.  S.  624;   Sargent  v.  Hall,  114  U.  S.  63. 

Complainant  is  not  at  liberty  now  to  insist  upon  a  construction  of  his 
patent  which  will  include  what  he  was  expressly  required  to  abandon  and 
disavow  as  a  condition  of  the  grant.  —  Sutter  v.  Robinson,  119  U.  S.  530;  30 
L.Ed.  492 ;  7  S.  Ct.  376. 

Shepard  v.  Carrigan,  116  U.  S.  593,  and  cases  there  cited. 

This  court  has  often  held  that  when  a  patentee,  on  the  rejection  of  his 
application,  inserts  in  his  specification,  in  consequence,  limitations  and  restric- 
tions for  the  purpose  of  obtaining  his  patent,  he  cannot,  after  he  has  obtained 
it,  claim  that  it  shall  be  construed  as  it  would  have  been  construed  if  such 
limitations  were  not  contained  in  it.  —  Roemer  v.  Peddie,  132  U.  S.  313; 
33  L.  Ed.  382;  10  S.  Ct.  98. 

Leggett  v.  Avery,  101  U.  S.  256;  Goodyear  v.  Davis,  102  U.  S.  222;  Fay  v. 
Cordesman,  109  U.  S.  408;  Mahn  v.  Harwood,  112  U.  S.  354;  Union  v.  U.  S.  112 
U.  S.  624;  Sargent  v.  Hall,  114  U.  S.  63;  Shepard  v.  Carrigan,  116  U.  S.  593; 
White  v.  Dunbar,  119  U.  S.  47;  Sutter  v.  Robinson,  119  U.  S.  530;  Bragg  v. 
Fitch,  121  U.  S.  478;  Snow  v.  Lake  Shore,  121  U.  S.  617;  Crawford  v.  Heysinger, 
123  U.  S.  589. 

As  the  claim  must  be  held  to  define  what  the  Patent  Office  had  determined 
to  be  the  patentee's  invention,  it  ought  not  to  be  enlarged  beyond  the  prior 
interpretation  of  its  terms.  —  Day  v.  Fair  Haven,  132  U.  S.  98;  33  L.  Ed. 
265;  10  S.  Ct.  11. 

When  applicant  has  limited  his  claim  by  including  specific  elements  in  his 
combination  under  rejection  by  the  Patent  Office  he  is  limited  thereby  to  his 
specific  elements.  —  Phoenix  v.  Spiegel,  133  U.  S.  360;  33  L.  Ed.  663;  10 
S.  Ct.  409. 

Roemer  v.  Peddie,  132  U.  S.  313  and  cases  there  cited. 

A  claim  admitted  by  the  Patent  Office  and  acquiesced  in  by  the  patentee 
should  not  be  enlarged  by  construction  beyond  the  fair  interpretation  of  its 
terms.  —  Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed.  241 ;  10  S.  Ct.  876. 

Where  applicant  has  put  in  a  claim  in  the  Patent  Office  to  cover  more 
broadly  his  process,  and  afterwards  struck  it  out  on  rejection,  it  is  well 


§  207  CLAIMS  193 

settled,  by  numerous  cases  in  this  court,  that  under  such  circumstances  a 
patentee  cannot  successfully  contend  that  his  patent  shall  be  construed  as  if 
it  still  contained  the  claims  which  were  so  rejected  and  withdrawn.  —  Royer 
v.  Coupe,  146  U.  S.  524;  36  L.  Ed.  1073;  13  S.  Ct.  166. 

Roemer  v.  Peddie,  132  U.  S.  313;  Phoenix  v.  Spiegel,  133  U.  S.  360;  Yale  v. 
Berkshire,  135  U.  S.  342;    Dobson  v.  Lees,  137  U.  S.  258. 

Must  be  read  and  interpreted  with  reference  to  the  rejected  claims  and  to 
the  prior  state  of  the  art,  and  cannot  be  construed  to  cover  either.  —  Knapp 
v.  Morss,  150  U.  S.  221;  37  L.  Ed.  1059;  14  S.  Ct.  81. 

Shepard  v.  Carrigan,  116  U.  S.  593;  Sutter  v.  Robinson,  119  U.  S.  530. 

Applicant  having  withdrawn  rejected  claims  and  substituted  narrower 
claims  cannot  insist  on  construction  of  a  reissue  claim  to  cover  original  claim. 
—  Corbin  v.  Eagle,  150  U.  S.  38;  37  L.  Ed.  989;  14  S.  Ct.  28. 

Shepard  v.  Carrigan,  116  U.  S.  593;  Roemer  v.  Peddie,  132  U.  S.  313;  Rover 
v.  Coupe,  146  U.  S.  524. 

Where  applicant  has  amended  on  rejection  by  patent  office  he  is  estopped 
to  claim  the  scope  of  original  claim.  —  Morgan  v.  Albany,  152  U.  S.  425  • 
38  L.  Ed.  500;  14  S.  Ct.  627. 

Acquiescence  in  the  rejection  of  a  claim  and  restriction  by  amendment 
limits  the  construction  of  the  claim  to  the  device  shown.  —  Lehigh  v.  Kear- 
ney, 158  U.  S.  461 ;  39  L.  Ed.  1055;  15  S.  Ct.  871. 

Knapp  v.  Morss,  150  U.  S.  221. 

His  acquiescence  in  the  rulings  of  the  patent  office  indicates  very  clearly 
that  he  should  be  limited  to  the  combination  claimed,  and  that  the  case  is 
not  one  calling  for  a  liberal  construction.  —  McCarty  v.  Lehigh,  160  U.  S.  110* 
40  L.  Ed.  358;  16  S.  Ct.  240. 

The  patentee  had  acquiesced  in  the  rejection  of  his  claim  and  could  not 
claim  the  benefit  thereof,  or  of  an  equivalent  construction  of  the  claims 
allowed.  —  American  v.  Pennock,  164  U.  S.  26;  41  L.  Ed.  337;  17  S.  Ct.  1. 

The  record  shows  correspondence  between  solicitor  and  examiner,  in  which 
the  solicitor  admitted  and  amended  the  specification  to  state  that  certain 
functions  in  question  were  old,  but  not  admitting  their  force  in  application 
to  the  case  in  question. 

Held:  We  agree  with  the  defendant  that  this  correspondence  and  the  speci- 
fication as  so  amended  should  be  construed  as  reading  the  auxiliary  valve 
into  the  claim,  and  repelling  the  idea  that  this  claim  should  be  construed 
as  one  for  a  method  or  process.  —  Westinghouse  v.  Boy  den,  170  U.  S.  537; 
42  L.Ed.  1136;  18  S.  Ct.  707. 

Note:  This  case  decided  5  to  4.  See  dissenting  opinion  of  Shiras:  "The 
courts  should  be  slow  to  permit  this  construction  of  a  patent,  actually 
granted  and  delivered,  to  be  affected  or  controlled  by  alleged  interlocutions 
between  the  officers  in  the  Patent  Office  and  the  claimant.  When  we  consider 
that  often  the  employees  in  the  Patent  Office  are  inexperienced  persons,  and 
the  mass  of  business  is  so  vast,  it  can  be  readily  seen  how  dangerous  it  would 
be  to  modify  or  invalidate  a  patent,  clear  and  definite  in  its  terms,  resorting 
to  such  uncertain  sources  of  information." 

Whether  the  examiners  were  right  or  wrong  in  so  holding  (narrowly  limit- 
ing the  claim)  we  are  not  to  inquire,  as  the  claimant  did  not  appeal,  but 
amended  his  claim  and  accepted  a  grant  thereof,  thereby  putting  himself 


194  THE  FIXED  LAW  OF  PATENTS  §207 

within  the  range  of  the  authorities  which  hold  that  if  the  claim  to  a  combina- 
tion be  restricted  to  specified  elements,  all  must  be  regarded  as  material, 
and  the  limitations  imposed  by  the  inventor,  especially  such  as  were  intro- 
duced into  an  application  after  it  had  been  persistently  rejected,  must  be 
strictly  construed  against  the  inventor  and  in  favor  of  the  public,  and  looked 
upon  as  in  the  nature  of  disclaimers.  —  Hubbell  v.  U.  S.  179  U.  S.  77;  45 
L.Ed.  95;  21  S.  Ct.  24. 

Union  v.  Desper,  101  U.  S.  332;   Morgan  v.  Albany,  152  U.  S.  425. 

In  order  to  get  his  patent,  he  was  compelled  to  accept  one  with  a  narrower 
claim  than  that  contained  in  his  original  application;  and  it  is  well  settled 
that  the  claim  as  allowed  must  be  read  and  interpreted  with  reference  to  the 
rejected  claim  and  the  prior  state  of  the  art,  and  cannot  be  so  construed  as  to 
cover  either  what  was  rejected  by  the  Patent  Office  or  disclosed  by  prior 
devices.  —  Hubbell  v.  U.  S.  179  U.  S.  77;  45  L.  Ed.  95;  21  S.  Ct.  24. 

Leggett  v.  Avery,  101  U.  S.  256;  Shepard  v.  Carrigan,  116  U.  S.  593;  Knapp 
v.  Morss,  150  U.  S.  227. 

In  view  of  what  passed  in  the  Patent  Office,  and  the  state  of  the  art,  we 
cannot  regard  the  Kitselman  patent  as  a  pioneer  patent,  but  think  its  claims 
must  be  limited  in  their  scope  to  the  actual  combination  of  essential  parts 
as  shown  and  cannot  be  construed  to  cover  other  combinations  of  elements 
of  different  construction  and  arrangement.  —  Kokomo  v.  Kitselman,  189 
U.  S.  8;  47  L.  Ed.  689;  23  S.  Ct.  521. 

We  are  of  opinion  that  the  Patent  Office,  after  twice  refusing  to  allow  the 
patent  because  of  prior  patents  referred  to,  was  led  to  take  favorable  action 
owing  to  the  peculiar  form  of  the  described  bearing,  and  that  it  was  the 
purpose  to  limit  the  patent  to  the  peculiar  device.  And  this  view  is  sup- 
ported by  the  claim  in  question.  It  contains  words  of  limitation.  It  is 
recited  therein  that  the  combination  is  to  be  "  substantially  as  specified," 
that  is,  as  described  in  the  specifications  and  shown  in  the  drawings.  — 
Singer  v.  Cramer,  192  U.  S.  265;  48  L.  Ed.  437;  24  S.  Ct.  291. 

Westinghouse  v.  Boyden,  170  U.  S.  537. 

Where  an  inventor  seeking  a  broad  claim,  which  is  rejected,  in  which 
rejection  he  acquiesces,  substitutes  therefor,  a  narrower  claim,  he  cannot  be 
heard  to  insist  that  the  construction  of  the  claim  allowed  shall  cover  that 
which  has  been  previously  rejected.  —  Computing  v.  Automatic,  204  U.  S. 
609;  51  L.  Ed.  645;  27  S.  Ct.  307. 

Corbin  v.  Eagle,  150  U.  S.  38;  Hubbell  v.  U.  S.  179  U.  S.  77;  Leggett  v.  Avery, 
101  U.  S.  256;  Shepard  v.  Carrigan  116  U.  S.  593;  Knapp  v.  Morss,  150  U.  S.  221. 

Thereupon  Carr  amended  and  limited  his  claims  by  withdrawing  those  first 
filed,  and  substituting  the  first  claim  that  is  now  found  in  his  patent;  and, 
having  adopted  this  course,  the  claim  in  dispute  must  receive  a  strict  and 
narrow  construction.  —  Mott  v.  Standard,  53  Fed.  819;  4  C.  C.  A.  28. 

Roemer  v.  Peddie,  132  U.  S.  313;   Sargent  v.  Safe  &  Lock  Co.  114  U.  S.  63. 

The  history  of  his  second  application  shows  that  he  presented  and  aban- 
doned claims  so  worded  as  to  have  the  same  meaning  which  it  has  been 
sought  to  put  by  construction  upon  the  claims  finally  presented  and  allowed. 
It  is  insisted  that  the  claim  granted  is  broader  than  those  rejected,  and 
therefore,  cannot  be  limited  by  them;  but  that  is  a  begging  of  the  question. 
It  can  be  made  broader  only  by  construction,  and  the  effect  of  the  decisions 
on  the  subject,  as  we  understand  them,  is  that  a  claim  cannot  by  construction 


§  207  CLAIMS  195 

be  enlarged  to  include  the  matter  of  claims  in  the  rejection  of  which  the 
patentee  has  acquiesced.  —  Temple  v.  Goss,  58  Fed.  196;  7  C.  C.  A.  174. 

A  claim  is  limited  by  an  amendment  made  and  acquiesced  in  on  applica- 
tion. —  B.  &  S.  Fastener  v.  B.  G.  Fastener,  58  Fed.  818;  7  C.  C.  A.  498. 

Union  v.  U.  S.  112  U.  S.  624;  Crawford  v.  Heysinger,  123  U.  S.  589;  Watson 
v.  Railway,  132  U.  S.  161. 

After  withdrawing  a  specific  claim  for  an  element,  in  favor  of  a  contestant, 
the  patentee  cannot  set  that  element  up.  His  patent,  if  valid,  is  for  the  com- 
bination minus  that  element,  a  device  whose  novelty  consists  in  dispensing 
with  that  element.  —  Shoemaker  v.  Merrow,  61  Fed.  945;  10  C.  C.  A.  181. 

Within  these  lines  with  which  the  patentee  has  himself  circumscribed 
his  patent  in  the  process  of  application  for  the  same  it  must  be  construed, 
and,  as  thus  construed  there  is  no  infringement  in  a  compound  employing 
that  which  he  specifically  excluded.  —  Dougherty  v.  Doyle,  63  Fed.  475 ; 
11  C.  C.  A.  298. 

Although  the  patentee  might  have  made  the  language  of  his  claim  more 
broad,  he  is  bound  by  the  terms  of  limitation  which  he  adopted.  —  Smith 
v.  Macbeth,  67  Fed.  137;  14  C.  C.  A.  241. 

The  rule  is  well  settled  that  the  patentee  cannot,  after  the  issuance  of  his 
patent,  broaden  his  claims  by  dropping  any  element  which  he  was  compelled 
to  include  in  order  to  secure  the  patent.  —  Wheaton  v.  Norton,  70  Fed. 
833;  17  C.  C.  A.  447. 

Fay  v.  Cordesman,  109  U.  S.  408;  Sargent  v.  Lock  Co.  114  U.  S.  63;  Shepard 
v.  Carrigan,  116  U.  S.  593;  Leggett  v.  Avery,  101  U.  S.  256;  Vulcanite  Co.  v. 
Davis,  102  U.  S.  222;  Mahn  v.  Harwood,  112  U.  S.  354;  Howe  v.  National,  134 
U.  S.  394;    White  v.  Dunbar,  119  U.  S.  47. 

The  claim  of  the  patent  must  be  restricted  within  the  limitations  imposed 
by  the  patent  office  and  accepted  by  the  applicant.  —  Erie  v.  American,  70 
Fed.  58;   16  C.  C.  A.  632. 

Eagleton  v.  Mfg.  Co.  Ill  U.  S.  490;  Machine  v.  Featherstone,  147  U.  S.  209; 
Snow  v.  Railway,  121  U.  S.  617;  Crawford  v.  Heysinger,  123  U.  S.  589;  Consoli- 
dated v.  McKeesport,  40  Fed.  21. 

In  view  of  the  limitations  placed  upon  the  claims  by  the  patent  office  and 
acquiesced  in,  and  in  view  of  the  specific  language,  we  are  of  opinion  the 
claim  cannot  be  construed  to  cover  an  element  of  a  different  character.  — - 
Troy  v.  Adams,  73  Fed.  301 ;  19  C.  C.  A.  505. 

That  claim,  however,  was  rejected,  not  because  functional,  but  because  it 
was  "altogether  too  broad,  if  not  functional";  and  the  authorities  are 
familiar  which  forbid  a  construction  of  claims  allowed  which  will  make  them 
equivalent  to  broader  claims  rejected.  —  Brush  v.  Western,  76  Fed.  761 ; 
22  C.  C.  A.  543. 

The  patentee  having  acquiesced  in  the  rejection  of  the  claim  in  its  original 
form,  cannot  now  insist  that  the  present  claim  should  be  construed  as  it 
might  have  been  construed  if  the  original  claim  had  not  been  rejected  and 
withdrawn.  —  Olmsted  v.  Andrews  77  Fed.  835 ;  23  C.  C.  A.  488. 

Roemer  v.  Peddie,  132  TJ.  S.  313;  Caster  v.  Spiegel,  133  U.  S.  360;  Yale  v. 
Berkshire,  135  U.  S.  379;  Dobson  v.  Lees,  137  U.  S.  258;  Rover  v.  Coupe,  146 
U.  S.  524;  Corbin  v.  Eagle,  150  U.  S.  38. 


196  THE    FIXED    LAW    OF    PATENTS  §  207 

It  is  well  settled  that  where  the  patent  office  rejects  a  claim  covering  a 
certain  device  on  its  merits,  and  such  rejection  is  acquiesced  in,  and  the  patent 
issues,  the  applicant  cannot  afterwards  be  allowed  a  construction  of  the  claims 
allowed  wide  enough  to  embrace  the  claim  which  was  rejected.  In  Morgan 
v.  Albany,  152  U.  S.  425,  Mr.  Justice  Brown,  speaking  for  the  supreme  court, 
in  considering  the  contention  that  a  claim  should  have  a  certain  construction, 
said: 

"  But  the  patentee  having  once  presented  his  claim  in  that  form,  and  the 
patent  office  having  rejected  it,  and  he  having  acquiesced  in  such  rejection, 
he  is,  under  the  repeated  decisions  of  this  court,  now  estopped  to  claim  the 
benefit  of  his  rejected  claim,  or  such  a  construction  of  his  present  claim  as 
would  be  equivalent  thereto.  Leggett  v.  Avery,  101  U.  S.  256;  Shepard  v. 
Carrigan,  116  U.  S.  593;  Crawford  v.  Heysinger,  123  U.  S.  589;  Union  v. 
U.  S.  112  U.  S.624.  It  is  true  there  were  cases  where  the  original  claim  was 
broader  than  the  one  allowed,  but  the  principle  is  the  same  if  the  rejected 
claim  be  narrower."  —  Thomas  v.  Rocker,  77  Fed.  420;  23  C.  C.  A.  211. 

That  limitations  which  an  inventor  places  upon  an  invention  in  a  proceed- 
ing in  the  patent  office,  to  gain  his  point  and  get  his  claim,  must  stand  against 
him,  even  if  he  won  his  claim  by  other  means,  see  Craig  v.  Michigan,  81  Fed. 
870;  26  C.  C.  A.  659. 

Whatever  the  invention,  and  whatever  the  patentee  ought  to  have  been 
allowed  to  incorporate  into  this  claim  it  is  clear  that  under  the  circumstances 
of  this  case,  the  patentee  bound  himself  and  the  court  by  the  addition  of  these 
amendatory  words.  —  Eppler  v.  Campbell,  86  Fed.  141 ;   29  C.  C.  A.  616. 

Reece  v.  Globe,  61  Fed.  958. 

For  a  curious  way  of  stating  the  familiar  rule,  see  Truman  v.  Holmes,  87 
Fed.  742;  31  C.  C.  A.  215. 

Roemer  v.  Peddie,  132  U.  S.  313;   Morgan  v.  Albany,  152  U.  S.  425. 

He  cannot  claim  such  a  construction  of  his  patent  as  would  include  what 
he  was  expressly  required  to  abandon  as  a  condition  of  the  grant,  even  if  it 
takes  away  a  material  part  of  his  real  invention.  —  Kelly  v.  Clow,  89  Fed.  297 ; 
32  C.  C.  A.  205. 

Morgan  v.  Albany,  152  U.  S.  425. 

An  application  for  a  patent  which  has  been  rejected,  and  which  is  subse- 
quently amended  to  conform  with  the  objections  of  the  patent  office,  is  strictly 
construed.  —  Norton  v.  Jensen,  90  Fed.  415;  33  C.  C.  A.  141. 

Sargent  v.  Lock,  114  U.  S.  63;  Meter  Co.  v.  Desper,  101  U.  S.  332;  Gage  v. 
Herring,  107  U.  S.  640;   Fay  v.  Cordesman,  109  U.  S.  408. 

It  is  immaterial,  we  think,  whether  the  patent  office  was  right  or  wrong 
in  rejecting  complainant's  original  claims  on  the  ground  that  the  invention 
therein  described  was  anticipated  by  the  prior  art.  By  amending  his  speci- 
fication and  claims  the  complainant  admitted,  in  effect,  that  some  limitations 
were  necessary;  and  it  is  now  too  late  to  assert  that  he  was  entitled  to  his 
original  claims,  or  that  the  claims  as  finally  allowed  are  as  broad  as  the 
original  claims.  —  Brill  v.  St.  Louis,  90  Fed.  666;  33  C.  C.  A.  213. 

Sutter  v.  Robinson,  119  U.  S.  530;  Shepard  v.  Carrigan,  116  U.  S.  593;  Erie 
v.  American,  70  Fed.  58. 

The  proceedings  in  the  patent  office,  and  the  language  of  the  specification 
and  claim,  place  certain  limitations  upon  the  patent.    The  claim  was  rejected 


§  207  CLAIMS  197 

on  references  and  finally  submitted  in  the  form  in  which  it  appears.  —  Lovell 
v.  Johnson,  91  Fed.  160;  33  C.  C.  A.  426. 

In  view  of  the  prior  state  of  the  art  and  the  proceedings  had  in  the  patent 
office,  the  claim  of  complainant's  patent  should  be  strictly  construed  against 
him  and  be  restricted  to  the  particular  device  described.  —  Warren  v.  Casey, 
93  Fed.  963;  36  C.  C.  A.  29. 

Mahn  v.  Harwood,  112  U.  S.  354;    Sargent  v.  Lock,  114  U.  S.  63. 

On  that  subject  it  is  to  be  observed  that  the  doctrines  of  equitable 
estoppel,  or  estoppel  in  pais,  invoked  in  behalf  of  the  appellee,  are  not 
involved  or  applicable.  The  estoppel,  which  arises  in  such  cases  is  of  the 
nature  of  estoppel  by  contract,  and  its  scope  in  a  particular  case,  like  the 
meaning  of  a  contract,  is  a  matter  of  the  interpretation  and  construction  of 
the  terms  used  according  to  their  fair  meaning.  —  Magic  v.  Economy,  97 
Fed.  87;  38  C.  C.  A.  56. 

Reece  v.  Globe,  61  Fed.  967. 

As  the  applicant  thereupon  submitted  his  amended  claims  without  change 
in  the  specifications,  and  accepted  the  patent  upon  the  substituted  claims, 
his  acquiescence  in  the  ruling  forecloses  any  claim  of  invention  in  the  rejected 
feature,  through  the  well  established  doctrine  of  estoppel  which  then  applies. 
—  Irwin  v.  Hasselman,  97  Fed.  964;  38  C.  C.  A.  587. 

Morgan  v.  Albany,  152  U.  S.  425;   Richards  v.  Elevator,  159  U.  S.  477. 

Having  voluntarily  abandoned  the  claim  for  method  limited  to  the  use  of 
"  a  blast  of  heat  "  the  patentee  or  his  assignee  may  not  insist  that  a  broad 
claim  containing  no  suggestion  of  such  invention,  shall  nevertheless  be  sub- 
jected by  construction  to  the  same  restriction.  —  United  States  Repair  v. 
Assyrian,  100  Fed.  965;  41  C.  C.  A.  123. 

Upon  this  and  some  further  limitation,  the  patent  was  allowed.  The 
patentee  cannot  now  expand  his  claims  to  cover  the  ground  he  yielded  in 
order  to  obtain  the  patent.  What  he  conceded  was  accepted  as  one  of  the 
terms  of  the  grant.  —  Campbell  v.  Duplex,  101  Fed.  282;  41  C.  C.  A.  351. 

Roemer  v.  Peddie,  132  U.  S.  313;  Royer  v.  Coupe,  146  U.  S.  524;  Thomas  v. 
Rocker,  77  Fed.  420. 

The  grant  of  the  patent  having  been  thus  procured,  certainly  the  com- 
plainant below  was  in  no  position  to  insist  upon  a  construction  of  the  allowed 
claim  which  would  make  it  practically  the  equivalent  of  the  rejected  claim.  — 
Reineke  v.  Dixon- Woods,  102  Fed.  349;  42  C.  C.  A.  388. 

Morgan  v.  Albany,  152  U.  S.  425. 

In  the  proceedings  on  his  original  or  forfeited  application,  he  was  required 
by  the  patent  office  to  acknowledge  the  state  of  the  art.  This  disposes  of 
the  contention  that  the  device  was  a  primary  or  pioneer  invention.  —  Walker 
v.  Collins,  102  Fed.  689;  42  C.  C.  A.  591. 

The  patentee  himself  acquiesced  in  a  finding  of  the  patent  office  that  the 
existing  state  of  the  art  negatived  the  patentability  of  the  device  of  the 
patent  in  suit.  The  applicant  struck  out  all  of  the  before-quoted  matter  from 
his  original  specifications,  and  by  so  doing  must  be  taken  to  have  acquiescence 
in  the  action  of  the  patent  office.  —  Newark  v.  Ryan,  102  Fed.  693;  42  C. 
C.  A.  594. 

It  is  true  that  if  a  patentee  acquiesces  in  the  rejection  of  his  claim  on 
references  cited  in  the  patent  office,  and  accepts  a  patent  on  an  amended 


198  THE    FIXED    LAW    OF    PATENTS  §  207 

claim,  he  is  thereby  estopped  from  maintaining  that  the  amended  claim  covers 
the  combinations  shown  in  the  references,  and  from  claiming  that  it  has  the 
breadth  of  the  claim  that  was  rejected.  —  National  v.  Interchangeable,  106 
Fed.  693;  45  C.  C.  A.  544. 

Roemer  v.  Peddie,  132  U.  S.  313;  Morgan  v.  Albany,  152  U.  S.  425;  Brill  v. 
Car  Co.  90  Fed.  666;  Railroad  Co.  v.  Kearney,  158  U.  S.  461;  Knapp  v.  Morss, 
150  U.  S.  221;  Crawford  v.  Heysinger,  123  U.  S.  589. 

One  who  acquiesces  in  the  rejection  of  his  claim  because  it  is  said  to  be 
anticipated  by  other  patents  or  references  is  not  thereby  estopped  from 
claiming  and  securing  by  an  amended  claim  every  known  and  useful  improve- 
ment which  he  has  invented  that  is  not  disclosed  by  those  references.  — 
National  v.  Interchangeable,  106  Fed.  693;  45  C.  C.  A.  644. 

In  this  respect  the  case  is  altogether  different  from  what  it  would  have 
been  if  the  invention  had  been  of  a  fundamental  character,  and  the  inventor 
was  sought  to  be  deprived  of  substantial  rights  by  reason  of  incidental  action 
on  the  part  of  the  examiners.  —  Millard  v.  Chase,  108  Fed.  399;  47  C.  C. 
A.  429. 

The  patentee  must  be  held  to  the  results  of  the  proceedings  on  his  appli- 
cation, and  be  restricted  thereby.  —  Millard  v.  Chase,  108  Fed.  399;  47  C. 
C. A.  429. 

That  a  claim  must  be  construed  as  limited  by  amendment  and  acquiescence 
in  the  Patent  Office,  see  Peifer  v.  Brown,  112  Fed.  435;  50  C.  C.  A.  331. 

Whatever  doubt  there  might  have  been  as  to  whether  the  claim  was  limited 
to  the  construction  of  its  language  by  the  specification,  it  was  removed  by 
the  limitation  which  he  put  upon  it  by  his  explanation,  the  consequence  of 
which  was  the  allowance  of  his  patent ;  and  the  claim  must  be  read  as  limited 
in  this  respect  in  the  same  way  as  are  the  other  claims.  —  Dowagiac  v. 
Superior,  115  Fed.  886;  53  C.  C.  A.  36. 

The  correspondence  between  the  attorneys  for  the  patentee  and  the  ex- 
aminer's office,  resulted  in  limitations  of  the  first  claim,  which  we  are  justified 
in  calling  enforced.  The  broader  claims  of  the  first  application  were  aban- 
doned, and  the  claims  finally  adopted  cannot  be  construed  as  coextensive 
therewith.  —  Carnegie  v.  Brislin,  124  Fed.  213;  59  C.  C.  A.  651. 

If  he  was  in  good  faith,  he  desired  the  Patent  Office  to  understand  that 
his  device  was  different  from  the  reference.  There  is  no  doubt  that  the  Patent 
Office  so  understood  his  representations.  Under  these  circumstances, 
appellant  will  not  be  heard  to  assert  that  the  Patent  Office  erred  in  rejecting 
his  broad  claims,  or  that  we  should  give  the  claims  allowed  the  meaning  of 
those  rejected.  —  Ajax  v.  Pettibone,  125  Fed.  748;  60  C.  C.  A.  516. 

Roemer  v.  Peddie,  132  U.  S.  313;    Phoenix  v.  Spiegel,  133  U.  S.  360. 

In  the  light  of  what  occurred  in  the  Patent  Office  with  reference  to  this 
patent,  the  inventor  consented  that  his  claim  should  have  a  literal,  narrow 
construction.  —  U.  S.  Peg-Wood  v.  Sturtevant,  125  Fed.  382;  60  C.  C.  A. 
248. 

That  conceded  limitation  of  claims  in  the  Patent  Office  is  subsequently 
binding  upon  the  patentee,  see  Morgan  v.  Pennsylvania,  126  Fed.  952;  62 
C.  C.  A.  126. 


§207  CLAIMS  199 

The  limitations  thus  imposed  to  secure  the  patent  cannot  now  be  disre- 
garded. They  constitute  one  of  the  terms  of  the  grant.  —  Hale  v.  World, 
127  Fed.  964;  62  C.  C.  A.  596. 

Campbell  v.  Duplex,  101  Fed.  282;  Roemer  v.  Peddie,  132  U.  S.  313;  Royer 
v.  Coupe,  146  U.  S.  524;   Thomas  v.  Rocker,  77  Fed.  420. 

Where  a  patentee  acquiesces  in  a  rejection  of  claims,  and  amends  the  same 
so  as  to  be  more  specific,  such  claims  must  be  read  and  interpreted  with 
reference  to  the  rejected  claims  and  to  the  prior  state  of  the  art,  and  cannot 
be  construed  to  cover  either  what  was  rejected  by  the  Patent  Office  or  dis- 
closed by  prior  devices.  —  Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70. 

Knapp  v.  Morss,  150  U.  S.  221;  Roemer  v.  Peddie,  132  U.  S.  313;  Phoenix  v. 
Spiegel,  133  U.  S.  360;  Singer  v.  Cramer,  192  U.  S.  265;  Reece  v.  Globe,  61  Fed. 
958;    Wood  v.  Deering,  66  Fed.  547;    Ball  v.  Ball,  58  Fed.  818. 

It  is  quite  unimportant  that  various  claims  in  both  applications  were 
rejected,  and  the  rejection  acquiesced  in  by  applicant,  so  long  as  the  office 
finally  granted  the  claim  which  is  now  in  controversy.  There  is  no  question 
here  of  the  construction  of  the  claim,  and  no  attempt  to  broaden  it  or  to 
narrow  it,  —  Kinnear  v.  Wilson,  142  Fed.  970;  74  C.  C.  A.  232. 

It  is  questionable  whether  the  applicant,  instead  of  cancelling,  might  not 
have  so  amended  the  rejected  claims  as  to  differentiate  them  from  the  refer- 
ences cited,  and  still  protect  some  of  the  broader  elements  of  his  invention. 
But  however  that  may  be,  he  acquiesced  in  the  action  of  the  Patent  Office, 
and  elected  to  substitute  the  present  narrow  claims  in  suit,  and  is  now  es- 
topped to  so  expand  them  as  to  embrace  the  rejected  subject  matter.  — 
Van  Epps  v.  United,  143  Fed.  869;  75  C.  C.  A.  77. 

The  applicant  acquiesced  in  the  rejection,  and  amended  his  claim  by 
adding  the  interlocking  means.  Thus  it  was  conceded,  and  the  complainant 
is  precluded  from  asserting  the  contrary,  that,  except  for  the  interlocking 
means,  there  was  no  novelty  in  the  invention  claimed.  —  Ironclad  v.  Dairy- 
man's, 143  Fed.  512;  74  C.  C.  A.  372. 

Examination  discloses  that  he  was  compelled  over  and  over  again  to  amend 
and  narrow  his  claims  in  order  to  avoid  the  prior  art.  The  waiver  and  dis- 
claimers of  the  file- wrapper  were  acquiesced  in  by  the  patentee  in  order  to 
obtain  his  patent,  and  he  is  estopped  from  denying  their  force  and  effect,  — 
Williams  v.  Kemmerer,  145  U.  S.  928;  76  C.  C.  A.  466. 

Hubbell  v.  U.  S.  179  U.  S.  77;    Shepard  v.  Carrigan,  116  U.  S.  593. 

That  where  a  claim  is  allowed  only  after  strict  limitation,  such  limitation 
cannot  be  disregarded  in  considering  the  question  of  infringement,  see 
United  v.  Greenman,  146  Fed.  759;  77  C.  C.  A.  22. 

That  an  applicant  having  added  an  element  to  his  claim  to  make  it  allow- 
able, as  required  by  the  Patent  Office,  and  acquiescing  in  such  limitation, 
is  strictly  limited  to  a  construction  containing  such  added  element,  see 
Schweichler  v.  Levinson,  147  Fed.  704;  78  C.  C.  A.  92. 

After  repeated  amendments  of  the  claims,  to  meet  objections  for  conflict 
or  want  of  invention,  the  claims  in  suit  were  allowed  and  the  patent  issued. 
The  limitations  thus  imposed  leave  little,  if  any,  scope  for  the  claims  beyond 
the  several  means  which  are  specifically  shown.  —  Schock  v.  Olsen,  147  Fed. 
229;  77  C.  C.  A.  371. 


200  THE    FIXED    LAW    OF    PATENTS  §  208 

The  patentee  repeatedly  acquiesced  in  rejections  of  his  application  for  a 
broad  claim,  and  substituted  therefor  narrower  claims,  one  after  the  other, 
upon  each  rejection,  until  his  application  was  granted  whereby  water  is 
delivered  under  pressure  forwardly  and  laterty  nearly  parallel  to  the  surface 
of  the  street.  In  such  circumstances  the  owner  of  the  patent  will  not  be  heard 
to  insist  that  the  narrower  claim  allowed  shall  cover  the  broader  rejected 
claims.  —  St.  Louis  v.  American,  156  Fed.  574;  84  C.  C.  A.  340. 

Knapp  v.  Morss,  150  U.  S.  221;  Corbin  v.  Eagle,  150  U.  S.  38;  Hubbell  v. 
U.  S.  179  U.  S.  77;  Computing  ».  Automatic,  204  U.  S.  609;  Greene  v.  Buckley, 
135  Fed.  520. 

In  the  case  of  a  meritorious  invention  a  reasonable  liberality  in  applying 
the  doctrine  of  equivalents  is  not  unusual,  and  patentees  are  not  always  held 
closely  to  the  precise  form  stated  in  the  claim  when  the  same  functions  are 
found  in  a  structure  of  a  somewhat  different  form.  But  the  history  of  this 
patent  during  its  passage  through  the  patent  office  precludes  any  construc- 
tion of  the  claim  which  will  eliminate  the  qualifying  words  "  spirally  wound." 

—  National  v.  Roebling's,  158  Fed.  99;  85  C.  C.  A.  567. 
Victor  v.  American,  151  Fed.  601. 

The  applicant  had  a  long  struggle  in  securing  his  patent,  and  was  con- 
strained to  trim  away,  modify,  and  otherwise  define  his  specifications  and 
claims  to  meet  the  references  made  by  the  office,  until  they  were  brought 
within  very  narrow  limits  before  his  patent  would  be  allowed.  He  must  be 
deemed  to  have  surrendered  and  disclaimed  what  he  conceded,  and  to  have 
imposed  such  definitions  upon  the  language  of  the  patent  as  he  attributed 
to  it  in  order  to  secure  the  grant.  —  American  v.  Cleveland,  158  Fed.  978; 
86  C.  C.  A.  182. 

Sargent  v.  Hall,  114  U.  S.  63;  Thomas  v.  Rocker,  77  Fed.  420;  Dowagiac  v. 
Superior,  115  Fed.  886;  Hale  v.  World,  127  Fed.  964;  Muller  v.  Lodge,  77  Fed. 
621;  Warren  v.  Casey,  93  Fed.  963;  Streit  v.  Kaiper,  143  Fed.  981;  New  York 
v.  Ambler,  103  Fed.  316. 

§  208.     Construction  —  Limitation  —  Patent    Office    Action    Not 
Limiting. 

We  do  not  mean  to  be  understood  as  asserting  that  any  correspondence 
between  the  applicant  and  the  commissioner  can  be  allowed  to  enlarge, 
diminish  or  vary  the  language  of  a  patent  afterwards  issued.  Undoubtedly 
a  patent,  like  any  other  written  instrument,  is  to  be  interpreted  by  its  own 
terms.  But  when  a  patent  bears  on  its  face  a  particular  construction,  inas- 
much as  the  specification  and  claim  are  in  the  words  of  the  patentee,  it  is 
reasonable  to  hold  that  such  a  construction  may  be  confirmed  by  what  the 
patentee  said  when  he  was  making  his  application.  The  understanding  of 
a  party  to  a  contract  has  always  been  regarded  as  of  some  importance  in  its 
interpretation.  —  Goodyear  v.  Davis,  102  U.  S.  222;  26  L.  Ed.  149. 

It  is  quite  true,  where  the  differences  between  the  claim  made  and  as  allowed 
consist  of  mere  changes  of  expression,  having  substantially  the  same  meaning, 
such  changes,  made  to  meet  the  views  of  the  examiner,  ought  not  to  be  per- 
mitted to  defeat  a  meritorious  claimant.  While  not  allowed  to  revive  a 
rejected  claim  by  a  broad  construction  of  the  claim  allowed,  yet  the  patentee 
is  entitled  to  a  fair  construction  of  the  terms  of  his  claim  as  actually  granted. 

—  Hubbell  v.  U.  S.  179  U.  S.  77;  45  L.  Ed.  95;  21  S.  Ct.  24. 

The  applicant  amended  his  claim  to  comply  with  a  requirement  to  put  it  in 
proper  form.  Such  an  amendment  cannot  be  classed  as  a  disclaimer.  — 
Hunt  Bros.  v.  Cassidy,  53  Fed.  257;  3  C.  C.  A.  525. 


§209  CLAIMS  201 

It  mav  well  be,  in  view  of  Royer  v.  Coupe,  146  U.  S.  524;  Knapp  v.  Morss, 
150  U.  S.  224;  Corbin  v.  Eagle,  150  U.  S.  40,  and  Morgan  v.  Albany,  152  U.  8. 
425,  cited,  that  a  patentee  cannot  be  permitted  to  hold  under  his  patent 
anything  that  he  has  clearly  renounced  and  excluded  from  his  inventions 
during  the  prosecution  of  his  application.  But  surely  it  has  never  been  held 
that  mere  changes  in  phraseology  to  suit  the  views  of  the  examiner,  and  to 
distinguish  the  claims  made  from  those  contained  in  prior  applications,  to 
which  reference  has  been  made,  can  be  held  to  defeat  the  patent,  when 
granted.  What  is  forbidden  is  the  attempt,  after  a  patent  has  been  procured 
surrendering  or  disavowing  substantial  claims  or  devices,  to  recover  such 
renounced  and  abandoned  claims  bv  demanding  a  broad  construction  of 
those  allowed.  —  Hillborn  v.  Hale,  69  Fed.  958;   16  C.  C.  A.  569. 

It  is  plain  that,  whatever  were  the  views  of  the  patent  office,  the  matter 
stricken  out  was  mere  surplusage,  and  its  omission  was  of  no  effect.  —  Heap 
v.  Greene,  91  Fed.  792;  34  C.  C.  A.  86. 

Winans  v.  Denmead,  15  How.  330;   Reece  v.  Globe,  61  Fed.  958. 

To  be  estopped  by  the  action  of  the  Patent  Office,  the  patentee  must  be 
shown  to  have  surrendered  something  which  he  now  claims  in  order  to  obtain 
that  which  was  allowed.  —  Bundy  v.  Detroit,  94  Fed.  524;  36  C.  C.  A.  375. 

The  effect  of  Reece  v.  Globe,  as  shown  at  the  foot  of  page  969  of  61  Fed. 
and  page  205  of  10  C.  C.  A.,  is  to  hold  that  such  proceedings  are  of  no  effect 
when  no  direct  issue  of  novelty  or  invention  was  involved,  or  when  the  amend- 
ments made  by  the  applicant  came  in  only  incidentally,  or  in  reference  to  an 
incidental  matter.  The  case  at  bar,  however,  is  clearlv  not  excluded  by  the 
rule  thus  given.  —  Coburn  v.  Chandler,  97  Fed.  333;  38  C.  C.  A.  201. 

So,  the  applicants  never  acquiesced  in  the  examiner's  action;  the  exam- 
iner did  not  require  the  amendment  as  a  condition  precedent  to  the  allowance 
of  claims  narrower  than  originally  made ;  and  the  appellate  tribunal  allowed 
the  claims  after  examining  the  device  in  the  spirit  that  giveth  life.  —  Regent 
v.  Penn.  121  Fed.  80;  57  C.  C.  A.  334. 

That  the  subsequent  allowance  of  a  claim  without  the  restriction  imposed 
may  remove  such  restriction,  see  Kelley  v.  Diamond,  123  Fed.  882;  59  C.  C. 
A.  370. 

That  a  claim  formulated  in  the  Patent  Office  for  an  interference  will  not 
be  construed  as  limiting  the  invention,  see  Reed  v.  Smith,  123  Fed.  878; 
59  C.  C.  A.  366. 

It  is  a  corollary  to  the  general  rule,  that  if  the  applicant  successfully  defends 
his  position  and  secures  the  assent  thereto  of  those  in  the  office  having  charge 
of  the  application,  and  the  patent  issues  notwithstanding  the  objection  which 
had  at  one  time  been  urged,  the  patent  is  not  subject  to  diminution  on  that 
account.  —  American  v.  Cleveland,  158  Fed.  978;  86  C.  C.  A.  182. 

That  the  file-wrapper  contents  of  an  abandoned  application  by  the  same 
person  upon  the  same  invention  is  not  necessarily  evidence  of  limitation  of 
claims,  see  Delaware  v.  Shelby,  160  Fed.  928;  88  C.  C.  A.  110. 

That  rejection  prior  to  amendment  by  the  Patent  Office  does  not  argue  for 
the  invalidity  of  a  claim  subsequently  amended  and  allowed  as  amended,  see 
Dunn  v.  Standard,  163  Fed.  521 ;  C.  C.  A. 

§  209.  Construction — Limitation  —  Patent  Office  Action  —  Protest. 

We  now  come  to  the  novel  question  presented  in  this  case.  It  is  argued, 
and  the  circuit  court  held,  that  because  the  applicants  after  the  rejection  of 


202 


THE    FIXED    LAW    OF    PATENTS 


§§  210-211 


the  claims,  and  after  inserting  the  required  limitations  in  the  specifications, 
protested  that  the  examiner  was  wrong  in  rejecting  the  claims,  and  advised 
him  that  they  proposed  to  insist  on  a  construction  of  claims  as  amended  to 
cover  the  same  ground  as  the  rejected  claims,  the  ruling  of  the  patent  office 
is  not  to  be  given  the  same  effect  as  it  would  otherwise  have.  It  seems  to 
be  contended  that  an  applicant  can  qualify  or  minimize  the  effect  of  his 
acquiescence  in  the  rejection  of  a  claim  by  stating  to  the  patent  office  that  it 
is  not  an  acquiescence,  and  that  he  expects  to  insist  upon  his  right  to  cover  the 
same  ground  as  the  rejected  claim  covered,  under  other  and  amended  claims. 
We  are  clearly  of  opinion  that  he  cannot  thus  destrov  the  effect  of  a  patent 
office  ruling.  —  Thomas  v.  Rocker,  77  Fed.  420;  23"C.  C.  A.  211. 

§210.     Construction  —  Limitation  —  Patent    Office    Action  — 
Rule. 

In  order  that  the  proceedings  in  the  Patent  Office  should  positively 
operate  as  a  waiver  or  estoppel,  they  must  relate  to  the  pith  and  marrow  of  the 
alleged  improvement,  and  be  understanding^  and  deliberately  assented  to. — 
U.  S.  Peg- Wood  v.  Sturtevant,  125  Fed.  382;  60  C.  C.  A.  248. 

Magic  v.  Economy,  97  Fed.  87;  Paxton  v.  Brinton,  107  Fed.  137. 


§2ii.     Construction  —  Limitation  —  Specific  Claims. 

When  a  device  designed  merely  for  the  improvement  of  a  well-advanced  art 
is  described  as  having  particular  features  of  construction  which  are  adapted 
to  accomplish  specific  results  or  modes  of  operation,  and  the  claim  of  the 
patent  is  for  that  device,  the  features  so  described  are  covered  by  the  claim, 
and  may  not  be  rejected,  or  treated  as  of  secondary  importance,  in  order  to 
extend  the  patent  over  other  forms  or  features  not  described.  —  Temple 
v.  Goss,  58  Fed.  196;  7  C.  C.  A.  174. 

The  claim  of  a  specific  combination  or  device  in  a  patent  is  a  renunciation 
of  every  claim  to  any  other  combinations  or  devices,  for  performing  the  same 
functions  that  are  apparent  from  the  face  of  the  patent  and  are  not  colorable 
evasions  of  the  combination  or  device  claimed.  —  Stirratt  v.  Excelsior,  61 
Fed.  980;  10  C.  C.  A.  216. 

A  combination  for  a  specific  invention  is  limited  to  the  precise  elements.  — 
Muller  v.  Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. 

Water  Meter  v.  Desper,  101  U.  S.  332;  Sargent  v.  Lock  Co.  114  U.  S.  63;  Fay 
v.  Cordesman,  109  U.  S.  408;   Hendy  v.  Iron,  127  U.  S.  371. 

By  force  of  the  specification  and  drawings  of  the  patent  and  the  concluding 
terms  of  each  of  the  claims,  of  which  infringement  is  alleged,  the  invention  is 
limited  to  certain  peculiarities  of  construction  and  resulting  functions  de- 
scribed. —  Johnson  v.  Powers,  85  Fed.  863;  29  C.  C.  A.  459. 

But  if  the  invention  of  this  patent  could  be  classified  as  a  primary  one, 
still  the  terms  of  claim  5  are  so  restricted  that  upon  no  sound  principle  of 
construction  could  it  be  held  to  cover  the  devices  used  by  the  defendants.  — 
Stokes  v.  Heller,  101  Fed.  266;  41  C.  C.  A.  335. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Railroad  v.  Mellon,  104  U.  S.  112;  McClain 
v.  Ortmayer,  141  U.  S.  419;  Wright  v.  Yuengling,  155  U.  S.  47;  Lewis  v.  Steel 
Co.  59  Fed.  129;  Duff  v.  Pump  Co.  107  U.  S.  636;  Bragg  v.  Fitch,  121  U.  S.  478; 
Knapp  v.  Morss,  150  U.  S.  221. 

Having  thus  described  his  conveyor  in  his  claim,  he  puts  it  forward  as 
a  constituent  of  his  invention,  and  he  could  not  now  say  that  the  kind  of 


§  212  CLAIMS  203 

frame  he  will  employ  is  different.  —  Moore  v.  Eggers,  107  Fed.  491 ;    46 
0.  C.  A.  425. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Fay  v.  Cordesman,  109  U.  S.  408;  Brown 
v.  Mfg.  Co.,  57  Fed.  731;    Mfg.  Co.  v.  Randal,  104  Fed.  355. 

While  the  patent  to  Myers  was  issued  more  than  a  year  in  advance  of  the 
patent  in  suit,  the  application  for  it  was  filed  11  days  after,  so  that  they 
were  for  a  time  co-pending  in  the  Patent  Office.  No  interference  was  declared. 
That  the  existence  of  the  Myers  patent  was  recognized  and  its  drawings 
cited  during  the  pendency  of  the  application  of  the  patent  in  suit  is  conceded. 
The  fact  of  the  allowance,  with  the  grant  to  Myers  in  view,  and  under  the 
circumstances  stated,  is  presumptive  of  an  understanding  that  claim  1  was 
limited  to  the  structure  substantially  as  described  —  not  in  conflict  with 
Myers'  device  —  and  of  purpose  to  confer  monopoly  within  such  scope. 
The  presumption  thus  arising  would  not  overcome  the  grant  for  an  invention 
which  was  broadly  specified  and  broad  in  fact.  —  Lowden  v.  Janesville,  148 
Fed.  686;  78  C.  C.  A.  548. 


§  2i2.     Construction  —  Limitation  —  Specification  and  Drawings. 

Claims  must  be  limited  to  the  means  described  in  the  specification.  — 
Hailes  v.  VanWormer,  87  U.  S.  353;  22  L.  Ed.  247. 

The  plain  and  explicit  language  of  the  specification  requires  a  construction 
of  the  claim  which  will  enable  the  defendant  to  escape  liability.  There  is 
nothing  in  the  context  to  indicate  that  the  patentee  contemplated  any  alter- 
native arrangement.  —  Snow  v.  Railway,  121  U.  S.  617;  30  L.  Ed.  1004; 
7  S.  Ct.  1343. 

The  description  does  not  necessarily  limit  the  claims.  —  Continental  v. 
Eastern,  210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748. 

A  mere  reference  in  a  claim  to  a  letter  on  the  drawing  does  not  of  itself 
limit  the  claim  to  the  precise  geometrical  shape  shown  in  the  drawing,  even 
though  the  description  of  the  drawing  in  the  specification  refers  to  the  part 
thus  lettered  by  an  adjective  appropriate  to  the  form  shown  in  the  drawing, 
unless  that  particular  form  is  pointed  out  in  the  specification,  or  was  known 
by  the  state  of  the  art  to  be  the  particular  improvement  the  inventor  claimed. 
—  DeLamater  v.  Heath,  58  Fed.  414;  7  C.  C.  A.  279. 

Reed  v.  Chase,  25  Fed.  100. 

As  we  have  shown,  the  specification  and  drawings  clearly  contemplate  the 
use  of  a  track  consisting  of  two  small  wires  placed  side  by  side,  and  this 
limitation  enters  into  the  claims  by  necessary  implication.  —  Lamson  v. 
Godehard,  59  Fed.  776;  8  C.  C.  A.  265. 

Roller  Mill  v.  Walker,  138  U.  S.  124;  Caster  Co.  v.  Spiegel,  133  U.  S.  360; 
Bragg  v.  Fitch,  121  U.  S.  478;  Keystone  v.  Phoenix,  95  U.  S.  274;  Sharp  v. 
Riessner,  119  U.  S.  631. 

The  claim  should  be  read  and  construed  in  the  light  of  the  description  of 
the  invention  and  drawings  attached,  and  of  the  state  of  the  art  to  which  the 
invention  belongs,  not  to  enlarge  the  claim,  but  to  ascertain  its  true  meaning 
and  the  actual  invention  asserted,  and  which  the  inventor  desired  to  secure 
by  letters  patent.  —  Card  v.  Colby,  64  Fed.  594;   12  C.  C.  A.  319. 

It  would  seem  that  the  usual  preliminary  statement  of  the  class  and  nature 
of  the  improvement,  in  the  absence  of  any  declaration  of  broad  invention, 


204 


THE    FIXED    LAW    OF    PATENTS 


§213 


would  be  construed  as  limiting  the  claim  within  the  class  and  to  the  means 
specified.  —  Schuyler  v.  Electric,  66  Fed.  313;   13  C.  C.  A.  491. 

Words  and  phrases  which  might  have  been  omitted,  on  the  presumption 
that  they  relate  to  nonessentials,  may  be  introduced  in  such  direct  and 
positive  manner  as  to  leave  the  courts  no  option  except  to  regard  them  as 
effecting  the  objects  and  limitations  of  the  instrument  in  question.  —  Long 
v.  Pope,  75  Fed.  835;  21  C.  C.  A.  533. 

Reece  v.  Globe,  61  Fed.  958. 

The  scope  of  letters  patent  must  always  be  limited  to  the  invention  predi- 
cated in  the  claim,  and  this  claim  can  never  be  enlarged  by  any  language 
employed  in  other  parts  of  the  specification.  —  Tiemann  v.  Kratz,  85  Fed. 
437;  29  C.  C.  A.  257. 

Railroad  v.  Mellon,  104  U.  S.  112. 

General  language  in  a  claim  which  points  to  an  element  or  device  which  is 
more  fully  described  in  the  specification,  is  limited  to  such  an  element  or 
device  as  is  there  described.  —  Expanded  v.  Board,  111  Fed.  395;  49  C.  C. 
A.  406. 

Smith  v.  Vulcanite,  93  U.  S.  486;  Adams  v.  Lindell,  77  Fed.  432;  Mitchell  v. 
Tilghman,  19  Wall.  287. 

Note:  The  citations  do  not  bear  out  so  broad  a  statement.  Unqualified, 
the  statement  clearly  is  not  the  law.  Such  is  the  law  with  a  narrow,  specific 
improvement ;  but  with  a  generic  invention,  it  is  not. 

§  213.     Construction  —  Limitation  —  State  of  Art. 

Having  reference  to  the  state  of  the  art  at  the  date  of  the  alleged  invention 
and  the  claims  of  the  patent,  the  patentee  must  be  limited  to  the  combina- 
tion shown.  —  WoUensak  v.  Reiher,  115  U.  S.  87;  29  L.  Ed.  355;  5  S.  Ct. 
1132. 

It  is  undoubtedly  true  that  if  the  prior  state  of  the  art  exhibits  the  combina- 
tion of  all  these  essential  elements,  except  the  peculiarly  constructed  hinge 
the  patentees  show,  accomplishing  substantially  the  same  purpose  which 
their  improved  construction  brings  about,  then  the  claims  of  this  patent  must 
be  restricted  to  the  peculiar  construction  of  the  hinge.  —  Griswold  v.  Harker, 
62  Fed.  389;  10  C.  0.  A.  435. 

Stirratt  v.  Mfg.  Co.  61  Fed.  980. 

Manifestly  neither  of  the  patents  is  for  a  primary  invention.  In  each 
instance  patentability  may  be  conceded.  Nevertheless,  these  inventions, 
by  reason  of  the  state  of  the  prior  art,  belong  to  that  class  in  which  the 
patentee  is  to  be  restricted  to  the  specific  form  of  improvement  shown  and 
described.  —  Ryan  v.  Runyon,  93  Fed.  970;  36  C.  C.  A.  36. 

Railway  v.  Sayles,  97  U.  S.  554;   Duff  v.  Pump  Co.  107  U.  S.  636. 

In  view  of  the  limitations  imposed  upon  the  claims  by  the  prior  state 
of  the  art,  they  ought  not  to  receive  a  construction  which  will  enable  them  to 
cover  a  combination  in  which  the  several  devices  are  not  substantially  those 
described  in  the  patent.  It  will  not  do  to  say  that,  because  the  patentee  was 
the  first  to  introduce  locking  devices  into  a  motor  in  which  the  regulator 
and  reverser  were  operated  by  different  levers,  he  is  entitled  to  a  monopoly 
of  all  locking  devices  in  such  a  motor  that  will  co-ordinate  the  movements 
of  the  two  levers  so  that  neither  will  move  except  when  the  other  is  at  a. 


§  214  CLAIMS  205 

predetermined  position.  Precisely  that  function  had  been  previously  per- 
formed by  the  locking  devices  used  to  co-ordinate  levers,  and,  if  the  patentee 
had  done  no  more  than  to  introduce  them  into  the  levers  of  a  motor,  he 
would  merely  have  made  a  change  of  location.  He  is  entitled  to  the  merit 
of  being  the  first  to  conceive  of  the  utility  of  interlocking  the  two  levers  of 
a  motor  controller  of  the  type  in  which  separate  levers  are  employed,  but  his 
right  to  a  patent  must  rest  on  the  novelty  of  the  means  he  has  contrived  to 
carry  his  idea  into  practical  application.  —  Thomson-Houston  v.  Lorain, 
107  Fed.  711;  46  C.  C.  A.  593. 
Aron  v.  Railroad,  132  U.  S.  84. 

Where  none  of  the  prior  inventors  exhibits  or  suggests  any  co-operation  of 
the  elements  upon  the  principle  adopted  by  the  patent  in  suit,  or  upon  any 
principle  adapted  to  serve  the  same  purpose,  the  use  of  the  old  elements 
may  limit,  but  cannot  defeat  the  patent.  —  Imperial  v.  Crown,  139  Fed. 
312;  71  C.  C.  A.  442. 

Note:  Brawley,  J.,  4th  Circ.  writing  the  above.  How  such  a  prior  device 
or  the  use  of  old  elements  "  may  limit  "  the  patent  does  not  appear.  So 
much  of  this  statement  is  distinctly  untenable;  for  if  it  were  the  fact  that 
prior  use  of  the  elements  of  an  invention  without  ever  producing  the  result 
attained  by  the  patent  could  be  postulated  to  limit  the  claim,  such  a  thing  as 
a  generic  invention  or  a  primary  improvement  would  be  impossible. 

In  our  judgment  the  reason  of  the  case  leads  to  the  conclusion  that  between 
contracting  parties,  extraneous  evidence  is  inadmissible  if  there  is  no  ambi- 
guity or  uncertainty  in  the  language  of  the  description  and  claims,  and  that, 
if  there  is  uncertainty,  outside  evidence  is  admissible  only  to  make  clear  what 
the  applicant  meant  to  claim  and  the  government  to  allow,  and  not  for  the 
purpose  of  showing,  even  in  the  slightest  degree,  that  the  applicant  had  no 
right  to  claim  and  that  the  government  was  improvident  in  allowing  what 
was  in  fact  claimed  and  allowed.  —  Siemens-Halske  v.  Duncan,  142  Fed. 
157;  73  C.  C.  A.  375. 

Trotman  v.  Wood,  16  C.  B.  (N.  S.)  479;  Clark  v.  Adie,  L.  R.  2  App.  Cas.  423; 
Chambers  v.  Chrichley,  33  Beavan,  374;  Crossley  v.  Dixon,  10  H.  of  L.  Cas.  293; 
United  States  v.  Harvey,  196  U.  S.  310;  Faulks  v.  Kamp,  3  Fed.  898;  Consoli- 
dated v.  Guilder,  9  Fed.  155;  Underwood  v.  Warren,  21  Fed.  573;  Parker  v. 
McKee,  24  Fed.  808;  Pope  v.  Owsley,  27  Fed.  100;  American  v.  Laraway,  28  Fed. 
141;  Adee  v.  Thomas,  41  Fed.  342;  Woodward  v.  Boston,  60  Fed.  283;  Babcock 
v.  Clarkson,  63  Fed.  607;  National  v.  Connecticut,  73  Fed.  491;  Alvin  v.  Schar- 
ling,  100  Fed.  87;  Standard  v.  Leslie,  118  Fed.  557;  Frank  v.  Barnard,  131  Fed. 
269;  contra  Noonan  v.  Chester,  99  Fed.  90;   Smith  v.  Ridgley,  103  Fed.  875. 


§  214.     Construction  —  Limitation  —  Words  of  Limitation. 

"  Substantially  as  set  forth  "  are  words  of  limitation  in  a  claim  which 
limit  the  combination  to  the  elements  described.  —  Pope  v.  Gormully, 
144  U.  S.  248;  36  L.  Ed.  423;  12  S.  Ct.  641. 

To  prevent  a  broadening  of  the  scope  of  the  invention  beyond  its  fair 
import  in  the  light  of  the  circumstances  surrounding  the  issuance  of  the 
patent,  the  words  of  limitation  contained  in  the  claim  must  be  given  due 
effect,  and,  giving  them  such  effect,  the  statement  in  the  first  claim  of  the 
elements  entering  into  the  combination  must  be  construed  to  refer  to  ele- 
ments in  combination  having  substantially  the  form  and  constructed  sub- 
stantially as  described  in  the  specification  and  shown  in  the  drawing.  — 
Singer  v.  Cramer,  192  U.  S.  265;  48  L.  Ed.  437;  24  S.  Ct.  291. 


206 


THE    FIXED    LAW    OF    PATENTS 


§215 


The  words  "  substantially  as  described  "  are  words  of  limitation  and  restric- 
tion in  the  claim  of  an  improvement.  —  Fox  v.  Perkins,  52  Fed.  205 ;  3  C. 
C.  A.  32. 

Shepard  v.  Carrigan,  116  U.  S.  598. 

In  view  of  the  state  of  the  art,  the  claim  cannot  be  broadly  construed,  and 
it  must  be  held  to  be  fully  limited  by  the  words  "  substantially  as  described." 
—  Reece  v.  Globe,  61  Fed.  958 ;  10  C.  C.  A.  194. 

Railway  v.  National,  110  U.  S.  229. 

If  therefore,  the  words  "  substantially  as  described,"  be  omitted  from  the 
claim,  and  the  preceding  language  be  taken  literally,  nothing  new  would  be 
embraced  and  the  claim  would  consequently  be  invalid.  —  Campbell  v. 
Richardson,  76  Fed.  976;  22  C.  C.  A.  669. 

The  words  "  substantially  as  set  forth,"  with  which  this  claim  concludes, 
referred  to  the  specification  and  make  the  description  of  the  housings  therein 
contained  an  essential  part  of  the  claim.  "  General  language  in  a  claim  which 
points  to  an  element  or  device  more  fully  described  in  the  specification,  is 
limited  to  such  an  element  or  device  as  is  there  described."  —  Brill  v.  St. 
Louis,  90  Fed.  666;  33  C.  C.  A.  213. 

Adams  v.  Lindell,  77  Fed.  432;  Mitchell  v.  Tilghman,  19  Wall.  287;  Stirrat 
v.  Mfg.  Co.  61  Fed.  980. 

The  second  claim  is  narrow  and  is  limited  to  the  corrugations  "  substan- 
tually  as  set  forth."  The  defendant's  dies  not  having  the  same  corrugations  or 
the  corrugations  located  in  the  same  situation  on  the  dies,  do  not  infringe  this 
claim.  —  Simonds  v.  Hathorn,  93  Fed.  958;  36  C.  C.  A.  24. 

If  the  claim  is  to  be  read  in  connection  with  the  specification,  or  any 
significance  is  to  be  attached  to  the  words  "  substantially  as  described,"  it 
plainly  must  be  limited  to  the  coils  of  the  patent.  —  Webster  v.  General, 
115  Fed.  497;  53  C.  C.  A.  229. 

Limited  as  above  stated,  appellant's  structure  does  not  infringe  the 
specific  organization  covered  by  the  first  claim  of  the  patent  in  suit.  The 
words  "  substantially  as  set  forth,"  with  which  the  claim  concludes,  cannot 
here  be  ignored.  —  Carnegie  v.  Brislin,  124  Fed.  213;  59  C.  C.  A.  651. 

He  expressly  declares  that  he  does  not  intend  to  limit  himself  with  regard 
to  the  different  parts  of  his  invention  —  a  reservation  sufficient,  as  it  would 
seem  to  overcome  the  customary  formula  "  substantially  as  described,"  at 
the  end  of  the  claim.  —  Boyer  v.  Keller,  127  Fed.  130;  62  C.  C.  A.  244. 

That  where  the  improvement  is  narrow  the  words  "  substantially  as  set 
forth  "  must  be  construed  as  words  of  limitation,  see  Rose  v.  Dowden,  157 
Fed.  681 ;  85  C.  C.  A.  449. 

Erie  v.  American,  70  Fed.  58. 


§  215.     Construction  —  Limitation  —  Miscellaneous  Rules. 

Winans  v.  Denmead,  15  How.  330  construed  with  other  cases  and  followed. 
—  Reece  v.  Globe,  61  Fed.  958;   10  C.  C.  A.  194. 

Miller  v.  Mfg.  Co.  151  U.  S.  186;  Mfg.  Co.  v.  Adams,  151  U.  S.  139;  Snow  v. 
Railway,  121  U.  S.  617;  Sargent  v.  Lock  Co.  114  U.  S.  63;  Water  Meter  v.  Des- 
per,  101  U.  S.  332;  Fay  v.  Cordesman,  109  U.  S.  408;  Corn  Planter  Pat.  23  WaU. 
181;   Hoyt  v.  Home,  145  U.  S.  302. 


§216  CLAIMS  207 

Doubtless  a  patentee  is  entitled  to  every  use  to  which  his  invention  is 
susceptible,  whether  such  use  be  known  or  unknown  to  him  (Potts  v.  Craeger, 
155  U.  S.  597)  and  if  the  patent  applying  the  means  used  in  the  former  art 
were  in  force  it  would  doubtless  be  entitled  to  control  the  use  of  the  device  in 
the  later  art.  Under  the  doctrine  which  gives  to  the  patentee  all  the  uses  to 
which  his  invention  is  susceptible,  whether  known  or  unknown,  it  is  difficult 
to  see  why  the  public  should  not  be  entitled  to  all  the  uses  to  which  the  means 
involved  in  devices  covered  by  lapsed  patents  are  susceptible,  or  why  a 
patentee  who  employs  the  old  means  with  improvements  adapting  the  use 
to  a  new  or  analogous  industry  should  not  be  limited  to  a  monopoly  of  the 
combination  or  improved  machine.  To  say  that  one  who  discovers  that  old 
means  will  do  a  new  work  without  any  change  may  thereby  monopolize  the  old 
means  as  applied  to  such  new  work,  would  be  carrying  the  discovery  doctrine 
altogether  too  far.  —  Wright  v.  Clinton,  67  Fed.  790;  14  C.  C.  A.  646. 

Brook  v.  Ashton,  27  Law.  J.  Q.  B.  145;  Potts  v.  Craeger,  155  U.  S.  101;  Penna. 
v.  Locomotive,  110  U.  S.  490;  Brown  v.  Piper,  91  U.  S.  37;  Roberts  v.  Ryer, 
91  U.  S.  150;  Atlantic  v.  Brady,  107  U.  S.  192;  Tucker  v.  Spalding,  13  Wall. 
453;  Rob. Pat.  259  n.  1;  Knapp  v.  Morss,  150  U.  S.  221;  Duff  v.  Pump,  107  U.  S. 
636;  Newton  v.  Furst,  119  U.  S.  373;  Bragg  v.  Fitch,  121  U.  S.  478;  Dryfoos  v. 
Wiese,  124  U.  S.  32. 

Features  described  as  preferable  do  not  constitute  a  limitation  of  the  claim . 
When  the  inventor  says,  "  I  recommend  the  following  method,"  he  does  not 
thereby  constitute  such  method  a  portion  of  his  patent.  His  patent  may  be 
infringed,  although  the  party  does  not  follow  his  recommendation,  but 
accomplishes  the  same  end  by  another  method.  —  Krajewski  v.  Pharr,  105 
Fed.  514;  44  C.  C.  A.  572. 

Sewall  v.  Jones,  91  U.  S.  171. 

In  view  of  these  circumstances  (the  narrowness  of  invention)  and  of  the 
fact  that  the  apparatus  of  the  patent  in  suit  is  of  doubtful  utility,  and  does  not 
appear  ever  to  have  been  put  upon  the  market,  the  claims  can  only  be  so 
interpreted  as  to  cover  details  of  construction.  —  Huber  v.  Mott,  125  Fed. 
944;  60  C.  C.  A.  182. 

§  2 1 6.    Construction  —  Limitation  to  Avoid  Anticipation. 

We  ought  to  give  a  favorable  construction  so  as  to  sustain  the  patent  if 
it  can  be  fairly  done.  —  Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

The  patent  in  suit,  in  order  that  it  may  be  held  valid,  must  be  construed  in 
view  of  the  disclaimer  contained  in  that  patent,  and  be  limited  to  the  par- 
ticular devices  shown  in  the  specification.  —  Ashcroft  v.  Boston,  97  U.  S.  189; 
24  L.  Ed.  982. 

Where  the  complainant  insists  upon  an  extension  of  his  claim  he  must  sub- 
mit also  to  the  risk  of  anticipation.  —  Sutter  v.  Robinson,  119  U.  S.  530;  30 
L.  Ed.  492;  7  S.  Ct.  376. 

A  construction  broad  enough  to  cover  infringement  by  equivalency  may 
defeat  the  claim,  because  broadening  the  construction  broadens  the  danger 
of  anticipation.  —  Pope  v.  Gormully,  144  U.  S.  238;  36  L.  Ed.  420;  12  S. 
Ct.  637. 

If  complainant's  claim  should  receive  such  construction  as  would  cover 
defendant's  machine,  then  it  was  clearly  anticipated  in  the  prior  devices 
already  referred  to;  that  if  valid  under  a  narrow  and  restricted  construction, 
which  would  limit  the  patent  to  the  specific  device  described  in  the  specifica- 


208  THE    FIXED    LAW    OF    PATENTS  §  216 

tion,  then  it  is  not  infringed  by  defendants.  —  Fox  v.  Perkins,  52  Fed.  20.3; 
3  C.  C.  A.  32. 

If  the  claims  of  the  patent  in  suit  were  so  constructed  as  to  charge  the 
defendant  with  infringement,  the  claims  would  be  void  for  want  of  novelty; 
if  construed  so  as  to  avoid  anticipation,  defendant  does  not  infringe.  —  Gates 
v.  Fraser,  55  Fed.  409;  5  C.  C.  A.  154. 

To  construe  the  claims  of  the  patent  so  broadly  as  to  cover  appellant's 
device  would  render  them  worthless.  —  Holman  v.  Jones,  61  Fed.  105;  9 
C.  C.  A.  385. 

There  is  nothing  new  in  the  elements  described.  The  only  novelty  is  in  the 
combination;  and  in  this  respect  the  device  differs  so  little  from  others  of 
an  earlier  date  shown  by  the  art,  and  intended  for  the  same  use,  that  the 
claims  must  be  narrowly  construed.  We  agree  with  the  circuit  court  that  the 
proofs  do  not  exhibit  anything  sufficient  to  repel  the  ordinary  presumption 
attending  the  grant  of  a  patent.  But  this  is  only  true,  we  think,  when  the 
claims  are  thus  narrowly  construed.  —  Holman  v.  Jones,  61  Fed.  105;  9 
C.  C.  A.  385. 

The  invention  being  specific  and  limited,  if  the  claims  warranted  a  con- 
struction broad  enough  to  cover  the  device  of  the  appellee,  we  should  have  no 
hesitation  in  holding  it  void  for  want  of  novelty.  —  Stirrat  ?>.  Excelsior, 
61  Fed.  980;  10  C.  C.  A.  216. 

Atlantic  v.  Brady,  107  U.  S.  192;  Vinton  v.  Hamilton,  104  U.  S.  485;  Slawson 
v.  Railroad,  107  U.  S.  653;  King  v.  Gallun.  109  U.  S.  99;  Double  Pointed  v. 
Two  Rivers,  109  U.  S.  117;  Estey  v.  Burdett,  109  U.  S.  633;  Bussey  v.  Mfsj.  Co. 
110  U.  S.  131;  Phillips  v.  Detroit,  111  U.  S.  604;  Morris  v.  McMillin,  112  U.  S. 
244;   Hollister  v.  Mfg.  Co.  113  U.  S.  59;   Ellbert  v.  Gaslight  Co.  50  Fed.  205. 

To  imply  as  elements  of  a  claim  parts  not  named  therein  for  the  purpose  of 
limiting  its  scope,  so  that  it  may  be  accorded  novelty,  is  contrary  to  a  well-set- 
tled rule  of  the  patent  law.  —  Stearns  v.  Russell,  85  Fed.  218;  29  C.  C.  A.  121. 

McCartyv.  Railroad,  160  U.  S.  110. 

These  changes  are  of  so  slight  a  character,  and  the  improvement  by  the 
new  combination  so  debatable,  that  if  any  liberality  in  construction,  or  in 
the  application  of  the  doctrine  of  equivalents,  be  conceded  for  the  purpose 
of  including  other  improvers,  along  the  same  lines  within  the  scope  of  this 
patent,  it  will  have  the  necessary  effect  of  rendering  it  void  for  anticipation. 
"  That  which  infringes  it,  if  later,  anticipates  it  if  earlier."  —  St.  Louis  v. 
National,  87  Fed.  885;  31  C.  C.  A.  265. 

It  is  manifest  that  the  inventions  secured  by  the  claims  are  of  very  narrow 
character,  and  that  they  cannot  receive  the  broad  construction  which  their 
language  would  authorize  without  affirming  their  invalidity  for  want  of 
patentable  novelty.  —  Brill  v.  Pekham,  108  Fed.  267;  47  C.  C.  A.  315. 

Courts  are  reluctant  to  decree  patents  invalid  when  a  decree  can  be  based 
on  infringement.  —  Wilcox  v.  Sherborne,  123  Fed.  875;  59  C.  C.  A.  363. 

Note:  This  is  lamentably  true ;  and  is  one  main  respect  in  which  the  courts 
fail  to  do  their  duty  by  the  public.  If  a  patent  is  invalid  and  the  court 
has  jurisdiction  thereof,  it  is  the  plain  duty  of  the  court  as  a  servant  of  the 
Republic  to  destroy  the  illegal  monopoly. 

Even  where  a  patent  incidentally  makes  express  reference  to  features 
other  than  the  essential  features,  it  has  been  held  that  the  patent  cannot  be 
supported  by  such  features  alone,  if  the  inventor  does  not  rely  upon  them  in 
describing  the  substance  of  his  invention.    Still  less  can  a  patent  be  supported 


§  217  CLAIMS  209 

by  features  not  referred  to,  claimed,  or  even,  suggested  in  the  patent,  and  not 
a  function  of  thing  patented  except  when  used  in  a  special  combination  not 
claimed.  —  Greene  v.  United,  132  Fed.  973;  66  C.  C.  A.  43. 
Waterman  v.  Lockwood,  125  Fed.  490. 

§217.    Construction  —  Narrow. 

When  the  claim  is  confined  to  a  particular  article  or  fabric,  it  is  tanta- 
mount to  a  declaration  that  nothing  else  was  claimed.  —  White  v.  Dunbar, 
1 19  U.  S.  47 ;  30  L.  Ed.  303 ;  7  S.  Ct.  72. 

The  plaintiff's  patent  must  be  limited  to  the  mechanism  described  and 
claimed  by  him,  and  cannot  be  extended  so  as  to  cover  all  mechanism  for  per- 
forming the  function  attained,  nor  to  the  process  of  operation  described  in  his 
patent;  and  the  defendant's  mechanism,  in  each  form  of  his  machine  cannot 
be  regarded  as  merely  an  equivalent  for  the  plaintiff's  mechanism.  —  Dryfoos 
v.  Wiese,  124  U.  S.  32;  31  L.  Ed.  362;  8  S.  Ct.  354. 

Yale  v.  Sargent,  117  U.  S.  373. 

Where,  in  a  specific  patent  the  claim  is  limited  to  the  elements  shown  and 
claimed,  the  omission  of  an  element  thereof  avoids  infringement.  —  Forn- 
crook  v.  Root,  127  U.  S.  176;  32  L.  Ed.  97;  8  S.  Ct.  1247. 

Fay  v.  Cordesman,  109  U.  S.  408;  Yale  v.  Sargent,  117  U.  S.  373;  Dryfoos  v. 
Wiese,  124  U.  S.  32. 

Where  the  patent  in  suit  is  not  a  pioneer  patent  the  claims  must  be  strictly 
construed.  —  Clark  v.  Willimantic,  140  U.  S.  481 ;  35  L.  Ed.  521 ;  11  S.  Ct.  846. 

Where  it  appears  that  the  patent  in  suit  is  not  a  pioneer  in  the  art,  the 
claims  will  be  construed  strictly  and  narrowlv  to  the  device  described. — 
Gordon  v.  Warder,  150  U.  S.  47;  37  L.  Ed.  992;   14  S.  Ct.  32. 

It  clearly  appears  that  complainant  was  not  a  pioneer  in  this  department  of 
machinery.  Many  inventors  had  preceded  him  and  many  patents  had  been 
issued.  We  think  the  case  is  one  where,  in  view  of  the  state  of  the  art  the 
patentee  is  entitled,  at  the  most,  only  to  the  precise  devices  mentioned  in  the 
claims.  —  Boyd  v.  Janesville,  158  U.  S.  260;  39  L.  Ed.  973;  15  S.  Ct.  837. 

The  claim  of  the  patent,  in  view  of  the  state  of  the  art,  covers  a  very 
narrow  invention,  if  construed  to  cover  the  device  of  defendant  it  is  void  for 
want  of  novelty.  —  Hammond  v.  Goodyear,  58  Fed.  411 ;  7  C.  C.  A.  276. 

This  patent  is  a  subordinate  one,  and  must  receive  a  narrow  construction. 
It  is  not  permissible  to  give  to  the  terms  of  a  patent  of  that  class  so  wide  a 
sweep  as  to  include  the  various  devices  which  may  actuate  the  mechanism, 
and  the  range  of  its  monopoly  is  a  limited  one.  —  Westinghouse  v.  N.  Y., 
63  Fed.  962;   11  C.  C.  A.  528. 

A  claim  for  only  the  arrangement  and  combination  of  parts  must  be  limited 
to  a  strict  construction.  —  Roemer  v.  Peddie,  78  Fed.  117;  24  C.  C.  A.  39. 

We  find  the  first  claim  of  the  patent  is  for  a  specific  combination  of  elemen- 
tary parts.  Upon  well  settled  principles,  this  claim  must  be  construed  strictly, 
and  the  patentee  held  to  the  particular  arrangement  of  parts  described  and 
specified.  —  DeBeaumont  v.  Williames,  80  Fed.  995;  26  C.  C.  A.  298. 

Duff  v.  Pump  Co.  107  U.  S.  636;  Bragg  v.  Fitch,  121  U.  S.  478;  Snow  v.  Rail- 
way, 121  U.  S.  617;   Wright  v.  Yuengling,  155  U.  S.  47. 


210 


THE    FIXED    LAW   OF    PATENTS 


§§  218-219 


The  facts  that  the  claim  is  a  narrow  one,  and  that,  after  notice  from  patent 
office,  Fay  adhered  to  the  special  form  of  claim  previously  adopted;  that  the 
tool  had  not  become  generally  commercial;  and  that  the  patentee  unreason- 
ably rested  upon  his  supposed  rights,  —  taken  together,  present  a  situation 
which  forbids  a  liberal  construction  of  the  patentee's  claims  for  the  purpose 
of  sustaining  the  contention  of  infringement.  —  Starrett  v.  Stevens,  100 
Fed.  93;  40  C.  C.  A.  289. 

It  is  true  that  Hamilton  was  the  first  inventor  of  a  time-printing  machine 
for  directly  measuring  and  recording  intervals  of  time.  It  is  also  true  that 
for  this  reason  his  patent  should  be  liberally  construed.  But,  at  the  same 
time,  we  know  of  no  rule  for  construction  which  will  permit  the  court  to  hold 
a  machine  to  be  an  infringement  of  that  patent  which  does  not  contain  the 
original  and  vital  elements  of  the  invention,  in  a  suit  in  which  the  claim  of 
the  patent  relied  upon  expressly  makes  these  elements  a  part  of  the  combina- 
tion covered  by  the  claim.  —  Wilson  v.  Calculagraph,  144  Fed.  91 ;  75  C. 
C.  A.  249. 


§  2 1 8.     Construction  —  Omitting  Element. 

A  patentee  cannot  claim  the  benefit  of  an  element  of  his  invention  thus 
vaguely  ami  indefinitely  hinted  at.  It  is  clear  that  if  the  patentee  intended 
to  include  the  cooling  of  the  wax  or  paraffine  before  compressing  it  upon  the 
wire,  he  has  failed  to  describe  in  his  specification  that  element  of  his  invention 
as  required  by  the  statute.  Instead  of  describing  the  process  he  mentions  a 
quality  of  the  product,  and  asks  the  court  to  infer  the  process  from  the 
quality.  Such  a  vague  and  inverted  method  of  description  is  not  a  compli- 
ance with  the  statute.  That  part  of  the  alleged  invention  is  not  even  referred 
to  in  the  most  distant  manner  in  the  claim.  It  has  been  held  by  this  court 
that,  "  the  scope  of  letters  patent  should  be  limited  to  the  invention  covered 
by  the  claim ;  and,  though  the  claim  may  be  illustrated,  it  cannot  be  enlarged 
by  the  language  in  other  parts  of  the  description."  —  Western  v.  Ansonia, 
114  U.  S.  447;  29  L.  Ed.  210;  5  S.  Ct.  447. 

R.  R.  v.  Mellon,  104  U.  S.  112. 

The  claim  could  hardly  be  construed  to  permit  the  omission  of  any  of  the 
described  steps  of  the  process,  unless  such  omission  had  been  recognized  in 
the  specification.  —  U.  S.  Repair  v.  Standard,  95  Fed.  137;  37  C.  C.  A.  28. 


§  219.     Construction  —  Plain  Intent  and  Meaning. 

The  courts  of  this  country  cannot  always  indulge  the  same  latitude  which 
is  exercised  by  English  judges  in  determining  what  parts  of  a  machine  are 
or  are  not  material.  Our  law  requires  the  patentee  to  specify  particularly 
what  he  claims  to  be  new,  and  if  he  claims  a  combination  of  certain  elements 
or  parts,  we  cannot  declare  that  any  one  of  these  elements  is  immaterial. 
The  patentee  makes  them  all  material  by  the  restricted  form  of  his  claim. 
We  can  only  decide  whether  any  part  omitted  by  an  alleged  infringer  is 
supplied  by  some  other  device  or  instrumentality  which  is  its  equivalent.  — 
Union  v.  Desper,  101  U.  S.  332;  25  L.  Ed.  1024. 

The  meaning  of  letters  patent,  like  other  grants  or  written  instruments, 
must  be  ascertained  by  the  language  employed,  as  applied  to  the  subject 
matter.  —  Krajewski  v.  Pharr,  105  Fed.  514;  44  C.  C.  A.  572. 

Robinson  v.  Sutter,  8  Fed.  828;  Adams  v.  Iron  Co.  26  Fed.  324;  Sayre  v. 
Scott,  55  Fed.  971. 


§219  CLAIMS  211 

Some  allowance  may  well  be  made  for  an  unlearned  man,  when  we  re- 
member that  in  the  recent  case  of  Westinghouse  v.  Boyden,  170  U.  S.  537, 
the  Supreme  Court  itself  required  three  hearings  before  it  could  determine 
the  meaning  and  scope  of  the  patent  claims,  and  the  record  in  this  case 
shows  that  such  learned  experts  as  Gen.  Spear  and  Mr.  Walker  differ  radically 
as  to  what  the  claims  of  the  original  patent  cover.  —  Crown  v.  Aluminum, 
108  Fed.  845;  48  C.  C.  A.  72. 

Such  a  restriction  was  not  required  by  the  prior  act,  in  order  to  save  the 
claim  from  being  declared  invalid,  and,  except  for  the  purpose  of  saving  a 
claim,  its  scope  should  not  be  restricted  beyond  the  fair  and  ordinary  meaning 
of  the  words.  —  Ryder  v.  Schlichter,  126  Fed.  487;  61  C.  C.  A.  469. 

Winans  v.  Denmead,  56  U.  S.  341;  Consolidated  v.  Columbian,  79  Fed.  795; 
Gaisman  v.  Gallert,  105  Fed.  955. 

These  claims  (the  specific  claims)  are  concerned  with  the  particular 
structure  described  by  the  drawings  and  the  specification,  and  to  confine  the 
fourth  claim,  which  is  drawn  broadly,  to  such  a  structure,  denies  to  the  claim 
any  effect  whatever.  This,  we  think,  goes  too  far.  It  requires  us  to  suppose 
that  the  inventor  prepared  a  claim  whose  words  do  not  mean  what  they  say, 
and  should  be  so  modified  as  to  make  them  a  mere  repetition  of  other  claims, 
and  that  the  Patent  Office  also  knew  that  the  words  were  to  be  read  with 
limitations  that  are  not  stated,  and  nevertheless  allowed  the  claim  to  stand. 
—  Ryder  v.  Schlichter,  126  Fed.  487;  61  C.  C.  A.  469. 

The  meaning  of  the  claim  is  plain.  It  does  not  require,  and  therefore  is  not 
open  to,  interpretation.  It  is  so  explicit  that  the  courts  cannot  alter  or 
enlarge  it.  —  Jones  v.  Davis,  138  Fed.  62;  70  C.  C.  A.  558. 

Keystone  v.  Phoenix,  95  U.  S.  278. 

The  law  requires  the  patentee  to  define  in  his  claim  precisely  what  his 
invention  is.  This  Crosby  has  done,  and  the  court  has  no  power  to  disregard 
the  plain  terms  of  the  claim  and  either  change  or  enlarge  it  by  a  reference  to 
the  specification.  —  Cincinnati  v.  American,  143  Fed.  322 ;  74  C.  C.  A.  522. 

Merrill  v.  Yeomans,  94  U.  S.  568;  Keystone  v.  Phcenix,  95  U.  S.  274;  White 
v.  Dunbar,  119  U.  S.  47;  McCarty  v.  Lehigh,  160  U.  S.  110;  Penfield  v.  Potts, 
126  Fed.  475. 

Be  this  as  it  may,  the  Courts  must  take  the  claims  of  the  patents  as  they 
find  them,  and  are  not  permitted  to  reconstruct  them  by  adding  to  or  sub- 
tracting from  their  terminology.  The  Court  is  not  concerned  with  the 
motives  which  induced  the  patent  officials  to  require  the  patentee  to  accept 
the  claim.  It  is  enough  that  it  is  in  the  patent  and  that  it  is  couched  in 
language  so  plain  and  unambiguous  as  to  leave  no  room  for  construction. 
The  Courts  must  deal  with  the  claims  not  as  they  might  have  been,  but  as 
they  are.  —  Ryan  v.  Metropolitan,  144  Fed.  697;  75  C.  C.  A.  513. 

We  must  construe  the  patent  in  the  light  of  what  it  says,  not  what  it  might 
have  said ;  we  must  hold  the  patentee  to  what  he  has  put  on  paper,  not  what 
he  may  have  had  in  his  mind.  It  is  enough  that  the  patentee  did  not  so  word 
the  claim  and  it  is  beyond  the  province  of  the  court  to  rewrite  it.  —  Universal 
v.  Sonn,  154  Fed.  665;  83  C.  C.  A.  422. 

Keystone  v.  Phcenix,  95  U.  S.  274;  National  v.  Williams,  44  Fed.  190. 

The  claims  were  limited  by  the  word  "  detachable."  Effort  was  made  to 
show  that  this  limitation  should  be  disregarded.  The  court  declined  so  to 
construe.  —  Brookfield  v.  Elmer,  154  Fed.  197;  83  C.  C.  A.  180. 


212 


THE   FIXED   LAW   OF   PATENTS 


220-221 


§  220.     Construction  —  Reading  in  Elements. 

It  is  true  the  elements  of  a  combination  not  mentioned  in  a  claim  may 
sometimes  be  held  included,  in  the  light  of  other  parts  of  the  specification, 
which  may  be  applicable,  but  here  the  claim  is  so  broad  that  we  are  not 
justified  in  importing  into  it  an  element  which  would  not  operate  to  so 
enlarge  its  scope  as  to  cover  an  invention  in  no  manner  indicated  upon  its 
face.  —  Day  v.  Fair  Haven,  132  U.  S.  98;  33  L.  Ed.  265;  10  S.  a.  11. 

There  is  not  an  element  in  this  combination  which  is  not  found  in  the  wind- 
mill of  the  appellee,  and  it  cannot  be  permitted  to  read  other  elements  into 
this  claim  and  then  to  defeat  it,  because  it  does  not  use  the  elements  it 
interpolates.  —  Mast  v.  Dempster,  82  Fed.  327;  27  C.  C.  A.  191. 

Clearly  it  is  not  allowable,  by  the  importation  of  elements  to  give  identity 
to  claims  which  in  terms  are  intelligibly  different.  —  Anderson  v.  Potts,  108 
Fed.  379;  47  C.  C.  A.  409. 

McCarty  v.  Railroad,  160  U.  S.  110. 

The  terms  of  the  claim,  read  with  the  descriptive  matter  of  the  specifica- 
tion, would  seem  to  require  such  a  construction,  but,  inasmuch  as  the  patent 
would  be  void  for  want  of  novelty  if  these  constituents  were  omitted,  this 
construction  is  imperative.  —  Brickill  v.  Mayor.  112  Fed.  65;  50  C.  C.  A.  1. 


§221.     Construction  —  Reference  Characters. 

Certainly  neither  of  these  cases  establishes  a  hard  and  fast  rule  that  where 
a  patentee  claims  the  combination  of  certain  elements  shown  in  his  patent, 
describing  them  by  reference  letters  shown  in  the  drawings,  he  thereby 
deprives  himself  of  the  benefit  of  the  liberal  doctrine  of  equivalents  appli- 
cable to  pioneer  patents,  if  otherwise  he  is  entitled  to  its  application.  (Re- 
ferring to  Weir  v.  Morden,  125  U.  S.  106;  Hendy  v.  Iron,  127  U.  S.  375.)  — 
McCormick  v.  Aultman,  69  Fed.  371 ;   16  C.  C.  A.  259. 

DeLamater  v.  Heath,  58  Fed.  414. 

The  use  of  letters  in  a  claim  to  designate  its  elements  does  not  prevent  its 
liberal  construction.  —  Bonnette  v.  Koehler,  82  Fed.  428;  27  C.  C.  A.  200. 

McCormick  v.  Aultman,  69  Fed.  371;  Muller  v.  Tool  Co.  77  Fed.  621;  De- 
Lamater v.  Heath,  58  Fed.  414. 

The  use  of  letters  in  describing  a  patented  device  has  been  the  subject  of 
consideration  in  a  number  of  cases  in  the  Supreme  Court  as  well  as  in  this 
court.  Sometimes  the  letters  have  been  held  to  limit  the  inventor  to  the  very 
device  thus  designated ;  in  other  cases  the  mere  use  of  letters  has  not  been  held 
to  deprive  the  inventor  of  a  liberal  application  of  the  doctrine  of  mechanical 
equivalents.  An  analysis  of  the  cases  will  show  that  the  conclusion  reached 
depends  upon  the  character  of  the  improvement  under  consideration.  If 
the  invention  is  of  a  pioneer  character,  highly  meritorious  in  conception 
and  usefulness,  the  mere  use  of  letters  has  been  held  not  to  limit  the  inventor 
to  the  exact  form,  of  device  shown,  but  he  is  entitled  to  a  broader  conception 
of  his  patent,  in  view  of  the  advance  which  he  has  made  in  the  art.  How- 
ever, if  the  field  of  invention  is  limited,  and  an  improvement  of  a  narrow 
character  has  been  made,  just  sufficient  to  cross  the  line  which  divides 
mechanical  improvement  from  patentable  invention,  the  inventor  will  be 
allowed  the  specific  description  shown  and  no  more.  In  other  words,  he  will 
be  held  to  have  invented  just  what  his  claim  shows  to  have  been  the  specific 
subject  matter  of  his  improvement.     Without  stopping  to  analyze  the  cases, 


§  222  CLAIMS  213 

we  think  the  following  citations  establish  the  rules  just  stated.  —  Ross- 
Moyer  v.  Randall,  104  Fed.  355;  43  C.  C.  A.  578. 

McCormick  v.  Aultman,  69  Fed.  371;  Weir  v.  Morden,  125  U.  S.  98;  Hendy 
v.  Iron  Works,  127  U.  S.  370;   Muller  v.  Tool  Co.  77  Fed.  621. 


§  222.     Construction  —  Rules  —  General. 

A  patent  should  be  generally  construed  in  a  favorable  and  beneficial 
sense  for  the  best  interests  of  the  patentee.  —  Hogg  v.  Emerson,  6  How. 
437;  12  L.  Ed.  505. 

Godson  on  Pat.  24;  Kingsley  &  P.  on  Pat.  35;  Grant  v.  Raymond,  6  Pet.  218; 
Ames  v.  Howard,  1  Summ.  482;  Weyeth  v.  Stone,  1  Story,  273,  287;  Blanchard 
v.  Sprague,  2  Story,  164;  King  v.  Wheeler,  2  Ban.  &  A.  345;  Wilson  v.  Rousseau, 
4  How.  708;   Russell  v.  Cowley,  1  Compt.  M.  &  B.  864,  876. 

The  term  rule  of  construction  in  respect  to  patents  and  specifications, 
and  the  doings  generally  of  inventors,  is  to  apply  to  them  plain  and  ordinary 
principles.  —  Hogg  v.  Emerson,  6  How.  437;  12  L.  Ed.  505. 

The  reasonable  presumption  is  that  having  a  just  right  to  cover  and 
protect  his  whole  invention,  he  intended  to  do  so.  —  Winans  v.  Denmead, 
15  How.  330;  14  L.  Ed.  717. 

Haworth  v.  Hardcastle,  Web.  P.  C.  484. 

A  patent  should  be  construed  in  a  liberal  spirit,  to  sustain  the  just  claims 
of  the  inventor.  This  principle  is  not  to  be  carried  so  far  as  to  exclude  what 
is  in  it,  or  to  interpolate  anything  which  it  does  not  contain.  But  liberality 
rather  than  strictness,  should  prevail  where  the  fate  of  the  patent  is  involved, 
and  the  question  to  be  decided  is  whether  the  inventor  shall  hold  or  lose  the 
fruits  of  his  genius  and  his  labors.  —  Rubber  Co.  v.  Goodyear,  76  U.  S.  788 ; 
19  L.  Ed.  566. 

Corning  v.  Burden,  15  How.  269;  Battin  v.  Taggart,  17  How.  77. 

It  has  always  been  held  that  a  patent  embraces  nothing  more  than  the 
improvement  described  and  claimed  as  new,  and  that  anyone  who  afterwards 
discovers  a  method  of  accomplishing  the  same  object,  substantially  and 
essentially  differing  from  the  one  described,  has  a  right  to  use  it  and  to  vend 
it  to  others  to  be  used.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

O'Reilly  v.  Morse,  15  How.  119. 

A  literal  construction  is  not  to  be  adopted  where  it  would  be  repugnant  to 
the  manifest  sense  and  reason  of  the  instrument.  —  Brown  v.  Guild,  90 
U.S.  181;  23  L.  Ed.  161. 

The  claim  is  a  statutory  requirement,  prescribed  for  the  very  purpose  of 
making  the  patentee  define  precisely  what  his  invention  is;  and  it  is  unjust 
to  the  public,  as  well  as  an  evasion  of  the  law,  to  construe  it  in  a  manner 
different  from  the  plain  import  of  its  terms.  —  Howe  v.  National,  134  U.  S. 
388;  33  L.  Ed.  963;  10  S.  Ct.  570. 

White  v.  Dunbar,  119  U.  S.  47. 

If  letters  patent  were  to  be  treated  by  the  courts  in  the  critical  and  hostile 
spirit  which  a  plea  in  abatement  formerly  encountered,  the  contention  of  the 
defendant  would  have  technical  importance;  but  courts  do  not  construe 
letters  patent  for  the  purpose  of  their  destruction.  —  Electric  v.  Brush,  52 
Fed.  130;  2  C.  C.  A.  682. 


214 


THE    FIXED    LAW    OF    PATENTS 


§222 


The  construction  to  be  given  to  his  patent  must  correspond  with  the  extent 
of  his  invention.  The  actual  invention,  if  in  conformity  with  the  language 
of  the  claims,  should  control  in  the  construction  of  patents.  A  strict  con- 
struction should  not  be  resorted  to  if  it  becomes  a  limitation  upon  the  actual 
invention,  unless  such  construction  is  required  by  the  claim,  it  being  under- 
stood that  the  construction  should  not  go  beyond  and  enlarge  the  limitations 
of  the  claim.  —  Smead  v.  Fuller,  57  Fed.  626;  6  C.  C.  A.  481. 

Merrill  v.  Yeomans,  94  U.  S.  568;  Railroad  v.  Mellon,  104  U.  S.  117;  Railway 
jn.  Sayles,  97  U.  S.  554. 

Unless  a  court  is  to  recede  from  the  rule  of  construction  of  claims  which 
the  modern  decisions  of  the  Supreme  Court  have  endeavored  to  impress  upon 
the  patent  law  of  this  country,  the  claims  are  to  be  construed  in  accordance 
with  what  must  be  regarded  as  their  obvious  meaning.  —  Groth  v.  Inter- 
national, 61  Fed.  284;  9  C.  C.  A.  507. 

The  claim  must  be  taken  as  defining  precisely  what  the  invention  covered 
by  the  patent  is,  and,  hence,  the  true  question  is,  not  what  the  patentee 
might  have  claimed,  but  what  he  has  claimed.  —  Durand  v.  Schulze,  61  Fed. 
819;  IOC.  C.  A.  97. 


Theoretically,  an  inventor,  in  taking  out  a  patent  under  the  statutes  of 
the  United  States,  subtracts  and  adds  nothing  from  or  to  his  actual  invention. 
The  proceedings  recognize  his  incipient  ownership,  and  theoretically  they 
constitute  only  a  division  of  time,  by  which  there  is  carved  out  of  the  entire 
estate  a  holding  for  a  period  of  years  for  the  inventor,  and  the  fee  is  left  for 
the  public.  Thus  his  patent  is  not  at  all  akin  to  the  King's  grant,  which  must 
be  expressed  "  ex  speciali  gratia,  certa  scientia,  et  mero  motu  regis,"  or  be 
interpreted  against  the  subject  who  receives  it.  Except  for  the  provisions 
which,  for  public  interests,  require  in  a  patent  a  description  and  claim,  the 
same  unrestricted  rules  of  the  common  law  would  protect  an  inventor's 
statute  right  as  are  relied  on  to  support  a  trademark  or  business  good-will. 
Nevertheless,  with  reference  to  patents,  the  courts  are  necessarily  subject  to 
the  restraints  arising  from  the  incorporation  into  them  of  the  description 
and  claim,  which  the  statutes  require.  In  interpreting  these,  however,  the 
rule  must  be  accepted  that  it  is  to  be  presumed  the  inventor  did  not  intend  to 
split  up  his  invention.  This  is  only  an  application  of  the  ordinary  rule  of 
interpretation  that  transactions  are  to  be  construed  in  the  light  of  all  the  cir- 
cumstances and  of  the  apparent  purposes  of  the  parties  to  them.  Specifica- 
tions and  claims  have  not  yet  fallen  into  such  settled  forms  as  to  enable  the 
courts  to  construe  them  in  any  considerable  part,  with  such  certainty  as  they 
construe  many  words  and  phrases  in  formal  instruments  at  the  common  law; 
but,  on  the  whole  the  entire  subject-matter  must  be  taken  together  for 
effectuating  the  true  purpose  of  the  transaction,  as  contracts  and  wills,  which 
are  so  frequently  drawn  formally,  are  usually  construed.  The  ordinary 
rule  that  if  by  a  literal  construction  an  instrument  would  be  rendered  frivolous 
and  ineffectual,  and  its  apparent  object  frustrated,  a  different  exposition  will 
be  applied  if  it  can  be  supported  by  anything  in  it,  requires  that  words  which 
relate  to  what  may  be  held  nonessentials,  however  much  multiplied,  shall 
not  be  permitted  unnecessarily  to  control  the  sense.  For  the  most  part  such 
words  are  merely  illustrative,  or  are  used  through  inadvertence.  On  the 
other  hand,  it  is  true  that  words  and  phrases  which  might  have  been  omitted 
on  the  presumption  that  they  relate  to  nonessentials,  may  be  introduced  in 
such  direct  and  positive  manner  as  to  leave  the  courts  no  option  except  to 
regard  them  as  affecting  the  objects  and  limitations  of  the  instrument  in 
question.  Especially  may  this  be  so  when  words  which  otherwise  might  be 
regarded  as  unimportant,  are  introduced  by  way  of  amendment.    This  is  a 


§  222  CLAIMS  215 

common  rule,  which  perhaps  has  been  illustrated  more  frequently  with 
marine  insurance  policies  than  elsewhere.  There  is  no  doubt  that  if  into  an 
instrument  which  has  been  prepared  and  submitted  additional  words  are 
subsequently  introduced  by  mutual  consent,  greater  effect  may  sometimes 
be  attributed  to  such  words  than  otherwise  would  be  given  them ;  for  they 
then  become  the  immediate  language  selected  by  the  parties,  and  may  be 
assumed  to  have  been  especially  within  their  intention.  The  leading  rule 
which  we  have  given  has  been  constantly  restated  by  the  text-writers  and 
the  courts  as  having  full  application  to  patents.  They  make  use  of  such 
expressions  as  "  ut  res  majis  valeat  quam  pereat;  "  that  "  a  patent  should  be 
construed  in  a  liberal  spirit,  sustaining  the  just  claims  of  the  inventor;"  that 
the  titles  by  which  patents  are  held  "  should  not  be  overthrown  upon  doubts 
or  objections  capable  of  reasonable  and  just  solution  in  favor  of  their  valid- 
ity; "  that  "  in  construing  a  patent  the  court  will  remember  that  the  specifi- 
cation and  claims  are  often  unskillfully  drawn;  "  and  that  "  the  claim  shall 
be  construed,  if  possible,  to  sustain  the  patentee's  right  to  all  that  he  has 
invented."  It  is  true  the  general  rules  we  have  stated  include  the  subor- 
dinate principle,  which  applies  everywhere,  that  they  are  not  to  be  carried 
"  so  far  as  to  exclude  what  is  in  the  patent,  or  to  interpolate  anything  which 
it  does  not  contain."  It  is  impossible,  however,  to  carry  this  to  the  extent  of 
applying  to  patents  as  fully  as  it  is  applied  to  instruments  in  general,  the 
maxim,  "  Enumeratio  unius  exclusio  alterius."  With  the  aid  of  the  doctrine 
of  equivalents,  the  courts  are  constantly  engrafting  on  specifications  and 
claims  what  they  do  not  contain  in  the  same  sense  in  which  the  letter  of  ordi- 
nary instruments  is  required  to  contain  matter  on  which  the  parties  rely. 
To  extend,  in  disregard  of  this  fact,  the  rule  against  interpolations  to  any 
particular  case,  requires  either  that  the  patent  relate  to  such  mere  matters 
of  form  or  detail  that  interpretation  by  exclusion  becomes  just  and  reason- 
able, or  that  the  specifications  and  claims  be  so  phrased  as  in  fact  to  contain 
a  clearly  intended  exclusion,  or  the  equivalent  thereof.  —  Reece  v.  Globe, 
61  Fed.  958;  10  CCA.  194. 

These  claims  do  not  in  themselves  refer  to  the  previous  description  of  the 
parts  of  the  machine  mentioned  in  them,  but  they  must  be  taken  as  in  effect 
referring  to  the  whole  of  the  instrument  in  which  they  belong.  —  Bundy 
v.  Columbian,  64  Fed.  851 ;  12  C  C  A.  442. 

Westinghouse  v.  Air  Brake  Co.  2  Ban.  &  A.  55;  Fed.  Cas.  17,450;  Bruce  v. 
Marder,  10  Fed.  750. 

The  statute  requires  the  inventor  to  particularly  point  out  and  distinctly 
claim  the  improvement  or  combination  which  he  claims  as  his  discovery. 
R.  S.  sec.  4888.  When,  under  this  statute,  the  inventor  has  made  his  claim, 
he  has  thereby  disclaimed  and  dedicated  to  the  public  all  other  combina- 
tions and  improvements  apparent  from  his  specifications  and  claims  that  are 
not  mere  evasions  of  the  device,  combinations  or  improvements  he  claims  as 
his  own.  The  purpose  of  a  claim  in  a  patent  is  to  notify  the  public  of  the 
extent  of  the  monopoly  secured  to  the  inventor,  and,  while  it  is  notice  of  his 
exclusive  privileges,  it  is  no  less  an  estoppel  of  the  patentee  to  claim  under 
that  patent  any  combination  or  improvement  he  has  not  therein  pointed  out 
and  distinctly  claimed  as  his  discovery  or  invention.  The  presumption  is, 
and  it  is  generally  the  fact,  that  any  such  unclaimed  combination  or  improve- 
ment was  not  the  invention  or  discovery  of  the  patentee;  that  it  was  old 
and  well-known;  and  that  for  that  reason  he  did  not  intend  to  claim  it. 
But  whether  he  did  intend  to  claim  it  or  not  is  immaterial  in  an  action  for 
the  infringement  of  a  patent,  where  no  claim  for  mistake  or  inadvertence 
in  preparing  the  specifications  or  claims  can  be  heard.  The  patent 
itself   is   a   solemn   declaration    of    the    inventor  that  every  improvement,. 


216 


THE    FIXED    LAW   OF    PATENTS 


222 


device  and  combination  not  claimed  by  him  therein  is  not  his  inven- 
tion or  discovery,  but  is  the  property  of  the  public.  It  is  full  and  legal 
notice  to  every  one ;  notice  on  which  every  one  has  the  right  to  rely  that  he 
may  freely  use  such  improvements  and  combinations  without  claim  or 
molestation  from  the  patentee.  The  public  generally  does  use  them,  and  it 
would  be  rank  injustice  to  permit  a  patentee,  after  a  combination  or  device 
that  he  did  not  claim  has  gone  into  general  use,  and  years  after  his  patent 
was  granted,  to  read  that  combination  or  device  into  one  of  the  claims  of 
his  patent,  and  to  recover  for  its  infringement  of  every  one  who  has  used 
it  on  the  faith  of  his  solemn  declaration  that  he  did  not  claim  it.  —  Buffington's 
v.  Eustis,  65  Fed.  804;  13  C.  C.  A.  143. 

Stirrat  v.  Mfg.  Co.  61  Fed.  980;  Keystone  v.  Phoenix,  95  U.  S.  274;  Miller  v. 
Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Wollensak  v.  Reiher, 
115  U.  S.  96;   Parker  v.  Yale,  123  U.  S.  87. 

The  invention  secured  by  a  patent  is  that  which  is  secured  to  the  patentee 
by  the  claim.  The  claim  is  a  statutory  requirement  prescribed  for  the  pur- 
pose of  making  a  patentee  define  what  his  invention  is  so  distinctly  and 
exactly  as  to  appraise  other  inventors,  and  the  public,  what  is  withdrawn  from 
general  use.  The  claim,  however,  is  to  be  read  in  the  light  of  the  description 
contained  in  the  specification,  and  its  literal  terms  may  be  enlarged  or  nar- 
rowed accordingly,  but  not  to  an  extent  inconsistent  with  the  meaning. 
Identity  of  language  in  the  claims  of  two  patents  does  not  necessarily  import 
that  the  invention  patented  by  each  is  identical,  nor  does  a  difference  in 
phraseology  necessarily  import  that  they  are  for  different  inventions.  The 
test  of  identity  is  whether  both,  when  properly  construed  in  the  light  of  the 
description  define  essentially  the  same  thing.  When  the  claims  of  both 
cover  and  control  essentially  the  same  subject-matter,  both  are  for  the  same 
invention,  and  the  later  patent  is  void.  —  Thomson-Houston  v.  Elmira, 
71  Fed.  396;  18  C.  C.  A.  145. 

In  the  construction  of  a  patent,  it  is  not  the  personal  intent  or  under- 
standing of  the  patentee,  but  the  actual  facts  regarding  the  invention,  that 
was  material.  —  Thomson-Houston  v.  Western,  72  Fed.  530;   19  C.  C.  A.  1. 

It  is  the  well  known  rule  that  patents,  like  other  instruments,  are  to  be 
construed  by  what  appears  on  their  face  "  in  the  light  of  all  the  circum- 
stances and  the  apparent  purposes  of  the  parties  to  them."  —  Long  v.  Pope, 
75  Fed.  835;  21  C.  C.  A.  533. 

Reece  v.  Globe,  61  Fed.  958;  Wier  v.  Morden,  125  U.  S.  98. 

That  the  claim  is  a  statutory  requirement  and  must  be  strictly  construed, 
see  Boynton  v.  Morris,  87  Fed.  225;  30  C.  C.  A.  617. 
White  v.  Dunbar,  119  U.  S.  47. 

As  the  question  of  the  construction  of  a  patent  concerns  not  only  the 
parties  in  this  case,  but  also  the  public,  so  that,  as  is  well  settled,  we  have  a 
certain  duty  to  take  notice  of  matters  bearing  upon  questions  of  the  exist- 
ence and  extent  of  patentability,  we  would  not  be  justified  in  ignoring  what 
our  own  records  show  us  on  this  point.  —  Cushman  v.  Goddard,  95  Fed.  664; 
37  C.  C.  A.  221. 

Among  the  primary  rules  for  the  construction  of  a  contract  are  these: 
The  court  should  put  itself  in  the  place  of  the  parties  at  the  time  it  is  made, 
and  should  read  its  terms  in  the  light  of  the  facts  and  circumstances  which 
then  surrounded  them.  When  the  intention  of  the  parties  is  manifest,  it  should 
control,  regardless  of  inapt  expressions  and  technical  rules.      In  cases  of 


§  222  CLAIMS  217 

doubtful  validity  or  of  ambiguous  terms,  that  construction  should  be  adopted 
which  sustains  and  vitalizes  the  agreement,  rather  than  that  which  destroys 
or  paralyzes  it.  Prior  negotations  are  merged  in  the  contract,  and,  while 
they  may  be  considered  to  interpret  its  purpose,  they  must  not  be  permitted 
to  contradict  or  modify  its  express  meaning.  —  National  v.  Interchangeable, 
106  Fed.  693;  45  C.  C.  A.  544. 

If  the  original  conception  for  which  his  patents  were  granted  was  not  his; 
if  the  principle  of  the  alleged  invention,  with  all  its  undeveloped  possi- 
bilities, is  found  in  previous  patents  or  rested  in  public  knowledge,  and  he  has 
done  no  more  than  extend  the  original  thought  by  change  only  in  form,  pro- 
portion and  degree;  if  he  has  carried  forward  another's  conception  by  a  new 
and  more  extended  application  of  it;  and  if  the  essence  of  his  patents  is  in 
doing  substantially  the  same  thing  in  substantially  the  same  way,  only  pro- 
viding such  improvements  and  modifications  as  a  mechanic  conversant  with 
the  art  could  effect  by  skill  and  ingenuity  —  it  would  follow  that  he  would 
be  entitled  only  to  patents  upon  his  improvements,  and  would  not  be  entitled 
to  shut  out  others  from  the  enjoyment  of  those  improvements  which  the  same 
or  greater  skill  may  have  achieved.  But  if  the  entire  scheme  is  radically  dif- 
ferent from  the  prior  art,  and  if,  in  construction,  operation,  purpose  and  result, 
the  invention  set  forth  in  the  prior  patent  is  not  responsive  in  terms  or  substance 
to  his  construction,  and  the  same  or  nonequivalent  elements  are  not  used 
in  substantially  the  same  way  to  produce  the  same  result,  and  no  mechanical 
skill  working  upon  the  prior  patent  could  ever  produce  the  same  result  that 
he  accomplished,  then  it  would  follow  that  the  inventive  idea  was  different, 
and  any  modification  or  improvements  worked  out  upon  his  idea  must  be 
tributary  to  it.  —  Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436. 

The  rules  for  the  construction  of  contracts  apply  with  equal  force  to  the 
interpretation  of  patents.  The  great  desideratum,  here  as  there,  is  to  ascer- 
tain and  give  effect  to  the  intention  of  the  parties  to  the  contract  when  they 
made  it.  This  intention  must  be  ascertained  from  the  entire  agreement, 
and  not  from  isolated  parts  of  it,  because  it  was  not  expressed  by  a  part, 
but  by  the  whole  of  the  contract.  When  the  terms  of  a  patent  are  plain 
and  the  intention  of  the  parties  is  manifest,  the  latter  must  prevail,  and  there 
is  no  room  for  construction.  When  its  expressions  are  ambiguous  and  the 
validity  of  the  patent  or  any  claim  in  it  is  doubtful,  that  construction  which 
sustains  and  vitalizes  the  patent  or  claim,  rather  than  that  which  paralyzes 
or  destroys  them,  must  be  preferred. — Jewell  v.  Jackson,  140  Fed.  340; 
72  C.  C.  A.  304. 

The  question  of  the  validity  of  the  patent  is  to  be  determined  by  ascer- 
taining what  it  describes  and  claims  which  had  not  been  described  in  previous 
patents,  and  construing  the  claim  so  far  as  its  language  will  permit  so  as  to 
secure  to  the  patentee  that  which  was  really  new  and  patentable  in  view  of 
the  prior  art.  —  Ironclad  v.  Dairyman's,  143  Fed.  512;  74  C.  C.  A.  372. 

The  claim  should  be  as  broad  as  the  invention.  A  safe  and  conservative 
rule  for  the  construction  of  such  claims  (primary  improvements)  is  clearly 
stated  by  Judge  Shipman  in  Smead  v.  Fuller,  57  Fed.  626.  —  Wagner  v. 
Wycoff,  151  Fed.  585;  81  C.  C.  A.  129. 

Machine  Co.  v.  Murphy,  97  U.  S.  120;  Tilghman  v.  Proctor,  102  U.  S.  707; 
Eldred  v.  Kirkland,  130  Fed.  342;   Reece  v.  Globe,  61  Fed.  959. 

The  court  may  resort  to  strict  and,  it  may  even  be,  to  harsh  construction 
when  the  patentee  has  done  nothing  more  than  make  a  trivial  improvement 
upon  a  well-known  structure  which  produces  no  new  result;  but  it  should  be 


218 


THE    FIXED    LAW    OF    PATENTS 


§  223 


correspondingly  liberal  when  convinced  that  the  patentee's  improvement  is 
so  radical  as  to  put  the  old  methods  out  of  action.  The  courts  have  fre- 
quently held  that  one  who  takes  an  old  machine  and  by  a  few,  even  incon- 
sequential, changes  compels  it  to  perform  a  new  function  and  do  important 
work  which  no  one  ever  dreamed  it  capable  of  performing,  is  entitled  to  rank 
as  an  inventor.  —  O'Rourke  v.  McMullen,  160  Fed.  933;  88  C.  C.  A.  115. 

Hobbs  v.  Beach,  180  U.  S.  383;  Magowan  v.  N.  Y.  141  U.  S.  332;  Barbed  Wire 
Case,  143  U.  S.  275;  Potts  v.  Creager,  155  U.  S.  597;  Loom  Co.  v.  Higgins, 
105  U.  S.  580. 


§  223.     Construction  —  Specification. 

The  claim  is  not  to  be  taken  alone,  but  in  connection  with  the  specification 
and  drawings;  the  whole  instrument  is  to  be  construed  together.  But  we 
are  to  look  at  the  others  only  for  the  purpose  of  enabling  us  correctly  to 
interpret  the  claim.  —  Brooks  v.  Fisk,  15  How.  212;  14  L.  Ed.  665. 

The  claim  should  be  construed  in  connection  with  the  specification.  — 
Turrill  v.  Railroad,  68  U.  S.  491 ;  17  L.  Ed.  668. 

Such  a  reference  is  proper  if  it  does  not  introduce  confusion  and  uncer- 
tainty, and  is  often  necessary  for  restraining  the  too  great  generality,  or 
enlarging  the  literal  narrowness  of  the  claim.  —  Brown  v.  Guild,  90  U.  S. 
181;  23  L.  Ed.  161. 

The  claim  may  be  construed  in  connection  with  the  specification,  and  if  the 
claim  contains  words  referring  back  to  the  specification  it  cannot  properly  be 
construed  in  any  other  way.  —  Fuller  v.  Yentzer,  94  U.  S.  288 ;  24  L.  Ed.  103. 

Seymour  v.  Osborne,  11  Wall.  516. 

The  scope  of  letters  patent  must  be  limited  to  the  invention  covered  by  the 
claim,  and  while  the  claim  may  be  illustrated  it  can  not  be  enlarged  by 
language  used  in  other  parts  of  the  specification.  —  Yale  v.  Greenleaf,  117 
U.  S.  554;  29  L.  Ed.  952;  6  S.  Ct.  846. 

Keystone  v.  Phoenix,  95  U.  S.  274;   R.  R.  v.  Mellon,  104  U.  S.  112. 

Some  persons  seem  to  suppose  that  a  claim  in  a  patent  is  like  a  nose  of 
wax  which  may  be  turned  and  twisted  in  any  direction,  by  merely  referring 
to  the  specification  so  as  to  make  it  include  something  more  than,  or  some- 
thing different  from,  what  its  words  express.  The  context  may  undoubtedly 
be  resorted  to,  and  often  is  resorted  to,  for  the  purpose  of  better  understanding 
the  meaning  of  the  claim ;  but  not  for  the  purpose  of  changing  it  and  making 
it  different  from  what  it  is.  The  claim  is  a  statutory  requirement,  prescribed 
for  the  very  purpose  of  making  the  patentee  define  precisely  what  his  inven- 
tion is;  and  it  is  unjust  to  the  public  as  well  as  an  evasion  of  the  law,  to  con- 
strue it  in  a  manner  different  from  the  plain  import  of  its  terms.  —  White  v. 
Dunbar,  119  U.  S.  47;  30  L.  Ed.  303;  7  S.  Ct.  72. 

Keystone  v.  Phcenix,  95  U.  S.  274;    James  v.  Campbell,  104  U.  S.  356. 

The  plain  and  explicit  language  of  the  specification  requires  a  construction 
of  the  claim  which  will  enable  the  defendant  to  escape  liability.  There  is 
nothing  in  the  context  to  indicate  that  the  patentee  contemplated  any 
alternative  arrangement.  —  Snow  v.  Railwav,  121  U.  S.  617;  30  L.  Ed. 
1004;  7S.  Ct.  1343. 

The  invention,  of  course,  must  be  described,  and  the  mode  of  putting  it  to 
practical  use,  but  the  claims  measure  the  invention.    They  may  be  explained 


§  223  CLAIMS  219 

and  illustrated  by  the  description.    They  cannot  be  enlarged  by  it.  —  Con- 
tinental v.  Eastern,  210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748. 
Yale  v.  Greenleaf,  117  U.  S.  554;    Snow  v.  Lake  Shore,  121  U.  S.  617. 

It  is  true  that  the  claims  must  be  construed  according  to  the  language 
of  each,  but  specifications  and  designs  may  be  referred  to  to  limit  or  explain 
if  not  to  enlarge.  —  Jones  v.  Munger,  49  Fed.  61;    1  C.  C.  A.  158. 

Evans  v.  Kelly,  13  Fed.  903;  Turrill  v.  Railroad,  1  Wall.  491;  Tompkins  v. 
Gage,  5  Blatchf.  268;    Vance  v.  Campbell,  1  Black,  427. 

It  is  always  the  duty  of  the  courts  to  construe  the  patents  by  reference 
to  the  language  of  the  claims  and  an  examination  of  the  specifications  and 
drawings  accompanying  the  same.  —  Norton  v.  Jensen,  49  Fed.  859;  1  C.  G. 
A.  452. 

Reference  may  be  made  to  the  specifications  to  supply  in  a  claim  what 
it  is  plain  to  every  one  skilled  in  the  art  is  a  necessary  incident.  —  Reece  v. 
Globe,  61  Fed.  958;  10  C.  C.  A.  194. 

Seymour  v.  Osborne,  11  Wall.  516;    Day  v.  Railway,  132  U.  S.  98. 

The  claims  of  a  patent  limit  the  exclusive  privileges  of  the  patentee,  and 
his  specification  may  be  referred  to  to  explain  and  restrict,  but  never  to 
expand  them.  General  language  in  a  claim  which  points  to  an  element  or 
device  more  fully  described  in  the  specification  is  limited  to  such  an  element 
or  device  as  is  there  described.  —  Adams  v.  Lindell,  77  Fed.  432 ;  23  C.  C.  A. 
223. 

Mitchell  v.  Tilghman,  19  Wall.  287;   Stirrat  v.  Mfg.  Co.  61  Fed.  980. 

The  claims  and  the  specifications  are  to  be  read  together,  not  for  the  pur- 
pose of  enlarging  the  invention  stated  in  the  claims,  but  "  for  the  purpose  of 
better  understanding  the  meaning  of  the  claims,"  the  limit  and  extent  of  the 
invention,  and  the  object  of  the  inventor,  and  the  construction,  method, 
and  process,  as  understood  by  him.  —  American  v.  Howland,  80  Fed.  395; 
25  C.  C.  A.  500. 

Howe  v.  National,  134  U.  S.  388;  Vance  v.  Campbell,  Fed.  Cas.  16,837;  Wilson 
v.  Coon,  6  Fed.  611;  Gottfried  v.  Brewing  Co.  Fed.  Cas.  5633;  Brass  Co.  v. 
Miller,  Fed.  Cas.  17,254;  Seymour  v.  Osborne,  11  Wall.  516;  Rob.  Pat.  sec. 
750;  Curt.  Pat.  sec.  225,  227. 

If,  therefore,  we  apply  the  benignant  rule  of  construction,  —  as  we  are 
required  to  do,  —  that  the  claims  should  be  construed  by  the  specifications, 
and  that  if,  looking  at  both,  the  court  is  able  to  understand  the  meaning  of  the 
patentee  in  the  language  of  his  claims,  and,  as  so  understood,  the  combina- 
tion is  a  practicable  one,  it  will  give  effect  to  them  according  to  the  apparent 
purpose.  Ryan  v.  Goodwin,  Fed.  Cas.  12,186;  Blanchard  v.  Sprague,  Fed. 
Cas.  1518;  Turrill  v.  Railroad,  1  Wall.  491;  Klein  v.  Russell,  19  Wall.  433; 
Haworth  v.  Hardcastle,  Webst.  Pat.  Cas.  480;  Blandy  v.  Griffith,  Fed.  Cas. 
1529;  Roller-Mill  Co.  v.  Coombs,  39  Fed.  25. 

These  are  a  few  of  the  great  number  of  cases  in  which  the  foregoing  rule  has 
been  approved  and  applied.  Of  course,  if  the  language  of  a  claim,  in  the 
light  of  the  specifications,  does  not  show  that  the  patentee  has  described  a 
practicable  combination,  there  is  an  end  of  it,  and  the  claim  is  nugatory.  — 
Soehner  v.  Favorite  Co.  84  Fed.  182;  28  C.  C.  A.  317. 

If  interpretation  of  the  claim  were  requisite,  the  specification  might,  of 
course,  be  resorted  to  for  the  purpose  of  arriving  at  a  better  understanding 
of  its  meaning,  but  this  may  not  be  done  "  for  the  purpose  of  changing  it 


220  THE   FIXED   LAW   OF   PATENTS  §223 

and  making  it  different  from  what  it  is."  —  Boynton  v.  Morris,  87  Fed.  225; 
30  C.  C.  A.  617. 

White  v.  Dunbar,  119  U.  S.  47. 

The  patent  when  construed  by  a  reference  to  the  whole  specification, 
including  the  description  and  the  claims,  fully  accomplishes  these  several 
ends.  If  a  claim,  uncertain  when  considered  apart  from  the  description, 
can  by  reference  to  the  latter  be  rendered  so  clear  as  to  satisfy  the  require- 
ment of  the  statute,  that  the  inventor  "  shall  particularly  point  out  and  dis- 
tinctly claim  "  his  invention,  by  parity  of  reasoning  a  doubtful  point  in  the 
description,  when  considered  apart  from  the  claims,  can  by  reference  to  the 
latter,  when  in  themselves  unambiguous,  be  rendered  so  clear  as  to  satisfy 
the  other  requirement  of  the  statute  that  the  inventor  shall  fully  and  clearly 
set  forth  his  invention  in  the  description.  That  under  such  circumstances  a 
description  uncertain  or  indefinite  when  considered  alone,  but  not  incon- 
sistent with  the  claims,  may  be  rendered  certain  and  sufficient  to  meet  the 
requirements  of  the  statute  by  reading  the  whole  specification  together  has 
frequently  been  recognized  and  is,  we  think,  a  sound  rule  of  law.  —  Electric 
v.  Carborundum,  102  Fed.  618;  42  C.  C.  A,  537. 

Battin  v.  Taggert,  17  How.  74;  Corn-Planter  Pat,  23  WaU.  181;  Carver  v. 
Mfg.  Co.  2  Story,  430;  Howes  v.  Nutes,  4  Cliff.  173;  Ryan  v.  Goodwin,  3  Sumn. 
514;  Myers  v.  Frame,  8  Blatchf.  446;  Parker  v.  Stiles,  5  McLean,  44;  Lowell 
v.  Lewis,  1  Mason,  182. 

It  is  true  that  neither  they  nor  the  specification  can  be  read  to  expand  the 
claim;  but  the  specification  and  the  drawings  must  be  read  together,  and 
given  their  obvious  force  and  meaning,  for  the  purpose  of  determining  what 
devices  are  pointed  out  and  described  therein. — Brammer  v.  Schroeder,  106 
Fed.  918;  46  CCA.  41. 

We  may  go  to  the  description  to  amplify  a  claim,  but  we  can  not,  out  of 
the  mere  descriptive  portion  of  the  patent,  wholly  create  a  claim.  —  General 
v.  Mailers,  110  Fed.  529;  49  C  C.  A.  138. 

While  it  is  the  purpose  of  the  statute  to  require  the  inventor  to  set  forjth 
the  nature  and  extent  of  his  patent,  and  it  is  not  the  province  of  the  courts 
to  add  to  or  take  from  a  claim  that  which  is  not  embraced  within  its  language, 
nevertheless  we  may  look  to  the  specifications  for  the  purpose  of  construing 
the  language  used  in  the  claim.  If  this  language  includes  an  element  only 
described  in  general  terms,  we  may  look  to  the  specifications  to  ascertain  its 
meaning.  —  Stillwell-Bierce  v.  Eufaula,  117  Fed.  410;  54  C  C  A.  584. 

Soehner  v.  Range  Co.  84  Fed.  182;  Lake  Shore  v.  National,  110  U.  S.  229; 
Seymour  v.  Osborne,  11  Wall.  516;  Corn  Planter  Pat.  23  Wall.  181;  Fuller  v. 
Yentzer,  94  U.  S.  288;  Hailes  v.  Van  Wormer,  20  Wall.  353;  Westinghouse  v. 
Brake  Co.  170  U.  S.  537. 

While  this  court  may  resort  to  the  language  of  the  specification  for  the 
purpose  of  interpreting  the  claim,  it  cannot  read  into  such  claim  elements 
not  specifically  covered  thereby,  especially  where  to  do  so  would  be  to  con- 
tradict the  clear  and  definite  statement  in  the  specification.  When  the  terms 
of  the  claim  are  clear  and  distinct,  the  patentee  cannot  claim  anything 
beyond  for  the  purpose  of  establishing  infringement.  —  Westinghouse  v. 
N.  Y.  119  Fed.  874 ;  56  C.  C  A.  404. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Merrill  v.  Yeomans,  94  U.  S.  568;  McCarty 
v.  Railroad,  160  U.  S.  110;    White  v.  Dunbar,  119  U.  S.  47. 

Within  certain  limits  the  courts  are  inclined  to  adopt  the  mode  of  con- 
struction, of  construing  the  claims  by  reference  to  the  specification,  when  it 


§  223  CLAIMS  221 

is  necessary,  as  in  the  present  case,  to  save  the  patent  from  the  objection  that 
the  claims  are  too  broad.  —  Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247. 
Rubber  v.  Goodyear,  9  Wall.  788;  McClain  v.  Ortmayer,  141  U.  S.  419-  Coupe 
v.  Royer,  155  U.  S.  565;   Soehner  v.  Stove,  84  Fed.  182. 

The  claims  must  stand  or  fall  as  made  (Keystone  v.  Phcenix,  95  U.  S.  274)  ; 
but  it  is  equally  well  settled  that  the  claims  for  a  patent  are  to  be  construed 
by  reference  to  the  specifications  (of  which  the  drawings  form  a  part)  and 
that  such  reference  may  be  had,  not  for  the  purpose  of  expanding  the  claim, 
but  for  the  purpose  of  defining  it  and  limiting  it  to  the  description  of  the 
invention.  —  Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Howe  v.  National,  134  U.  S.  388;  Coupe 
v.  Royer,  155  U.  S.  565;   Tilghman  v.  Proctor,  102  U.  S.  729. 

To  sustain  the  validity  of  claims  1  and  2,  it  is  necessary  "  to  refer  back 
to  the  specification;  not,  it  is  true,  for  a  slavish  adoption  of  the  identical 
instrumentalities  therein  described,  but  for  the  understanding  of  the  essential 
and  substantial  features  of  the  means  therein  illustrated."  —  Seiler  v.  Fuller, 
121  Fed.  85;  57  C.  C.  A.  339. 

Westinghouse  v.  Boyden,  170  U.  S.  537. 

The  claims  of  a  patent  must  be  read  in  the  light  of  the  specification.  The 
specification  may  always  be  referred  to  to  restrict,  though  not  to  expand, 
the  claims.  —  Anderson  v.  Collins,  122  Fed.  451;  58  C.  C.  A.  669. 

The  claims  cannot  be  broadened  or  made  to  include  things  not  therein 
included,  but  to  know  what  is  included  we  may  resort  to  the  specification 
for  the  purpose  of  interpreting  the  claim.  —  Canda  v.  Michigan,  124  Fed.  486; 
61  C.  C.  A.  194. 

McCarty  v.  Lehigh,  160  U.  S.  110;   White  v.  Dunbar,  119  U.  S.  47. 

It  is  well  settled  that  for  such  purpose,  and  especially  when  the  claim  refers 
to  the  specification  for  further  description,  it  is  proper  to  resort  to  the 
specification,  if  explanation  is  necessary.  —  Canda  v.  Michigan,  124  Fed.  486; 
61  C.  C.  A.  194. 

Soehner  v.  Favorite,  84  Fed.  182;  Stillwell-Bierce  v.  Eufaula,  117  Fed.  410; 
Klein  v.  Russell,  19  Wall.  433;  Hailes  v.  Van  Wormer,  20  Wall.  353;  Lamb  v. 
Lamb,  120  Fed.  267. 

Features  of  construction  which  the  specification  of  a  patent  recommends 
or  describes  as  preferable  do  not  thereby  become  essential  parts  of  the  patent, 
or  limitations  of  the  claims.  —  Smeeth  v.  Perkins,  125  Fed.  285;  60  C.  C.  A. 
199. 

Sewall  v.  Jones,  91  U.  S.  171;  Krajewski  v.  Pharr,  105  Fed.  514;  Winans  v. 
Denmead,  15  How.  330;   Klein  v.  Russell,  19  Wall.  433. 

Reference  may  be  made  to  the  specification  to  explain  but  not  to  extend 
or  limit  the  claim.  The  words  "  to  operate  substantially  as  described  " 
mean  "  substantially  as  described  in  regard  to  the  combination  which  is 
the  subject  of  the  claim."  —  General  v.  International,  126  Fed.  755;  61 
C.  C.  A.  329. 

Lake  Shore  v.  Car  Brake,  110  U.  S.  229. 

If  is  evident  that  the  express  terms  of  the  claim  do  not  limit  the  patentee 
to  a  particular  device,  and  therefore  the  construction  adopted  by  the  court 
below  practically  rewrote  the  claim,  and  in  effect  expunged  it  from  the 
patent ;  for  to  limit  it  to  one  form  of  structure  described  in  the  specification  and 


222  THE    FIXED    LAW    OF    PATENTS  §  224 

shown  in  the  drawings  necessarily  introduced  into  the  claim  such  modifications 
of  the  language  used  by  the  inventor  as  turned  it  into  a  substantial,  and  there- 
fore a  superfluous,  equivalent  of  the  claims  preceding.  —  Ryder  v.  Schlichter, 
126  Fed.  487;  61  C.  C.  A.  469. 

The  claims  of  a  patent  are  to  be  fairly  construed  so  as  to  cover,  if  possible, 
the  invention,  and  thus  save  it,  especially  if  it  be  a  meritorious  one.  In 
approaching  a  patent,  we  are  to  look  primarily  at  the  thing  which  the  in- 
ventor conceived  and  described  in  his  patent,  and  the  claims  are  to  be  inter- 
preted with  this  particular  thing  ever  before  our  eyes.  In  confining  our 
attention  too  closely  to  the  claims,  we  are  apt  to  look  at  them  as  separate 
and  independent  entities,  and  to  lose  sight  of  the  important  consideration 
that  the  real  invention  is  to  be  found  in  the  specification  and  drawings,  and 
that  the  language  of  the  claims  is  to  be  construed  in  the  light  of  what  is 
there  shown  and  described.  —  Mossberg  v.  Nutter,  135  Fed.  95;  68  C.  C.  A. 
257. 

If  any  doubt  existed  as  to  the  meaning  of  the  claim,  or  if  it  were  sus- 
ceptible to  two  interpretations,  it  would  be  both  right  and  proper  that  refer- 
ence should  be  made  to  the  drawings  and  specifications,  not  for  the  purpose 
of  changing  or  altering  the  claim,  but  to  ascertain  the  true  and  proper  inter- 
pretation. —  Robins  v.  American,  145  Fed.  923;  76  C.  C.  A.  461. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Klein  v.  Russell,  19  Wall.  433;  McEwan 
v.  McEwan,  91  Fed.  787;  Stillwell-Bierce  v.  Eufaula,  117  Fed.  410;  Electric  v. 
Carborundum,  102  Fed.  618;    Hogg  v.  Emerson,  11  How.  587. 

We  are  satisfied,  not  only  that  the  scope  of  the  patentee's  invention  was 
narrow  in  fact,  but  that  such  limitation  was  advisedly  recognized  in  his 
specifications,  an'd  is  conclusive  against  the  broad  interpretation  now  sought. 
—  Lowden  v.  Janesville,  148  Fed.  686;  78  C.  C.  A.  548. 


§  224.     Construction  —  State  of  Art. 

The  case  is  one  where,  in  view  of  the  state  of  the  art,  the  invention  must  be 
restricted  to  the  form  shown  and  described  by  the  patentee.  He  was  not  a 
pioneer.  He  merely  devised  a  new  form  to  accomplish  these  results.  —  Duff 
v.  Sterling,  107  U.  S.  636;  27  L.  Ed.  517;  2  S.  Ct.  487. 

R.  R.  v.  Sayles,  97  U.  S.  554. 

Where  the  state  of  the  art  shows  prior  devices  limiting  the  scope  of  the 
invention,  the  claims  must  be  strictly  construed.  —  Newton  v.  Furst,  119 
U.  S.  373;  30  $  Ed.  442;  7  S.  Ct.  369. 

Letters  patent,  though  not  set  up  in  the  answer,  may  be  received  in  evi- 
dence to  show  the  state  of  the  art  and  to  aid  in  the  construction  of  the  plain- 
tiff's claim,  though  not  to  invalidate  the  claim  on  the  ground  of  want  of 
novelty  when  properly  construed.  —  Grier  v.  Wilt,  120  U.  S.  412;  30  L.  Ed. 
712;  7S.  Ct.  718. 

Vance  v.  Campbell,  66  U.  S.  427;  Railroad  v.  Dubois,  79  U.  S.  47;  Brown  v. 
Piper,  91  U.  S.  37;   Eachus  v.  Broomall,  115  U.  S.  429. 

The  extent  of  novelty  which  can  be  read  into  a  claim  must  be  limited  by 
the  state  of  the  art.  —  Consolidated  v.  Walker,  138  U.  S.  124;  34  L.  Ed. 
920;  11  S.  Ct.  292. 

Phoenix  v.  Spiegel,  133  U.  S.  360. 


§  224  CLAIMS  223 

The  inventor  is  legally  presumed  to  have  all  prior  patents  before  him  when 
he  makes  his  invention.  —  Duer  v.  Corbin,  149  U.  S.  216;  37  L.  Ed.  707; 
13  S.  Ct.  850. 

Devices,  though  not  claimed  to  fully  anticipate  the  patent  in  suit,  are 
important  in  their  bearing  upon  the  construction  of  this  patent  and  upon  the 
alleged  infringement  of  the  defendants.  —  Deering  v.  Winona,  155  U.  S.  286; 
39  L.  Ed.  153;  15  S.  Ct.  118. 

The  line  that  the  patentee  drew  in  his  patent  between  the  old  and  new 
mechanism  marks  the  extent  of  that  portion  of  his  invention  now  under 
consideration.  —  Lalance  v.  Haberman,  59  Fed.  143;  8  C.  C.  A.  53. 

The  claims  must  be  construed  in  view  of  the  state  of  the  art,  and  unless  it 
be  a  pioneer  invention  they  are  not  entitled  to  the  rule  applicable  to  pioneer 
inventions.  —  Lamson  v.  Godehard,  59  Fed.  776 ;  8  C.  C.  A.  265. 

Machine  Co.  v.  Lancaster,  129  U.  S.  263;  McCormick  v.  Talcott,  20  How.  402; 
Railway  v.  Sayles,  97  U.  S.  554. 

The  claims  and  specifications  of  every  patent  must  be  read  and  construed 
in  the  light  of  a  full  knowledge  of  the  state  of  the  art  when  the  patent  was 
issued.  A  patent  to  the  original  inventor  of  a  machine  which  first  performs 
a  useful  function  protects  him  against  all  machines  that  perform  the  same 
function  by  equivalent  mechanical  devices,  but  a  patent  to  one  who  has 
simply  made  a  slight  improvement  on  a  device  that  performed  the  same 
function  before  as  after  the  improvement,  is  protected  only  against  those 
who  use  the  very  improvement  he  describes  and  claims,  or  mere  colorable 
evasions  of  it.  —  Stirratt  v.  Excelsior,  61  Fed.  980;   10  C.  C.  A.  216. 

McCormick  v.  Talcott,  20  How.  402. 

The  claims  and  specifications  of  every  patent  must  be  read  and  construed 
in  the  light  of  a  knowledge  of  the  state  of  the  art  when  it  was  issued.  —  Mur- 
phy v.  Excelsior,  76  Fed.  965;  22  C.  C.  A.  658. 

A  claim  made  necessarily  complex  and  specific  by  reason  of  the  prior  art 
must  be  specifically  construed.  —  Volkmann  v.  Dohnhoff ,  77  Fed.  978 ; 
23  C.  C.  A.  599. 

If  the  specifications  and  claims  of  the  patent  were  to  be  given  effect  without 
regard  to  the  history  of  the  art  or  the  proceedings  in  the  patent  office,  it 
might  be  conceded  that  the  defendant's  device  would  come  within  the  scope 
of  complainant's  monopoly.  We  must,  however,  use  both  aids  in  construing 
the  patent.  —  Thomas  v.  Rocker,  77  Fed.  420;  23  C.  C.  A.  £11. 

If  the  patented  pull-off  and  take-up  are  merely  improvements  upon  old 
devices  for  doing  the  same  work,  or  if  the  patentee  has  imposed  a  limitation 
on  his  invention  by  express  words  in  the  specification  and  claims,  it  is  mani- 
fest that  the  court  would  not  be  warranted  in  giving  that  breadth  of  con- 
struction to  the  patent  which  would  be  given  in  a  case  where  the  inventor 
was  the  first  to  devise  a  pull-off  and  take-up  mechanism,  or  had  not  expressly 
restricted  his  invention  by  the  terms  of  the  specification  and  claims.  — ■ 
Goodyear  v.  Spaulding,  110  Fed.  393;  49  C.  C.  A.  88. 

We  must  charge  the  inventor  with  knowledge  of  all  that  preceded  him  in 
the  art,  for  "  it  is  a  presumption  of  law  that  all  mechanics  interested  in  up- 
holding or  defeating  a  patent  were  fully  acquainted  with  the  state  of  the  art 
when  they  took  out  their  patent,  or  when  they  built  their  machine.     Each 


224  THE    FIXED    LAW    OF    PATENTS  §§  225-226 

party  may  then  be  assumed  to  have  borrowed  from  the  other  whatever  was 
actually  first  invented  and  used  by  the  other."  —  Daylight  v.  American,  142 
Fed.  454;  73  C.  C.  A.  570. 

Crompton  v.  Knowles,  7  Fed.  199;  Mast  v.  Stover,  177  U.  S.  493. 

§  225.     Construction  —  Unclaimed  Elements. 

If  the  patentee  by  his  specification,  including  the  summary  claim  at  its 
close,  points  out  and  distinguishes  what  he  claims  as  his  own  invention,  it 
is  all  that  is  required;  the  rest  he  impliedly,  if  he  does  not  expressly,  disclaims 
as  old.  —  Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

In  testing  the  validity  of  this  patent  for  the  "  sheets  "  (blank  forms) 
the  methods  and  forms  of  contract  described  and  not  claimed  in  it  are  to  be 
considered  as  outstanding.  —  U.  S.  Credit  v.  American,  59  Fed.  139;  8 
C.  C.  A.  49. 

Underwood  v.  Gerber,  149  U.  S.  224. 

Of  course  the  discovery  is  unimportant  if  the  patent  does  not  secure  it. 
The  claim  for  a  method  of  glass  manufacture,  as  we  have  seen,  was  disal- 
lowed. If  the  advantages  of  the  discovery  are  not,  therefore,  embodied  in  a 
new  function,  the  discovery  is  not  secured.  —  Benjamin  v.  Chambers,  59 
Fed.  151;  8  C.  C.  A.  61. 

An  unclaimed  peculiarity  of  construction  is  rarely  read  into  a  claim,  the 
life  of  which  consists  in  minor  improvements  upon  an  old  article,  and  in  which 
the  patentee  has  undertaken  to  point  out  minutely  the  distinctive  features 
which  differentiate  his  combination  from  that  of  pre-existing  devices.  — 
Eagle  v.  Corbin,  64  Fed.  789;  12  C.  C.  A.  418. 

As  it  was  the  combination  which  was  claimed,  the  tension  device  was  to  be 
deemed  incorporated  into  the  claims,  notwithstanding  it  was  not  in  terms 
included.  —  Thomson-Houston  v.  Black  River,  135  Fed.  759;  68  C.  C.  A. 
461. 

Hartshorn  v.  Saginaw,  119  U.  S.  678;   Consolidated  v.  Walker,  138  U.  S.  124. 

Where  the  patentee  in  his  specifications  has  limited  himself  to  do  what  he 
states  to  be  his  primary  invention,  and  to  "  the  several  combinations  herein- 
after described  and  claimed,"  and  where  the  combination  upon  which  the 
contention  of  infringement  is  based  is  neither  described,  claimed  nor  illus- 
trated, it  should  not  be  read  into  the  patent.  —  Edison  v.  Crouse,  152  Fed. 
437;  81  C.  C.  A.  579. 

§  226.     Construction  —  Undue  Limitation  by  Patentee. 

When  a  claim  is  explicit,  the  courts' cannot  alter  or  enlarge  it.  If  the 
patentees  have  not  claimed  the  whole  of  their  invention,  and  the  omission 
has  been  the  result  of  inadvertence,  they  should  have  sought  to  correct  the 
error  by  a  surrender  of  their  patent  and  an  application  for  a  reissue.  They 
cannot  expect  the  courts  to  wade  through  the  history  of  the  art  and  spell  out 
what  they  might  have  claimed,  but  have  not  claimed.  —  Keystone  v.  Phoenix, 
95  U.  S.  274;  24  L.  Ed.  344. 

Merrill  v.  Yeomans,  94  U.  S.  568. 

The  principle  of  construction  which  we  think  applicable  to  the  plaintiff's 
patent  is  that  such  construction  must  be  in  conformity  with  the  self  imposed 
limitations  which  are  contained  in  the  claims.    Such  claims  are  the  measure 


§  227  CLAIMS  225 

of  their  right  to  relief.  —  Coupe  v.  Royer,  155  U.  S.  565;  39  L.  Ed.  263;   15 
S.  Ct.  199. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Burns  v.  Meyer,  100  U.  S.  672;  McClain 
v.  Ortmayer,  141  U.  S.  425. 

That  where  a  claim  includes  a  specific  element  in  a  specifically  limited 
form,  where  such  limitation  is  not  required  by  the  general  terms  of  the  patent, 
or  by  the  state  of  the  prior  art,  the  court  may  construe  the  claim,  neverthe- 
less, with  a  scope  commensurate  with  the  invention,  see  Metallic  v.  Brown, 
104  Fed.  345 ;  43  C.  C.  A.  568. 

McCormick  v.  Aultman,  69  Fed.  371;  Reece  v.  Globe,  61  Fed.  958;  Electric 
v.  LeRue,  139  U.  S.  601;   Devlin  v.  Paynter,  64  Fed.  398. 

That  where  the  inventor  has  industriously  set  forth  as  essential  to  his 
invention  a  certain  construction  and  in  his  claims  limits  it  to  "  substantially 
as  described,"  such  element  or  construction  must  be  imported  into  the 
claim  whether  specifically  stated  or  not,  see  Brill  v.  Peckham,  108  Fed.  267; 
47  C.  C.  A.  315. 

It  is  an  elementary  rule  that  a  patentee  may  claim  the  whole  or  a  part  of 
what  he  has  invented.  He  is  entitled  to  limit  his  claims  to  any  extent  that 
may  seem  desirable,  but,  having  done  so,  his  right  to  protection  is  so  limited, 
since  the  claim  actually  made  by  the  patentee  is  the  measure  of  his  right  to 
relief.  —  Lanyon  v.  Brown,  129  Fed.  912;  64  C.  C.  A.  344. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Keystone  v.  Phoenix,  95  U.  S.  274;  White 
v.  Dunbar,  119  U.  S.  47. 

The  court  is  not  permitted  to  reconstruct  the  claims  of  a  patent,  and  the 
patentee  is  bound  bv  the  claims  as  he  has  written  them.  —  American  v. 
Wagner,  151  Fed.  576;  81  C.  C.  A.  120. 

In  view  of  the  failure  of  the  patentee  specifically  to  point  out,  illustrate, 
or  broadly  claim  such  location,  we  cannot  so  read  it  into  the  patent  so  as  to 
embrace  defendant's  construction.  In  fact,  it  may  be  said  that  the  de- 
fendant's construction  is  founded  on  a  discovery  not  disclosed  in  the  patent 
in  suit,  namely,  that  the  change  which  the  patentee  supposed  could  only  be 
obtained  by  a  location  of  the  main  or  working  circuit,  might  be  obtained  by  a 
location  in  the  generator  circuit.  In  these  circumstances  the  rule  must  be 
applied  that,  while  a  patentee  is  entitled  to  all  the  beneficial  uses  of  his 
invention  when  the  property  or  function  is  inherent  in  the  invention  or  is 
described  or  claimed  by  him,  yet  that,  where  such  change  or  function  is 
neither  described  nor  claimed,  and  especially  where  other  changes  are  de- 
scribed and  insisted  on  as  essential  and  specifically  claimed,  it  is  significant 
proof  that  the  change  which  had  not  been  disclosed  by  him  to  the  public 
is  not  his  invention.  —  Electric  v.  Gould,  158  Fed.  610;  85  C.  C.  A.  432. 

Fastener  Co.  v.  Kraetzer,  150  U.  S.  Ill;  Goodyear  v.  Rubber,  116  Fed.  375; 
Long  v.  Pope,  75  Fed.  835;  Wells  v.  Curtis,  66  Fed.  318;  Bates  v.  Force,  149 
Fed.  220. 

If  a  patentee  by  his  specification  and  claims  industriously  makes  an 
unnecessary  device  an  essential  mechanical  element  of  the  combination  he 
claims,  he  is  thereby  estopped  from  maintaining  that  a  combination  which 
omits  it  infringes.  —  Brammer  v.  Witte,  159  Fed.  526;   86  C.  C.  A.  207. 

Cimiotti  v.  American,  198  U.  S.  399. 

§  227.     Construction  —  Unduly  Broad. 

Having  thus  enlarged  his  claims,  the  court  should  not  be  astute  to  restrict 
them  by  reading  in  the  real  invention  which  he  has  failed  to  include  within 
their  terms.  —  Excelsior  v.  Morse-Keefer,  101  Fed.  448;  41  C.  C.  A.  448. 


226  THE    FIXED    LAW    OF    PATENTS  §§  228-229 

Courts  lean  towards  reading  into  the  claims  of  a  patent  such  limitations 
as  will  save  the  real  invention  as  disclosed  by  the  specification  and  the  prior 
state  of  the  art.  But  when  the  claims  are  drawn  in  broad  and  nebulous  terms 
with  the  apparent  purpose  of  enabling  the  patentee  to  monopolize  an  im- 
portant industry,  the  courts  should  be  slow  in  attempting  to  sustain  their 
validity  by  narrowing  them  beyond  the  boundaries  which  are  clearly  war- 
ranted in  the  specification.  —  National  v.  New  England,  151  Fed.  19;  80 
C.  C.  A.  485. 

§  228.     Construction  —  Valeat  quam  Pereat  Rule. 

Patents  for  inventions  are  not  to  be  treated  as  mere  monopolies,  and, 
therefore,  odious  in  the  eyes  of  the  law;  but  they  are  to  receive  a  liberal 
construction,  and  under  the  fair  application  of  the  rule,  ut  res  magis  valeat 
quam  pereat,  are,  if  practicable  to  be  so  interpreted  as  to  uphold  and  not 
destroy  the  right  of  the  inventor.  —  Turrill  v.  Railroad,  68  U.  S.  491;  17 
L.  Ed.  668. 

Ryan  v.  Goodwin,  3  Sumn.  520. 

In  case  of  doubt  when  a  claim  is  susceptible  of  two  constructions  the  one 
will  be  adopted  which  will  preserve  to  the  patentee  his  actual  invention; 
but  if  the  language  of  the  specification  and  claims  show  clearly  what  he 
desired  to  secure  as  a  monopoly  nothing  can  be  held  to  be  an  infringement 
which  does  not  fall  within  the  terms  the  patentee  has  himself  chosen  to 
express  his  invention.  —  McClain  v.  Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800; 
12  S.  Ct.  76. 

Vance  v.  Campbell,  66  U.  S.  427. 

That  interpretation  which  sustains  and  vitalizes  the  grant  should  be  pre- 
ferred to  that  which  strikes  down  and  paralyzes  it.  —  National  v.  Inter- 
changeable, 106  Fed.  693;  45  C.  C.  A.  544. 

Reece  v.  Globe,  61  Fed.  958;  Consolidated  v.  Columbian,  79  Fed.  795;  Ameri- 
can v.  Newton,  82  Fed.  732;    McSherry  v.  Dowagiac,  101  Fed.  716. 

§  229.     Construction  —  Words  and  Phrases. 

It  is  generally  true,  when  a  patentee  describes  a  machine,  and  then  claims 
it  as  described,  that  he  is  understood  to  intend  to  claim,  and  does  by  law 
actually  cover,  not  only  the  precise  forms  he  has  described,  but  all  other 
forms  which  embody  his  invention ;  it  being  a  familiar  rule,  that  to  copy  the 
principle  or  mode  of  operation  described  is  an  infringement,  although  the 
copy  should  be  totally  unlike  the  original  in  form  or  proportions.  —  Winans 
v.  Denmead,  15  How.  330;  14  L.  Ed.  717. 

Words  of  such  import,  if  not  expressed  in  the  claim,  must  be  implied,  else 
the  patent  in  many  cases  would  be  invalid  as  covering  a  mere  function, 
principle  or  result,  which  is  obviously  forbidden  by  the  patent  law,  as  it 
would  close  the  door  to  all  subsequent  improvements.  —  Mitchell  v.  Tilgh- 
man,  86  U.  S.  287;  22  L.  Ed.  125. 

Seymour  v.  Osborne,  11  Wall.  538;   Curt  Pat.  sec.  242. 

Objection  is  taken  to  the  patent  because  it  claims  "  the  design  for  a  carpet 
substantially  as  shown."  We  see  no  good  objection  to  the  form  of  the  claim. 
It  refers  to  the  description  as  well  as  the  drawing,  in  using  the  word  "  shown." 
—  Dobson  v.  Hartford,  114  U.  S.  439;  29  L.  Ed.  177;  5  S.  Ct.  945. 

These  words  have  been  uniformly  held  by  us  to  import  into  the  claim  the 
particulars  of  the  specification.  — Westinghouse  v.  Boyden,  170  U.  S.  537; 
42  L.  Ed.  1136;  18  S.  Ct,  707. 


§  223  CLAIMS  227 

The  words  "  substantially  as  set  forth  "  do  not  justify  reading  into  the 
claim  qualifications  expressed  in  the  specification.  —  Westinghouse  v, 
Edison,  63  Fed.  588;  11  C.  C.  A.  342. 

It  is  said  that  the  claims  of  the  reissued  patent  are  void  because  too  broad. 
Unless  the  claims  are  to  be  restricted  by  construction,  this  criticism  is  a  just 
one.  The  only  adaptation  capable  of  appropriation  by  the  inventor  is  that 
which  is  shown  in  the  specifications  and  drawings  of  his  patent,  and  this  is 
the  necessary  limiting  effect  of  the  words  "  substantially  and  for  the  purpose 
specified."  In  this  way  the  court  may  sustain  the  validity  of  the  claims,  as 
it  is  its  duty  to  do  when  possible.  —  Columbus  v.  Robbins,  64  Fed.  384 ; 
12  C.  C.  A.  174. 

Corn  Planter  Pat.  23  Wall.  181. 

The  phrase,  "  substantially  as  set  forth,"  is  technical  and  is  equivalent  to 
saying,  "  by  the  means  described  in  the  text  of  the  inventor's  application  for 
letters  patent,  as  illustrated  by  the  drawings,  diagrams,  and  models  which 
accompany  the  application."  These  words  limit  the  general  terms  of  the 
specification  which  set  out  the  function  performed  by  the  invention,  and 
confine  the  inventor's  rights  to  his  own  special  means  of  performing  the 
function.  —  Boyden  v.  Westinghouse,  70  Fed.  816;  17  C.  C.  A.  430. 

The  words  in  the  claims  "  as  herein  described  "  and  "  as  described  "  must 
be  construed  closely  in  a  patent  of  narrow  scope.  —  Davis  v.  Parkman,  71 
Fed.  961 ;   18  C.  C.  A.  398. 

Duff  v.  Pump  Co.  107  U.  S.  636;  Bragg  v.  Fitch,  121  U.  S.  478;  Knapp  v. 
Morss,  150  U.  S.  221. 

It  is  rare  that  the  words,  "  substantially  as  described  "  aid  the  courts  in 
construing  patents,  if  they  ever  do.  In  view  of  the  fact  that  the  statutes 
require  an  inventor  seeking  a  patent  to  give  in  his  application  a  "  written 
description  "  of  his  invention,  the  words  in  question  are  usually  implied  when 
not  expressed.  They  cannot  enlarge  a  patent  for  a  narrow  invention,  and  they 
cannot  narrow  a  claim  justly  broad.  —  Bresnahan  v.  Tripp,  72  Fed.  920; 
19  C.  C.  A.  237. 

Machine  v.  Lancaster,  129  U.  S.  263;   Rob.  Pat.  750;   Walker,  (3d  ed.)  182. 

That  claim  is  dangerously  near  being  a  claim  for  a  mode  of  operation,  and, 
if  saved,  it  is  saved  by  the  words  "  substantially  as  set  forth  "  which  serve  to 
limit  the  claim  to  the  described  mechanism.  —  Rousseau  v.  Peck,  78  Fed. 
113;  24  C.  C.  A.  7. 

Seymour  v.  Osborne,  11  Wall.  516;   Curt  Pat.  4  ed.  281. 

The  "  whereby  "  clause  does  not  add  anvthing  to  the  claim.  —  Frazer 
v.  Gates,  85  Fed.  441 ;  29  C.  C.  A.  261. 
Birmingham  v.  Gates,  78  Fed.  350. 

The  claim  has  the  usual  conclusion  "  substantially  as  described,"  without 
these  qualifying  words,  however,  the  claim  is  to  receive  a  reasonable  construc- 
tion, regard  being  had  to  the  nature  of  the  described  structure  and  the  object 
to  be  attained.  —  Thompson  v.  Second  Avenue,  93  Fed.  824;  35  C.  C.  A.  620. 

If  the  claim  is  to  be  read  in  connection  with  the  specification,  or  any 
significance  is  to  be  given  to  the  words  "  substantially  as  described,"  it 
plainly  must  be  limited  to  the  coils  of  the  patent.  The  proceedings  in  the 
Patent  Office  show  that  Eickemeyer  attempted  to  claim  the  method  of  double 


228  THE    FIXED    LAW    OF    PATENTS  §  230 

winding  and  abandoned  it.  —  General  v.  Webster,  113  Fed.  756;  51  C.  C.  A. 
446. 

That  in  a  specific  or  improvement  patent,  such  terms  as  "  means  em- 
ployed," "  means  for,"  or  "  means  whereby  "  will  be  limited  to  the  sub- 
stantial means  disclosed  in  the  specification,  see  Lowden  v.  Janesville,  148 
Fed.  686;   78  C.  C.  A.  548. 

That  where  the  claim  contains  the  wrords  "  substantially  as  set  forth,"  and 
elements  not  directly  included  in  the  claim  but  fully  disclosed  in  the  descrip- 
tion as  a  part  of  the  combination  will  be  read  into  the  claim,  even  if  the  claim 
is  thereby  limited,  see  Boston  v.  Pennsylvania,  164  Fed.  557;  C.  C.  A. 

§  230.    Construction  —  Miscellaneous  Rulings. 

The  defect  here  is  both  in  the  specification  and  in  the  claim.  The  former 
does  not  distinguish  the  new  parts  from  the  old,  nor  is  there  anything  in  the 
specification  by  which  they  can  be  distinguished;  and  the  latter,  instead  of 
claiming  the  old  parts,  should  have  excluded  them,  and  claime'd  the  new  by 
which  the  old  were  adapted  to  the  new  use,  producing  the  new  result.  — 
Phillips  v.  Page,  65  U.  S.  164;   16  L.  Ed.  639. 

Inventions  secured  by  letters  patent  sometimes,  though  rarely,  embrace 
an  entire  machine,  and  in  such  cases  it  is  sufficient  if  it  appear  that  the  claim 
is  co-extensive  with  the  invention.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

The  Whitney  process  described  a  system  of  re-heating  car  wheels  which 
had  been  chilled  upon  the  tread  to  a  point  a  trifle  below  the  fusing  point. 
Its  utility  was  attacked  on  the  ground  that  reheating  to  such  a  point  would 
destroy  the  chill.  From  the  fact  that  the  invention  in  practice  had  proved 
eminently  useful,  even  by  a  wride  modification  of  the  degree  of  heat  employed, 
the  patent  was  held  good  upon  the  ground  that  the  description  was  suffi- 
ciently exact  to  enable  one  skilled  in  the  art  to  use  the  process.  —  Mowrv  v. 
Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

Doubtful  expressions  may  be  subject  to  construction,  but  when  the  lan- 
guage employed  is  clear  and  unambiguous  it  must  speak  its  owm  construction 
in  the  specification.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

This  duty  is  now  cast  upon  the  Patent  Office.  There  his  claim  is,  or  is 
supposed  to  be,  examined,  scrutinized,  limited  and  made  to  conform  to  wThat 
he  is  entitled  to.  —  Keystone  v.  Phoenix,  95  U.  S.  274;  24  L.  Ed.  344. 

Mere  technicality  of  terms  employed  in  the  claims  or  specification  does 
not  render  the  patent  void  for  ambiguity  or  indefiniteness.  —  Loom  Co.  v. 
Higgins,  105  U.  S.  580;   26  L.  Ed.  1177. 

The  first  claim  of  the  reissue,  if  construed  so  as  to  cover  the  defendant's 
structure,  is  void  for  want  of  novelty,  being  anticipated  by  the  old  structures 
referred  to.  —  Gosling  v.  Roberts,  106  U.  8.  39;  27  L.  Ed.  61 ;  1  S.  Ct.  26. 

There  is  no  suggestion  that  the  combination  of  the  second  claim  was  not 
new;  and,  there  being  nothing  shown  in  the  state  of  the  art  which  requires 
any  such  construction  of  the  second  claim  as  that  contended  for  by  the 
defendant,  and  it  being  fairly  susceptible  of  the  opposite  construction,  and 
the  latter  being  one  which  is  commensurate  with  the  real  invention  embraced 
in  the  second  claim  and  one  which  prevents  the  real  substance  of  that  in- 
vention from  being  bodily  appropriated  by  an  infringer,  it  is  proper  to  give 
the  claim  such  construction.  —  Lake  Shore  v.  National,  110  U.  S.  229; 
28  L.  Ed.  129;  4  S.  Ct.  33. 


§  230  CLAIMS  229 

Where  certain  elements  of  the  invention  are  shown  and  described  with 
reference  to  their  function  and  mode  of  operation,  the  claim  covering  such 
elements  must  be  construed  as  covering  such  elements  limited  to  such  function 
and  mode  of  operation.  —  Sharp  v.  Riessner,  119  U.  S.  631;  30  L.  Ed.  507; 
7  S.  Ct.  417. 

The  doctrine  which  is  applicable  to  a  machine  patent  is  of  a  kindred  char- 
acter with  that  applied  in  this  country  and  in  England  to  a  patent  for  a 
process.  —  Morley  v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 

McCormick  v.  Talcott,  61  U.  S.  402;  Chicago  v.  Sayles,  97  U.  S.  554;  Clough  v. 
Barker,  106  U.  S.  166;  Duff  v.  Sterling,  107  U.  S.  636;  Consolidated  v.  Crosby, 
113  U.  S.  157;  and  comparing,  Tilghman  v.  Proctor,  102  U.  S.  707;  Nelson  v. 
Hartford,  1  Web.  P.  C.  295;  O'Reilly  v.  Morse,  56  U.  S.  62,  115;  Curtis  v.  Piatt 
(note)  L.  R.  3  Ch.  Div.  134;  Jupe  v.  Pratt,  1  Web.  146;  Badische  v.  Leveinstein, 
L.  R.  24  Ch.  Div.  156,  171;  Househill  v.  Nelson,  1  Web.  P.  C.  685;  Proctor  v. 
Bennis,  L.  R.  36  Ch.  Div.  740;   Clark  v.  Adie,  L.  R.  2  App.  Cas.  315,  320. 

If  the  inventor  had  been  the  first  to  devise  a  contrivance  of  this  descrip- 
tion, it  is  possible  that,  under  the  cases  of  Ives  v.  Hamilton,  92  U.  S.  426,  and 
Hoyt  v.  Home,  145  U.  S.  302;  a  construction  broad  enough  to  include 
defendant's  device  might  have  been  sustained.  But  in  view,  not  only  of  the 
prior  devices,  but  of  the  fact  his  invention  was  of  doubtful  utility  and  never 
went  into  practical  use,  the  construction  claimed  would  operate  rather  to 
the  discouragement  than  the  promotion  of  inventive  talent.  —  Deering  v. 
Winona,  155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

Admitting  that  additional  elements  are  necessary  to  render  the  device 
operative,  it  does  not  necessarily  follow  that  the  omission  of  these  elements 
invalidates  the  claim,  or  that  the  precise  elements  described  in  the  patent  as 
rendering  it  operative  must  be  read  into  the  claim.  —  Deering  v.  Winona,  155 
U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

Should  this  device  (a  device  covering  specific  means  for  the  alignment  and 
adjustment  of  the  rolls  of  a  roller  mill)  be  adjudged  an  infringement,  we  shall 
not  know  where  to  draw  the  line,  providing  the  alleged  infringing  device  ac- 
complished the  four  results.  —  Consolidated  v.  Barnard,  156  U.  S.  261 ;  39  L. 
Ed.  417;  15  S.  Ct.  333. 

He  used  the  plural  (filaments)  omitting  the  phrases  "  of  high  resistance  " 
and  "  made  as  described,"  used  in  the  first  claim,  in  order  to  be  sure  that  he 
should  not,  as  to  this  second  claim,  be  confined  by  construction  to  any  one 
variety  of  filament.  —  Edison  v.  U.  S.  52  Fed.  300;  3  C.  C.  A.  83. 

It  is  difficult  to  see  why  the  circumstance  that  the  patentee  had  no  solicitor 
should  lead  to  any  peculiarly  liberal  construction  of  this  patent,  in  view  of 
the  fact  that  the  description  of  his  invention  is  singularly  clear,  complete, 
intelligent  and  unambiguous;  an  agreeable  contrast  to  many  which  come 
before  this  court  where  the  inventor  has  been  represented  by  solicitor.  — ■ 
Gould  v.  Trojan,  74  Fed.  794;  21  C.  C.  A.  97. 

The  position  as  to  the  patent  in  suit  was  peculiar,  arising  from  the  fact 
that  the  patentee,  who  resided  abroad,  and  was  ignorant  of  our  language,  was 
instructing  his  solicitor  in  the  United  States  with  reference  to  a  very  com- 
plicated machine;  but,  within  the  rules  laid  down  by  us  in  Reece  Button- 
hole Mach.  Co.  v.  Globe  Buttonhole  Machine  Co.,  there  is  nothing  which 
justifies  us  in  holding  that  the  inventor,  either  by  implication  of  law  or 
expressly,  abandoned  any  part  of  his  invention.  We  have  therefore  left  only 
the  question  of  infringement,  to  be  determined  in  the  light  of  the  nature  of 


230  THE    FIXED    LAW    OF    PATENTS  §§231-233 

the  invention,  which,  though  limited  in  its  scope  in  a  certain  sense,  yet,  on 
account  of  its  importance  is  entitled  to  liberal  protection.  —  Heap  v.  Tremont, 
82  Fed.  449;  27  CCA.  316. 

In  construing  this  claim,  we  are  permitted  to  omit  the  alternative 
words  which  we  have  stricken  out,  because,  if  they  stood  alone,  they  would 
narrow  the  claim  within  Brush's  actual  invention.  —  Hatch  v.  Electric, 
100  Fed.  975;  41  C.  C.  A.  133. 

A  new  rule  will  be  established  in  patent  law  if  claims  for  combinations  of 
old  elements  are  held  not  to  cover  those  elements  as  they  were  known  in  the 
prior  art  because  the  patentee  may  have  used  inappropriate  language  in 
describing  them.  —  Cimiotti  v.  American,  115  Fed.  498;  53  C.  C.  A.  230. 

The  object  of  the  patent  law  is  "  to  secure  to  inventors  a  monopoly  of 
what  they  have  actually  invented  or  discovered,"  and  it  "  ought  not  to  be 
defeated  by  too  strict  construction  "  of  the  terms  of  the  claims,  which  may 
be  inartificially  drawn.  —  Austin  v.  American,  121  Fed.  76;  57  C.  C.  A.  330. 

Topliff  v.  Topliff,  145  U.  S.  156;    Sewall  v.  Jones,  91  U.  S.  171. 

§  231.     Designs. 

A  claim  in  a  patent  upon  a  machine  for  the  means  employed  for  producing 
a  design,  in  connection  with  other  claims  upon  the  machine,  is  valid  and 
is  not  a  design  claim  within  the  meaning  of  the  statute.  —  Clark  v.  Bonsfield, 
77  U.  S.  133;  19  L.  Ed.  862. 

In  Dobson  v.  Biglow,  114  U.  S.  439,  the  claim  of  the  design  patent  was 
"  the  design  of  a  carpet  substantially  as  shown."  Objection  was  taken  to 
the  form  of  the  claim.  But  this  court  said  it  saw  no  good  objection  to  the 
form,  and  that  the  claim  referred  to  the  description  as  well  as  the  drawing, 
in  using  the  word  "  shown."  Undoubtedly  the  claim  in  this  case  covers  the 
design  as  a  whole  and  not  any  part  of  it  as  a  part ;  and  it  is  so  to  be  tested  as  to 
the  novelty  and  infringement.  —  Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed. 
63;    6  S.  Ct.  946. 

§  232.     Elements  —  Essential. 

A  claim  for  a  machine  or  for  a  combination  of  mechanical  devices  is  not 
insufficient  or  invalid  because  it  does  not  include  mechanical  devices  for 
uniting  and  operating  the  elements  of  the  machine  or  combination,  which 
would  readily  suggest  themselves  to  mechanics  skilled  in  the  art,  or  which 
are  described  in  the  specifications  and  drawings.  —  Brammer  v.  Schroeder, 
106  Fed.  918;  46  C.  C.  A.  41. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Deering  v.  Harvester  Works,  155  U.  S.  286. 

The  card's  importance  may  be  estimated  by  the  fact  that  it  is  an  element 
in  nine  out  of  the  eleven  claims.  —  American  v.  Cimiotti,  123  Fed.  869; 
59  C.  C.  A.  357. 

§  233.     Elements  —  Redundant. 

This  invention  was  for  a  method  of  lubrication.  Held:  If  the  crank  shaft 
were  left  out  the  claims  of  this  patent  would  not  be  so  obnoxious  to  the 
criticism  that  they  include  in  the  combination  specified  any  part  of  the 
engine  which  is  not  a  part  of  the  means  employed  to  effect  lubrication.  The 
crank  shaft  is  not  essential  because  the  necessarv  disc  might  be  revolved  by 
other  means.  —  Chuse  v.  Ide,  89  Fed.  491 ;  32  C.  C.  A.  260. 


§§  234-237  CLAIMS  231 

Note:  The  entire  spirit  of  this  opinion  by  Judge  Woods  is  to  defeat  the 
patent,  and  the  conviction  of  the  court  that  this  should  be  done  (and  appar- 
ently it  should)  led  to  a  hypercritical  review  of  the  claims.  It  is  true,  other 
means  might  have  been  used  instead  of  the  crank  shaft,  but  without  some 
means,  the  claims  would  have  been  open  to  criticism  for  want  of  operative- 
ness,  as  is  apparent  where  the  court,  on  page  494,  essays  to  draw  a  claim  to 
suit  it. 

§  234.     Elements  —  Reference  Characters. 

The  apron  referred  to  in  the  claims  and  indicated  by  the  letter  "  A,"  in 
the  drawings  accompanying  the  patent,  is  an  essential  part  of  each  claim,  as 
well  as  the  vital  part  of  the  patent  itself.  —  American  v.  Streat,  83  Fed.  700; 
28  C.  C.  A.  18. 

Parry  v.  Hitchcock,  58  Fed.  402;  Weir  v.  Morden,  125  U.  S.  98;  Hendy  v. 
Iron  Works,  127  U.  S.  370;    Knapp  v.  Morss,  150  U.  S.  221. 

A  reference  in  a  claim  to  a  letter  or  figure  used  in  the  drawing  and  in 
the  specification  to  describe  a  device  or  an  element  of  a  combination  does 
not  limit  the  claim  to  the  specific  form  of  that  element  there  shown,  unless 
that  particular  form  was  essential  to,  or  embodied  the  principle  of,  the 
improvement  claimed.  —  National  v.  Interchangeable,  106  Fed.  693;  45 
C.  C.  A.  544. 

Sprinkler  v.  Koehler,  82  Fed.  428;  McCormick  v.  Aultman,  69  Fed.  371;  Mul- 
ler  v.  Tool  Co.,  77  Fed.  621;  Delemater  v.  Heath,  58  Fed.  414;  Reed  v.  Chase, 
25  Fed.  94;  Walk.  Pat.  (3d  Ed.)  sec.  117a. 

§  235.     Elements  —  Terminology. 

In  our  opinion  it  cannot  be  construed  as  a  claim  for  three  elements  (a  valve, 
a  water  chamber,  and  water  in  such  chamber).  The  apparatus  is  the  same 
apparatus  whether  water  is  used  in  it  or  not.  The  method  of  use  does  not 
change  it,  and  an  inventor  who  employs  a  new  process  of  using  it,  does  not 
thereby  invent  a  new  apparatus.  —  Consolidated  v.  Metropolitan,  60  Fed. 
93;  8C.  C.  A.  485. 

That  a  mathematical  formula  which  is  of  the  essence  of  an  invention  may 
be  made  a  positive  and  essential  element  of  a  claim,  see  Westinghouse  v. 
Saranac,  113  Fed.  884;  51  C.  C.  A.  514. 

§  236.     Excessive  —  Duplication. 

It  would  be  a  waste  of  time  to  dwell  upon  the  verbal  differences  in  these 
claims.  The  changes  in  phraseology  import  nothing  of  substance  into  their 
respective  combinations.  They  describe  the  same  things  in  different  language, 
and  the  draftsman  seems  to  have  expended  great  ingenuity  in  cataloguing 
a  group  of  synonyms.  —  Thomson-Houston  v.  Hoosick,  82  Fed.  461 ;  27 
C.  C.  A.  419. 

The  rule  of  construction  which  usually  obtains,  whereby  the  several 
claims  of  a  patent  are  to  be  differentiated  so  that  effect  may  be  given  each, 
cannot  be  reasonably  invoked  in  behalf  of  this  patent,  where  so  many  of  the 
claims  are  duplicated.  —  Thomson-Houston  v.  Union,  86  Fed.  636 ;  30  C. 
C.  A.  313. 

§  237.    Excessive  —  Effect  of. 

It  is  true,  by  the  9th  sec.  Act  Mar.  3,  1837,  ch.  45,  it  is  provided,  that  the 
suit  shall  not  be  defeated  when  the  patentee  claims  more  than  he  has  invented; 


232  THE    FIXED   LAW   OF    PATENTS  §§  238-241 

it  must  be,  however,  in  a  case  where  the  part  invented  can  be  clearly  dis- 
tinguishable from  that  claimed  but  not  invented. 

(See  the  modification  of  this  act,  in  view  of  this  construction,  in  the 
amendment  of  1870,  sec.  4922  R.  S.)  —  Vance  v.  Campbell,  66  U.  S.  427; 
17  L.  Ed.  168. 

§  238.     Excessive  —  Foreclosing  Improvement. 

In  other  words,  having  himself  experimented  only  with  three  or  four  bodies 
out  of  a  group  of  hundreds,  he  proposes  to  set  himself  in  the  pathway  of  future 
experimenters  with  any  or  all  of  the  other  bodies,  and,  as  the  result  of  each 
new  experiment  is  disclosed,  will  fire  away  at  it,  calculating  to  "  hit  it  if  it  is 
a  deer,  and  miss  it  if  it  is  a  cow."  That  this  is  precisely  what  is  contended 
for  is  manifest  from  the  statement,  prominently  set  forth  in  appellee's  brief. 
—  Matheson  v.  Campbell,  78  Fed.  910;  24  C.  C.  A.  284. 

§  239.    Expansion. 

One  who  has  invented  device  with  three  elements  necessary  cannot  claim 
two  elements  to  forestall  another  who  employs  the  two  elements  for  the  same 
position.  —  National  v.  Hedden,  148  U.  S.  482;  37  L.  Ed.  529;  13  S.  Ct.  680. 

Court  will  not  import  elements  that  would  operate  to  so  enlarge  its  scope 
as  to  cover  an  invention  not  indicated  upon  its  face.  —  Wollensak  v.  Sargent, 
151  U.  S.  221 ;  38  L.  Ed.  137;  14  S.  Ct.  291. 

Day  v.  Fairhaven,  132  U.  S.  98. 

If  the  claim  of  the  patent  is  not  limited  to  the  construction  and  description 
of  the  original  application  which  alone  was  supported  by  the  required  oath, 
it  would  seem  to  be  invalid.  —  De  La  Vergne  v.  Valentine,  66  Fed.  765;  14 
C.  C.  A.  77. 

Eagleton  v.  West,  111  U.  S.  490;   Machine  v.  Featherstone,  147  U.  S.  209. 

§  240.    Failure  to  Claim. 

The  failure  to  claim  either  one  of  the  elements  separately  raises  a  pre- 
sumption that  no  one  of  them  is  novel.  —  Richards  v.  Chase,  159  U.  S.  477; 
40  L.  Ed.  225;  16  S.  Ct.  53. 

A  patentee  who  has  claimed  either  more  or  less  than  was  necessary,  can- 
not, in  a  suit  for  infringement,  be  relieved  from  the  consequences.  —  Boynton 
v.  Morris,  87  Fed.  225;  30  C.  C.  A.  617. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Durand  v.  Schulze,  61  Fed.  819. 

The  requirement  of  the  patent  law  that  a  patentee  shall  claim  in  his  patent 
the  exact  invention  is  not  only  to  enable  the  public  to  use  it  after  the  term 
of  the  patent  has  expired,  but  also  for  the  purpose  of  enabling  any  one  to 
determine  what  the  invention  is,  which  is  protected  by  the  patent,  and  what 
processes  which  are  not  protected  by  the  patent  may  be  used  in  the 
same  manufacture.  A  person  who  discovers  a  new  and  useful  invention 
does  not  obtain  a  monopoly  under  the  patent  laws  unless  he  claims  his  inven- 
tion in  his  patent.  Even  if  he  describes  his  invention  in  the  specifications, 
and  then  claims  as  his  invention  something  he  has  not  invented,  his  patent 
is  good  for  nothing.  —  National  v.  New  England,  151  Fed.  19;  80  C.  C.  A. 
485. 

§  241.     Generic. 

He  (the  inventor)  may,  for  the  purpose  of  describing  the  extent  of  his 
claims,  not  only  state  the  general  principles  and  requisite  features  of  the 


§§  242-244  CLAIMS  233 

invention  in  one  claim,  but  the  general  principles  and  requisite  features  in 
another  claim,  supplementing  this  with  a  more  particular  description  of  the 
details  involved  in  the  contemplated  structure.  We  do  not  consider  the 
claims,  identical,  and,  therefore,  one  or  the  other  superfluous,  but  view  the 
first  claim  as  broader  than  the  second  in  the  respect  which  we  have  stated, 
and  not  inconsistent  therewith.  —  Consolidated  v.  West  End,  85  Fed.  662 ; 
29  C.  C.  A.  386. 

If  the  Moore  patent  had  preceded  all  other  devices  for  performing  the 
work  for  which  it  was  intended,  it  might  very  well  be  that  he  could  bring 
under  tribute  all  who  should  enter  his  domain,  and  build  within  the  wide 
four  corners  of  his  invention ;  or,  if  he  had  made  a  large  advance  in  a  new 
direction  in  an  art  not  new,  he  would  have  been  protected  to  the  extent  of  the 
limits  of  his  large  invention.  —  Moore  v.  Eggers,  107  Fed.  491 ;  46  C.  C.  A. 
425. 

Morley  v.  Lancaster,  129  U.  S.  263;  McCormick  v.  Aultman,  69  Fed.  371; 
Bundy  v.  Detroit,  94  Fed.  524. 

Inasmuch  as  there  is  no  prior  art  limiting  Bellis  as  the  first  to  produce 
a  machine  capable  of  providing  loops  on  a  ribbed  fabric  adapted  to  be 
fleeced,  we  think  his  invention  is  entitled  to  be  regarded  as  of  such  primary 
character  as  to  embrace  defendant's  machine,  which  performs  the  same 
functions  of  looping  and  engaging  a  thread  in  the  fabric  by  a  combination  of 
means  covered  by  the  terms  of  the  claims  in  suit,  and  operating  on  the  same 
principle,  with  the  same  resulting  fleecing  capacity.  —  Scott  v.  Fisher,  145 
Fed.  915;  76  C.  C.  A.  447. 


§  242.    Novelty. 

The  novelty  in  each  case  he  describes  clearly,  as  he  should;  and  it  is 
not  necessary  he  should  go  farther.  —  Hogg  v.  Emerson,  6  How.  437;  12 
L.  Ed.  505. 

1  Story  R.  286;  Web.  on  Pat.  86-n;  Macfarlane  v.  Price,  1  Starkie,  199; 
King  v.  Cutter,  1  Starkie  354;  3  Cam  &  Payne,  611;  2  Mason,  112;  Kingsby 
&  P.  on  Pat.  61;  Godson  on  Pat.  154;   Isaacs  v.  Cooper,  4  Wash.  259. 

We  are  asked  to  pronounce  this  process  patentable,  not  because  we  can 
see  wherein  the  novelty  resides,  or  that  the  advantageousness  of  the  process 
is  due  to  such  novelty,  but  because  the  product  is,  in  some  respects,  different 
from  anything  going  before.  —  Cerealine  v.  Bates,  101  Fed.  272;  41  C. 
C.  A.  341. 


§  243.     Process. 

The  patentee  claimed  the  use  of  strong  sulphuric  acid  in  reducing  rubber 
scrap,  and  pointed  out  that  weak  sulphuric  acid  had  proven  insufficient. 
Held:  that  the  patent  must  be  limited  to  the  use  of  strong  sulphuric  acid.  — 
Chemical  v.  Raymond,  71  Fed.  179;  18  C.  C.  A.  31. 


§  244.     Purpose  of. 

Nothing  is  better  settled  in  the  patent  law  than  that  the  patentee  may 
claim  the  whole  or  any  part  of  his  invention,  and  that  if  he  only  describes 
and  claims  a  part  he  is  presumed  to  have  abandoned  the  residue  to  the 
public.  The  claim  is  the  measure  of  his  right  to  relief,  and  while  the  specification 
may  be  referred  to  to  limit  the  claim  it  can  never  be  made   available  to 


234  THE    FIXED    LAW    OF   PATENTS  j    §  245 

expand  it.  —  McClain  v.  Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800;  12  S.  Ct. 
76. 

Keystone  v.  Phoenix,  95  U.  S.  274;  Lehigh  v.  Mellon,  104  U.  S.  112;  Masury 
r.  Anderson,  11  Blatchf.  162;  Merrill  v.  Yeomans,  94  U.  S.  568;  Burns  ».  Meyer, 
100  U.  S.  671;   Sutter  v.  Robinson,  119  U.  S.  530. 

What  is  new  must  be  covered  by  the  claim.  —  Grant  v.  Walter,  148  U.  S. 
547;  37  L.  Ed.  557;  13  S.  Ct,  699. 
James  v.  Campbell,  104  U.  S.  356. 

Formal  claims  necessary  to  ascertain  scope  of  invention.  —  Grant  v. 
Walter,  148  U.  S.  547;  37  L.  Ed.  557';  13  S.  Ct,  699. 

Merrill  v.  Yeomans,  94  U.  S.  568;  Western  Elec.  Co.  v.  Ansonia,  114  U.  S.  447. 

It  is  well  known  that  patentees  generally  make  a  much  broader  statement 
of  the  novelty  of  their  invention  in  the  body  of  the  specification  than  they 
limit  themselves  to  in  the  claim,  which  latter  is  held  to  be  the  distinctive 
feature  of  a  patent.  By  the  act  of  congress  of  1836,  the  applicant  for  a  patent 
was,  for  the  first  time,  required  to  "  particularly  specify  and  point  out  the 
part,  improvement  or  combination  which  he  claims  as  his  own  invention  or 
discovery."  —  Durand  v.  Schulge,  61  Fed.  819;  10  C.  C.  A.  97. 

Merrill  v.  Yeomans,  94  U.  S.  568;  Keystone  v.  Phoenix,  95  U.  S.  278;  Mahn  v. 
Harwood,  112  U.  S.  360;  Burns  v.  Meyer,  100  U.  S.  671;  White  v.  Dunbar,  119 
U.  S.  51. 

The  claim  is  a  statutory  requirement  prescribed  for  the  very  purpose  of 
making  the  patentee  define  precisely  what  his  invention  is;  and  it  is  unjust 
to  the  public,  as  well  as  an  evasion  of  the  law,  to  construe  it  in  a  manner 
different  from  the  plain  import  of  its  terms.  —  Westinghouse  v.  Edison,  63 
Fed.  588;   11  C.  C.  A.  342. 

Quoting:  White  v.  Dunbar,  119  U.  S.  47. 

Railroad  v.  Mellon,  104  U.  S.  112;  Mfg.  Co.  v.  Greenleaf,  117  U.  S.  554. 


§  245.    Scope. 

Whether  the  telegraph  is  regarded  as  an  art  or  machine,  the  manner  and 
process  of  making  and  using  it  must  be  set  forth  in  exact  terms.  The  patent 
embraces  nothing  more  than  the  improvement  described  and  claimed  as  new, 
and  anyone  who  afterwards  discovered  a  method  of  accomplishing  the  same 
object,  substantially  and  essentially  differing  from  the  one  described,  has  a 
right  to  use  it.  The  specification  of  the  patentee  describes  his  invention  or 
discovery,  and  the  manner  and  process  of  constructing  and  using  it;  and  his 
patent,  fike  inventions  in  the  other  arts,  covers  nothing  more.  —  O'Reilly 
v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

We  cannot  describe  a  machine  which  will  perform  a  certain  function, 
and  then  claim  the  function  itself,  and  all  other  machines  that  may  be 
invented  to  perform  the  same  function.  —  Corning  v.  Burden,  15  How. 
252;  14  L.  Ed.  683. 

Inventions  sometimes  embrace  an  entire  machine,  and  in  such  cases  it  is 
sufficient  if  it  appears  that  the  claim  is  co-extensive  with  the  patented  im- 
provement. Other  inventions  embrace  one  or  more  parts  of  a  machine, 
and  in  such  cases  the  part  or  parts  claimed  must  be  specified  and  pointed 
out,  so  that  constructors,  other  inventors,  and  the  public  may  know  what 
the  invention  is  and  what  is  withdrawn  from  general  use.  —  Parks  v.  Booth, 
102  U.S.  96;  26  L.Ed.  54. 


§  245  j  CLAIMS  235 

To  hold  that  one  who  has  discovered  that  a  certain  fibrous  or  textile 
material  answered  the  required  purpose,  should  obtain  the  right  to  exclude 
everybody  from  the  whole  domain  of  fibrous  and  textile  materials,  and 
thereby  shut  out  any  further  efforts  to  discover  a  better  specimen  of  that  class 
than  the  patentee  had  employed,  would  be  an  unwarranted  extension  of  his 
monopoly,  and  operate  rather  to  discourage  than  to  promote  invention.  — 
Incandescent  Lamp  Patent,  159  U.  S.  465;  40  L.  Ed.  221;   16  S.  Ct.  75. 

Undoubtedly,  when  an  invention  is  meritorious,  and  of  a  primary  character, 
as  seems  to  be  the  case  here,  the  patent  should  be  liberally  interpreted  so  as 
to  secure  to  the  patentee  his  real  invention  as  he  has  disclosed  it  to  the 
public  by  his  specification ;  and,  if  it  be  for  a  process,  he  should  be  protected 
from  the  unauthorized  practice  of  it  by  others,  by  whatsoever  mode  or  forms 
of  apparatus  they  may  apply  the  process.  The  appellant's  pretensions,  how- 
ever, far  transcend  the  limits  of  these  settled  and  just  rules.  Virtually  the 
appellant  claims  all  means,  however  differing  in  mode  of  action  and  principle 
from  the  process  described  in  the  patent.  —  Celluloid  v.  Arlington,  52  Fed. 
740;  3  C.  C.  A.  269. 

Tilghman  v.  Proctor,  102  U.  S.  707;  Machine  Co.  v.  Lancaster,  129  U.  S.  263; 
Bene  v.  Jeantet,  129  U.  S.  683;  McClain  v.  Ortmayer,  141  U.  S.  419;  Corn 
Planter  Pat.  23  Wall.  218. 

If  a  man  describes  in  his  specifications,  a  machine  by  which  to  get  a  certain 
result  so  that  anyone  skilled  in  the  art  can  produce  the  machine  and  the 
result,  he  cannot  be  deprived  of  his  exclusive  right  in  the  machine  by  a  demon- 
stration that  his  theory  stated  in  the  patent,  of  the  causes  producing  the 
result  is  untrue.  But  a  correct  and  certain  knowledge  of  the  principle  by 
which  the  result  is  reached  will  often  enable  the  patentee,  or  his  solicitor,  to 
cover,  with  general  words,  many  different  devices  in  which  it  may  be  applied. 
If  he  fails  to  use  broad  enough  language  to  do  so,  then  one  of  two  things  is 
true;  either  that  he  does  not  fully  understand  the  true  principle  and  the 
other  devices  are  not  part  of  his  real  invention,  or  else,  knowing  the  principle, 
and  its  possible  wider  application,  he  has  chosen  to  limit  his  claim  for  a 
monopoly  to  one  particularly  described  device,  and  has  abandoned  the  others 
to  the  public.  Whichever  horn  of  the  dilemma  he  chooses,  the  court  has  no 
power  to  broaden  the  claims.  —  Brown  v.  Stilwell,  57  Fed.  731 ;  6  C.  C.  A. 
528. 

The  scope  of  the  claim  must,  on  well-settled  principles,  be  limited  to  the 
specific  forms  of  construction  shown  and  described  by  the  patentee.  —  Wells 
v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Johnson  v.  Steel,  50  Fed.  90. 

A  patentee  is  not  required  to  claim  the  entire  machine  in  each  claim.  Each 
of  the  claims  at  issue  is  for  a  complete  combination,  and  there  was  no  neces- 
sity for  expressing  in  terms  the  actuating  devices.  Any  appropriate  means 
for  operating  it  will  be  understood.  The  omission  of  the  actuating  mechanism 
does  not  affect  the  validity  of  either  one  of  the  claims,  which  belong  to  that 
class  where  reference  may  be  made  to  the  specifications  to  supply  in  a  claim 
what  it  is  plain,  to  anyone  skilled  in  the  art,  is  a  necessary  incident.  —  Taylor 
v.  Sawyer,  75  Fed.  301 ;  22  C.  C.  A.  203. 

Reece  v.  Globe,  61  Fed.  970;    Deering  v.  Winona,  155  U.  S.  286. 

**  If  his  invention  is  of  a  broad  and  meritorious  character,  such  as  to  work  a 
decided  advance  in  the  art,  it  will  require  something  more  than  the  use  of 
reference  letters  in  his  claims  to  limit  him  to  the  exact  form  of  device  he  has 
described.  —  Muller  v.  Lodge,  77  Fed.  621;  23  C.  C.  A.  357. 


236  THE    FIXED    LAW    OF    PATENTS  §§  246-247 

Pluralizing  terms  in  the  claim  for  the  purpose  of  broadening  it  does  not 
limit  the  claim  so  that  a  use  in  the  singular  is  not  an  infringement  of  the 
plural.  —  International  v.  Bennett,  77  Fed.  313;   23  C.  C.  A.  179. 

We  are  referred  to  no  authority,  and  know  of  no  principle,  which  will 
sustain  the  complainant's  contention  that  he  can  thus,  in  the  language  of  the 
circuit  court,  "  speculate  on  the  equivalents  of  his  claimed  invention,  and 
thereby  oblige  the  public  to  resort  to  experiments  in  order  to  determine  the 
scope  of  the  claims  of  his  patent.  —  Matheson  v.  Campbell,  78  Fed.  910; 

24  C.  C.  A.  284. 

A  patentee  is  bound  by  what  his  patent  actually  discloses  and  not  by  what 
he  supposes  his  invention  to  be.  —  Jackson  v.  Birmingham,  79  Fed.  801 ; 

25  C.  C.  A.  196. 

The  improvement  was  described  in  connection  with  a  single  thread 
machine;  but  the  specification  indicated  its  general  adaptability.  Held: 
The  claims,  therefore,  in  our  opinion,  cover  the  devices  of  the  patent  whether 
used  in  a  double  or  in  a  single  thread  machine.  —  Willcox  v.  Merrow,  93  Fed. 
206;  35  CCA.  269. 

Deering  v.  Harvester,  155  U.  S.  286. 

A  patentee  is  entitled  to  every  function  his  device  will  perform,  though  he 
was  ignorant  of  it  when  he  procured  his  patent.  But  he  secures  no  patent  on 
the  function,  and  a  discovery  of  a  new  one  in  a  patented  device  does  not 
operate  to  broaden  or  enlarge  the  letter  of  his  claim.  —  Dunlap  v.  Will- 
brandt,  151  Fed.  223;  80  C  C  A.  575. 

§  246.     Specific. 

The  fact  that  the  defendant  was  able,  by  a  skillful  contrivance,  to  dis- 
pense with  one  of  the  elements  of  plaintiff's  claim,  the  plaintiff's  patent  not 
being  generic,  does  not  make  the  device  an  infringement.  —  Derby  v.  Thomp- 
son, 146  U.  S.  476;   36  L.  Ed.  1051;   13  S.  Ct.  181. 

If  the  first  claim  is  valid,  the  second  certainly  is,  because  it  is  for  the 
same  combination,  with  limitations  which  include  some  additional  minor  im- 
provements. —  Schenck  v.  Singer,  77  Fed.  841 ;  23  C  C  A.  494. 

A  patentee  may,  however,  describe  all  the  devices  in  his  machine  or  manu- 
facture, and  instead  of  claiming  all  or  any  particular  portion  of  them  in 
combination,  may  claim  so  much  of  the  described  mechanism  as  produces 
a  particular  described  result.  —  Parsons  v.  Seelye,  100  Fed.  455;  40  CCA. 
486. 

Silsby  v.  Foote,  14  How.  218. 

The  terms  of  the  claim  are  most  specific,  and  it  must  be  read  with  refer- 
ence to  the  particular  descriptions  contained  in  the  specifications  and  illus- 
trated by  the  patent  drawings.  —  Reineke  v.  Dixon- Woods,  102  Fed.  349; 
42  C.  C.  A.  388. 

Fay  v.  Cordesman,  109  U.  S.  408;  Knapp  v.  Morss,  150  U.  S.  221. 

§  247.     Sufficiency. 

The  public  should  not  be  deprived  of  rights  supposed  to  belong  to  it, 
without  being  clearly  told  what  it  is  that  limits  these  rights.  The  genius 
of  the  inventor  constantly  making  improvements  in  existing  patents,  a  proc- 
ess which  gives    to   the  patent  system  its  greatest  value,  should  not  be 


§  248  COMBINATIONS  237 

restrained  by  vague  and  indefinite  descriptions  of  claims  in  existing  patents 
from  the  salutary  and  necessary  right  of  improving  on  that  which  has  already 
been  invented.  It  seems  to»us  that  nothing  can  be  more  just  and  fair  both 
to  the  patentee  and  to  the  public,  than  that  the  former  should  understand 
and  correctly  describe  just  what  he  has  invented,  and  for  what  he  claims  a 
patent.  —  Merrill  v.  Yeomans,  94  U.  S.  568;  24  L.  Ed.  235. 

But  we  are  of  opinion  that  the  description  and  claim  are  sufficient.  The 
purport  of  the  description  is,  that  what  the  photographic  illustration  repre- 
sents as  a  whole  is  the  invention.  It  is  that  which  is  claimed,  when  applied 
to  carpeting.  The  design  is  a  pattern  to  be  worked  into  a  carpet,  and  is 
within  the  statute.  Claiming  "  the  configuration  of  the  design  "  is  the  same 
thing  as  claiming  the  design,  or  the  figure  or  the  pattern.  It  is  better  repre- 
sented by  the  photographic  illustration  than  it  could  be  by  any  description, 
and  a  description  would  probably  not  be  intelligible  without  the  illustration. 

—  Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct.  946. 
See  Dobson  v.  Bigelow,  114  U.  S.  439. 

In  every  patent  the  language  of  the  claim,  specification  and  grant,  should 
be  so  clear,  distinct  and  positive  as  to  leave  no  question  of  what  was  asked 
and  granted,  nor  should  it  require  a  careful,  nice  and  labored  investigation 
to  ascertain  whether  one  may  not  have  trespassed  upon  the  rights  of  the 
patentee.  It  is  the  duty  of  the  inventor  to  use  language  sufficiently  plain 
and  explicit  in  his  application  to  denote  clearly  what  he  asks  for,  and  when  he 
fails  to  do  so,  and  the  language  of  the  grant  follows  that  of  the  application, 
and  is  thereby  misleading  to  the  general  public,  he  should  gain  no  profit 
from  such  defective  statement  of  that  to  which  he  considers  he  is  entitled. — 
Gerard  v.  Diebold,  61  Fed.  209;  9  C.  C.  A.  451. 

It  is  plainly  unsound  argument  to  say  that,  because  the  patentee  does  not 
expressly  limit  his  patent  to  the  device  which  he  actually  shows,  therefore 
he  is  not  entitled  to  the  benefit  of  the  invention  involved  in  the  use  of  one. 

—  McCormick  v.  Aultman,  69  Fed.  371 ;  16  C.  C.  A.  259. 

Where  the  invention  is  an  improvement  on  a  machine  the  claim  need  not 
include  the  main  elements  of  the  machine.  —  Goshen  v.  Bissell,  72  Fed.  67; 
19  C.  C.  A.  13. 

Here  the  result  is  obtained  quite  irrespective  of  the  location  of  the  upper 
ends  of  the  brace-rods.  The  state  of  the  art  does  not  require  the  novelty 
of  the  claims  to  be  predicated  of  a  particular  location.  —  Avery  v.  Case, 
148  Fed.  214;  78  C.  C.  A.  110. 

Cazier  v.  Mackie-Lovejoy,  138  Fed.  654;  Machine  Co.  v.  Murphy,  97  U.  S.  120; 
Beach  v.  American,  63  Fed.  597;  King  v.  Hubbard,  97  Fed.  795;  Calculagraph 
v.  Wilson,  132  Fed.  20;   Benbow-Brammer  v.  Simpson,  132  Fed.  614. 

§  248.     Void. 

One  void  claim  does  not  vitiate  a  patent  if  made  by  mistake  or  inad- 
vertence and  without  any  wilful  default  or  intent  to  defraud  or  mislead  the 
public.  —  Carlton  v.  Bokee,  84  U.  S.  463;  21  L.  Ed.  517. 


COMBINATIONS. 

General  Statement  §  249 
See — Aggregation    §    44;     Anticipa- 
tion §§  67-69;    Claims  §  184;    Ele- 


ments §  232;  Improvement  §  433; 
Infringement  §§  464-73;  Invention 
§§  603-12. 


238  THE    FIXED    LAW    OF    PATENTS  §§  249-250 

§  249.     General  Statement. 

Combinations  cannot  be  treated  as  constituting  a  single,  unitary  subject 
in  the  patent  law.  The  Patent  Statute  does  not  use  the  term  either  as  desig- 
nating a  patentable  class  of  invention  or  as  a  condition  of  invention.  But  the 
term  plays  a  large  part  in  connection  with  Infringement  §§466-473  and 
Invention,  §§  603-612  and  also  with  the  subjects  of  Claims  §  187.  It  is  suffi- 
cient to  refer  generally  to  those  subjects,  and  to  append  what  is  regarded  as 
one  of  the  nearest  approaches  to  a  definition  of  patentable  combination. 

It  must  be  considered  that  a  new  combination,  if  it  produces  new  and  useful 
results,  is  patentable,  although  all  the  constituents  of  the  combination  were 
well  known  and  in  common  use  before  the  combinations  were  made.  But 
the  result  must  be  a  product  of  the  combination,  and  not  a  mere  aggregate 
of  several  results,  each  the  complete  product  of  one  of  the  combined  elements. 
Combined  results  are  not  necessarily  a  novel  result,  nor  are  they  an  old 
result  obtained  in  a  new  and  useful  manner.  Merely  bringing  old  devices 
into  juxtaposition,  and  there  allowing  each  to  work  out  its  own  effect  without 
the  production  of  something  novel,  is  not  invention.  No  one  by  bringing 
together  several  old  devices  without  producing  a  new  and  useful  result, 
the  joint  product  of  the  elements  of  the  combination  and  something  more 
than  an  aggregate  of  old  results,  can  acquire  a  right  to  prevent  others  from 
using  the  same  devices,  either  singly  or  in  other  combinations,  or,  even 
if  a  new  and  useful  result  is  obtained,  can  prevent  others  from  using  some 
of  the  devices,  omitting  others,  in  combination.  —  Hailes  v.  VanWormer, 
87  U.  S.  353;  22  L.  Ed.  247. 


COMITY 

General  Statement  and  Definition  § 

250 

Between  Circuit  Courts  §  251 

Between  Circuit  Court   of  Appeals 

and  Circuit  Court  §  252 

Between  Circuit  Courts  of  Appeal  § 

253 

Prior  Adjudication  §  254 


Supreme  Court  and  Circuit  Court  of 
Appeals  §  255 
Weight  of  §  256 
Miscellaneous  §  257 
See  —  Adjudication   §   28;    Defenses 
§  315;    Estoppel  §  381;   Injunction  § 
535;    Interferences  §  580;    Res  Judi- 
cata §  893 


§  250.     General  Statement  and  Definition. 

If  both  court  and  counsel  had  kept  before  them  more  clearly  the  very 
plain  and  reasonable  rule  of  the  Supreme  Court  that  "  comity  is  not  a  rule 
of  law,  but  one  of  practice,  convenience  and  expediency,"  there  would  have 
been  less  confusion  than  appears  from  the  following  quotations,  and  vastly 
less  than  appears  when  we  read  the  opinions  of  the  circuit  courts.  In  the 
nature  of  things  there  can  be  no  enforced  comity.  The  only  approach  to  such 
a  rule  is  that  in  Kessler  v.  Eldred,  206  U.  S.  285,  (see  §  31);  but  the  rule 
of  that  case  is  one  of  res  judicata  rather  than  of  comity. 

The  question  of  comity  arises,  or  is  attempted  to  be  raised,  perhaps  more 
frequently  in  connection  with  applications  for  injunctions  pendente  lite  than 
in  any  other,  but  it  will  be  found  that  the  distinct  tendency  of  the  courts 
in  all  questions  involving  the  exercise  of  the  extraordinary  powers  of  in- 
junctive relief  is  to  rely  upon  the  exercise  of  a  sound  discretion  in  view  of 
the  record  presented,  and  not  to  rest  the  exercise  of  such  authority  upon  the 
event  of  another  cause  or  the  opinion  of  another  court. 

Comity  is  not  a  rule  of  law,  but  one  of  practice,  convenience  and  expedi- 
ency. It  is  something  more  than  mere  courtesy,  which  implies  only  deference 
to  the  opinion  of  others,  since  it  has  a  substantial  value  in  securing  uni- 
formity of  decision,  and  discouraging  repeated  litigation  of  the  same  question. 


§§  251-252  COMITY  239 

But  its  obligation  is  not  imperative.  If  it  were,  the  indiscreet  action  of  one 
court  might  become  a  precedent,  increasing  in  weight  with  each  successive 
adjudication,  until  the  whole  country  was  tied  down  to  an  unsound  principle. 
Comity  persuades;  but  it  does  not  command.  It  declares,  not  how  a  case 
shall  be  decided,  but  how  it  may  with  propriety  be  decided.  It  recognizes 
the  fact  that  the  primary  duty  of  every  court  is  to  dispose  of  cases  according 
to  the  law  and  the  facts;  in  a  word,  to  decide  them  right.  In  doing  so,  the 
judge  is  bound  to  determine  them  according  to  his  own  conviction.  It 
demands  of  no  one  that  he  shall  abdicate  his  individual  judgement,  but  only 
that  deference  shall  be  paid  to  the  judgements  of  other  co-ordinate  tribunals. 
—  Mast  v.  Stover,  177  U.  S.  485;  44  L.  Ed.  856;  20  S.  Ct.  708. 

A  direct  utterance  (referring  to  Stover  v.  Mast,  89  Fed.  333,  affirmed  177 
U.  S.  485)  could  not  have  made  it  more  clear  that  no  court  is  to  be  reviewed 
or  reversed,  without  an  enquiry  into  the  merits,  merely  because  it  failed  or 
refused  to  follow  the  decision  of  another  court  to  which  it  was  not  directly 
subordinate.  Not  less  than  of  the  Supreme  Court,  is  it  the  duty  of  this  court, 
within  the  sphere  of  its  jurisdiction,  to  decide  questions  presented  according 
to  its  own  judgment.  The  purpose  of  Congress  in  creating  the  circuit  courts 
of  appeals  and  in  conferring  upon  them  the  extraordinary  jurisdiction  given 
them  in  appeals  from  interlocutory  orders  of  injunction,  would  be  to  a  large 
extent  thwarted  if  the  doctrine  of  comity,  always  factitious  and  sometimes 
pernicious,  should  be  allowed  in  these  courts  to  take  the  place  of  independent 
and  conscientious  judgment.  The  safeguard  against  the  evil  of  diverted  and 
discordant  decisions  in  the  different  circuits  is  in  the  power  given  to  the 
Supreme  Court  to  require  the  certification  of  cases  to  that  Court  for  review; 
and  evidently  a  prompt  and  healthy  exercise  of  that  power  is  more  likely  to 
follow  inconsistency  of  decision  in  the  courts  of  appeals  than  a  harmony  of 
rulings  brought  about  by  considerations  of  deference  to  comity.  —  Welsbach 
v.  Cosmopolitan,  104  Fed.  83;  43  C.  C.  A.  418. 

§  251.    Between  Circuit  Courts. 

The  rule  of  practice  for  one  member  of  a  court  to  regard  the  prior  decision 
of  another,  in  cases  of  this  kind,  as  to  be  followed  until  otherwise  authori- 
tatively adjudicated,  seems  to  be  justified  in  the  orderly  conduct  of  proceed- 
ings. —  Brill  v.  Peckham,  189  U.  S.  57;  47  L.  Ed.  706;  23  S.  Ct.  562. 

A  circuit  court  will  give  respect  to  a  decision  of  another  circuit  upon  the 
same  patent  and  the  same  proofs;  and  will  consider  only  new  matters  of 
defense  presented.  —  Wanamaker  v.  Enterprise,  53  Fed.  791 ;  3  C.  C.  A.  672. 

National  v.  American,  53  Fed.  367. 

§  252.    Between  Circuit  Court  of  Appeals  and  Circuit  Court. 

The  court  below  followed  the  decision  of  the  court  in  Massachusetts 
(National  v.  Boston,  45  Fed.  481).  The  course  pursued  in  this  regard  was  in 
conformity  with  the  rule,  well  established  in  this  circuit,  to  follow,  unless 
under  extraordinary  circumstances,  a  prior  judgment  of  any  other  of  the 
circuit  courts  of  the  United  States,  wherever  the  patent,  the  question  and  the 
evidence  are  the  same  in  both  suits.  We  do  not  question  the  propriety  of 
this  practice  as  it  has  heretofore  prevailed ;  but  it  cannot  be  extended  to  this 
court.  The  decisions  of  the  several  circuit  courts,  whenever  pertinent,  will 
be  attentively  considered  by  this  tribunal;  but  because  they  are  subject  to 
appeal,  and  for  other  manifest  reasons,  it  is  not  admissible  for  a  court  of 
review  to  accord  them  controlling  effect.  —  National  v.  American,  53  Fed. 
367;  3C.  C.  A.  559. 


240  THE   FIXED   LAW    OF    PATENTS  §§  253-254 

The  practice  of  comity  existing  between  circuit  courts  is  not  applicable  to 
this  court.  —  Wanamaker  v.  Enterprise,  53  Fed.  791 ;  3  C.  C.  A.  672. 
National  v.  American,  53  Fed.  367. 

Upon  a  final  hearing  upon  the  merits  it  would  be  different,  for  then  con- 
siderations of  comity  might  properly  have  weight  with  the  court  below, 
which  we  should  not  hesitate,  as  an  appellate  court,  to  disregard  in  finally 
settling  the  rights  of  the  parties.  —  Duplex  v.  Campbell,  69  Fed.  250;  16 
C.  C.  A.  220. 

Questions  on  appeals  of  this  character  are  ordinarily  to  be  treated  in  this 
court  from  the  standpoint  from  which  they  were  viewed  by  the  circuit  court, 
and  the  decision  on  merits  by  a  circuit  court  of  another  circuit,  sustaining 
the  patent,  is  therefore  usually  of  controlling  weight  here,  as  it  should  be  in 
the  court  below.  —  Thomson-Houston  v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

This  court  as  an  appellate  tribunal  is  not  in  the  least  concluded  by  the 
decision  in  the  New  York  case,  nor  do  considerations  of  comity  toward  a 
circuit  court  with  respect  to  its  rulings  have  the  same  potency  with  a  circuit 
court  of  appeals  as  they  may  properly  have  with  a  circuit  court  when  con- 
fronted with  the  alternative  of  following  or  departing  from  the  ruling  of 
another  circuit  court.  —  McNeely  v.  Williames,  96  Fed.  978;  37  C.  C.  A.  641. 


§  253.    Between  Circuit  Courts  of  Appeals. 

Whether  and  how  far  in  a  case  like  this,  in  which  a  patent  has  been  held 
invalid  by  the  circuit  court  of  appeals  in  another  circuit,  this  court  should 
be  controlled  by  such  judgement  —  quaere.  —  Hammond  v.  Weld,  72  Fed. 
171;  18  C.  C.  A.  502. 

It  is  not  claimed  that  the  judgment  of  the  Circuit  Court  of  Appeals  for  the 
Second  Circuit  is  controlling  in  the  sense  that  the  question  is  res  adjudicata, 
but  the  high  respect  we  have  for  the  ability,  learning  and  experience  of  the 
judges  of  that  court  is  a  very  persuasive  reason  for  following  it,  when  by  so 
doing  we  may  assist  in  securing  that  uniformity  which  is  very  desirable, 
thus  avoiding  confusion  and  preventing  repeated  litigation  of  the  same 
question;  but  the  parties  before  us  have  the  right  to  our  individual  judg- 
ment, and  considerations  of  convenience  and  expediency  must  give  way  to 
demands  of  duty,  from  which  we  cannot  be  absolved  by  the  doctrine  of 
comity.  —  Imperial  v.  Crown,  139  Fed.  312;  71  C.  C.  A.  442. 

Mast  v.  Stover,  177  U.  S.  488. 

In  accordance  with  our  usual  custom  of  yielding  to  decisions  of  the  circuit 
courts  of  appeals  of  other  circuits,  we  perceive  no  reason  why  we  should  not 
follow  this  one.  Therefore  the  only  question  left  for  our  investigation  is 
that  of  anticipation,  and  we  open  that  only  so  far  as  it  appears  that  the 
alleged  anticipations  are  shown  to  us  which  were  not  shown  to  the  Circuit 
Court  of  Appeals  for  the  Second  Circuit.  —  O'Brien  v.  Foster,  159  Fed. 
710;  86  C.  C.  A.  464. 


§  254.     Prior  Adjudication. 

We  appreciate  the  great  importance  in  patent  litigation  of  uniformity  of 
rulings  by  courts  of  concurrent  jurisdiction,  and  ordinarily,  it  is  a  com- 
mendable practice  upon  a  question  of  the  allowance  of  a  preliminary  in- 
junction, to  accept  and  follow  the  decisions  of  a  circuit  court  of  appeals  of 


§§  255-257  COMITY  241 

another  circuit  sustaining  and  construing  a  patent.  Such  practice  has  always 
prevailed  in  this  circuit.  In  the  present  case,  however,  the  circumstances 
are  so  unusual  that  we  are  constrained  to  make  an  independent  investigation 
as  to  the  validity  and  scope  of  the  first  claim  of  this  reissue.  —  Horn  v. 
Pelzer,  91  Fed.  665;  34  C.  C.  A.  45. 

American  v.  McKeesport,  57  Fed.  661;  Edison  v.  Phila.  60  Fed.  397;  Crump 
v.  Light  Co.  65  Fed.  551. 

Note:  But  the  District  Judge  dissents;  and  on  what  possible  ground  the 
court  could  have  refused,  at  this  stage  of  the  litigation,  to  follow  the  decision 
of  the  Second  Circuit,  is  absolutely  impossible  to  understand. 

Although  the  defendants  in  this  case  are  not  the  same,  or  in  privity  with 
the  defendants  in  other  cases,  we  think,  as  a  general  rule,  and  especially  in 
patent  cases,  we  should  follow  the  decisions  of  the  circuit  court  of  appeals,  of 
another  circuit  upon  final  hearing  with  respect  to  the  issues  determined,  if 
based  upon  substantially  the  same  state  of  facts,  unless  it  should  clearly 
appear  that  there  was  manifest  error.  —  Beach  v.  Hobbs,  92  Fed.  146 ;  34 
C.  C.  A.  248. 

§  255.     Supreme  Court  and  Circuit  Courts  of  Appeals. 

Of  course  we  are  bound  to  give  to  this  question  of  anticipation  an  inde- 
pendent consideration.  At  the  same  time,  we  feel  ourselves  bound  to  defer 
somewhat  to  the  unanimity  of  opinion  upon  the  part  of  so  many  learned  and 
distinguished  judges,  whose  lives  have  been  largely  devoted  to  the  examina- 
tion of  patent  causes.  —  Hobbs  v.  Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21 
S.  Ct.  409. 

§  256.     Weight  of. 

The  obligation  to  follow  the  decisions  of  other  courts  in  patent  cases  of 
course  increases  in  proportion  to  the  number  of  courts  which  have  passed 
upon  the  question,  and  the  concordance  of  opinion  may  have  been  so  general 
as  to  become  a  controlling  authority.  So,  too,  if  a  prior  adjudication  has 
followed  a  final  hearing  upon  pleadings  and  proofs,  especially  after  a  pro- 
tracted litigation,  greater  weight  should  be  given  to  it  than  if  it  were  made 
upon  a  motion  for  a  preliminary  injunction.  —  Mast  Co.  v.  Stover  Co.  177 
U.  S.  485;  44  L.  Ed.  856;  20  S.  Ct.  708. 

Macbeth  v.  Gillinder,  54  Fed.  169;  Electric  v.  Edison,  61  Fed.  834;  Edison  v. 
Beacon,  54  Fed.  678;  Beach  v.  Hobbs,  82  Fed.  916;  Newall  v.  Wilson,  2  DeG. 
M.  &  G.  282. 

Those  adjudications,  except  the  first,  it  is  fair  to  assume,  were  governed  by 
the  well-known  rule  of  comity  by  which  one  federal  court  follows  the  ruling  of 
another,  especially  in  patent  cases,  and  are  therefore  not  entitled  to  the  weight 
of  so  many  independent  judgements.  —  National  v.  Quick,  74  Fed.  236; 
20  C.  C.  A.  410. 

That  great  deference  should  be  paid  to  the  circuit  court  of  appeals  of  the 
third  circuit  is  true,  and  we  have  conformed  to  that  duty,  but  have  not  been 
able  to  accord  with  the  result  which  that  court  reached.  —  Hanifen  v.  Price, 
102  Fed.  509;  42  CCA.  484. 

§  257.    Miscellaneous. 

Comity,  however,  has  no  application  to  questions  not  considered  by  the 
prior  art,  or,  in  patent  cases,  to  alleged  anticipating  devices  which  were  not 


242  THE    FIXED    LAW    OF    PATENTS  §  257 

laid  before  the  court.  —  Mast  v.  Stover,  177  U.  S.  485;  44  L.  Ed.  856;  20 
S.  Ct.  708. 

Prima  facie,  a  decision  founded  upon  one  patent  not  in  suit  here,  and 
another  decision  founded  upon  three  patents  collectively,  one  only  of  which 
is  in  suit  here,  the  two  decisions  declaring  that  an  invention  used  by  a  de- 
fendant who  is  not  the  defendant  here,  against  a  machine  of  that  defendant 
differing  widely  in  its  structure  from  the  one  complained  of  here,  cannot  be 
treated  as  binding  in  the  decision  which  this  court  may  feel  bound  to  render 
in  the  suit  at  bar.  —  Boyden  v.  Westinghouse,  70  Fed.  816;  17  C.  C.  A.  430. 

A  decent  respect  for  the  stability  of  judicial  decision,  and  a  proper  regard 
for  the  security  of  property  in  patents,  requires  that  we  shall  not  reverse  our 
original  holding  in  respect  of  the  same  patent,  unless  convinced  of  a  very 
palpable  error  in  law  or  in  fact.  —  Penfield  v.  Potts,  126  Fed.  475;  61  C. 
C.  A.  371. 

We  have  especially  shown  the  propriety  of  following  decisions  of  the  Cir- 
cuit Courts  of  Appeals  with  regard  to  decisions  touching  letters  patent  for 
inventions  in  Beach  v.  Hobbs,  92  Fed.  146;  Hatch  v.  Electric,  100  Fed.  975. 
The  Supreme  Court  laid  down  a  like  practical  rule  in  Hobbs  v.  Beach,  180 
U.  S.  383.  In  the  present  case,  however,  while  the  Circuit  Court  might  well 
have  felt  constrained  to  follow  the  result  of  the  Circuit  Court  of  Appeals  for 
the  Second  Circuit,  the  body  of  prior  judicial  decisions  is  of  such  an  inhar- 
monious character  that  we  may  well  make  an  independent  investigation, 
based  on  the  evidence  before  us.  —  Westinghouse  v.  Stanley,  133  Fed.  167; 
68  C.  C.  A.  523. 

The  discussion  in  the  opinion  in  the  last  case  cannot  be  said  to  particularly 
bind  the  court,  because  it  was  carried  out  for  the  most  part  by  simply  making 
long  extracts  from  the  opinion  passed  down  in  the  Circuit  Court.  This  is  a 
mere  quotation  from  the  opinion  of  the  Circuit  Court,  and  not  an  expression 
devised  by  the  Supreme  Court ;  and  it  is  not  to  be  assumed  that  where  an 
appellate  tribunal,  as  in  this  case,  quotes  long  extracts,  it  is  held  to  be  bound 
by  all  the  expressions  contained  in  them.  —  Westinghouse  v.  Stanley,  138 
Fed.  823;  71  C.  C.  A.  189. 

No  two  cases  are  identical  upon  the  facts.  Differences  can  always  be 
pointed  out,  but  the  question  for  the  court  to  determine  is  are  the  differ- 
ences of  such  a  character  as  to  induce  the  court  to  believe  that  if  the  facts 
in  the  second  case  had  been  present  in  the  first  case  the  same  result  would 
have  been  reached;  in  other  words,  are  the  cases  the  same  in  principle?  — 
Cortelyou  v.  Johnson,  145  Fed.  933;  76  C.  C.  A.  455. 

See  Cortelyou  v.  Carter,  118  Fed.  1022;  Broderick  v.  Mayhew,  131  Fed. 
92,  affd.  137  Fed.  596. 

The  fact  that  the  court  is  now  differently  constituted  is,  of  course,  quite 
immaterial.  If  entitled  to  be  considered  at  all  upon  a  question  of  general 
significance,  like  that  under  consideration,  it  should  operate  as  an  additional 
reason  for  adhering  to  existing  conditions.  It  is  the  court,  not  the  indi- 
viduals composing  it,  that  declares  the  law;  and  it  would  be  unseemly,  to 
say  the  least,  to  review  propositions  previously  established,  even  though  as 
an  original  proposition  we  might  have  been  led  to  a  different  conclusion.  — 
Cortelyou  v.  Johnson,  145  Fed.  933;  76  C.  C.  A.  455. 

Cimiotti  v.  Nearseal,  123  Fed.  479. 


§§  258-261  COMMISSIONER    OF    PATENTS  243 

COMMISSIONER  OF  PATENTS. 


Statutory  Provision  §  258 
General  Statement  §  259 
Actions  §  260 
Decisions  of  §  261 


Powers  of  §  263 

See —  Appeals  §  114;  Defenses  § 
308;  Interferences  §  580;  Patent 
Office   §    783;     Reissue   §   880;     Res 


Duties  §  262  Judicata  §  895 

§  258.     Statutory  Provisions. 

Sections  476,  479,  481,  483,  484,  4883,  4893,  4905,  4910,  and  4913,  R.  S. 
relate  especially  to  the  Commissioner.  Of  these  only  the  following  need 
be  quoted: 

The  Commissioner  of  Patents,  under  the  direction  of  the  Secretary  of  the 
Interior,  shall  superintend  or  perform  all  duties  respecting  the  granting  and 
issuing  of  patents  directed  by  law;  and  he  shall  have  charge  of  all  books, 
records,  papers,  models,  machines,  and  other  things  belonging  to  the  Patent 
Office.  —  R.  S.  481. 

The  Commissioner  of  Patents,  subject  to  the  approval  of  the  Secretary 
of  the  Interior,  may  from  time  to  time  establish  regulations,  not  incon- 
sistent with  law,  for  the  conduct  of  proceedings  in  the  Patent  Office.  —  R.  S. 
483. 

§  259.     General  Statement. 

The  duties  of  the  Commissioner  are,  therefore,  both  executive  and  judicial. 
The  records  of  the  executive  duties  performed  are  to  be  found  in  the  Annual 
Reports  of  the  Commissioner,  and  the  records  of  the  judicial  acts  are  to  be 
found  in  the  Patent  Office  Gazette  and  in  the  Commissioner's  Decisions. 

§  260.     Actions  of. 

The  issuance  of  a  patent  is  prima  facie  evidence  of  the  regularity  of  pro- 
ceedings had.  —  Railroad  v.  Stimpson,  14  Pet.  448;  10  L.  Ed.  535. 

It  is  to  be  presumed,  until  the  contrary  is  made  to  appear,  that  the  com- 
missioner did  his  duty  correctly  in  granting  the  reissued  patent.  —  Klein 
v.  Russell,  86  U.  S.  433;  22  L.  Ed.  116. 

The  action  of  the  Commissioner  in  any  case,  within  the  limits  of  his  author- 
ity, is  not  open  to  collateral  impeachment.  But  a  reissue  for  a  different 
invention  is  an  excession  of  authority  contrary  to  law.  —  Russell  v.  Dodge, 
93  U.  S.  460;  23  L.  Ed.  973. 

Seymour  v.  Osborne,  11  Wall.  544;  Wicks  v.  Stevens,  2  Woods,  312. 

Yet  both  these  matters  (abandonment  and  public  use)  as  well  as  the 
originality  of  the  invention,  upon  which  the  Commissioner  must  pass,  must 
be  contested  in  suits  brought  for  infringement  of  the  patent.  Such  defenses 
are  allowed  by  the  statute.  —  Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed. 
939. 

§  261.     Decisions  of. 

No  other  tribunal  is  empowered  to  controvert  the  sufficiency  of  the  proofs 
before  the  commissioner  incident  to  the  performance  of  his  duties.  —  Rail- 
road v.  Stimpson,  14  Pet,  448;   10  L.  Ed.  535. 

Application  for  a  patent  is  required  to  be  made  to  the  commissioner 
appointed  under  authority  of  law,  and  inasmuch  as  that  officer  is  empowered 
to  decide  upon  the  merits  of  the  application,  his  decision  in  granting  the 


244  THE    FIXED    LAW    OF    PATENTS  §§  262-263 

patent  is  presumed  to  be  correct.  —  Agawam  v.  Jordan,  74  U.  S.  583 ;    19 
L.  Ed.  177. 

Pitts  v.  Hall,  2  Blatchf.  229;   Union  v.  Matthieson,  2  Fish.  600. 

Inasmuch  as  that  officer  is  empowered  to  decide  upon  the  merits  of  the 
application,  his  decision  in  granting  the  patent  is  presumed  to  be  correct.  — 
Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

Agawam  v.  Jordan,  7  Wall.  597. 

The  action  of  the  commissioner  of  patents  in  granting  a  patent  is  not 
conclusive  either  as  to  novelty,  utility  or  prior  use.  —  Reckendorfer  v. 
Faber,  92  U.  S.  347;  23  L.  Ed.  719. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Stimpson  v.  Woodman,  10  Wall.  117; 
Hailes  v.  Van  Wormer,  20  Wall.  353;  Rubber  v.  Howard,  20  Wall.  498;  Smith 
v.  Nichols,  21  Wall.  115;  Hicks  v.  Kelsey,  18  Wall.  670;  Seymour  v.  Osborne,  11 
Wall.  516. 

In  matters  of  this  description,  in  which  the  action  of  the  Commissioner  is 
quasi  judicial,  the  fact  that  no  appeal  is  expressly  given  to  the  Secretary  of 
the  Interior  is  conclusive  that  none  is  to  be  implied.  —  Butterworth  v.  Hoe, 
112  U.  S.  50;  28  L.  Ed.  656;  5  S.  Ct.  25. 

The  decision  of  the  Commissioner  in  favor  of  the  applicant,  upon  the  ques- 
tion whether  the  invention  has  been  abandoned,  is  not  conclusive,  but  may  be 
contested  and  reviewed  in  a  suit  brought  for  the  infringement  of  the  patent. 
—  U.  S.  v.  Whitney,  118  U.  S.  22;  30  L.  Ed.  53;  6  S.  Ct.  950. 

Planing  v.  Keith,  101  U.  S.  479. 

§  262.     Duties. 

Patents  are  public  records  of  which  all  persons  are  bound  to  take  notice. 
Upon  proper  application  and  the  payment  of  fees  the  commissioner  is  obliged 
to  furnish  copies  of  such  records.  —  Boyden  v.  Burke,  14  How.  575 ;  14  L. 
Ed.  548. 

The  relator  had  done  all  in  his  power  to  make  his  application  effectual, 
and  had  a  right  to  consider  it  properly  before  the  commissioner.  If  the 
commissioner  refused  to  take  any  action  mandamus  would  lie;  but  having 
acted  the  remedy  is  by  appeal.  —  Holloway  v.  Whiteley,  71  U.  S.  522;  18 
L.  Ed.  335. 

§  263.     Powers  of. 

Doubtless  the  several  requirements  of  the  statute  may  be  regarded  as 
conditions  precedent  to  the  right  of  the  commissioner  to  grant  the  applica- 
tion, as  they  must  appear  on  the  face  of  the  letters  patent,  and  are  always 
open  to  legal  construction  as  to  their  sufficiency.  —  Seymour  v.  Osborne, 
78  U.  S.  516;  20  L.  Ed.  33. 

When  patents  were  issued  by  the  Secretary  of  State,  it  was  held  that 
the  power  to  correct  a  mistake  resided  in  that  officer,  irrespective  of  the 
statute.  Grant  v.  Raymond,  6  Pet.  243.  By  the  laws  creating  the  office  of 
Commissioner  of  Patents  and  transferring  to  the  Secretary  of  the  Interior 
the  power  previously  exercised  by  the  Secretary  of  State,  it  has  devolved 
upon  the  Commissioner  to  superintend,  execute  and  perform  all  acts 
respecting  the  granting  and  issuing  of  patents,  subject  to  revision  by  the 
Secretary  of  the  Interior.  Original  power  was  conferred  upon  him  to  grant 
reissue  by  permissive  language.    By  the  act  of  July  8,  1870  (16  Stat.  205, 


§§  264-266  COMPOSITION    OF   MATTER  245 

c.  230)  the  permissive  words  were  substituted  by  the  mandatory  words  of  the 
statute  as  it  now  exists.  It  is  the  effect  of  this  legislation  to  delegate  to  the 
commissioner,  subject  to  the  interposition  of  the  Secretary  of  the  Interior, 
all  those  acts  with  respect  to  the  issuing  of  patents  which  originally  devolved 
upon  the  Secretary  of  State.  —  Thomson-Houston  v.  Black  River,  135  Fed. 
759;  68  C.  C.  A.  461. 

COMPOSITION  OF  MATTER. 

Statutory  Provision  §  264  See  —  Manufacture   §   772;     Process 

General  Statement  §  265  §§  820-1;  Product  §  823 

General  Rules  §  266 

§  264.     Statutory  Provision. 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter  *  *  *  —  R.  S.  4886. 

When  the  invention  or  discovery  is  of  a  composition  of  matter,  the  appli- 
cant, if  required  by  the  Commissioner,  shall  furnish  specimens  of  ingredients 
and  of  composition,  sufficient  in  quantity  for  the  purpose  of  experiment. 
—  R.  S.  4890. 

§  265.    General  Statement. 

The  line  of  separation  between  a  composition  of  matter  and  an  article 
of  Manufacture  is  not  always  distinct.  It  will  be  noted  that  a  composition 
of  matter  may  also  be  an  article  of  manufacture,  which  may  be  patentable ; 
but  that,  on  the  other  hand,  an  article  of  manufacture,  in  order  to  be  patent- 
able, need  not  be  composed  of  a  novel  combination  of  ingredients  which 
would  render  it  patentable  as  a  composition  of  matter. 

The  subjects  of  composition  of  matter  and  Manufacture  and  Process 
are  more  or  less  closely  related. 

§  266.     General  Rules. 

In  most  compositions  of  matter,  some  small  difference  in  the  proportions 
must  occasionally  be  required,  since  the  ingredients  proposed  to  be  com- 
pounded must  be  in  some  degree  superior  or  inferior  to  those  most  commonly 
used.  —  Wood  v.  Underhill,  5  How.  1 ;   12  L.  Ed.  23. 

When  the  specification  of  a  mere  composition  of  matter  gives  only  the 
names  of  the  substances  which  are  to  be  mixed  together,  without  stating  any 
relative  proportion,  undoubtedly,  it  would  be  the  duty  of  the  court  to  declare 
the  patent  void.  And  the  same  rule  would  prevail  when  it  was  apparent 
that  the  proportions  were  stated  ambiguously  and  vaguely.  For  in  such 
cases  it  would  be  apparent  on  the  face  of  the  specification  that  no  one  could 
use  the  invention  without  first  ascertaining  by  experiment  the  exact  pro- 
portions. —  Wood  v.  Underhill,  5  How.  1 ;  12  L.  Ed.  23. 

The  character  and  purpose  of  the  specification  as  compared  with  the 
English  system.  —  Hogg  v.  Emerson,  6  How.  437 ;   12  L.  Ed.  505. 

*  Where  a  patent  upon  an  article  of  manufacture  does  not  claim  the  com- 

position of  matter,  though  it  describes  it,  such  omission  is  public  dedication  of 
the  said  composition.  —  Underwood  v.  Gerber,  149  U.  S.  224;  37  L.  Ed. 
710;  13  S.  Ct.  854. 

Had  the  description  and  claims  proceeded  upon  some  designated  treats 
ment  or  process,  we  might  have  found  a  way  to  sustain  their  validity.  But  the 


246  THE    FIXED    LAW    OF    PATENTS  §§  267-269 

patent  is  ambitious  beyond  this.  It  seeks  to  exclude  the  use,  by  others,  of 
pulverized  silica  in  any  proportion.  It  surveys  a  field  that  includes  any  silicate 
"  having  a  frictional  property  and  capable  of  being  pulverized  and  com- 
pacted." To  sustain  this  would  be  to  hold  that  the  use  of  pulverized  silica 
in  a  billiard  chalk,  independently  of  the  proportions  employed,  was  a  dis- 
covery properly  embodied  in  appellant's  patent.  This  the  state  of  the  art  will 
not  justify.  —  Hoskins  v.  Matthes,  108  Fed.  404;  47  C.  C.  A.  434. 

CONGRESS. 

Constitutional  Powers  §  267  Plenary  Powers  §  268 

§  267.     Constitutional  Powers. 

The  Congress  shall  have  power : 

8.  To  promote  the  progress  of  science  and  useful  arts  by  securing  for 
limited  times  to  authors  and  inventors  the  exclusive  right  to  their  respective 
writings  and  discoveries. 

9.  To  constitute  tribunals  inferior  to  the  Supreme  Court.  —  Const.  Art. 
I,  Sec.  VIII. 

It  will  thus  be  seen  that  the  power  to  create  the  patent  monopoly  resides 
in  paragraph  8,  while  the  power  to  maintain  and  protect  that  monopoly 
emanates  from  paragraph  9.  In  the  exercise  of  its  power  Congress  creates 
nothing  that  did  not  exist  before.  Continental  v.  Eastern,  210  U.  S.  405. 
It  would  not  have  been  enough  to  empower  Congress  to  create  a  monopoly 
in  derogation  of  the  common-law;  the  power  to  punish  for  trespass  and  to 
restrain  from  infringement  are  vital  necessities. 

§  268.     Plenary  Powers. 

The  powers  of  Congress  are  plenary.  A  patent  may  be  granted  by  it 
wholly  independently  of  the  Patent  Office  and  the  statutes  relating  to  the 
regular  granting  of  patents.  Such  power  has  been  exercised;  but  it  would 
be  only  in  the  event  of  a  most  extraordinary  state  of  facts  that  such  power 
would  be  again  asserted.  It  has  not  been  asserted  for  years,  and  stern  refusal 
has  met  every  attempt  to  invoke  these  powers. 

The  power  of  Congress  to  legislate  upon  the  subjects  of  patents  is  plenary 
by  the  terms  of  the  Constitution,  and  as  there  are  no  restraints  on  its  exercise, 
there  can  be  no  limitation  of  their  rights  to  modify  them  at  their  pleasure, 
so  they  do  not  take  away  the  rights  of  property  in  existing  patents.  — 
McClurg  v.  Kingsland,  1  How.  202;  11  L.  Ed.  102. 

CONTEMPT. 

General  Statement  §  269  |      See  —  Injunction  §§  536-8,  577 

§  269.     General  Statement. 

Punishment  for  violation  of  a  court  order  or  decree  occurs,  in  patent 
causes,  well-nigh  invariably  in  connection  with  injunctions,  and  most  com- 
monly with  preliminary  injunctions.  In  order  that  the  entire  appellate  law 
on  the  subject  may  be  studied  together,  all  rulings  relating  to  contempt  are 
assembled  under  Injunction  —  Appeals,  §  536,  and  Injunction  —  Viola- 
tion of,  §  577. 

COPARTNERSHIP. 

Miscellaneous  Rulings  §  270  ventions  §  704;   License  §  749;    Title 

See  —  Assignment  .?   15.5;    Joint  In-  |        §925 


§§  270-271  CORPORATIONS  247 

§  270.     Miscellaneous  Rulings. 

It  is  competent  for  two  persons,  joint  owners  of  letters  patent,  whether 
valid  or  invalid,  to  enter  into  a  copartnership  for  the  manufacture  and  sale 
of  the  patented  machines  and  to  enter  into  an  agreement  not  to  manufacture 
independently  thereunder,  and  such  agreement  is  not  in  restraint  of  trade.  — 
Kinsman  v.  Parkhurst,  59  U.  S.  289;   15  L.  Ed.  385. 

A  copartner  holding  no  interest  in  the  patent  could  not  sue  on  the  patent 
for  such  damages  or  any  part  of  them.  —  Yale  v.  Sargent,  117  U.  S.  536; 
29  L.  Ed.  954;  6  S.  Ct.  934. 

The  plaintiff,  as  the  owner  of  the  patent,  is  entitled  to  recover  the  damages 
in  this  case.  He  may  be  accountable  to  his  copartner  for  a  part  of  them,  but 
the  copartner  could  not  sue  on  the  patent,  for  such  damages  or  any  part  of 
them.  —  Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed.  954;  6  S.  Ct.  934. 

Where  partnership  constructed  a  machine  with  knowledge  and  consent 
of  inventor  before  application,  an  implied  license  arises  in  favor  of  the  ma- 
chine so  constructed.  —  Wade  v.  Metcalf,  129  U.  S.  202;  32  L.  Ed.  661; 
9  S.  Ct.  271. 

A  license  from  one  member  to  the  firm  for  the  use  of  the  firm  expires  with 
the  firm.  —  Haffeke  v.  Clark,  50  Fed.  531 ;   ICC.  A.  570. 

Oliver  v.  Chemical  Co.,  109  U.  S.  75;  Nail  Factory  v.  Corning,  14  How.  193; 
Gayler  v.  Wilder,  10  How.  477. 

The  object  of  the  agreement  is  expressly  stated  to  be  the  creation  and 
building  up  of  a  good  business,  which  business  was  to  be  owned  and  shared 
equally  and  mutually  by  both.  The  learned  judge  who  tried  the  case  at 
circuit,  construed  this  agreement  as  providing  that  whatever  rights  either 
might,  by  its  terms,  acquire  in  future  inventions  of  the  other,  should  be 
"  qualified  down  to  the  requirements  of  the  business  "  they  were  undertaking 
to  build  up,  and  that  when  the  business  ceased,  each  patent  for  an  improve- 
ment should  remain  the  property  of  the  individual  inventor,  unqualified 
by  any  further  interest  of  the  other  therein.  —  Denning  v.  Bray,  61  Fed. 
651;  IOC.  C.  A.  6. 


CORPORATIONS. 

Miscellaneous  Rulings  §  271  §  156;   Infringement  §§  479-82;   In- 

See  —  Abatement  §  23;    Assignment  \      junction  §  547 

§  271.     Miscellaneous  Rulings. 

One  corporation  cooperating  with  another  in  the  infliction  of  a  wrong 
is  directly  responsible  for  the  resulting  damage.  —  Railroad  v.  Winans, 
58  U.S.  31;  15  L.Ed.  27. 

An  implied  license  arising  out  of  the  employment  and  invention  of  an 
employee  confers  upon  a  corporation  an  unassignable  right  only  and  does  not 
pass  to  a  new  corporation.  —  Hapgood  v.  Hewitt,  119  U.  S.  226;  30  L.  Ed. 
369 ;  7  S.  Ct.  193. 

Troy  v.  Corning,  55  U.  S.  193;   Oliver  v.  Rumford,  109  U.  S.  75. 

The  acquiescence  of  the  former  owners  of  the  patent  has  in  equity  the 
same  effect  upon  complainant's  rights  as  its  own  subsequent  neglect.  — 
Woodmansee  v.  Williams,  68  Fed.  489;  15  C.  C.  A.  520. 


248  THE    FIXED   LAW   OF   PATENTS  §§  272-273 

Rob.  Pat.  1194;  Spring  v.  Sewing,  Fed.  Cas.  13,258;  McClurg  v.  Kingsland,  1 
How.  205. 

A  mere  stockholder  is  not  bound  by  the  acts  of  a  corporate  body  for  which 
he  labors  as  an  employee.  —  American  v.  Phoenix,  113  Fed.  629;  51  C.  C.  A. 
339. 

Machine  Co.  v.  Woodward,  82  Fed.  97. 


COSTS. 

Statutory  Provisions  §  272 
Appeals  §  273  (see  §  109) 
Disclaimer  §  274  (see  §  339) 


Record  §  275 
Taxation  §  276 
Miscellaneous  §  277 


§  272.     Statutory  Provisions. 

Costs  may  be  recovered  by  a  plaintiff  or  complainant  who  succeeds  in  an 
action  for  infringement,  under  4919  R.  S.  In  like  manner,  a  defendant 
succeeding  in  such  an  action  is  entitled  to  his  costs  under  4920  R.  S. 

When  judgment  or  decree  is  rendered  for  the  plaintiff  or  complainant, 
in  any  suit  at  law  or  in  equity,  for  the  infringement  of  a  part  of  a  patent,  in 
which  it  appears  that  the  patentee,  in  his  specification,  claimed  to  be  the 
original  and  first  inventor  or  discoverer  of  any  material  or  substantial  part 
of  the  thing  patented,  of  which  he  was  not  the  original  and  first  inventor, 
no  costs  shall  be  recovered,  unless  the  proper  disclaimer,  as  provided  by 
the  patent  laws  (4917  R.  S.),  has  been  entered  at  the  Patent  Office  before 
the  suit  was  brought.    973  R.  S. 

*  *  *  But  in  every  such  case  in  which  a  judgment  or  decree  shall  be 
rendered  for  the  plaintiff,  no  costs  shall  be  recovered  unless  the  proper 
disclaimer  has  been  entered  at  the  Patent  Office  before  the  commencement 
of  the  suit.  *  *  *    —  4922  R.  S. 


§  273.    Appeals. 

An  appeal  involving  costs  will  not  be  entertained  here.  —  Paper  Bag 
Cases,  105  U.  S.  766;  26  L.  Ed.  959. 

When  the  plaintiffs  fail  in  this  court  on  both  appeals,  (one  in  which  they 
had  been  successful  below)  they  are  to  pay  the  costs  of  this  court  on  both 
appeals.  —  Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;   10  S.  Ct.  884. 

This  court  has  held  in  several  cases  that  an  appeal  does  not  lie  from  a 
decree  for  costs;  and  if  an  appeal  be  taken  from  a  decree  upon  the  merits, 
and  such  decree  be  affirmed  with  respect  to  the  merits,  it  will  not  be  re- 
versed upon  the  question  of  costs.  —  DuBois  v.  Kirk,  158  U.  S.  58;  39  L. 
Ed.  895;   15  S.  Ct.  729. 

Glendale  v.  Smith,  100  U.  S.  110;  Wood  v.  Weimer,  104  U.  S.  786;  Russell  v. 
Farley,  105  U.  S.  433. 

The  apportionment  of  costs  is  generally  for  the  master  and  the  circuit 
court,  and  appeals,  except  in  extraordinary  cases  will  not  be  entertained.  — 
Davis  v.  Parkman,  71  Fed.  961 ;  18  C.  C.  A.  398. 

The  patent  having  expired  pendente  lite  and  nominal  damages  having 
been  awarded,  an  appeal  cannot  lie,  as  the  only  question  is  one  of  costs.  — 
Gamewell  v.  Municipal,  77  Fed.  490;  23  C.  C.  A.  250. 


§  274  COSTS  249 

That  when  a  claim  sued  on  proves  invalid  on  appeal  costs  will  be  barred, 
see  Metallic  v.  Brown,  110  Fed.  665;  49  C.  C.  A.  147. 

Albany  v.  Felthousen,  20  Fed.  633;   Mann's  v.  Monarch,  34  Fed.  130. 

That  if,  on  appeal,  part  of  the  claims  sued  on  are  sustained  and  part  are 
not,  the  costs  will  be  divided,  see  Ide  v.  Trorlicht,  115  Fed.  137;  53  C.  C. 
A.  341. 

Willcox  v.  Merrow,  93  Fed.  206;  Thomson-Houston  v.  Elmira,  71  Fed.  396; 
Albany  v.  Felthousen,  20  Fed.  633. 

Undoubtedly  the  statutory  provision  (as  to  disclaimer)  applies  to  costs 
in  the  court  below,  but  no  case  has  been  brought  to  our  attention  in  which 
it  was  directly  held  that  the  statutory  provision  applies  to  costs  on  appeal. 
Our  decree  rectifies  the  error  of  the  court  in  dismissing  the  bill,  and  remands 
the  case  with  instructions  to  enter  a  decree  in  favor  of  the  complainants, 
which  should  have  been  rendered.  We  think,  then,  that  the  appellants  are 
rightfully  entitled  to  costs  in  this  court  upon  appeal,  but  not  to  costs  below. 
—  Kahn  v.  Starrels,  136  Fed.  597;  69  C.  C.  A.  371. 

If  the  mandate  of  this  court  requires  the  trial  court  to  enter  a  decree 
sustaining  some  parts  of  the  patent  and  finding  infringement,  the  statute 
will  then  have  application  and  the  patentee  will  not  be  allowed  his  costs 
because  he  had  not  entered  his  disclaimer  before  starting  his  suit  and  had 
put  the  defendant  and  the  public  to  the  disadvantage  incident  to  his  having 
asserted  certain  parts  of  his  patent  without  right.  We  are  not  satisfied  that 
either  section  (R.  S.  973  and  4922)  applies  to  a  decree  of  this  court  where  the 
decree  of  the  court  below  is  found  erroneous,  and  that  court  is  directed  to 
enter  a  decree  sustaining  some  of  the  claims  of  the  patent  in  suit.  If  that 
court  had  rendered  the  proper  decree,  the  patentee  would  not  have  been 
compelled  to  come  here  to  obtain  the  measure  of  relief  to  which  it  is  found  he 
was  entitled.  It  would  be  a  harsh  rule  that  would  not  allow  him  to  recover 
the  costs  of  his  appeal  from  an  erroneous  decree  so  far  as  relief  was  denied 
upon  the  claim  of  his  patents  which  were  good  because  success  had  not  at- 
tended the  whole  of  his  contention.  —  Johnson  v.  Foos,  141  Fed.  73;  72 
C.  C.  A.  105. 


§  274.     Disclaimer. 

Failure  to  make  necessary  disclaimer  before  suit  bars  costs.  —  Silsby  v. 
Foote,  61  U.  S.  378;   15  L.  Ed.  953. 

The  general  issue  of  infringement  was  raised  by  the  pleadings,  and  the 
answer,  in  general,  set  up  necessity  of  disclaimer.  The  proofs  were  made  on 
a  single  claim.  Under  such  circumstances  the  complainant  was  not  debarred 
costs  under  973  and  4922  U.  S.  R.  S.  —  Game  well  v.  Municipal,  77  Fed. 
490;  23  C.  C.  A.  250. 

Fabries  Co.  v.  Smith,  100  U.  S.  110;  Paper  Bag  Cases,  105  U.  S.  766;  Mills 
v.  Green,  159  U.  S.  651. 

This  claim  being  rejected  as  invalid,  and  no  disclaimer  having  been  filed 
before  the  suit  was  brought,  under  sec.  973  R.  S.  the  complainant  is  not 
entitled  to  recover  costs.  —  Fairbanks  v.  Stickney,  123  Fed.  79;  57  C.  C. 
A.  209. 

Metallic  v.  Brown,  110  Fed.  665. 


250  THE    FIXED    LAW    OF    PATENTS  §  275-277 

§  275.     Record. 

Where  appellee  has  encumbered  record  with  some  50  immaterial  patents, 
under  Rule  10  half  of  the  costs  of  the  printing  will  be  assessed  upon  appellee. 
—  B.  &  S.  Fastener  v.  Kraetzer,  150  U.  S.  Ill ;  37  L.  Ed.  1019;  14  S.  Ct.  48. 

There  was  so  much  irrelevant  matter  introduced  into  the  case  as  to  make 
it  inequitable  that  the  defendant  should  pay  costs  in  this  court,  and  he  should 
not  be  compelled  to  pay  the  costs  in  the  circuit  court  which  were  caused  by 
this  class  of  evidence.  —  Ecaubert  v.  Appleton,  67  Fed.  917 ;  15  C.  C.  A.  73. 

That  $20.90  paid  by  appellant  to  the  commissioner  of  patents  for  copies 
of  patents  for  insertion  in  the  printed  record  may  be  taxed  as  costs  on  appeal. 
This  is  allowed.  It  is  part  of  the  cost  of  printing  the  record,  and  therefore 
taxable  here.  —  Lee  v.  Penberthy,  109  Fed.  964;  48  C.  C.  A.  760. 

§  276.     Taxation. 

The  costs  are,  perhaps,  never  in  fact,  taxed,  until  after  the  judgement  is 
rendered ;  and  in  many  cases  cannot  be  taxed  until  afterward  and  where  this 
is  the  case  the  amount  ascertained  is  usually,  under  the  direction  of  the  court, 
entered  nunc  pro  tunc  as  a  part  of  the  original  judgement.  And  this  mode  of 
proceeding  is  necessary  for  the  purposes  of  justice,  in  order  to  afford  the 
necessary  time  to  examine  and  decide  upon  the  several  items  of  costs,  to 
which  the  successful  party  is  lawfully  entitled.  —  Sizer  v.  Many,  16  How. 
98;  14  L.  Ed.  861. 

Costs  were  properly  allowed,  but  the  court  is  of  the  opinion  that  the 
complainant  was  not  entitled  to  an  allowance  for  any  expenses  beyond  the 
taxable  costs.  —  Parks  v.  Booth,  102  U.  S.  96;  26  L.  Ed.  54. 

§  277.     Miscellaneous. 

In  this  case  we  sustain  the  action  of  the  court  below  both  as  to  the  inter- 
locutory and  final  decree,  and,  as  costs  in  equity  and  admiralty  cases  are 
within  the  sound  discretion  of  the  court,  we  do  not  feel  inclined  to  disturb 
this  decree  in  awarding  full  costs  to  the  plaintiff.  —  DuBois  v.  Kirk,  158 
U.  S.  58;  39  L.  Ed.  895;  15  S.  Ct.  729. 

Canter  v.  American,  28  U.  S.  307;  Harmony  v.  U.  S.  43  U.  S.  110,  237;  Sap- 
phire v.  Napoleon,  85  U.  S.  51;    Kittridge  v.  Race,  92  U.  S.  116. 

Distinguishing,  Dobson  v.  Hartford,  114  U.  S.  442;  Dobson  v.  Dornan,  118 
U.  S.  10. 

The  co-complainant  licensor  would  undoubtedly  have  the  right  to  be 
protected  from  any  costs  that  might  be  adjudged  against  it,  or  incurred  in  the 
management  of  the  suit.  The  court,  upon  proper  motion,  would  without 
doubt  compel  this  protection.  The  usual  practice  is  in  such  cases,  to  require 
a  sufficient  bond  of  indemnity.  Under  such  conditions  there  would  be  an 
implied  contract  on  the  part  of  the  licensor  to  permit  the  use  of  its  name  by 
the  complainant.  —  Brush  v.  California,  52  Fed.  945 ;  3  C.  C.  A.  368. 

It  would  seem  that  the  death  of  one  or  two  copartner  defendants  after 
the  closing  of  the  record  and  before  decree,  does  not  effect  the  costs  as  they 
are  chargeable  against  the  surviving  partners.  —  Hillborn  v.  Hale,  69  Fed. 
958;  16  C.  C.  A.  569. 

The  statute  refers  to  depositions  taken  out  of  court  under  such  notice  or 
consent  as  will  entitle  them  to  be  filed  and  read  as  evidence  upon  the  hearing 


§277 


DAMAGES 


251 


of  the  case,  and  does  not  include  evidence  taken  either  in  court  or  before  a 
master  upon  a  reference.  —  Kissinger-Ison  v.  Bradford,  123  Fed.  91;  59 
CCA.  221. 

Troy  v.  Corning,  7  Blatchf.  16;  In  re  Strauss  v.  Meyer,  22  Fed.  467;  Spill  v. 
Celluloid,  28  Fed.  870;  Missouri  v.  Texas,  48  Fed.  775;  Ferguson  v.  Dent,  46 
Fed.  88. 

No  costs  will  be  recovered  by  either  party  in  this  court  or  in  the  court 
below;  each  party  having  succeeded  only  in  part.  —  Cleveland  v.  Detroit, 
131  Fed.  853;  68  C  C  A.  233. 

Appellant  urges  upon  our  consideration  an  alleged  error  of  the  court  in 
overruling  his  motion  to  tax  against  appellees  the  costs  occasioned  by  their 
propounding  alleged  improper  cross-examining  questions  to  appellant's 
witnesses.  The  motion  is  based  on  the  proposition  that  a  cross-examiner  in 
an  equity  suit  may  not  go  beyond  the  scope  of  the  direct  examination. 
Even  on  that  basis  the  ruling  was  right,  because  the  cross-examining 
questions  were  germane  to  the  matters  in  issue,  which  had  been  opened  up 
on  direct  examination.  —  Parsons  v.  New  Home,  134  Fed.  394;  67  C  C  A. 
392. 

Inasmuch  as  complainant  in  the  court  below  claimed  infringement  of  all 
the  claims  except  one,  and  on  the  taking  of  proofs  expressly  declined  to 
state  on  which  ones  it  relied,  and  now  abandons  all  but  four  of  said  claims, 
no  costs  will  be  allowed  in  favor  of  complainant  on  this  appeal.  —  Cayuta 
v.  Kennedy,  135  Fed.  537;  68  C  C  A.  563. 

That  where  officers  of  a  corporation,  acting  merely  as  such  officers,  are 
joined  as  defendants  and  the  bill  as  against  them  is  dismissed  by  the  appellate 
court,  costs  of  both  courts  will  go  to  them,  see  Western  v.  North,  135  Fed. 
79;  67  CC  A.  553. 

The  process  patent  was  contested  and  the  machine  patents  were  held  to 
be  wanting  in  invention.  The  process  patent  being  sustained,  Held:  In  such 
circumstances  we  do  not  feel  that  the  statute  requires  this  court  to  deny  the 
appellant  his  costs  in  this  court.  This  is  the  view  taken  by  the  Third  and 
Seventh  Circuits.  —  Johnson  v.  Foos,  141  Fed.  73;  72  C  C  A.  105. 

Kahn  v.  Starrels,  136  Fed.  597;    Ide  v.  Trorlicht,  115  Fed.  137. 

In  equity  cases  this  court  directs  the  imposition  of  costs  according  to 
the  circumstances,  and  apportions  them  or  denies  cost  altogether  by  no  iron- 
clad rule.  Indeed,  such  a  rule  could  not  be  well  prepared,  and  would  more 
often  than  otherwise  lead  to  injustice.  —  Johnson  v.  Foos,  141  Fed.  73; 
72  C  C  A.  105. 

Northern  v.  Snyder,  77  Fed.  818. 

Inasmuch  as  the  defendant  has  been  defeated  on  the  issues  contested,  and 
escapes  upon  a  defense  not  pleaded,  the  case  will  be  reversed,  with  costs  to 
the  complainant  in  the  court  below  and  no  costs  to  either  partv  in  this  court. 
Clancy  v.  Troy,  157  Fed.  554;  85  C  C  A.  314. 


DAMAGES. 

(See  §  825) 

Statutory  Provisions  §  278 

General  Statement  §  279 

Actual  §  280 

Designs  §  281  (see  §  328) 


In  Equity  §  282 

Increasing  §  283 

Interest  §  284 

Law  Actions  §  285  (see  §  733) 

Master's  Report  §  286 


252  THE   FIXED   LAW   OF   PATENTS  §  278 


Measure 
Absence   of   License   or   Royalty 
Measure  §  287 
Complainant's  Loss  §  288 
Deductions  and  Mitigations  §  289 
Defendant's  Gains  §  290 
Full  Damages  §  291 
License  Fee  §  292 
Nominal  §  293 
Royalty  §  294  (see  §  897) 


Speculative  §  295 

Miscellaneous  §  296 
Proof  of  §  297 
Segregation  §  298 
Miscellaneous  Rulings  §  299 
See  —  Designs  §  336;  Injunction  §§ 
556,    565;     Marking    "Patented"    § 
776;  Profits  §  825;  Statute  of  Limita- 
tions §  291 


§  278.     Statutory  Provisions. 

Damages  for  the  infringement  of  any  patent  may  be  recovered  by  action 
on  the  case,  in  the  name  of  the  party  interested  either  as  patentee,  assignee, 
or  grantee.  And  whenever  in  any  such  action  a  verdict  is  rendered  for  the 
plaintiff,  the  court  may  enter  judgment  thereon  for  any  sum  above  the 
amount  found  by  the  verdict  as  the  actual  damages  sustained,  according 
to  the  circumstances  of  the  case,  not  exceeding  three  times  the  amount  of 
such  verdict,  together  with  costs.  —  R.  S.  4919. 

The  several  courts  vested  with  jurisdiction  of  causes  arising  under  the 
patent  laws  shall  have  power  to  grant  injunctions  according  to  the  course  and 
principles  of  courts  of  equity,  to  prevent  the  violation  of  any  right  secured 
by  patent,  on  such  terms  as  the  court  may  deem  reasonable;  and  upon  a 
decree  being  entered  in  any  such  case  for  an  infringement,  the  complainant 
shall  be  entitled  to  recover,  in  addition  to  the  profits  to  be  accounted  for  by 
the  defendant,  the  damages  the  complainant  has  sustained  thereby;  and  the 
court  shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its  direction. 
And  the  court  shall  have  the  same  power  to  increase  such  damages,  in  its 
discretion,  as  is  given  to  increase  the  damages  found  by  verdicts  in  actions 
in  the  nature  of  actions  of  trespass  upon  the  case.  —  R.  S'.  4921. 

*  *  *  And  in  any  suit  for  infringement,  by  the  party  failing  so  to  mark, 
no  damages  shall  be  recovered  by  the  plaintiff,  except  on  proof  that  the 
defendant  was  duly  notified  of  the  infringement,  and  continued,  after  such 
notice,  to  make,  use,  or  vend  the  article  so  patented.  —  R.  S.  4900. 

The  Act  Feb.  4,  1887,  makes  this  special  provision  for  damages  for  the 
infringement  of  design  patents: 

*  *  *  Any  person  violating  the  provisions,  or  either  of  them,  of  this 
section,  shall  be  liable  in  the  amount  of  two  hundred  and  fifty  dollars;  and 
in  case  the  total  profit  made  by  him  from  the  manufacture  or  sale,  as 
aforesaid,  of  the  article  or  articles  to  which  the  design,  or  colorable 
imitation  thereof,  has  been  applied,  exceeds  the  sum  of  two  hundred  and 
fifty  dollars,  he  shall  be  further  liable  for  the  excess  of  such  profit  over  and 
above  the  sum  of  two  hundred  and  fifty  dollars ;  and  the  full  amount  of  such 
liability  may  be  recovered  by  the  owner  of  the  letters  patent,  to  his  own  use, 
in  any  circuit  court  of  the  United  States  having  jurisdiction  of  the  parties, 
either  by  action  at  law  or  upon  a  bill  in  equity  for  an  injunction  to  restrain 
such  infringement. 

That  nothing  in  this  act  contained  shall  prevent,  lessen,  impeach,  or  avoid 
any  remedy  at  law  or  in  equity  which  any  owner  of  letters  patent  for  a  design, 
aggrieved  by  the  infringement  of  the  same,  might  have  had  if  this  act  had 
not  been  passed;  but  such  owner  shall  not  twice  recover  the  profits  made 
from  the  infringement. 


§§  279-281  DAMAGES  253 

§  279.     General  Statement. 

The  terms  "  damages  "  and  "  profits  "  are  used  with  so  little  discrimination 
in  many  instances,  and  the  line  of  demarkation  is  often  so  indistinct  that 
separation  of  the  two  is  attended  with  difficulty.  No  attempt  at  an  extended 
general  statement  upon  the  subject  of  damages,  or  that  of  profits,  will  be 
attempted.  Since  the  decision  of  Westinghouse  v.  New  York,  140  Fed. 
545,  there  is  little  to  be  said.  The  rule  of  the  old  Mop  Case  (Garrettson  v. 
Clark,  111  U.  S.  120)  has,  in  this  decision  of  the  Circuit  Court  of  Appeals  for 
the  Second  Circuit,  reached  the  point  where,  from  a  practical  point  of  view, 
a  substantial  recovery  for  infringement  is,  in  most  cases,  impossible.  And 
yet,  the  Westinghouse  decision,  like  the  Westinghouse  decision  of  the  Supreme 
Court  on  the  question  of  the  patentability  of  a  mechanical  process  or  process 
claim,  is  but  the  logical  leading  of  previous  decisions.  As  the  law  now  is, 
one  will  not  err  materially  in  advising  a  client  that  the  only  substantial  value 
left  in  a  patent  is  the  right  —  often  remote  and  difficult  of  attainment  — 
of  injunction. 

An  extended  history  of  the  subject  of  damages  will  be  found  in  Root  v. 
Railway,  105  U.  S.  189. 

§  280.    Actual. 

Actual  damages  must  be  actually  proved,  and  cannot  be  assumed  as  a 
legal  inference  from  anv  facts  which  amount  not  to  actual  proof  of  the  fact. 
—  Seymour  v.  McCormick,  16  How.  480;   14  L.  Ed.  1024. 

When  a  plaintiff  is  allowed  to  recover  only  "  actual  damages,"  he  is  bound 
to  furnish  evidence  by  which  the  jury  may  assess  them.  If  he  rest  his  case, 
after  merely  proving  an  infringement  of  his  patent,  he  may  be  entitled  to 
nominal  damages,  but  no  more.  He  can  not  call  a  jury  to  guess  out  his  case 
without  evidence.  Actual  damages  must  be  calculated,  not  imagined,  and  an 
arithmetical  calculation  cannot  be  made  without  certain  data  on  which  to 
make  it.  —  Mayor  v.  Ransom,  64  U.  S.  487;  16  L.  Ed.  515. 

Actual  damages  should  be  actually  proved,  and  cannot  be  assumed  as  a 
legal  inference  from  facts,  which  afford  no  data  by  which  they  can  be  cal- 
culated. —  Mayor  v.  Ransom,  64  U.  S.  487 ;  16  L.  Ed.  515. 

Seymour  v.  McCormick,  16  How.  485. 

The  measure  of  damages  to  be  recovered,  prescribed  by  the  act  of  1870, 
16  Stat,  at  L.  207  is  "  the  actual  damages  sustained  by  the  plaintiff."  — 
Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679. 

If  the  test  of  a  royalty  cannot  be  applied,  he  will  be  entitled  to  an  amount 
which  will  compensate  him  for  the  injury  to  which  he  has  been  subjected 
by  the  piracy.  —  Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679. 

§  281.    Designs. 

In  absence  of  marking  notice  is  necessary.  —  Dunlap  v.  Schofield,  152 
U.  S.  244;  38  L.  Ed.  426;  14  S.  Ct.  576. 

The  statute  of  1887  was  passed  in  consequence  of  the  decision  of  the  Su- 
preme Court  in  Dobson  v.  Carpet  Co.  114  U.  S.  439.  The  manifest  purpose 
of  Congress  was  to  enlarge  the  remedy  against  infringers  of  design  patents, 
and  to  declare  that  the  measure  of  profits  recoverable  on  account  of  the 
infringement  should  be  considered  to  be  the  total  net  profits  upon  the  whole 
article.    A  construction  which  should  limit  a  recovery  above  $250.00  to  the 


254  THE    FIXED    LAW    OF    PATENTS  §  282 

amount  which  the  complainant  could  clearly  establish  to  be  the  value  which 
the  design  had  contributed  to  the  infringing  carpets  would  be  at  variance, 
not  only  with  the  apparent  legislative  intent  but  with  the  language  of  the 
statute.  The  rule  which  Congress  declared  for  the  computation  of  profits 
was  the  total  profit  from  the  manufacture  or  sale  of  the  article  to  which  the 
design  was  applied,  as  distinguished  from  the  pre-existing  rule  of  the  profit 
which  could  be  proved  to  be  attributable  to  the  design.  —  Untermeyer  v. 
Freund,  58  Fed.  205;  7  C.  C.  A.  183. 

The  liability  imposed  by  the  act  of  Feb.  4,  1887,  is  a  statutory  penalty 
in  the  nature  of  damages,  and  not,  as  has  been  contended,  a  "  profit  liqui- 
dated." —  Monroe  v.  Anderson,  58  Fed.  398;  7  C.  C.  A.  272. 


§  282.     In  Equity. 

If  the  appellees  had  sustained  an  injury  to  their  legal  rights  the  courts  of 
law  were  open  to  them  for  redress,  and  in  those  courts  they  might  have 
claimed  not  compensation  merely  but  vengeance  for  such  injury  as  they 
could  show  they  had  sustained.  —  Livingstone  v.  Woodworth,  15  How.  546; 
14  L.  Ed.  809. 

The  rule  in  suits  in  equity  of  ascertaining  by  a  reference  to  a  master  the 
profits  which  the  defendant  has  made  by  the  use  of  the  plaintiff's  invention, 
stands  on  a  different  principle.  It  is  that  of  converting  the  infringer  into  a 
trustee  for  the  patentee  as  regards  the  profits  there  made;  and  the  adjudg- 
ment of  these  profits  is  subject  to  all  the  equitable  considerations  which  are 
necessary  to  do  complete  justice  between  the  parties,  many  of  which  would 
be  appropriate  in  a  trial  by  jury.  With  these  corrective  powers  in  the  hands 
of  a  chancellor,  the  rule  of  assuming  profits  as  the  groundwork  for  estimating 
the  compensation  due  from  the  infringer  to  the  patentee  has  produced  results 
calculated  to  suggest  distrust  to  its  universal  application  even  in  courts  of 
equity.  —  Packet  Co.  v.  Sickles,  86  U.  S.  611;  22  L.  Ed.  203. 

Damages  of  a  compensatory  character  may  also  be  allowed  in  equity,  in 
certain  cases  where  the  gains  and  profits  made  by  the  respondent  are  clearly 
not  sufficient  to  compensate  the  complainant  for  the  injury  sustained. 
Gains  and  profits  are  still  the  proper  measure  of  damage  in  equity.  —  Bird- 
sail  v.  Coolidge,  93  U.  S.  64;  23  L.  Ed.  802. 

Damages  of  a  compensatory  character  may  be  allowed  to  a  complainant 
in  an  equity  suit,  when  it  appears  that  the  business  of  the  infringer  was  so 
improvidentlv  conducted  that  it  did  not  yield  any  substantial  profits.  — 
Marsh  v.  Seymour,  97  U.  S.  348;  24  L.  Ed.  963. 

R.  S.  Sec.  4921;   Birdsall  v.  Coolidge,  93  U.  S.  64. 

By  a  uniform  current  of  decisions  of  this  court,  beginning  30  years  ago, 
the  profits  allowed  in  equity,  for  the  injury  that  a  patentee  has  sustained  by 
the  infringement  of  his  patent,  have  been  considered  as  a  measure  of  un- 
liquidated damages  which,  as  a  general  rule,  and  in  the  absence  of  special 
circumstances,  do  not  bear  interest  until  after  their  amount  has  been  judi- 
cially ascertained;  and  the  provision  introduced  in  the  Patent  Act  of  1870, 
regulating  the  subject  of  profits  and  damages  made  no  mention  of  interest, 
and  has  not  been  understood  to  affect  the  rule  as  previouslv  announced.  — 
Tilghman  v.  Proctor,  125  U.  S.  136;  31  L.  Ed.  664;  8  S.  a."  894. 

Silsby  v.  Foote,  61  U.  S.  378;  Mowry  v.  Whitney,  81  U.  S.  620;  Littlefield  v. 
Perrv,  88  U.  S.  205:  R.  S.  4921;  Parks  v.  Booth,  102  U.  S.  96;  Root  v.  Railway, 
105  U.  S.  189;   R.  R.  v.  Turrill,  110  U.  S.  301. 


§  283  DAMAGES  255 

We  have  been  in  doubt  as  to  the  proper  disposition  of  the  case,  —  whether 
it  should  be  sent  to  a  master  for  rehearing,  or  whether  this  court  should 
ascertain  from  the  record  the  proper  amount.  Mfg.  Co.  v.  Cowling,  105 
U.  S.  253.  This  case  has  now  been  in  the  courts  for  eighteen  years.  It  sur- 
vived two  masters,  and  was  before  a  master  for  more  than  nine  years.  The 
lapse  of  time  undoubtedly  arose  from  a  variety  of  circumstances,  and  we  are 
not  aware  that  it  is  attributable  to  the  counsel  in  the  case ;  but  the  delays 
which  are  incident  to  an  accounting  are  well  known,  and  we  hesitate  exceed- 
ingly to  compel  an  additional  expenditure  of  time.  The  manufacture  of 
plaits  in  any  large  amount  has  now  ceased,  and  it  is  very  likely  that  further 
testimony  would  result  only  in  estimates  not  the  result  of  experience.  We 
have  therefore  concluded  to  ascertain  from  the  record  a  more  satisfactory 
amount  of  profits,  and  conclude  that  a  reasonable  allowance  will  be  the  sum  of 
$40,000.  —  Tuttle  v.  Claflin,  76  Fed.  227;  22  C.  C.  A.  138. 


§  283.     Increasing. 

Damages  of  a  compensatory  character  may  be  allowed  to  a  complainant 
in  equity  when  it  appears  that  the  business  of  the  infringer  was  so  improv- 
idently  conducted  that  it  did  not  vield  anv  substantial  profits,  as  in  the  case 
before  the  court.  —  Root  v.  Ry.,"l05  U.S.  189;  26  L.  Ed.  975. 

Marsh  v.  Seymour,  97  U.  S.  348. 

Conduct  of  an  infringer  which  will  warrant.  —  Topliff  v.  Topliff,  145  U. 
S.  156;  36  L.  Ed.  658;  12  S.  Ct.  825. 

Is  a  matter  of  discretion  by  court  and  will  not  be  disturbed  on  appeal 
unless  evidence  clearly  demands  it.  —  Topliff  v.  Topliff,  145  U.  S.  156;  36 
L.Ed.  658;  12  S.  Ct.  825. 

They  were  perfectly  indifferent  to  the  claimed  rights  of  anyone  else,  and 
purchased  infringing  goods  from  the  Dayton  Company  a  month  after  the 
issuance  of  a  preliminary  injunction  against  them,  and  nearly  one  and  one- 
half  months  after  the  date  of  Judge  La  combe's  opinion.  While  the  master 
cautiously  does  not  find  a  removal  of  their  books  and  papers  to  evade  the 
accounting,  it  appears  that  they  did  not  exert  themselves  to  produce  them. 
They  were  passive  instruments  in  the  hands  of  the  real  defendants,  and  per- 
mitted all  the  difficulties  which  the  master  has  detailed  to  be  interposed. 
The  doubling  of  the  small  amount  of  damages  which  the  master  was  able  to 
find,  was  a  proper  exercise  of  the  power  of  the  circuit  court.  —  National 
v.  Elsas,  86  Fed.  917;  30  C.  C.  A.  487. 

This  case  is  particularly  free  from  unusual  circumstances  showing  a 
wilful  purpose  to  violate  the  rights  of  complainants,  and  we  are  not  disposed 
to  overrule  the  court  below  in  refusing  to  exercise  this  punitory  power.  — 
Kissinger-Ison  v.  Bradford,  123  Fed.  91 ;  59  C.  C.  A.  221. 

A  suggestion  was  made  with  respect  to  our  ascertaining  from  the  master's 
report  the  amounts  that  should  be  adjudged  on  account  of  these  additional 
infringements.  We  think  the  assessment  should  be  made  by  the  Circuit 
Court.  —  Murray  v.  Orr,  153  Fed.  369;  82  C.  C.  A.  445. 

That  damages  recoverable  in  equity  may  not  be  increased  (notwithstand- 
ing the  plain  statement  of  the  statute)  see  McSherry  v.  Dowagiac,  160  Fed. 
948;  89  C.  C.  A.  26. 


256  THE    FIXED    LAW    OF    PATENTS  §  284 

In  increasing  the  damages  the  court  below  was  influenced  by  the  fact  that 
the  defendant  had  reason  to  believe  that  it  was  infringing,  "  as  it  was  called 
upon  to  indemnify  at  least  one  party  with  whom  it  was  dealing  and  from 
whom  it  secured  business  by  a  reduction  of  price,  thus  knowingly  taking 
business  from  a  licensee  of  the  complainants."  It  also  appeared  that  the 
defendant  destroyed  all  file  proofs  of  the  use  by  it  of  the  infringing  process 
prior  to  the  commencement  of  the  accounting,  although  this  was  not  done 
maliciously  or  for  the  purpose  of  concealment.  The  account  presented  to 
the  master  was  not  a  frank  and  full  statement,  and  defendant's  infringement 
was  continued  after  the  commencement  of  suit.  If  the  question  had  been 
presented  to  this  court  in  the  first  instance,  it  is  not  improbable  that  we  should 
have  decided  to  treble  the  damages.  It  was,  however,  in  the  discretion  of 
the  Circuit  Court  to  do  so  and  we  hesitate  to  say  that  the  discretion  has  been 
abused.  —  Fox  v.  Knickerbocker,  165  Fed.  442;  CCA. 

Topliff  v.  Topliff,  145  U.  S.  156;  Day  v.  Woodworth,  13  How.  363;  Weston  v. 
Empire,  155  Fed.  301;  Folding  Box  v.  Elsas,  81  Fed.  197,  affd.  86  Fed.  917; 
Lyon  i'.  Donaldson,  34  Fed.  789. 

Since  the  statute  permits  only  an  increase  of  the  damages  found,  and  not 
of  profits,  it  follows  that  the  complainant's  motion  in  that  regard  falls  to 
the  ground.  —  Yesbera  v.  Hardesty,  166  Fed.  120;  C.  C.  A. 

Note:  This  is  clearly  the  rule  in  the  Sixth  Circuit.  I  have  never  been  able 
to  see  the  logic  of  this  rule.  The  statute  giving  courts  of  equity  jurisdiction 
provides:  "  And  the  court  shall  have  the  same  power  to  increase  such 
damages,  in  its  discretion,  as  is  given  to  increase  the  damages  found  by  ver- 
dicts in  actions  in  the  nature  of  actions  of  trespass  upon  the  case."  (R.  S. 
4921).  In  the  first  place,  "  such  damages  "  in  an  action  at  law  may  be 
measured  by  the  jury  in  sundry  ways  —  in  terms  of  losses  by  defendant, 
gains  of  plaintiff,  royalties,  etc.  In  the  second  place,  the  distinction  between 
"  profits  "  and  "  damages  "  in  equity  is,  as  one  observes  from  reading  the 
cases,  shadowy  at  least.  Whether  the  award  is  in  terms  of  profits  or  damages, 
it  comes  to  dollars  and  cents  —  a  penalty  on  the  one  hand,  and  a  recoupment 
on  the  other.  The  rules  and  distinctions  in  damages  and  profits  are  means  to 
a  common  end,  rules  for  reaching  justice;  and  the  plain  intent  of  congress 
in  providing  the  means  for  increasing  the  award  to  a  plaintiff  or  complainant 
was  to  enable  the  court,  in  any  case  where  the  actual  finding  is  palpably 
insufficient,  to  do  justice,  not  merely  to  inflict  a  penalty;  and  the  recoupment 
feature  is  an  equitable  provision  which  a  court  of  equity  should  be  most 
willing  to  enforce. 


§  284.     Interest. 

Interest  upon  profits  should  not  be  allowed  as  part  of  the  damages.  — 
Silsby  v.  Foote,  61  U.  S.  378;  15  L.  Ed.  953. 

In  our  opinion  the  defendant  should  not  have  been  charged  with  interest 
before  final  decree.  The  profits  which  are  recoverable  against  an  infringer 
of  a  patent  are  in  fact  in  compensation  for  the  injury  the  patentee  has  sus- 
tained from  the  invasion  of  his  right.  They  are  the  measure  of  his  damages. 
Though  called  profits  they  are  reallv  damages,  and  unliquidated  until  the 
decree  is  made.  —  Mowry  v.  Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

The  circuit  court,  however,  in  rendering  its  final  decree,  added  interest 
to  the  amount  found  by  the  master  to  be  due  upon  the  account  for  profits. 


§  285  DAMAGES  257 

In  Mowry  v.  Whitney,  14  Wall.  620  it  was  held  that  interest  was  not  allow- 
able in  such  cases  except  under  peculiar  circumstances.  This  case  does 
not,  in  our  opinion,  justify  such  an  allowance.  It  will  be  for  the  court  to 
determine,  upon  the  coming  in  of  the  new  report,  accompanied  by  other 
evidence,  whether  the  conduct  of  the  defendants  has  been  such  as  to  subject 
them  to  liability  in  this  particular.  —  Littlefield  v.  Perry,  88  U.  S.  205; 
22  L.  Ed.  577. 

The  court  in  its  former  decision  (94  U.  S.  695)  affirmed  the  decrees  "  with 
costs  and  interest  until  paid  at  the  same  rate  per  annum  that  similar  decrees 
bear  in  the  courts  of  the  state  of  Illinois."  By  "  similar  "  we  did  not  mean 
decrees  in  patent  suits,  for  of  such  suits  state  courts  have  no  jurisdiction.  It 
was  right  for  the  circuit  court,  when  our  mandate  went  down,  to  order  the 
decree  affirmed  to  be  executed  by  the  collection  of  the  money  found  to  be  due, 
and  interest,  which,  under  the  established  rule  in  the  state,  will  be  six  per  cent. 
—  Railroad  v.  Turrill,  101  U.  S.  836;  25  L.  Ed.  1009. 

Interest  on  the  profits  decreed  to  the  complainant  should  not  have  been 
allowed,  as  was  decided  by  this  court  many  years  ago,  the  better  opinion 
being  that  profits  in  such  a  case  can  be  regarded  in  the  light  of  unliquidated 
damages,  which  usually  do  not  draw  interest  without  a  special  order  of  the 
court.  —  Parks  v.  Booth,  102  U.  S.  96;  26  L.  Ed.  54. 

Silsby  v.  Foote,  20  How.  378. 

In  a  case  arising  in  New  York  State  the  court  awarded  damages  with 
interest  until  paid  at  the  same  rate  per  annum  that  decrees  bear  in  the  state 
of  New  York.  —  Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed.  954;  6  S.  Ct.  934. 

Delay  caused  by  the  court,  or  not  attributable  to  the  plaintiff,  in  coming  to 
a  conclusion  on  the  master's  report,  where  the  amount  found  by  that  report 
is  confirmed,  ought  not  to  deprive  the  plaintiff  of  interest  on  the  amount 
found  by  the  master.  Under  such  circumstances,  the  account  ought  to  be 
considered  as  liquidated  on  the  day  when  the  master's  report  is  filed.  — 
Consolidated  v.  Crosby,  141  U.  S.  441 ;  35  L.  Ed.  809;  12  S.  Ct.  49. 


§  285.     Law  Actions. 

At  law  the  jury  can  award  only  actual  damages.  —  Hogg  v.  Emerson,  11 
How.  587;  13  L.  Ed.  824. 
Lowell  v.  Lewis,  1  Mas.  182. 

Profits  are  not  the  primary  or  true  criterion  of  damages  for  infringement 
in  an  action  at  law.  That  rule  applies  eminently  and  mainly  to  cases  in 
equity,  and  is  based  upon  the  idea  that  the  infringer  shall  be  converted  into 
a  trustee,  as  to  those  profits,  for  the  owner  of  the  patent  which  he  infringes; 
a  principle  which  it  is  very  difficult  to  apply  in  a  trial  before  a  jury  but  quite 
appropriate  on  a  reference  to  a  master,  who  can  examine  defendant's  books 
and  papers,  and  examine  him  upon  oath,  as  well  as  all  his  clerks  and  employees. 

No  doubt,  in  the  absence  of  satisfactory  evidence  of  either  class  in  the  form 
to  which  it  is  most  appropriate,  the  other  may  be  resorted  to  as  one  of  the 
elements  on  which  the  damages  or  the  compensation  may  be  ascertained;  but 
it  cannot  be  admitted,  as  the  prayer  which  was  refused  implies,  that  in  an 
action  at  law  the  profits  which  the  other  party  might  have  made  is  the  primary 


258  THE    FIXED    LAW    OF    PATENTS  §  285 

or  controlling  measure  of  damages.  —  Burdell  v.  Denig,  92  U.  S.  716;   23 
L.  Ed.  764. 
Packet  v.  Sickles,  19  Wall.  617. 

We  have  repeatedly  held  that  sales  of  licenses  of  machines,  or  of  a  royalty  es- 
tablished, constitute  the  primary  and  true  criterion  of  damages  in  the  action 
at  law.  —  Burdell  v.  Denig,  92  U.  S.  716:  23  L.  Ed.  764. 


Where  the  suit  is  at  law,  the  measure  of  damages  remains  unchanged,  the 
rule  still  being  that  the  verdict  of  the  jury  must  be  for  the  actual  damages 
sustained,  subject  to  the  right  of  the  court  to  enter  judgement  for  any  sum 
above  the  verdict  not  exceeding  three  times  that  amount,  with  costs.  — 
Birdsall  v.  Coolidge,  93  U.  S.  64;  23  L.  Ed.  802. 


There  is  a  difference  between  the  measure  of  recovery  in  equity  and  that 
applicable  in  an  action  at  law.  In  equity  the  complainant  is  entitled  to  re- 
cover such  gains  and  profits  as  have  been  made  by  the  infringer  from  the 
unlawful  use  of  the  invention,  and,  since  the  act  of  July  8,  1870,  in  cases 
where  the  injury  sustained  by  the  infringement  is  plainly  greater  than  the 
aggregate  of  what  was  made  by  the  defendant,  the  complainant  is  entitled  to 
recover  the  damages  he  has  sustained,  in  addition  to  the  profits  received. 
At  law  the  plaintiff  is  entitled  to  recover,  as  damages,  compensation  for  the 
pecuniary  loss  he  has  suffered  from  the  infringement,  without  regard  to  the 
question  whether  the  defendant  has  gained  or  lost  by  his  unlawful  acts  — 
the  measure  of  recovery  in  such  cases  being  not  what  the  defendant  has 
gained,  but  what  plaintiff  has  lost.  As  the  case  in  hand  is  one  at  law,  it  is 
not  necessary  to  pursue  the  subject  of  the  extent  of  the  equitable  remedy; 
but  reference  may  be  had  to  Tilghman  v.  Proctor,  125  U.  S.  137,  where  the 
cases  were  elaborately  considered  and  the  rule  above  stated  was  declared  to 
be  established.  —  Coupe  v.  Royer,  155  U.  S.  565;  39  L.  Ed.  263;  15  S.  Ct. 
199. 


That  in  the  absence  of  any  measure  of  damages  at  law,  recovery  cannot  be 
measured  in  terms  of  the  defendant's  profits,  see  Brown  v.  Lanyon,  148  Fed. 
838;  78  C.  C.  A.  528. 

Reviewing  history  of  the  statute  and  citing: 

Seymour  v.  McCormick,  16  How.  480;  Suffolk  v.  Hayden,  70  IT.  S.  315;  Mowry 
v.  Whitney,  81  U.  S.  620;  Philip  v.  Nock,  84  U.  S.  460;  Packet  Co.  v.  Sickles,  86 
U.  S.  611;  Burdell  v.  Denig,  92  U.  S.  716;  Tilghman  v.  Proctor,  125  U.  S.  136; 
Coupe  v.  Royer,  155  U.  S.  565;  Belknap  v.  Schild,  161  U.  S.  10;  Houston  v. 
Stern,  74  Fed.  636;  Seattle  v.  McNamara,  81  Fed.  863;  Boston  v.  Allen,  91  Fed. 
248;  Boyle  v.  Zacharie,  6  Pet.  647;  Scott  v.  Neeley,  140  U  S.  106;  Root  v. 
Railway,  105  U.  S.  189. 

The  plaintiff  offered  to  prove  the  utility  and  advantages  of  his  patented 
device,  that  it  had  been  appropriated  and  used  by  a  number  of  other  rail- 
roads, and  that  this  use,  being  without  his  consent,  prevented  the  establish- 
ment of  a  market  value  therefor.  This  offer  the  court  rejected.  It  will  thus 
be  seen  that  Suffolk  Co.  v.  Hayden,  has  been  approvingly  cited  and  consid- 
ered as  authority  for  the  principle,  therein  enunciated,  that,  in  the  absence 
of  license  fee  or  royalty,  other  proof  can  in  an  action  at  law  be  resorted  to, 
to  show  the  damage  done  to  the  owner  of  the  patent.  The  law  thus  an- 
nounced in  conclusion  of  the  case  before  us,  unless  Suffolk  v.  Hayden  was  over- 


§  286  DAMAGES  259 

ruled  in  Coupe  v.  Royer,  155  U.  S.  567.  Holding,  then  as  we  do,  that  Suffolk 
v.  Hayden  is  unreversed  and  unqualified  by  Coupe  v.  Royer,  it  follows  the 
court  below  erred.  —  McCune  v.  Baltimore,  154  Fed.  63;  83  C.  C.  A.  175. 

Suffolk  v.  Hayden,  70  U.  S.  318,  Birdsall  v.  Coolidge,  93  U.  S.  69;  Root  v. 
Railway,  105  U.  S.  198:  Tilghman  v.  Proctor,  125  U.  S.  143:  Coupe  v.  Rover, 
155  U.  S.  567. 

The  complaint  (at  law)  concluded  with  a  prayer  or  petition  for  judg- 
ment against  the  defendant  in  the  sum  of  $50,000.  During  the  trial  plaintiff 
sought  to  raise  an  issue  respecting  royalties,  which  was  cut  off  by  the  court. 
Damages  were  assessed  at  $1.  Plaintiff  then  petitioned  for  an  accounting 
of  profits.  Held:  Relief  can  be  administered  in  lawsuits  only  in  accordance 
with  the  facts  set  out  in  the  pleading,  regardless  of  the  prayer.  As  the  profits 
are  based  upon  the  existence  of  established  royalties,  involving  matters  of 
accounting  cognizable  in  equity,  the  bill  should  be  framed  accordingly, 
containing  the  essential  averments  authorizing  an  inquiry  for  the  ascer- 
tainment of  profits.  There  are  no  facts  alleged  in  the  petition  as  a  basis 
for  the  ascertainment  of  profits.  —  Portland  v.  Hermann,  160  Fed.  91. 

Brown  v.  Lanyon,  148  Fed.  838. 

Note:  It  would  seem  as  if  this  decision  might  fitly  conclude  the  practice 
that  has  so  curiously  prevailed  in  the  Ninth  Circuit  of  bringing  actions  for 
infringement  on  the  wrong  side  of  the  court. 


§  286.     Master's  Report. 

The  master  acted  in  view  of  this  evidence,  and  the  court  below  concurred 
in  his  finding,  except  in  some  unimportant  particulars.  As  no  obvious  error 
or  mistake  has  been  pointed  out  to  us,  their  conclusions  must  be  permitted 
to  stand.  —  Warren  v.  Keep,  155  U.  S.  265;  39  L.  Ed.  144;   15  S.  Ct.  83. 

Tilghman  v.  Proctor,  125  U.  S.  136. 

The  testimony  on  the  reference  was  directed  to  both  lines  for  recovery, 
namely  profits  on  the  one  and  damages  on  the  other;  and  that  the  master 
followed  this  scheme,  not  for  the  purpose  of  duplicating  the  damages  but 
because  the  complainant  might  be  able  to  succeed  on  one  line,  even  if  he 
should  fail  on  the  other.  The  master's  report  shows  that,  though  he  was 
impressed  that  the  proof  was  sufficient  to  make  out  a  case  for  damages,  he 
thought  it  expedient  to  report  his  conclusions  upon  the  proof  offered  in 
support  of  the  claim  for  profits,  to  the  end  that  the  court  should  have  the 
data  for  a  decree  upon  the  adoption  of  either  basis  as  the  court  should  deem 
proper.  We  think  the  course  pursued  by  the  master  was  well  advised,  and 
conducive  to  a  proper  result.  —  Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

The  court  abruptly  departed  from  the  orderly  course  of  procedure.  (The 
master  found  $29,000  damages  and  the  circuit  judge  arbitrarily  reduced  the 
amount  to  $18,000.)  The  decree  did  not  rest  upon  any  finding  of  the  master, 
notwithstanding  the  court  overruled  all  exceptions  to  it.  Nor  is  it  supported 
by  any  evidence  found  in  the  record.  It  was  for  an  arbitrary  sum  quite 
distinct  from  either  of  the  results  which  the  evidence  had  any  tendency  to 
prove,  and  the  court  was  not  at  liberty  to  pronounce  a  decree  at  discretion.  — 
Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

N.  Y.  v.  Ransom,  23  How.  487;   Philip  v.  Nock,  17  Wall.  460. 


260  THE    FIXED    LAW    OF    PATENTS  §  287 

§  287.     Measure  —  Absence  of  License  or  Royalty  Measure. 

This  question  of  damage,  under  the  rule  given  in  the  statute,  is  always 
attended  with  difficulty  and  embarrassment,  both  to  the  court  and  jury. 
There  being  no  established  patent  or  license  fee  in  the  case,  in  order  to  get 
at  a  fair  measure  of  damages,  or  even  an  approximation  to  it,  general  evidence 
must  necessarily  be  resorted  to.  And  what  evidence  could  be  more  appro- 
priate and  pertinent  than  that  of  the  utility  and  advantage  of  the  invention 
over  the  old  modes  or  devices  that  had  been  used  for  working  out  similar 
results?  With  a  knowledge  of  these  benefits  to  the  persons  who  have  used 
the  invention  and  the  extent  of  the  use  by  the  infringer,  a  jury  will  be  in 
possession  of  material  and  controlling  facts  that  may  enable  them  in  the 
exercise  of  a  sound  judgement,  to  ascertain  the  damages,  or,  in  other  words, 
the  loss  to  the  patentee  or  owner,  by  the  piracy  instead  of  the  purchase  of  the 
use  of  the  invention.  —  Suffolk  v.  Hayden,  70  U.  S.  315;  18  L.  Ed.  76. 

In  cases  where  there  is  no  established  license  fee  in  the  case,  or  even  an 
approximation  to  it,  general  evidence  must  necessarily  be  resorted  to.  — 
Packet  Co.  v.  Sickles,  86  U.  S.  611;  22  L.  Ed.  203. 

Suffolk  v.  Hayden,  3  Wall.  315. 

In  this  case  when  the  patentee  granted  no  licenses  and  had  no  established 
license  fee,  but  supplied  the  demand  himself  and  was  able  to  supply  the 
demand,  the  master  was  unable  to  determine  from  the  proofs  what  profits 
the  defendant  had  made.  He  confined  his  award  to  the  enforced  reduction 
of  price  caused  by  the  infringement.  That  this  is  a  proper  item  of  damages, 
if  proved,  is  clear.  —  Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed.  954;  6  S.  Ct. 
934. 

McComb  v.  Brodie,  1  Woods,  153;   Philip  v.  Nock,  17  Wall.  460. 

This  is  an  action  at  law  for  the  damages  sustained  by  the  plaintiffs  for  the 
alleged  infringement,  and  in  such  actions  where  there  has  been  proved  an 
established  royalty  or  license  fee,  which  has  been  customarily  paid  to  the 
owner  of  the  patent  by  those  who  desired  to  use  it,  such  regular  price  for  a 
license  is  its  primary  and  true  criterion  of  the  plaintiff's  damage;  but  in  this 
case,  there  is  no  evidence  of  any  license  fee  ever  having  been  demanded  or 
paid  by  anyone ;  and  so,  if  you  find  in  favor  of  the  plaintiffs,  you  should  con- 
sider the  utility  and  advantage  to  the  defendant  of  the  use  of  the  patented 
device,  as  compared  to  any  other  means  of  obtaining  similar  results  which 
were  open  to  the  defendant  to  use ;  and  you  may  consider  the  cost  of  using 
one  as  compared  with  the  cost  and  savings  to  the  defendant  of  using  the  other; 
and  from  these  data,  if  proven  to  you,  you  should  ascertain,  in  the  exercise 
of  a  sound  judgment,  what  would  be  a  fair  compensation  to  the  plaintiffs 
for  the  damage  which  they  have  sustained  by  reason  of  the  defendant  having 
infringed,  instead  of  having  purchased  the  right  to  use,  the  invention.  — 
Brickill  v.  Mayor,  60  Fed.  98;   8  C.  C.  A.  500. 

Suffolk  v.  Hayden,  3  Wall.  320;  Sessions  v.  Romadka,  145  U.  S.  29. 

If  there  had  been  an  established  royalty,  the  jury  could  have  taken  that 
sum  as  the  measure  of  damages.  In  the  absence  of  such  royalty,  and  in  the 
absence  of  proof  of  lost  sales  or  injury  by  competition,  the  only  measure  of 
damages  was  such  sum  as,  under  all  the  circumstances,  would  have  been  a 
reasonable  royalty  for  the  defendant  to  have  paid.  This  amount  it  was  the 
province  of  the  jury  to  determine.  In  so  doing,  they  did  not  make  a  contract 
for  the  parties,  but  found  a  measure  of  damages.  —  Hunt  v.  Cassidy,  64 
Fed.  585;   12  C.  C.  A.  316. 

McKeever  v.  U.  S.  14  Ct.  CI.  414;  Ross  v.  Railway,  45  Fed.  371;  Royer  v. 
Coupe,  29  Fed.  371;   Cary  v.  Mfg.  Co.  37  Fed.  654. 


§§  288-289  DAMAGES  261 

That  where  there  is  no  royalty  basis,  where  the  plaintiff  can  show  no  actual 
damage,  and  no  market  price  can  be  established,  the  plaintiff,  under  Coupe 
v.  Royer,  155  U.  S.  565,  can  recover  nominal  damages  only,  see  Seattle  v. 
McNamara,  81  Fed.  863;  26  C.  C.  A.  652. 

§  288.     Measure  —  Complainant's  Loss. 

Reduction  of  prices  and  consequent  loss  of  profits,  enforced  by  infringing 
competition,  is  a  proper  ground  for  award  of  damages.  The  only  question 
is  as  to  the  character  and  sufficiency  of  the  evidence  in  the  particular  case.  — ■ 
Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed.  954;  6  S.  Ct.  934. 

Where  the  patentee  grants  no  licenses,  and  has  no  established  license  fee, 
but  supplied  the  demand  himself,  and  was  able  to  do  so,  an  enforced  reduc- 
tion of  price  is  a  proper  item  of  damages,  if  proven  by  satisfactory  evidence. 

—  Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787;  10  S.  Ct.  378. 
Yale  v.  Sargent,  117  U.  S.  536. 

While  the  loss  due  to  an  infringing  device  reducing  the  market  price  of 
complainant's  manufacture  is  a  proper  element  of  damages,  the  evidence  must 
show  that  the  reduction  in  price  was  due  to  the  sale  of  the  infringing  devices 
and  not  to  other  causes.  —  Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787; 
10  S  Ct.  378. 

Cornley  v.  Marckwold,  131  U.  S.  159;  N.  Y.  v.  Ransom,  64  U.  S.  487;  Rude 
v.  Westcott,  130  U.  S.  152. 

It  is  reasonable  to  conclude  that,  if  the  appellees  had  not  deliberately 
and  wantonly  become  infringers,  and  wrongfully  trespassed  on  appellant's 
patent  rights,  they  would  have  purchased  from  appellant  the  rods  they  used. 
Moreover,  the  law  is  that  in  cases  of  wanton  infringement,  every  doubt  is  to 
he  resolved  against  the  infringer.  These  facts  unite  to  afford  substantial, 
not  mere  conjectural,  grounds  on  which  to  base  the  conclusion,  that  the 
appellant,  by  appellees'  wrongful  act,  lost  the  sale  of  these  particular  rods, 
and  to  that  extent  assuredly  was  damaged.  The  facts  we  have  stated  being 
in  evidence,  the  master  was  fully  justified  in  finding,  as  we  do,  and  especially 
so  in  the  absence  of  all  counterproof  by  the  appellees,  that  the  appellant,  by 
the  appellees'  wrongful  impairment  of  his  sales,  was  damaged  to  the  extent  of 
the  difference  between  the  cost  price  and  the  selling  price  established  as  be- 
tween these  parties,  and  interest  from  the  date  of  the  filing  of  the  master's 
report.  —  Rose  v.  Hirsch,  94  Fed.  177;  36  C.  C.  A.  132. 

Rubber  Co.  v.  Goodyear,  9  Wall.  803;  Creamer  v.  Bowers,  35  Fed.  209;  Covert 
v.  Sargent,  38  Fed.  237;   Tilghman  v.  Proctor,  125  U.  S.  161. 

It  is  undoubted  that  the  wrongdoer  compelled  the  complainant  to  reduce 
its  prices,  but  the  complainant  even  then  probably  made  a  profit  and  it  sold 
more  machines  on  account  of  the  reduced  price.  What,  on  the  whole,  it  lost 
does  not  appear.  It  was  within  the  power  of  the  complainant  to  illustrate 
to  what  extent  its  whole  profit  fell  off  by  reason  of  the  competition.  It  did 
not  do  so,  and  the  court  is  unable  to  know  to  what  extent  it  was  finally  injured 
by  the  competition.  Therefore,  no  damages  growing  out  of  this  unlawful 
competition  can  be  allowed.     (Opinion  of  court  below  quoted  and  approved.) 

—  Force  v.  Sawyer-Boss,  143  Fed.  894;  75  C.  C.  A.  102. 

§  289.     Measure  —  Deductions  and  Mitigations. 

The  intent  not  to  injure  never  exonerates  from  all  damages,  though  it 
may  mitigate  them.  —  Hogg  v.  Emerson,  11  How.  587;   13  L.  Ed.  824. 

Whittemore  v.  Cutter,  1  Gall.  429;  Jones  v.  Pearce,  Web.  P.  C.  125;  Bryce  v. 
Dorr,  3  McLean,  583;   Lowell  v.  Lewis,  1  Mas.  182. 


262  THE    FIXED    LAW    OF    PATENTS  §  290 

Such  general  expenses  as  store  rent,  clerk  hire,  fuel,  gas,  porterage,  etc. 
are  to  be  deducted  proportionally  upon  the  profits  of  the  attachment. — 
Tremain  v.  Hitchcock,  90  U.  S.  518;  23  L.  Ed.  97. 

A  receipt  given  after  suit  was  commenced  may  be  given  in  evidence  to 
reduce  damages  without  setting  it  up  in  the  pleadings  by  amendment.  — 
Burdell  v.  Denig,  92  U.  S.  716;  23  L.  Ed.  764. 

The  judge  of  the  circuit  court  was  of  opinion  that  the  facts  in  this  case 
took  it  out  of  the  general  rule  that  the  pecuniary  advantage  which  the  in- 
fringers derived  from  the  unauthorized  use  of  the  patent  is  to  be  estimated 
upon  the  entire  production  of  the  infringers,  because,  in  his  opinion,  the 
evidence  showed  that  the  defendants  never  would  have  resorted  to  the  hand 
method,  because  it  was  so  expensive  as  to  be  prohibitory,  and  because  it  was 
impossible  to  make  marketable  plaits  by  hand.  There  may  be  and  probably 
will  be,  cases  in  which  an  inadvertent  infringer  of  an  old  and  unknown  patent 
for  the  method  of  manufacturing  an  article  which  is  made  and  sold  by  the 
million  at  a  cheap  rate,  and  which  is  expensively  made  by  hand,  like  the 
article  of  paper  bags,  suggested  by  Judge  Coxe,  will  have  a  persuasive 
equity  against  a  decree  for  his  entire  profits,  upon  the  ground  that  the  owner 
of  the  patent  suffered  no  damage,  and  that  the  paper-bag  business  was 
created  by  automatic  machinery,  and  never  would  have  existed  if  the  bags 
must  be  made  by  hand.  —  Tuttle  v.  Claflin,  76  Fed.  227;  22  C.  C.  A.  138. 

Before  final  hearing  the  courts  referred  the  case  back  to  "  take  proof 
as  to  the  entire  or  partial  abandonment  by  complainant  of  the  disk  furrow 
opener  covered  by  the  patent,  and  the  substitution  therefor  of  another  and 
different  type  of  device  for  the  same  purpose."  The  master  reported  that  he 
was  unable  to  discover  how  the  later  improvement  should  affect  the  conse- 
quences of  the  infringement  from  1898  to  1902  and  adhered  to  his  former 
report.  It  is  manifest  that  his  conclusion  upon  the  matter  referred  back  to 
him  was  correct.  —  Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 


§  290.    Measure  —  Defendant's  Gains. 

It  must  be  apparent  to  the  most  superficial  observer  of  the  immense  variety 
of  patents  issued  every  day,  that  there  cannot,  in  the  nature  of  things,  be 
any  one  rule  of  damages  which  will  equally  apply  to  all  cases.  The  mode  of 
ascertaining  actual  damages  must  necessarily  depend  upon  the  peculiar 
nature  of  the  monopoly  granted.  A  man  who  invents  or  discovers  a  new- 
composition  of  matter  such  as  vulcanized  India  rubber,  or  a  valuable  medi- 
cine, may  find  his  profit  to  consist  in  a  close  monopoly,  forbidding  anyone  to 
compete  with  him  in  the  market,  the  patentee  being  himself  able  to  supply 
the  whole  demand  at  his  own  price.  If  he  should  grant  licenses  to  all  who 
might  desire  to  manufacture  his  composition,  mutual  competition  might 
destroy  the  value  of  such  license.  This  may  be  the  case  also  where  the  paten- 
tee is  the  inventor  of  an  entire  new  machine.  If  any  person  could  use  the 
invention  or  discovery  by  paying  what  a  jury  might  suppose  to  be  a  fair 
value  of  a  license,  it  is  plain  that  competition  would  destroy  the  whole  value 
of  the  monopoly.  In  such  cases  the  profit  of  the  infringer  may  be  the  only 
criterion  of  the  actual  damages  of  the  patentee.  —  Seymour  v.  McCormick, 
16  How.  480;  14  L.  Ed.  1024. 

It  is  only  where,  from  the  peculiar  circumstances  of  the  case,  no  other  rule 
can  be  found,  that  the  defendant's  profits  become  the  criterion  of  the  plain- 
tiff's loss.  —  Seymour  v.  McCormick,  16  How.  480;   14  L.  Ed.  1024. 


§  290  DAMAGES  263 

The  master  reported  as  damages  the  entire  profits  of  defendant  on  car- 
wheels  made  under  plaintiff's  process.  As  it  appeared  that  car-wheels  could 
be  made  and  sold  at  a  profit  without  employing  plaintiff's  process  it  was 
held  that  the  damages  were  the  savings  or  gains  due  to  said  process  over 
what  the  profits  of  defendant  otherwise  would  have  been.  —  Mowry  v, 
Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

The  same  principle,  therefore,  which  gives  to  the  complainants  the  aggre- 
gate profits  of  the  entire  manufacture  would  give  the  same  profits  to  a  paten- 
tee of  the  process  of  chilling,  if  there  were  one,  and  as  there  are  many  proc- 
esses in  the  manufacture,  for  each  of  which  it  is  conceivable  there  might  be 
a  patent  and  as  every  one  of  the  processes  is  necessary  to  make  a  marketable 
wheel,  an  infringer  might  be  mulcted  in  several  times  the  profits  he  had  made 
from  the  whole  manufacture.  We  cannot  assent  to  such  a  rule.  The  question 
to  be  determined  in  this  case  is:  what  advantage  did  the  defendant  derive 
from  using  the  complainant's  invention  over  what  he  had  in  using  the  proc- 
cesses  then  open  to  the  public  and  adequate  to  enable  him  to  obtain  an 
equally  beneficial  result?  The  fruits  of  that  advantage  are  his  profits.  — 
Mowry  v.  Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

In  arriving  at  their  conclusion,  the  profit  made  by  the  defendant  and  that 
lost  by  the  plaintiff,  are  among  the  elements  which  the  jury  may  consider.  — 
Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679. 

The  decree  (covering  all  gains  and  profits  from  selling  articles  containing 
the  patented  improvement)  is  as  we  think  too  broad.  In  Mowry  v.  Whitney, 
14  Wall.  620,  it  was  held  "  What  advantage  did  the  defendant  derive  from 
using  the  complainant's  invention  over  what  he  had  in  using  other  processes 
then  open  to  the  public,  and  adequate  to  enable  him  to  obtain  an  equally 
beneficial  result?  The  fruits  of  that  advantage  are  his  profits."  For  such 
profits  he  is  compelled  to  account  as  damages.  —  Littlefield  v.  Perry,  88 
U.S.  205;  22  L.  Ed.  577. 

Profits  actually  realized  are  usually,  in  a  case  like  this,  the  measure  of 
unliquidated  damage.  Circumstances  may,  however,  arise  which  would 
justify  the  addition  of  interest  in  order  to  give  complete  indemnity  for  losses 
sustained  by  wilful  infringements.  —  Littlefield  v.  Perry,  88  U.  S.  205 ; 
22  L.  Ed.  577. 

Manifestly  the  complainants  are  not  entitled  to  the  savings  or  profits 
resulting  from  the  defendant's  own  invention.  —  Mason  v.  Graham,  90  U.  S. 
261 ;  23  L.  Ed.  86. 

In  cases  where  profits  are  the  proper  measure,  it  is  the  profits  which  the 
infringer  makes,  or  ought  to  make,  which  govern,  and  not  the  profits  which 
plaintiff  can  show  that  he  might  have  made.  —  Burdell  v.  Denig,  92  U.  S. 
716;  23  L.  Ed.  764. 

Assuming  that  the  use  of  the  machine  was  not  true  economy.  They  had 
the  choice  of  repairing  them  on  the  common  anvil  or  on  the  complainant's 
machine.  By  selecting  the  latter,  they  saved  a  large  part  of  what  they  must 
have  expended  in  the  use  of  the  former.  They  gained,  therefore,  to  the  extent 
that  they  saved  themselves  from  loss.  —  Railroad  v.  Turrill,  94  U.  S.  695 ; 
24  L.  Ed.  238. 

We  think  the  weight  of  evidence  leads  to  the  conclusion  that  the  number  of 
feet  mended  on  the  infringing  machines,  the  gain  in  mending  compared  with 


264  THE    FIXED   LAW   OF   PATENTS  §  290 

the  cost  of  mending  on  the  common  anvil,  considering  the  saving  of  labor  and 
fuel  were  such  as  justified  the  decrees  that  were  made.  —  Railroad  v.  Turrill, 
94  U.  S.  695;  24  L.  Ed.  238. 

A  limited  locality  required  a  particular  kind  of  a  pump  to  be  used  only 
in  that  locality  for  a  special  purpose.  The  market  was  not  only  limited  to  a 
particular  locality  but  it  was  unusually  limited  in  demand.  A  single  manu- 
facturer, possessing  the  facilities  the  appellant  had  could  easily  and  with 
reasonable  promptness  fill  every  order  that  was  made.  There  was  no  other 
pump  that  could  successfully  compete  with  that  controlled  by  the  patent. 
Under  these  circumstances  it  is  easy  to  see  that  what  had  been  the  appellee's 
gain  in  this  business  must  necessarily  have  been  the  appellant's  loss  and, 
consequently,  the  appellant's  damages  are  to  be  measured  by  the  appellee's 
profits  derived  from  their  business  in  that  special  and  limited  market.  — 
Goulds  v.  Cowing,  105  U.  S.  253;  26  L.  Ed.  987. 

The  question  to  be  determined  is,  what  advantage  did  the  defendant 
derive  from  using  the  complainant's  invention  over  what  he  had  in  using  other 
processes  then  open  to  the  public  and  adequate  to  enable  him  to  obtain  an 
equally  beneficial  result.  The  fruits  of  that  advantage  are  his  profits. 
Quoting  Mowry  v.  Whitney,  14  Wall.  620.  —  Goulds  v.  Cowing,  105  U.  S. 
253;  26  L.  Ed.  987. 

There  was  no  market  for  pumps  adapted  to  this  particular  use,  except 
in  the  oil  producing  regions  of  Pennsylvania  and  Canada.  The  demand  was 
limited  as  well  as  local.  Less  than  a  thousand  pumps  actually  supplied  all 
who  wanted  them.  But  for  that  particular  use  no  other  pump  could  at  the 
time  be  sold.  If  the  appellant  kept  the  control  of  its  monopoly  under  the 
patent,  it  alone  had  the  advantage  of  the  market.  Unless  the  appellees  got 
the  improved  pump,  they  could  not  become  competitors  in  the  field,  and  just 
to  the  extent  they  got  into  the  field  they  drove  the  appellant  out.  Through 
their  infringement  they  got  the  advantage  of  selling  the  pumps  that  had 
upon  them  the  patented  improvement.  Without  it  no  such  sales  would  have 
been  effected.  The  fruits  of  the  advantage  they  gained  by  their  infringe- 
ment were,  therefore,  necessarily  the  profits  they  made  on  the  entire,  sale.  — 
Goulds  v.  Cowing,  105  U.  S.  253;  26  L.  Ed.  987. 

It  may  be  added  that  where  no  profits  are  shown  to  have  accrued  a  court 
of  equity  cannot  give  a  decree  for  profits  bv  way  of  damages  or  as  punish- 
ment for  the  infringement.  —  Root  v.  Ry.,  105  U.  S.  189;  26  L.  Ed.  975. 

Livingston  v.  Woodworth,  15  How.  559. 

No  profits  having  been  made  by  the  defendant,  in  the  absence  of  any 
evidence  as  to  the  value  imparted  by  the  patented  design  it  was  error  to 
allow  as  damages  upon  the  number  of  yards  of  goods  made  by  the  defendant 
the  sum  per  yard  which  was  the  profit  of  the  plaintiff  in  making  and  selling 
goods  with  the  patented  design.  —  Dobson  v.  Dornan,  118  U.  S.  10;  30  L. 
Ed.  63;  6  S.  Ct.  946. 

Dobson  v.  Hartford,  114  U.  S.  439. 

Exception  is  taken  to  the  form  of  the  interlocutory  decree,  in  that,  while  it 
awards  a  recovery  for  the  profits  and  damages  from  the  infringement  of  the 
design,  it  orders  an  account  to  be  taken  of  the  profits  of  the  defendants  from 
infringing  upon  the  exclusive  rights  of  the  plaintiffs  "  by  the  manufacture, 
use  and  sale  of  carpeting  bearing  said  patented  design,"  and  of  the  additional 
damages  suffered  by  the  plaintiffs  "  by  reason  of  said  infringements."  We 
do  not  think  the  decree  is  open  to  the  objection  made.    It  is  not  like  the 


§  291  DAMAGES  265 

decree  in  Littlefield  v.  Perry,  88  U.  S.  228.  It  directs  an  account  of  the  profits 
from  the  infringement.  The  infringement  could  be  committed  only  by 
making,  using,  and  selling  carpets  containing  the  patented  design ;  but  the 
profits  and  damages  to  be  accounted  for  are  described  as  only  those  from 
the  infringement.  —  Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct. 
946. 

Where  defendant's  entire  profits  were  derived  from  the  infringement  his 
profits  are  plaintiff's  damages.  —  Hurlbut  v.  Schillinger,  130  U.  S.  456;  32 
L.Ed.  1011;  9S.  Ct.  584. 

Elizabeth  v.  Nicholson,  97  U.  S.  126;  Root  v.  Railway,  105  U.  S.  189;  Callaghan 
v.  Myers,  128  U.  S.  617;  Garretson  v.  Clark,  111  U.  S.  120. 

This  court  has  repeatedly  held  that  in  estimating  damages  in  the  absence 
of  a  royalty,  it  is  proper  to  consider  the  savings  of  the  defendant  in  the  use 
of  the  patented  device  over  what  was  known  and  in  general  use  for  the  same 
purpose  anterior  to  the  date  of  the  patent.  —  Sessions  v.  Romadka,  145  U.  S. 
29;  36  L.  Ed.  609;  12  S.  Ct.  799. 

Mowry  v.  Whitney,  81  U.  S.  620;  Cawood  Pat.  94  U.  S.  695;  Tilghman  v. 
Proctor,  125  U.  S.  136;   Williams  v.  Rome,  18  Blatchf.  181. 

If  the  infringing  machine  or  device  derived  the  entire  commercial  value 
from  the  patented  feature  or  improvement,  complainant  would  be  entitled 
to  defendant's  entire  profits.  —  Mosher  v.  Joyce,  51  Fed.  441 ;  2  C.  C.  A.  322. 

Mfg.  Co.  v.  Cowing,  105  U.  S.  253;  Root  v.  Railway,  105  U.  S.  189;  Hurlbut 
v.  Schillinger,  130  U.  S.  456;  Crosby  v.  Consolidated,  141  U.  S.  454. 

Upon  the  foregoing  facts,  the  question  of  the  rule  of  law  in  regard  to  the 
method  of  ascertaining  the  profits  was  not  a  debatable  one.  If  the  defendants 
had  made  no  addition  to  the  Crosby  and  Kellogg  invention,  it  being  one  of 
an  original  and  primary  character,  they  took  it  as  it  was,  although  they  fur- 
nished their  machine  with  mechanical  equivalents  which  might  produce 
better  work  than  the  corresponding  devices  for  which  they  were  substituted, 
and  the  complainants  would  be  entitled  to  the  pecuniary  advantage  which 
the  infringers  derived  from  their  unauthorized  use  of  the  patent,  the  profit 
being  in  this  case  the  difference  between  the  expense  of  plaiting  by  the  use 
of  the  patented  device  and  the  expense  of  doing  the  same  thing  by  hand.  — 
Tuttle  v.  Claflin,  76  Fed.  227;  22  C.  C.  A.  138. 

Mowry  v.  Whitney,  14  Wall.  620;  Cawood  Pat.  94  U.  S.  695;  Thomson  v. 
Wooster,  114  U.  S.  104;   Sessions  v.  Romadka,  145  U.  S.  29. 

When  the  infringer  uses  in  his  infringing  machine  the  essential  part  of  the 
patented  machine,  without  which  his  infringing  machine  is  worthless,  it  is 
not  an  adequate  answer  to  the  demand  for  the  payment  of  his  entire  profits 
that  his  substituted  equivalents  improved  the  work  of  the  corresponding 
elements  of  the  infringed  machine.  —  Tuttle  v.  Claflin,  76  Fed.  227;  22  C. 
C.  A.  138. 


§291.     Measure  —  Full  Damages. 

It  is  the  making  and  selling  to  be  used,  and  not  the  selling  or  buying  or 
making  alone  for  which  full  damages  are  usually  given.  —  Hogg  v.  Emerson, 
11  How.  587;   13  L.  Ed.  824. 

10  Wheat.  350;   Curt,  Pat,  256  n.  3;   3  McLean,  427. 

When  the  entire  profit  of  a  business  or  undertaking  results  from  the  use  of 
the  invention,  the  patentee  will  be  entitled   to  recover  the  entire  profits,  if 


266  THE    FIXED    LAW    OF    PATENTS  §292 

he  elects  that  remedy.  And  in  such  a  case,  the  defendant  will  not  be  allowed 
to  diminish  the  show  of  profits  by  putting  in  unconscionable  claims  for 
personal  services  or  other  inequitable  deductions.  —  Root  v.  Ry.,  105  U.  S. 
189;  26  L.  Ed.  975. 

Rubber  Co.  v.  Goodyear,  76  U.  S.  788. 


§  292.    Measure  —  License  Fee. 

When  an  inventor  finds  it  profitable  to  exercise  his  monopoly  by  selling 
licenses  to  make  or  use  his  improvement,  he  has  himself  fixed  the  average  of 
his  actual  damage,  when  his  invention  has  been  used  without  his  license. 
If  he  claims  anything  above  that  amount  he  is  bound  to  substantiate  his 
claim  by  clear  and  distinct  evidence.  When  he  has  himself  established  the 
market  value  of  his  improvement  as  separate  and  distinct  from  the  other 
machinery  with  which  it  is  connected,  he  can  have  no  claim  in  justice  or 
equity  to  make  the  profits  of  the  whole  machine  the  measure  of  his  demand. 
—  Seymour  v.  McCormick,  16  How.  480;  14  L.  Ed.  1024. 

The  defendants  in  various  forms  prayed  the  court  to  instruct  the  jury  that 
the  measure  of  damages  was  the  established  rate  for  the  license  to  use  their 
invention,  as  ascertained  by  the  sales  made  by  plaintiffs  of  such  license  to 
others.  If  this  was  the  true  rule  of  estimating  the  damages,  the  bill  of 
exceptions  shows  that  a  sufficient  number  of  such  licenses,  and  the  prices  at 
which  they  were  granted,  was  in  evidence  to  enable  the  jury  to  apply  the 
principle  to  the  case  before  them. 

As  we  are  of  opinion  that  this  was  the  sound  rule,  and  that  in  refusing  the 
prayers  for  instruction  based  on  it,  as  well  as  in  admitting  evidence  of  the 
saving  of  fuel  and  its  value  as  affecting  the  amount  of  the  verdict,  the  court 
below  was  in  error. 

On  that  subject  in  the  case  of  Seymour  v.  McCormick,  16  How.  480,  this 
court  on  full  consideration,  and  without  dissent,  laid  down  the  proposition 
that  in  suits  at  law  for  infringement  of  patents,  where  the  sale  of  licenses 
by  the  patentee  had  been  sufficient  to  establish  a  price  for  such  licenses, 
that  price  should  be  taken  as  his  measure  of  damages  against  the  infringer. 
The  rule  thus  declared  has  remained  the  established  criterion  of  damages 
in  cases  to  which  it  was  applicable  ever  since.  Sickles  v.  Borden,  4  Blatchf. 
14;  Suffolk  v.  Hayden,  3  Wall.  315;  Livingstone  v.  Jones,  3  Wall.  Jr.  330. 

Certainly  any  unnecessary  relaxation  of  the  rule  we  have  laid  down  in 
cases  at  law,  where  the  patentee  has  been  in  the  habit  of  selling  his  invention 
or  license  to  use  it,  so  that  a  fair  deduction  can  be  made  as  to  the  value  which 
he  and  those  using  it  have  established  for  it,  does  not  commend  itself  to  our 
judgement,  nor  is  it  encouraged  by  our  experience. 

If  such  be  the  proper  rule  in  case  of  the  infringer  who  uses  the  invention 
without  license  and  against  the  consent  of  the  owner,  it  should  not  be  harsher 
against  the  party  who  uses  it  with  consent  of  the  owner,  express  or  implied, 
but  without  any  agreement  as  to  the  rate  of  compensation.  In  such  case 
nothing  can  be  more  reasonable  than  that  the  price  fixed  by  the  patentee  for 
the  use  of  his  invention,  in  his  dealings  with  others,  and  submitted  to  by 
them  before  using  it,  should  govern.  —  Packet  Co.  v.  Sickles,  86  U.  S.  611 ; 
22  L.  Ed.  203. 

It  is  obvious  that  there  cannot  be  any  one  rule  of  damages  prescribed  which 
will  apply  in  all  cases,  even  where  it  is  conceded  that  the  finding  must  be 
limited  to  actual  damages.  Frequent  cases  arise  where  proof  of  an  estab- 
lished royalty  furnishes  a  pretty  safe  guide  both  for  the  instructions  of  the 
court  and  the  finding  of  the  jury.  Reported  cases  of  undoubted  authority 
may  be  referred  to  which  support  that  proposition ;  and  yet  it  is  believed  to 


§  292  DAMAGES  267 

be  good  law  that  the  rule  cannot  be  applied  without  qualification,  where  the 
patented  improvement  has  been  used  only  to  a  limited  extent  and  for  a  short 
time,  that  in  such  a  case  the  jury  should  find  less  than  the  amount  of  the 
license  fee;  and  it  is  admitted  in  several  cases  that  the  circumstances  may 
be  such  that  the  finding  should  be  larger  than  the  royalty.  —  Birdsall  v. 
Coolidge,  93  U.  S.  64;  23  L.  Ed.  802. 

Seymour  v.  McCormick,  16  How.  490;  Livingston  v.  Woodworth,  15  How. 
560;  Dean  v.  Mason,  20  How.  203;  Curtis  Pat.  459. 

The  inventor  may  indeed  prohibit  the  use,  or  exact  a  license  fee  for  it,  and 
if  such  license  fee  has  been  generally  paid,  its  amount  may  be  taken  as  a 
criterion  of  damages  to  him  when  his  rights  are  infringed.  In  the  absence  of 
such  criterion,  the  damages  must  necessarily  be  nominal.  —  Black  v.  Thome, 
111  U.  S.  122;  28  L.  Ed.  372;  4  S.  Ct.  326. 

Established  license  fees  are  the  best  measure  of  damages  that  can  be  used. 
There  may  be  damages  beyond  this,  such  as  the  expense  and  trouble  the 
plaintiff  has  been  put  to  by  the  defendant,  and  any  special  inconvenience 
he  has  suffered  from  the  wrongful  acts  of  the  defendant ;  but  these  are  more 
properly  the  subject  of  allowance  by  the  court  under  the  authority  given  to 
it  to  increase  the  damages.  —  Clark  v.  Wooster,  119  U.  S.  322;  30  L.  Ed. 
392;  7  S.  Ct.  217. 

In  an  action  at  law  for  the  infringement  of  a  patent,  the  plaintiff  can 
recover  a  verdict  for  only  the  actual  damages  which  he  has  sustained;  and 
the  amount  of  such  royalties  or  license  fees  as  he  has  been  accustomed  to  re- 
ceive from  third  persons  for  the  use  of  the  invention,  with  interest  thereon  from 
the  time  when  they  should  have  been  paid  by  the  defendants,  is  generally, 
though  not  always,  taken  as  the  measure  of  his  damages;  but  the  court 
may,  whenever  the  circumstances  of  the  case  appear  to  require  it,  inflict 
vindictive  or  punitive'damages  by  rendering  judgement  for  not  more  than 
thrice  the  amount  of  the  verdict.  —  Tilghman  v.  Proctor,  125  U.  S.  136; 
31  L.  Ed.  664;  8  S.  Ct.  894. 

Seymour  v.  McCormick,  57  U.  S.  480;  N.  Y.  v.  Ransom,  64  U.  S.  487;  Suffolk 
v.  Hayden,  70  U.  S.  315;  Philip  v.  Nock,  84  U.  S.  460;  Packet  Co.  v.  Sickles, 
86  U.  S.  611;  Burdell  v.  Denig,  92  U.  S.  716. 

It  is  clear  that  the  payment  of  any  sum  in  settlement  of  a  claim  for  an 
alleged  infringement  cannot  be  taken  as  a  standard  to  measure  the  value  of 
the  improvements  patented,  in  determining  the  damages  sustained  by  the 
owners  of  the  patent  in  other  cases  of  infringement.  Many  considerations 
other  than  the  value  of  the  improvements  may  induce  the  payment  in  such 
cases.  The  avoidance  of  the  risk  and  expense  of  litigation  will  always  be  a 
potential  motive  for  settlement.  It  is  undoubtedly  true  that  when  there  has 
been  such  a  number  of  sales  by  a  patentee  of  licenses  to  make,  use  and  sell 
his  patents,  as  to  establish  a  regular  price  for  a  license  that  price  may  be 
taken  as  a  measure  of  damages  against  infringers.  That  rule  was  estab- 
lished in  Seymour  v.  McCormick,  57  U.  S.  480;  N.  Y.  v.  Ransom,  64  U.  S. 
487 ;  Packet  v.  Sickles,  86  U.  S.  611 ;  Birdsall  v.  Coolidge,- 93  U.  S.  64;  Root 
v.  Railway,  105  U.  S.  189.  Sales  of  licenses  made  at  periods  years  apart,  will 
not  establish  any  rule  on  the  subject  and  determine  the  value  of  the  patent. 
Like  sales  of  ordinary  goods,  they  must  be  common,  that  is,  of  frequent 
occurrence,  to  establish  such  a  market  price  for  the  article  that  it  may  be 
assumed  to  express,  with  reference  to  all  similar  articles,  their  salable  value 
at  the  place  designated.  In  order  that  a  royalty  may  be  accepted  as  a  measure 
of  damages  against  an  infringer,  who  is  a  stranger  to  the  license  establishing 
it,  it  must  be  paid  or  secured  before  the  infringement  complained  of;  it  must 


268  THE   FIXED   LAW   OF   PATENTS  §  293 

be  paid  by  such  a  number  of  persons  as  to  indicate  a  general  acquiescence  in 
its  reasonableness  by  those  who  have  occasion  to  use  the  invention;  and 
it  must  be  uniform  at  the  places  where  the  licenses  are  issued.  —  Rude  v. 
Westcott,  130  U.  S.  152;  32  L.  Ed.  888;  9  S.  Ct.  463. 

A  license  fee,  when  established  and  agreed  to  by  the  public,  is  only  a  measure 
of  estimating  the  market  value  of  a  patented  machine  or  device  of  which 
the  patentee  has  been  deprived  by  infringement.  —  Hunt  v.  Cassidy,  53 
Fed.  257;  3  C.  C.  A.  525. 

Seymour  v.  McCormick,  16  How.  480;  Packet  Co.  v.  Sickles,  19  Wall.  617; 
Rude  v.  Westcott,  130  U.  S.  152. 

The  proof  of  a  license  fee  for  two  improvements  is  not  competent  to  show 
the  damages  sustained  by  an  infringement  of  one  of  these  improvements. 
And  suit  having  been  brought  on  only  one  patent  and  no  proof  having  been 
offered  to  apportion  or  segregate  the  profits  due  to  each,  nominal  damages 
only  can  be  recovered.  —  Hunt  v.  Cassidy,  53  Fed.  257 ;  3  C.  C.  A.  525. 

Philip  v.  Nock,  17  Wall.  460;   Seymour  v.  McCormick,  16  How.  480. 

It  appears  from  the  evidence  that  at  the  time  of  infringement,  there  was 
an  established  license  fee  for  the  use  of  the  apparatus  such  as  that  employed 
by  the  defendant,  and  that  it  amounted  on  the  proper  basis  of  computation, 
to  $687.50.  This  sum  with  interest  is  the  measure  of  damages  which  the 
complainants  are  entitled  to  recover.  —  McNeely  v.  Williames,  96  Fed.  978; 
37  C.  C.  A.  641. 

The  proof  of  damages  consisted  of  licenses  granted  to  a  large  proportion 
of  the  leading  manufacturers  on  which  royalties  substantially  uniform  were 
agreed  to  be  paid,  and  it  was  upon  the  basis  of  such  royalties  that  the  master 
reckoned  the  damages.  These  licenses  were  made  after  this  suit  was  begun  and 
while  it  was  pending  contemporaneously  with  the  running  of  these  licenses 
and  the  pending  of  this  suit,  the  defendant  was  continuing  the  infringement. 
The  licenses  recited  the  pending  of  the  litigation  over  the  patent,  and  stipu- 
lated that,  if  it  should  be  adjudged  invalid,  the  royalties  should  cease  or  be 
remitted.  The  licensees  were  all  substantial  parties.  In  the  present  case, 
so  far  as  we  can  see  there  is  no  room  for  suspecting  collusion.  Nor  can  we 
perceive  any  reason  why  the  evidence  in  such  a  case  should  be  hedged  about 
with  suspicions  and  artificial  limitations  not  felt  or  imposed  in  dealing  with 
business  transactions  generally.  —  Mast  v.  Superior,  154  Fed.  45;  83  C.  C. 
A.  157. 

§  293.     Measure  —  Nominal. 

It  does  not  always  follow  that  because  a  party  may  have  made  an  im- 
provement in  a  machine  and  obtained  a  patent  for  it,  another  using  the 
improvement  and  infringing  upon  the  patentee's  rights  will  be  mulcted  in 
more  than  nominal  damages  for  the  infringement.  If  other  methods  in 
common  use  produce  the  same  results,  with  equal  facility  and  cost,  the  use 
of  the  patented  invention  cannot  add  to  the  gains  of  the  infringer,  or  im- 
pair the  just  rewards  of  the  inventor.  —  Black  v.  Thorne,  111  U.  S.  122; 
28  L.  Ed.  372;  4  S.  Ct,  326. 

Where  plaintiff  claims  profits  of  defendant  where  infringement  does  not 
cover  entire  machine  only  nominal  damages  can  be  had  in  absence  of  segrega- 
tion. —  Keystone  v.  Adams,  151  U.  S.  139;  38  L.  Ed.  103;  14  S.  Ct.  295. 

The  court  below  charged  the  jury  as  follows:  "  Your  verdict  in  this  case 
can  be  only  for  the  damages  which  he  (the  plaintiff)  has  sustained  by  the 


§§  294-295  DAMAGES  269 

alleged  use  of  his  patent  by  the  defendant  during  the  six  years  prior  to  the 
date  of  his  writ.  There  being  no  evidence  that  the  patent  was  of  any  value 
to  him  during  this  time  or  that  the  use  of  it  by  the  defendant  during  the 
6  years  was  any  injury  to  him,  or  that  he  paid  anything  for  the  patent,  you 
can  find  only  nominal  damages,  if  any,  in  this  case."  Under  these  circum- 
stances, the  court  should  have  expressly  directed  the  jury  that  it  should  not 
return  a  verdict  for  more  than  nominal  damages.  —  Boston  v.  Allen,  91  Fed. 
248;  33  C.  C.  A.  485. 

Suffolk  v.  Hayden,  3  Wall.  315;  Coupe  v.  Royer,  155  U.  S.  565  (overruling 
Suffolk  v.  Hayden);  Black  v.  Thorn,  111  U.  S.  122;  Seattle  v.  McNamara,  81 
Fed.  863. 

§  294.     Measure  —  Royalty. 

Where  the  plaintiff  has  sought  his  profit  in  the  form  of  a  royalty  paid 
by  his  licensees,  and  there  are  no  peculiar  circumstances  in  the  case,  the 
amount  to  be  recovered  will  be  regulated  by  that  standard.  —  Philip  v. 
Nock,  84  U.  S.  460;  21  L.  Ed.  679. 

Evidence  of  an  established  royalty  will  undoubtedly  furnish  the  true 
measure  of  damages  in  an  action  at  law  when  the  wilful  acts  consist  in  making 
and  selling  the  patented  improvement,  or  in  the  extensive  and  protracted  use 
of  the  same,  without  palliation  or  excuse ;  but  when  the  use  is  a  limited  one 
and  for  a  brief  period  it  is  error  to  apply  the  rule  arbitrarily  and  without  any 
qualification.  —  Birdsall  v.  Coolidge,  93  U.  S.  64;  23  L.  Ed.  802. 

Packet  v.  Sickles,  19  Wall.  617;  Burdell  v.  Denig,  92  U.  S.  716;  Suffolk  v. 
Hayden,  3  Wall.  320. 

Where  damages  cannot  be  assessed  upon  the  basis  of  a  royalty,  nor  on  that 
of  lost  sales,  nor  on  that  of  hurtful  competition,  the  proper  method  of  assess- 
ing them  is  to  ascertain  what  would  have  been  a  reasonable  royalty.  —  Hunt 
v.  Cassidy,  64  Fed.  585;  3  C.  C.  A.  525. 

Quoting  Rob.  Pat.  Sec.  563. 

(The  application  of  the  rule  in  this  case  seems  to  me  wholly  beyond  the  rule. 
The  only  direct  testimony  of  the  royalty  value  was  the  opinion  of  the  plaintiff. 
If  this  is  not  allowing  a  plaintiff  to  assess  his  own  damages  under  cover  of 
another  name,  then  it  would  be  hard  to  tell  what  would  be.) 

In  the  instant  case,  although  three  sales  were  sworn  to,  the  price  in  only 
two  is  given,  and  one  of  these  was  a  sale  made  before  the  reissue  of  the  patent. 
All  were  more  than  ten  years  before  the  infringement  alleged  in  this  case,  and, 
during  these  ten  years,  although  the  appliance  was  on  the  market  not  a 
single  sale  or  license  fee  is  shown.  It  cannot  be  seriously  contended  that  the 
sales  referred  to  establish  the  market  value  of  the  patent.  From  this  state 
of  the  case,  it  is  clear  that  the  court  erred  in  refusing  to  charge  the  jury  to 
find  nominal  damages  only.  —  Houston  v.  Stern,  74  Fed.  636 ;  20  C.  C.  A.  636. 

Coupe  v.  Royer,  155  U.  S.  565;   Rude  v.  Westcott,  130  U.  S.  152. 

§  295.    Measure  —  Speculative. 

In  the  present  case,  the  master  found  that  the  plaintiffs'  profit  on  their 
carpets  was  a  certain  percentage,  and  assumed  or  presumed  that  the  de- 
fendants' carpets,  which  were  far  inferior  in  quality  as  well  as  in  market  value, 
displaced  those  of  plaintiffs  to  the  extent  of  the  sales  by  the  defendants,  and 
held  that  the  entire  profit  which  the  plaintiffs  would  have  received,  at  such 
percentage,  from  the  sale  of  an  equal  quantity  of  their  own  carpets  of  the 
same  pattern,  was  the  proper  measure  of  their  damages.  The  defendants' 
carpets  were  so  inferior  in  quality  that  they  sold  them  at  a  much  less  price 


270  THE    FIXED    LAW    OF    PATENTS  §  296 

than  the  plaintiffs  got  for  their  carpets,  and  even  at  those  prices  the  defend- 
ants made  no  profits.  Under  these  circumstances  there  can  be  no  presump- 
tion that  the  plaintiffs  would  have  sold  their  better  quality  of  carpets  in 
place  of  the  defendants'  poorer  quality,  if  the  latter  had  not  existed,  or  that 
the  pattern  would  have  induced  the  purchasers  from  the  defendants  to  give 
to  the  plaintiffs  the  higher  price.  On  the  contrary,  the  presumption  is  at 
least  equal  that  the  cheaper  price,  and  not  the  pattern,  sold  the  defendants' 
carpets.  There  was  no  satisfactory  testimony  that  those  who  bought  the 
cheap  carpets  from  the  defendants  would  have  bought  the  higher  priced 
goods  from  the  plaintiffs,  or  that  the  design  added  anything  to  the  defendants' 
price  or  promoted  their  sale  of  the  particular  carpets ;  and  none  to  show  what 
part  of  the  defendants'  price  was  to  be  attributed  to  the  design.  —  Dobson 
v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct.  946. 

Opinions  not  founded  on  knowledge  are  of  no  value.  Conclusions  from 
such  opinions  are  at  best  mere  guesses.  By  the  decision  rendered  a  settled 
rule  of  law  was  violated,  that  actual,  not  speculative  damages  must  be  shown, 
and  by  clear  and  definite  proof,  to  warrant  a  recovery  for  the  infringement  of 
a  patent.  As  was  said  long  ago  by  this  court;  actual  damages  must  be 
calculated,  not  imagined;  and  an  arithmetical  calculation  cannot  be  made 
without  certain  data  on  which  to  make  it.  —  Rude  v.  Westcott,  130  U.  S. 
152;  32  L.  Ed.  888;  9  S.  Ct.  463. 

N.  Y.  v.  Ransom,  64  U.  S.  487. 

In  view  of  this  record,  it  might  be  possible  to  make  some  vague  guess, 
as  many  of  the  witnesses  have,  as  to  how  much  faster  some  one  appliance 
would  work  than  another,  under  favorable  circumstances ;  but  there  seems  to 
be  absolutely  no  proof  which  would  warrant  the  court  in  finding  that  by  the 
use  of  the  infringing  nets,  defendant  saved  any  specific  number  of  hours  out 
of  the  time  it  would  have  taken  to  do  the  work  with  one  or  other  of  the 
cargo-hoisting  appliances  available  to  defendant.  The  testimony  falls  far 
short  of  the  reliable  and  tangible  proof  which  is  required  to  establish  profits. 
—  Hohorst  v.  Hamburg-American,  91  Fed.  655;  34  C.  C.  A.  39. 

The  parties  agreed  upon  a  guess  as  to  the  number  of  machines  made  and 
sold  and  on  this  guess  the  amount  of  damages  was  estimated.  If  the  Supreme 
Court  had  not  found  plenty  of  reasons  for  reversing  this  decision  upon  other 
grounds  (192  U.  S.  265)  there  is  little  question  but  that  it  would  have  been 
reversed  on  the  question  of  damages.  —  Singer  v.  Cramer,  109  Fed.  652 ; 
48  C.  C.  A.  588. 

Counsel  for  the  defendant  says,  "  the  law  requires  that  the  two  things  to  be 
compared  must  be  adequate  to  produce  an  equally  beneficial  result."  This 
proposition  seems  to  have  been  borrowed  from  cases  where  the  circumstances 
were  such  as  to  make  such  a  comparison  possible.  It  has  no  application  to 
a  case  like  this.  There  was  no  such  thing  to  compare  with  and  the  rule  above 
stated,  to  be  applicable  to  such  a  case  as  this,  must  be  modified  to  suit  the 
different  circumstances.  —  Mast  v.  Superior,  154  Fed.  45 ;  83  C.  C.  A.  157. 

Suffolk  v.  Hayden,  3  Wall.  315;  Cawood  Pat.  94  U.  S.  695;  Sessions  v.  Ro- 
madka,  145  U.  S.  29. 

§  296.     Measure  —  Miscellaneous. 

These  sales  (of  the  attachment  alone)  furnish  a  much  better  measure  of 
profits  than  a  ratable  proportion  on  the  entire  machine.  It  may  fairly  be 
presumed  from  them  that  the  profits  on  the  sale  of  the  machine,  with  the 
improvement  attached,  were  increased  by  the  infringing  device  quite  as 
much  as  was  the  profit  on  the  improvement  sold  separately.    It  does  not 


§§297-298  DAMAGES  271 

appear  at  what  profit,  if  any,  the  machines  could  have  been  sold  without  the 
improvement.  —  Mason  v.  Graham,  90  U.  S.  261;  23  L.  Ed.  86. 

As  the  infringement  of  a  combination  is  in  the  use  of  the  combination  and 
not  its  elements,  so  profits  or  damages  for  such  infringement  depend  upon  the 
combination  and  not  the  elements.  —  Elizabeth  v.  American,  97  U.  S.  126; 
24  L.  Ed.  1000. 

For  history  of  doctrine  of  damages,  see  Root  v.  Ry.,  105  U.  S.  189;  26 
L.  Ed.  975. 

If  made  by  such  infringement  they  can  hardly  be  set  up  against  the  com- 
plainant to  reduce  the  amount  of  profits  made  by  the  defendants.  At  all  events, 
since  the  defendants  chose  to  make  their  own  folded  strips  in  their  own 
factory,  instead  of  going  outside  to  purchase  them,  or  have  them  made  by 
others,  they  cannot  justly  complain  of  their  being  accountable  for  the  profits 
realized  in  using  the  complainant's  machine  for  that  purpose.  —  Thompson  v. 
Wooster,  114  U.  S.  104;  29  L.  Ed.  105;  5  S.  Ct.  788. 

§  297.     Proof  of. 

The  plaintiffs  have  furnished  no  data  to  estimate  actual  damage,  and 
therefore,  in  no  aspect  of  the  case  can  they  recover  more  than  nominal 
damages.  —  Mayor  v.  Ransom,  64  U.  S.  487;  16  L.  Ed.  515. 

The  plaintiff  must  show  his  damages  by  evidence.  They  must  not  be  left 
to  conjecture  by  the  jury.  They  must  be  proved,  and  not  guessed  at.  — 
Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679. 

No  license  fee  charged  by  complainant  is  shown.  The  burden  of  proof  rests 
upon  him.  Damages  must  be  proved;  they  are  not  to  be  presumed.  —  Rob- 
ertson v.  Blake,  94  U.  S.  728;  24  L.  Ed.  245. 

Having  failed  to  prove  by  reliable  and  tangible  evidence  that  the  entire 
value  of  the  infringing  device  as  a  marketable  article,  was  properly  and 
legally  attributable  to  his  patented  feature,  the  court  cannot  indulge  in  con- 
jecture or  speculation  in  order  to  give  him  the  entire  profits  made  by  the 
defendants.  —  Mosher  v.  Joyce,  51  Fed.  441 ;  2  C.  C.  A.  322. 

The  burden  of  proof  of  damages  is  upon  the  plaintiff.  —  Hunt  v.  Cassidy, 
53  Fed.  257;  3  C.  C.  A.  525. 

Garretson  v.  Clark,  111  U.  S.  120;   Blake  v.  Robertson,  94  U.  S.  728. 

The  defendant  below  insisted  that  the  damages  recoverable  must  be  actual, 
and  that  proof  as  to  sales  to  other  parties  or  of  an  established  license  fee  as 
royalty,  was  inadmissible.  The  trial  judge  overruled  the  objection,  and, 
we  think,  rightly,  admitted  evidence  of  sales  made  and  license  fees 
collected.  —  Houston  v.  Stern,  74  Fed.  636:  20  C.  C.  A.  636. 

§  298.     Segregation. 

If  the  measure  of  damages  be  the  same  whether  a  patent  be  for  an  entire 
machine,  or  for  some  improvement  in  some  part  of  it,  then  it  follows  that  each 
one  who  has  patented  an  improvement  in  any  portion  of  a  machine  may 
recover  the  whole  profits  arising  from  the  skill,  labor,  material  and  capital 
employed  in  making  the  whole  machine,  and  the  unfortunate  mechanic 
may  be  compelled  to  pay  treble  his  whole  profits  to  each  of  a  dozen  or  more 
several  inventors  of  some  small  improvement  in  the  machine  he  has  built. 


272  THE    FIXED    LAW    OF    PATENTS  §  298 

By  this  doctrine  even  the  smallest  part  is  made  equal  to  the  whole,  and 
"  actual  damages  "  to  the  plaintiff  may  be  converted  into  an  unlimited  series 
of  penalties  on  the  defendant.  —  Seymour  v.  McCormick,  16  How.  480;  14  L. 
Ed.  1024. 

One  who  invents  some  improvement  in  the  machinery  of  a  mill  could  not 
claim  that  the  profits  of  the  whole  mill  should  be  the  measure  of  damages  for 
the  use  of  his  improvement.  And  when  the  profit  of  the  patentee  consists 
neither  in  the  exclusive  use  of  the  thing  invented  or  discovered  nor  in  the 
monopoly  of  making  it  for  others  to  use,  it  is  evident  that  the  rule  could  not 
apply.  —  Seymour  v.  McCormick,  16  How.  480;  14  L.  Ed.  1024. 

It  is  true  of  a  process  invented  as  an  improvement  in  a  manufacture,  as  it 
is  of  an  improvement  in  a  maehine,  that  an  infringer  is  not  liable  to  the 
extent  of  his  entire  profits  in  the  manufacture.  —  Mowry  v.  Whitney,  81 
U.  S.  620;  20  L.  Ed.  860. 

Jones  v.  Morehead,  1  Wall.  155;   Seymour  v.  McCormick,  16  How.  480. 

Where  the  infringement  is  confined  to  a  part  of  the  thing  sold,  the  recovery 
must  be  limited  accordingly.  It  cannot  be  as  if  the  entire  thing  were  covered 
by  the  patent;  or,  where  that  is  the  case,  as  if  the  infringement  were  as  large 
as  the  monopoly.  —  Philip  v.  Nock,  84  U.  S.  460;  21  L.  Ed.  679. 

Where  segregation  is  necessarv  and  is  not  made,  only  nominal  damages  will 
be  allowed.  —  Robertson  v.  Blake,  94  U.  S.  728 ;  24  L.  Ed.  245. 

It  does  not  necessarily  follow  from  this  rule  (the  rule  in  Mowry  v.  Whitney) 
that  where  the  patent  is  for  one  of  the  constituent  parts  and  not  for  the  whole 
machine,  the  profits  are  to  be  confined  to  what  can  be  made  by  the  manu- 
facture and  sale  of  the  patented  part  separately.  If,  without  improvement, 
a  machine  adapted  to  the  same  uses  can  be  made,  which  will  be  valuable  in 
the  market  and  salable,  then  as  was  further  said  in  Mowry  v.  Whitney,  the 
inquiry  is,  "  what  was  the  advantage  in  cost,  in  skill  required,  in  convenience 
of  operation  or  marketability  "  gained  by  the  use  of  the  patented  improve- 
ment. If  the  improvement  is  required  to  adapt  the  machine  to  a  particular 
use,  and  there  is  no  other  way  open  to  the  public  of  supplying  the  demand 
for  that  use,  then  it  is  clear  the  infringer  has  by  his  infringement  secured  the 
advantage  of  a  market  he  would  not  otherwise  have  had,  and  that  the 
fruits  of  his  advantage  are  the  entire  profits  he  has  made  in  that  market. 
Such,  we  think,  is  the  case.  —  Goulds  v.  Cowing,  105  U.  S.  253 ;  26  L.  Ed. 
987. 

It  is  incumbent  upon  the  complainant  to  separate  the  profits  arising  from 
the  saving  to  defendant  by  using  the  patented  device  from  other  savings  or 
profits.  —  Black  v.  Thorne,  111  U.  S.  122;  28  L.  Ed.  372;  4  S.  Ct.  326. 

It  is  provided  by  sec.  4921  of  the  R.  S.  that,  in  a  suit  in  equity  for  the 
infringement  of  a  patent,  the  plaintiff  may,  on  a  decree  in  his  favor,  recover 
the  damages  he  has  sustained,  in  addition  to  the  profits  to  be  accounted  for 
by  the  defendant,  such  damages  to  be  assessed  by  the  court,  or  under  its 
direction,  and  with  the  same  power  to  increase  the  damages,  in  the  discretion 
of  the  court,  as  in  the  case  of  verdicts;  and  the  damages  intended  are  "  the 
actual  damages  sustained  "  in  the  language  of  sec.  4919.  Root  v.  R.  Co. 
105  U.  S.  189.    By  sec.  4933  all  these  provisions  apply  to  patents  for  designs. 

This  court  has,  in  a  series  of  decisions,  laid  down  rules  as  to  what  are  to  be 
regarded  as  "  profits  to  be  accounted  for  by  the  defendant,"  and  what  as 
"  actual  damages  "  in  suits  for  the  infringement  of  patents;  and  no  rule  has 


§  298  DAMAGES  273 

been  sanctioned  which  will  allow,  in  the  case  of  a  patent  for  a  design  for 
ornamental  figures  created  in  the  weaving  of  a  carpet,  or  imprinted  on  it, 
the  entire  profit  from  the  manufacture  and  sale  of  the  carpet,  as  profits  or 
damages,  including  all  the  profits  from  carding,  spinning  and  weaving,  thus 
regarding  the  entire  profits  as  due  to  the  figure  or  pattern,  unless  it  is  shown 
by  reliable  evidence  that  the  entire  profit  is  due  to  the  figure  or  pattern.  It 
is  matter  of  common  knowledge  that  there  is  an  infinite  variety  of  patterns 
in  carpets,  and  that,  between  two  carpets  of  equal  cost  to  make  and  equal 
merit  as  to  durability  of  fabric  and  fastness  of  color,  each  with  a  pattern 
pleasing  to  the  taste,  one  having  a  design  free  to  be  used  and  the  other  a 
design  protected  by  a  patent,  the  latter  may  or  may  not  command  in  the 
market  a  price  larger  than  the  former.  If  it  does,  then  the  increased  price 
may  be  fairly  attributed  to  the  design,  and  there  is  a  solid  basis  of  evidence 
for  profits  or  damages.  But,  short  of  this,  under  the  rules  established  by 
this  court,  there  is  no  such  basis.  The  same  principle  is  applicable  as  in 
patents  for  inventions.  The  burden  is  upon  the  plaintiff,  and  if  he  fails  to 
give  the  necessary  evidence,  but  resorts,  instead,  to  inference  and  conjecture 
and  speculation,  he  must  fail  for  want  of  proof.  There  is  another  suggestion 
of  great  force.  The  carpet  with  the  infringing  design  may  be  made  on  an 
infringing  loom,  and  various  infringing  processes  or  mechanisms  for  carding, 
spinning  and  dyeing  may  be  used  in  making  it,  and  if  the  entire  profit  in 
making  and  selling  it  is  necessarily  to  be  attributed  to  the  pattern,  so  it  may 
as  well,  on  principle,  be  attributed  to  each  of  the  other  infringements,  and  a 
defendant  might  be  called  on  to  respond  many  times  over  for  the  same 
amount.  There  is  but  one  safe  rule  —  to  require  the  actual  damages  or  profits 
to  be  established  by  trustworthy  legal  proof.  —  Dobson  v.  Hartford,  114 
U.  S.  439;  29  L.  Ed.  177;  5  S.  Ct.  945. 

Livingston  v.  Woodworth,  15  How.  546;  Seymour  v.  McCormick,  16  How. 
480;  Mayor  v.  Ransom,  23  How.  487;  Mo  wry  v.  Whitney,  14  Wall.  620;  Philip 
v.  Nock,  17  Wall.  460;  Littlefield  v.  Perry,  21  Wall.  205;  Birdsall  v.  Coolidge, 
93  U.  S.  64;  Cawood  Pat.  94  U.  S.  695;  Blake  v.  Robertson,  94  U.  S.  728;  Gar- 
retson  v.  Clark,  111  U.  S.  120;  Black  v.  Thorne,  111  U.  S.  122.  Distinguishing 
Mfg.  Co.  v.  Cowing,  105  U.  S.  253. 

The  plaintiff  must  show  what  profit  or  damages  are  attributable  to  the  use 
of  the  infringing  design.  —  Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63; 
6  S.  Ct.  946. 

Dobson  v.  Hartford,  114  U.  S.  439. 

Where  patent  covers  only  a  part  or  an  improvement  upon  a  general  machine 
profits  must  be  segregated.  —  McCreary  v.  Pennsylvania,  141  U.  S.  459; 
35  L.  Ed.  817;  12  S.  Ct.  40. 

Seymour  v.  McCormick,  57  U.  S.  480;  Mowry  v.  Whitney,  81  U.  S.  620;  Little- 
field  v.  Perry,  88  U.  S.  205;  Elizabeth  v.  Nicholson,  97  U.  S.  126;  Garretson  v. 
Clark,  111  U.  S.  120. 

Necessary  to  the  recovery  of  more  than  nominal  damages.  —  Keystone 
v.  Adams,  151  U.  S.  139;  38  L.  Ed.  103;  14  S.  Ct.  295. 
Garretson  v.  Clark,  111  U.  S.  120. 

The  rule  requiring  that  profits  arising  from  the  patented  features  must  be 
separated  from  those  arising  from  the  unpatented  features  has  little  applica- 
tion in  a  case  where  every  feature  is  patented.  —  Warren  v.  Keep,  155  U.  S. 
265;  39  L.  Ed.  144;  15  S.  Ct.  83. 

It  is,  no  doubt,  well  settled  that  where  a  patent  is  for  a  particular  part  of 
an  existing  machine,  it  is  not  sufficient  to  ascertain  the  profits  on  the  whole 


274  THE    FIXED    LAW    OF    PATENTS  §  298 

machine,  but  it  must  be  shown  what  portion  of  the  profits  is  due  to  the  par- 
ticular invention  secured  by  the  patent  in  suit.  But  it  is  equally  true  that,  when 
the  patented  invention  is  for  a  new  article  of  manufacture,  which  is  sold 
separately,  the  patentee  is  entitled  to  damages  arising  from  the  manufacture 
and  sale  of  the  entire  article.  —  Warren  v.  Keep,  155  U.  S.  265;  39  L.  Ed. 
144;  15  S.  Ct.  83. 

Robertson  v.  Blake,  94  U.  S.  728;  Dobson  v.  Hartford,  114  U.  S.  439;  Goulds 
v.  Cowing,  105  U.  S.  258;  Hurlbut  v.  Schillinger,  130  U.  S.  456;  Crosby  v. 
Consolidated,  141  U.  S.  441. 

Rule  of  Garretson  v.  Clark  cited  and  applied.  —  Mosher  v.  Joyce,  51  Fed. 
441 ;  2  C.  C.  A.  322. 

Dobson  v.  Carpet  Co.  114  U.  S.  444. 

The  authorities  are  full  upon  the  point  that  a  party  cannot  recover  on 
damages  the  profits  to  be  derived  from  the  manufacture  of  the  whole  of  a 
machine,  when  only  a  portion  of  the  same  contains  a  patented  feature.  — 
Hunt  v.  Cassidy,  53  Fed.  257;  3  C.  C.  A.  525. 

Garretson  v.  Clark,  111  U.  S.  120;  Dobson  v.  Carpet  Co.  114  U.  S.  440;  Philip 
v.  Nock,  17  WaU.  460. 

It  would  be  impossible  in  the  case  of  a  patent  such  as  this  to  introduce 
testimony  to  separate  the  value  of  the  patented  from  the  unpatented  parts. 
The  plaintiffs'  invention  practically  introduced  a  new  cart,  —  a  cart  for  which 
a  demand  at  once  arose.  There  is  no  evidence  that  at  any  time  carts  were 
constructed  after  the  manner  of  the  plaintiff's  but  with  the  patented  feature 
omitted.  There  would  be  no  demand  for  such  a  cart.  It  was  impossible, 
therefore,  to  compare  the  value  of  the  patented  cart  with  a  cart  which  did 
not  contain  the  invention.  There  was  in  the  case  the  admission  of  the 
defendants  that  they  had  constructed  150  carts  in  1893.  The  testimony  of 
the  plaintiffs  was  that,  by  reason  of  the  competition  of  infringers,  the  price 
of  their  cart,  which  was  originally  $35,  had  been  reduced  to  $22.50.  The 
measure  of  their  damages  was  their  entire  loss.  —  Holmes  v.  Truman,  67 
Fed.  542;  14  C.  C.  A.  517. 

Fitch  v.  Bragg,  16  Fed.  243;   Mfg.  Co.  v.  Sargent,  117  U.  S.  536. 

The  defendants  insist,  however,  that  they  made  additions  which  materially 
benefited  the  machines,  and  increased  their  effective  power.  If  this  is  true, 
although  they  took  the  whole  of  the  vital  and  effective  part  of  the  invention, 
but  superadded  and  annexed  an  improvement  which  contributed  to  the 
saving  which  they  obtained,  they  have  a  right  to  an  apportionment,  the 
burden  being  upon  them  to  show  th  t  a  portion  of  the  profits  was  the  result 
of  the  improvement  which  they  nexed.  —  Tuttle  v.  Claflin,  76  Fed.  227 ; 
22  C.  C.  A.  138. 

Elizabeth  v.  Pavement,  97  U.  S.  126;  Crosby  v.  Consolidated,  141  U.  S.  441. 

The  general  rule  is  clear  that  in  an  -ccov.nting  of  profits  derived  from 
the  infringement  of  a  patent  le  plaintiff  has  the  burden  of  proof,  and  the 
infringer  is  chargeable  v  with  the  actual  gains  and  advantages  derived 
from  the  use  of  the  invei.cibn.  —  Elgin  v.  Nichols,  105  Fed.  780;  45  C.  C.  A. 
49. 

Garretson  v.  Clark,  111  U.  S.  120;  Dobson  v.  Carpet  Co.,  114  U.  S.  439;  City  v. 
American,  97  U.  S.  126. 

But  it  does  not  follow  that,  because  the  only  part  of  the  machine  sold 
covered  by  this  claim  is  the  barred  cylinder,  the  patentees'  recovery  of 


§  298  DAMAGES  275 

profits  is  to  be  confined  to  what  can  be  made  by  making  and  sale  of  this 
cylinder  only.  —  Penfield  v.  Potts,  126  Fed.  475;  61  C.  C.  A.  371. 

Garretson  v.  Clark,  111  U.  S.  120;  Reed  v.  Lawrence,  29  Fed.  915;  Mosher  v. 
Joyce,  51  Fed.  441;  Manufacturing  Co.  v.  Cowing,  105  U.  S.  253;  Crosby  v.  Con- 
solidated, 141  U.  S.  454. 

Here  is  the  rock  on  which  many  patent  causes  have  been  stranded  at  the 
end  of  their  course,  for,  though  it  can  sometimes  be  done,  it  is  generally  next 
to  impossible  to  distinguish  the  profits  due  to  one  rather  than  another  of  the 
characteristics  of  the  article  sold,  or  manufactured  to  be  sold.  The  price  is 
single,  and  it  would  rarely  happen  that  either  the  buyer  or  the  seller  would 
contemplate  the  price  as  made  up  of  components  grounded  on  such  a  dis- 
tinction. The  facts  are  similar  to  those  which  in  other  cases  would  condemn 
the  guilty  party  to  suffer  the  consequences  of  his  mingling  indistinguishably 
the  property  of  an  innocent  party  with  his  own  or  that  of  another.  Counsel 
for  defendant  has  argued  this  question  upon  the  theory  that  the  rule  laid  down 
m  the  case  of  Elizabeth  v.  Pavement  Co.  was  an  exception  to  that  stated  in 
Garretson  v.  Clark,  and  seems  to  suppose  that,  in  every  case  where  some  ele- 
ment or  elements  of  a  combination  found  in  a  former  patent  is  found  also 
in  the  infringing  article,  the  burden  is  cast  upon  the  plaintiff  to  prove  either 
that  it  did  not  affect  the  selling  price  of  the  article,  or,  if  it  did,  to  show  what 
part  of  the  price  was  due  to  his  own  invention.  But  such  a  rule  would  be 
inconsistent  with  the  decision  in  Elizabeth  v.  Pavement  Co.  We  think  the 
two  cases  above  mentioned  are  not  inconsistent ;  but  that  they  are  easily  recon- 
ciled upon  the  assumption  that  the  rule  of  the  first  case  is  applicable  to  the 
question  of  the  burden  of  proof  of  showing  the  presence  of  the  extraneous 
element  and  the  probability  that  it  has  affected  the  price,  and  that  the  rule 
of  the  second  case  relates  to  the  burden  of  proof  after  these  facts  are  estab- 
lished. Thus  in  the  later  case  of  Keystone  v.  Adams,  151  U.  S.  145,  in  sum- 
ming up  the  conclusions  reached  thereon,  one  was  stated  to  be,  "  that  when 
the  infringed  device  was  a  portion  only  of  defendant's  machine,  which  em- 
braced inventions  covered  by  patents  other  than  that  for  the  infringement  of 
which  the  suit  was  brought,  in  the  absence  of  proof  to  show  how  much  of 
that  profit  was  due  to  such  other  patents,  and  how  much  was  a  manufacturer's 
profit,  the  complainant  is  entitled  to  nominal  damages  only,"  from  which 
it  seems  that  the  conditions  stated  must  have  been  made  to  appear  before 
the  rule  stated  could  be  applied.  —  Canda  v.  Michigan,  152  Fed.  178;  81 
C.  C.  A.  420. 

That  the  conduct  of  the  infringer  may  require  a  modification  of  this  rule 
see  Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

It  is  contended  that  the  master  should  have  made  some  apportionment  in 
his  estimate  of  profits  to  other  features  of  merit  in  the  devices  sold  by  the 
defendant.  No  doubt  if  the  defendant  could  have  satisfied  the  master  that 
there  were  some  other  special  features  of  merit  not  common  to  grain  drills, 
which  contributed  to  the  profits,  it  would  have  been  his  duty  to  make  an 
apportionment,  and  award  to  the  Peckham  patent  only  such  part  of  the 
profits  as  the  proof  would  justify;  but  there  was  no  factor  brought  forward 
which  was  entitled  to  share  in  the  profits  the  master  was  inquiring  about. 
The  burden  was  on  the  defendant  to  prove  that  there  existed  such  a  factor. 

—  Mast  v.  Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

Canda  v.  Michigan,  152  Fed.  178;  Elizabeth  v.  Pavement  Co.  97  U.  S.  126; 
Sayer  v.  Scott,  55  Fed.  971;   Tuttle  v.  Claflin,  76  Fed.  227. 

Note:    Many  of  the  leading  cases  on  this  subject  will  be  found  under  Profits 

—  Segregation. 


276  THE    FIXED    LAW   OF   PATENTS  §§  299-300 

§  299.     Miscellaneous  Rulings. 

The  transfer  of  title  to  patent  in  suit  pendente  lite  does  not  affect  the  right 
to  past  damages.  —  Dean  v.  Mason,  61  U.  S.  198;  15  L.  Ed.  876. 

Counsel  fees  cannot  be  included  in  the  verdict.  —  Philip  v.  Nock,  84  U.  S. 
460;  21  L.  Ed.  679. 

When  a  suit  in  equity  has  been  brought  and  prosecuted  in  the  name  of  the 
patentee  alone,  with  the  licensee's  consent  and  concurrence,  to  final  judgement, 
from  which,  if  for  too  small  a  sum,  an  appeal  might  have  been  taken  in  the 
name  of  the  patentee,  we  should  hesitate  to  say  that  the  licensee,  merely 
because  he  was  not  a  formal  plaintiff  in  that  suit,  could  bring  a  new  suit  to 
recover  damages  against  the  same  defendant  for  the  same  infringement.  — 
Birdsall  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed.  768;  5  S.  Ct.  244. 

Proof  of  what  other  manufacturers  have  realized  not  a  measure  of  damages. 

—  Keystone  v.  Adams,  151  U.  S.  139;  38  L.  Ed.  103;  14  S.  Ct.  295. 

The  fact  that  a  competing  article  could  be  made  and  sold  at  an  equal  profit 
does  not  affect  the  damages.  —  Warren  v.  Keep,  155  U.  S.  265;  39  L.  Ed. 
144;  15  S.  Ct.  83. 

It  has  been  often  repeated  that  a  patentee  has  three  distinctive  rights,  — 
the  right  to  make,  the  right  to  sell,  and  the  right  to  use  his  patented  articles, 

—  and  that  whoever  invades  any  one  of  these  rights  is  an  infringer,  and 
liable  for  damages.  —  Philadelphia  v.  Edison,  65  Fed.  551 ;  13  C.  C.  A.  40. 

Since  Birdsall  v.  Shaliol,  112  U.  S.  485,  the  law  has  been  settled  that  the 
recovery  of  damages  from  a  defendant,  for  manufacturing  and  selling,  will 
not  prevent  the  recovery  of  other  substantial  damages  from  the  defendant's 
vendees;  for  their  profits  upon  reselling  the  patented  articles.  —  Philadelphia 
v.  Edison,  65  Fed.  551 ;  13  C.  C.  A.  40. 

Kelley  v.  Mfg.  Co.  44  Fed.  19;  Tuttle  v.  Matthews,  28  Fed.  98. 

The  second  patent  is  only  for  an  attachment,  which  doubtless  may  be 
usefully  employed,  especially  in  power  mills,  but  if  left  off  or  removed  no 
equivalent  in  its  place  is  imperative.  There  can,  therefore,  be  no  good  reason 
for  supposing  that  the  profits  derived  from  the  manufacture  and  sale  of  the 
mills  in  which  that  device  was  employed  were  all  due  to  its  use.  —  Elgin  v. 
Nichols,  105  Fed.  780;  45  C.  C.  A.  49. 

Neither  is  there  any  doubt,  since  the  Act  July  8,  1870,  R.  S.  4921,  but  that, 
where  the  injury  resulting  from  an  infringement  shall  be  greater  than  the 
gains  and  profits  made  by  the  infringer,  the  patentee,  in  addition  to  the 
profits  to  be  accounted  for,  is  entitled  to  recover  the  damages  he  has  sus- 
tained. —  Kisinger-Ison  v.  Bradford,  123  Fed.  91;  59  C.  C.  A.  221. 

Root  v.  Railway,  105  U.  S.  189;   Coupe  v.  Royer,  155  TJ.  S.  565. 


DEATH  OF  APPLICANT. 

Miscellaneous  Rulings  §  300  (see  §  38) 

§  300.     Miscellaneous  Rulings. 

Power  of  attorney  —  right  to  amend,  see  Eagleton  v.  West,  111  U.  S.  490; 
28  L.  Ed.  493;  4  S.  Ct.  593. 

Distinguished,  De  La  Vergne  v.  Featherstone,  147  U.  S.  209. 


301-303 


DECREES 


277 


Executor  or  administrator,  powers  of  defined  in  De  La  Vergne  v.  Feather- 
stone,  147  U.  S.  209;  37  L.  Ed.  138;  13  S.  Ct.  283. 

Amendment  after  death  of  applicant  made  within  the  scope  of  the  original 
application  without  new  oath  or  new  power  of  attorney  does  not  void  patent. 
—  De  La  Vergne  v.  Featherstone,  147  U.  S.  209;  37  L.  Ed.  138;  13  S.  Ct. 
283. 

Distinguishing,  Eagleton  v.  West,  111  U.  S.  490. 

Does  not  void  patent  issued  subsequent  to  his  death  for  which  he  made 
application.  —  De  La  Vergne  v.  Featherstone,  147  U.  S.  209;  37  L.  Ed. 
138;  13  S.  Ct.  283. 


DECREES. 

General  Statement  §  301 
Appellate  Power  Over  §  302 
Classes  §  303 
Interlocutory  §  304 


Miscellaneous  §  305 

See —  Adjudication    §    24;     Appeals 

§§  116-21;   Injunction  §  533 


§  301.     General  Statement. 

Since  this  work  deals  with  pleading,  practice  and  procedure  only  with 
reference  to  matters  peculiar  to  patent  causes,  such  topics  and  titles  as  the 
above  will  be  found  fragmentary  and  unsatisfactory  as  determining  any 
question  arising  thereunder.  It  is  always  presumed  that  the  practitioner  has 
at  hand  the  standard  authorities  on  pleading,  practice  and  procedure,  and  that 
what  is  here  given  on  such  subjects  is  limited  to  the  special  rulings  in  patent 
causes. 

§  302.    Appellate  Power  Over. 

The  general  rule  that  a  court  of  review  may,  whether  the  adjudication 
appealed  from  be  interlocutory  or  final,  direct  the  court  of  original  jurisdic- 
tion to  enter  whatever  decree  ought  to  have  been  entered  in  the  first  instance, 
as  in  LeGuen  v.  Gouverneur,  1  Johns,  Cas.  436;  Richmond  v.  Atwood,  52  Fed. 
10;  Bissell  v.  Goshen,  72  Fed.  545;  and  Green  v.  Mills,  69  Fed.  852,  the 
opinion  in  the  last  named  case  being  by  Chief  Justice  Fuller,  —  need  not  be 
dwelt  on.  —  Standard  v.  Crane,  76  Fed.  767;  22  C.  C.  A.  549. 

An  appellate  tribunal  cannot  change  the  nature  of  a  decree ;  it  cannot  make 
an  interlocutory  decree  final.  —  Standard  v.  Crane,  76  Fed.  767;  22  C.  C. 
A.  549. 

Disapproving,  Bissell  v.  Goshen,  72  Fed.  545. 


§  3°3'     Classes. 

The  single  division  of  decrees  into  two  classes,  and  two  only,  interlocutory 
and  final,  has  been  generally  accepted  by  lawyers  and  judges  in  this  country 
and  England.  —  Richmond  v.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

"  Decrees  are  of  two  kinds,  interlocutory  and  final.  An  interlocutory 
decree  is  properly  a  decree  pronounced  for  the  purpose  of  ascertaining 
matter  of  law  or  fact  preparatory  to  a  final  decree."  —  Richmond  v.  Atwood; 
52  Fed.  10;  2  C.  C.  A.  596. 

A  preliminary  injunction  had  been  granted  and  no  appeal  taken.  Claim 
1  was  held  invalid  at  circuit  on  proofs  taken.    On  motion  to  dismiss  cross- 


278  THE    FIXED    LAW    OF    PATENTS  §§  304-305 

appeal,  Held:  Here  defendants  present  a  complete  record.  They  do  not 
attack  merely  the  injunction  respecting  the  second  patent,  and  that  on  the 
ground  that  it  was  temporary  and  improvidently  granted ;  but  they  contend 
that,  as  to  the  five  claims  of  the  two  patents  held  valid,  the  ultimate  merits 
of  the  questions  of  validity  and  infringement  are  in  their  favor.  If  we  were 
not  authorized  now  to  consider  and  decide  the  merits  with  respect  to  claim  1 
of  the  first  patent,  which  was  included  in  the  pleadings  and  proofs  and  held 
invalid,  the  result  would  be  that  the  Circuit  Court  would  proceed  with  the 
accounting  on  a  basis  that  does  not  accord  with  our  views  of  the  ultimate 
merits,  and  a  new  accounting  would  have  to  be  taken  after  a  subsequent 
appeal  to  this  court.  Motion  overruled.  —  Chicago  v.  Miller,  133  Fed.  541 ; 
66  C.  C.  A.  517. 

§  304.     Interlocutory. 

Decree  finding  certain  claims  invalid,  certain  claims  valid  and  infringed, 
and  ordering  an  injunction. 

The  decree  entered  by  the  circuit  court  was  interlocutory,  and  not  final. 
—  Ex  parte  National,  201  U.  S.  156;  26  S.  Ct.  404. 

Barnard  v.  Gibson,  7  How.  650;  Humiston  v.  Stainthorp,  2  Wall.  106;  Esty 
v.  Burdette,  109  U.  S.  633;  McGourky  v.  Toledo,  146  U.  S.  536;  Hohorst  v. 
Hamburg-American,  148  U.  S.  262;    Smith  v.  Vulcan,  165  U.  S.  518. 

It  will  be  observed,  from  an  examination  of  the  cases  in  the  Supreme 
Court  of  the  United  States,  that  a  decree  in  patent  cases,  declaring  the  patent 
in  question  valid,  and  that  it  has  been  infringed,  and  for  an  injunction  and  an 
accounting,  has  uniformly  been  referred  to  as  an  interlocutory  decree.  — 
Richmond  v.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

Barnard  v.  Gibson,  7  How.  650;  Forgay  v.  Conrad,  6  How.  201;  Humiston  v. 
Stainthorp,  2  Wall.  106;  Railroad  v.  Soutter,  2  Wall.  510;  Beebe  v.  Russell,  19' 
How.  283;   Iron  Co.  v.  Martin,  132  U.  S.  91. 

The  Supreme  Court  has  held  a  decree  in  a  patent  case,  declaring  the  patent 
valid  and  infringed,  and  for  an  injunction  and  accounting,  interlocutory.  — 
Richmond  v.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

Barnard  v.  Gibson,  7  How.  650,  Forgay  v.  Conrad,  6  How.  201;  Humiston  v- 
Stainthorp,  2  Wall.  106;  Railroad  v.  Soutter,  2  Wall.  510;  Beebe  v.  Russell, 
19  How.  283;  Iron  Co.  v.  Martin,  132  U.  S.  91. 

§  305.     Miscellaneous. 

A  decree  by  consent  for  injunction  and  accounting  does  not  preclude- 
defendant  from  objection  or  exception  to  proceedings  subsequent  to  the 
decree.  —  Livingston  v.  Woodworth,  15  How.  546;  14  L.  Ed.  809. 

The  bill  we  have  seen  was  taken  pro  confesso,  and  a  decree  pro  confesso 
was  regularly  entered.  The  defendants  are  concluded  by  that  decree,  so 
far  at  least  as  it  is  supported  by  the  allegations  of  the  bill,  taking  the  same  to 
be  true.  Being  carefully  based  on  these  allegations,  and  not  extending  beyond 
them,  it  cannot  now  be  questioned  by  the  defendants  unless  it  is  shown  to  be 
erroneous  by  other  statements  contained  in  the  bill  itself.  A  confession  of 
facts  properly  pleaded  dispenses  with  proof  of  those  facts,  and  is  as  effective 
for  the  purposes  of  the  suit  as  if  the  facts  were  proved;  and  a  decree  pro 
confesso  regards  the  statements  of  the  bill  as  confessed.  —  Thompson  v. 
Wooster,  114  U.  S.  104;  29  L.  Ed.  105;  5  S.  Ct.  788. 

Keller,  Proced.  Rom.  §  69;  Hawkins  v.  Crook,  2  P.  Wons.  556;  Davis  v.  Davis, 
2  Atk.  21;  Williams  v.  Corwin,  Hopk.  Ch.  471;  1  Smith  Ch.  Pr.  153;  1  Dan. 
Ch.  Pr.  696;  Ogilvie  v.  Hearne,  13  Ves.  463;  Geary  v.  Sheridan,  8  Ves.  192; 
Rose  v.  Woodruff,  4  Johns.  Ch.  547. 


§  305  DECREES  279 

The  patent  in  suit  contains  18  claims,  and  the  prayers  of  the  bill  relate  to 
the  patent  as  a  whole.  The  decree  below  directed  that  an  injunction  issue 
"  according  to  the  prayer  of  the  bill  "  although  only  claims  2  and  13  were  in 
issue.  It  has  been  many  times  urged  that  the  public  has  an  incidental 
interest  in  patent  litigation,  which  throws  a  duty  on  the  court  to  notice  certain 
matters  of  its  own  motion.  This  is  one  of  them;  and  in  a  patent  cause,  a 
decree  should  not  go  which  is  broader  than  the  findings  of  the  court.  Hereto- 
fore we  have  been  content  merely  to  correct  the  decree  below,  but,  as  the  duty 
of  drawing  out  a  proper  decree  rests  on  the  solicitor  for  the  complainant, 
we  will  hereafter  endeavor  to  protect  the  court  by  a  proper  adjustment  of 
costs.  As  the  appellant  assigned  no  error  on  this  account,  he  is  not  entitled 
to  costs  in  this  behalf.  —  Shute  v.  Morley,  64  Fed.  368;  12  C.  C.  A.  356. 

When  the  decree  is  drawn  broader  than  the  findings  the  complainant  can 
have  no  costs  on  appeal.  —  Blair  v.  Eastman,  64  Fed.  491;   12  C  C.  A.  603. 
Following  Shute  v.  Morley,  64  Fed.  368. 

In  connection  with  the  caution  which  we  have  heretofore  given  parties 
with  reference  to  the  proper  limiting  of  decrees  and  decretal  orders,  we  said 
in  Shute  v.  Machine  Co.  64  Fed.  368,  that,  when  the  caution  was  not  there- 
after regarded,  we  should  endeavor  to  protect  ourselves  by  a  proper  adjust- 
ment of  the  costs.  —  Hatch  v.  Electric,  100  Fed.  975;  41  C.  C.  A.  133. 

When  a  decree  is  "  affirmed  with  respect  to  the  merits,  it  will  not  be 
reversed  upon  the  question  of  costs."  —  Sproull  v.  Pratt  &  Whitney,  108  Fed. 
963;  48  CCA.  167. 

DuBois  v.  Kirk,  158  U.  S.  58. 

That  other  defendant  has  rights.  If  Bouchat  had  permitted  a  decree  pro 
confesso  to  have  been  entered  against  him,  and  this  corporation,  which  was 
the  original  defendant,  had  answered,  and  had  set  up  an  available  defense, 
such  defense  would  inure  to  the  benefit  of  both  defendants.  —  American  v. 
Phoenix,  113  Fed.  629;  51  C  C  A.  339. 

Frow  v.  De  LaVega,  15  Wall.  552;  Andres  v.  Lee,  21  N.  C.  319;  Bates,  Fed. 
Eq.  Pro.  sec.  327. 

In  the  preparation  of  his  record,  the  appellant,  although  not  an  attorney, 
acted  as  his  own  counsel.  In  dismissing  the  bill  for  want  of  equity,  but  with- 
out prejudice,  the  court  below  evinced  a  recognition  of  the  failure  of  the 
appellant  to  properly  conduct  his  case,  and  therefore  dismissed  the  bill  with- 
out prejudice  to  the  appellant.  —  Robinson  v.  Chicago,  118  Fed.  438;  55 
C  C  A.  254. 

The  fact  that  the  decree  did  not  become  final  until  after  the  interlocutory 
decree  in  this  case  does  not  affect  it  as  a  bar  when  presented  before  the  final 
decree.  —  Penfield  v.  Potts,  126  Fed.  475;  61  C  C.  A.  371. 

Bradley  v.  Eagle,  57  Fed.  980. 

No  appeal  has  been  taken  by  the  complainant  below  from  the  part  of  the 
decree  holding  claim  2  valid,  and  we  must  assume  that  the  validity  of  this 
broad  claim  is  acquiesced  in.  —  Press  v.  Westinghouse,  135  Fed.  767 :  68 
C  C  A.  469. 

That  a  final  decree  may  be  amended  after  entry  and  after  the  term  of  such 
entry,  under  certain  conditions,  see  Maginn  v.  Standard,  150  Fed.  139; 
80  C  C  A.  15. 


280 


THE    FIXED    LAW   OF    PATENTS 


306-307 


another  Inventor  §  318 

Non-Inventorship  §  319 

Prior  patent  or  Publication  §  320 

(see  §  58) 

Prior  Public  Use  or  Sale  §  321  (see 

§§  58,  849) 
Miscellaneous  §  322 
See  —  Adjudication  §§  31,  33;  An- 
ticipation §  58;  Demurrer  §  323; 
Double  Patenting  §  356;  Estoppel  § 
381;  Foreign  Patent  §  419;  Infringe- 
ment §§  483-4;  Judicial  Notice  § 
705;  Jurisdiction  §  713;  Laches  § 
726;  License  §  749;  Marking 
"Patented"  §  776;  Oath  §  779; 
Pleading  and  Practice  §  788;  Public 
Use  §  849;  Reissue  §  869;  Res 
Judicata  §  893 ;  Statute  of  Limitations 
§921;  Title  §925 


DEFENSES. 

Statutory  Provisions  §  306 
General  Statement  §  307 
General 

Invalidity — Acts  of  Commissioner 

§  308 

Invalidity  —  Defective    Grant    or 

Specification  §  309  (see  §  900) 

Invalidity  —  Reissue    §    310    (see 

§869) 

License  or  Purchase  §  311 

Non-Infringement  §  312  (see  §  445) 

Non-Patentability  §  313 

Non-Utility  §  314 

Res  Judicata  §  315 
Statutory 

Abandonment  §  316  (see  §  1) 

Fraud    or    Misrepresentation     in 

Specification  §  317  (see  §  900) 

Fraud   or   Unfairness   as   Against 

§  306.     Statutory  Provisions. 

In  any  action  for  infringement  the  defendant  may  plead  the  general 
issue,  and,  having  given  notice  in  writing  to  the  plaintiff  or  his  attorney 
thirty  days  before,  may  prove  on  trial  any  one  or  more  of  the  following 
special  matters: 

First.  That  for  the  purpose  of  deceiving  the  public  the  description  and 
specification  filed  by  the  patentee  in  the  Patent  Office  was  made  to  contain 
less  than  the  whole  truth  relative  to  his  invention  or  discovery,  or  more  than 
is  necessary  to  produce  the  desired  effect;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained  the  patent  for 
that  which  was  in  fact  invented  by  another,  who  was  using  reasonable  dili- 
gence in  adapting  and  perfecting  the  same ;  or, 

Third.  That  it  had  been  patented  or  described  in  some  printed  publica- 
tion prior  to  his  supposed  invention  or  discovery  thereof,  or  more  than  two 
years  prior  to  his  application  for  a  patent  therefor ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or  discoverer  of 
any  material  and  substantial  part  of  the  thing  patented;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this  country  for  more 
than  two  years  before  his  application  for  a  patent,  or  had  been  abandoned  to 
the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge,  or  use  of  the 
thing  patented,  the  defendant  shall  state  the  names  of  the  patentees  and  the 
dates  of  their  patents,  and  when  granted,  and  the  names  and  residences  of 
the  persons  alleged  to  have  invented  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used;  and  if  any  one 
or  more  of  the  special  matters  alleged  shall  be  found  for  the  defendant, 
judgment  shall  be  rendered  for  him  with  costs.  And  the  like  defenses  may  be 
pleaded  in  any  suit  in  equity  for  relief  against  an  alleged  infringement ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  answer  of  the  de- 
fendant, and  with  like  effect.  —  R.  S.  4920. 

§  307.     General  Statement. 

The  classification  of  defenses  in  patent  causes,  as  made  by  the  text-book 
writers,  is  chiefly  a  matter  of  convenience  in  treatment  of  the  subject.  It  is 
unnecessary  for  present  purposes  to  do  more  than  to  make  these  two  general 
divisions :  statutory  defenses  specially  mentioned  in  the  above  classes,  and 
the  general  defenses  available  under  the  general  issue. 

The  subject  of  statutory  notice  will  be  found  under  the  title  of  Pleading. 


§§  308-310  DEFENSES  281 

§  308.     General  —  Invalidity  —  Acts  of  Commissioner. 

It  was  not  intended  then,  and  is  not  now,  to  question  the  conclusiveness, 
in  suits  for  infringement  of  patents,  of  the  decisions  of  the  Commissioner  on 
questions  of  fact  necessary  to  be  decided  before  issuing  such  patents,  except 
as  the  statute  gives  specific  defenses  in  that  regard.  But  the  statutory- 
defenses  are  not  the  only  defenses  which  may  be  made  against  a  patent. 
When  it  is  evident  that  the  Commissioner,  under  a  misconception  of  the  law, 
has  exceeded  his  authority  in  granting  or  reissuing  a  patent,  there  is  no  sound 
principle  to  prevent  a  party  sued  for  its  infringement,  from  availing  himself 
of  the  illegality,  independently  of  any  statutory  permission  so  to  do.  —  Mahn 
v.  Harwood,  112  U.  S.  354;  28  L.  Ed.  665;  5  S.  Ct.  174. 

Stoddard  v.  Chambers,  2  How.  318;  Easton  v.  Salisbury,  21  How.  426;  Richert 
v.  Felps,  6  Wall.  160;  Meader  v.  Norton,  1  Wall.  442;  Best  v.  Polk,  18  Wall. 
112;  Morton  v.  Nebraska,  21  Wall.  660;  Newhall  v.  Sanger,  92  U.  S.  761;  R.  R. 
v.  U.  S.  92  U.  S.  733;    Sherman  v.  Brick,  93  U.  S.  209. 

So  far  as  we  know,  this  is  the  first  time  the  practical  construction  of  the 
statute  now  called  in  question  has  been  challenged,  and  much  disturbance 
of  things  supposed  to  rest  on  solid  foundations  would  ensue  if  such  an  objec- 
tion should  be  sustained.  Whether  the  practice,  if  promptly  challenged  by 
the  government  in  a  direct  proceeding  to  recall  a  patent  would  be  sanctioned, 
we  have  not  now  to  consider.  We  think  the  patents  ought  not  to  be  held 
void  for  irregularity,  if  it  be  such,  at  the  instance  of  a  private  party  in  a 
collateral  proceeding.  —  Western  v.  North,  135  Fed.  79;  67  C.  C.  A.  553. 

"  Where  it  is  evident  that  the  commissioner,  under  misconception  of  the 
law,  has  exceeded  his  authority  in  granting  or  reissuing  a  patent,  there  is  no 
sound  principle  to  prevent  a  party  sued  for  its  infringement  from  availing 
himself  of  the  illegality,  independently  of  any  statutory  permission  so  to 
do."  —  Weston  v.  Empire,  136  Fed.  599;  69  C.  C.  A.  329. 

Mahn  v.  Harwood,  112  U.  S.  354;   Planing  Machine  v.  Keith,  101  U.  S.  479. 

§  309.     General  —  Invalidity  —  Defective  Grant  or  Specification. 

A  claim  is  false,  though  not  fraudulent,  when  founded  upon  an  honest 
mistake ;  and,  as  it  must  have  failed  whenever  called  into  question  and  the 
facts  were  made  known,  it  is  void.  —  Hartshorn  v.  Saginaw,  119  U.  S.  664; 
30  L.  Ed.  539;  7  S.  Ct.  421. 

We  think  it  may  be  affirmed  as  a  rule  resting  upon  the  fundamental  prin- 
ciples of  patent  law  that,  where  the  essence  of  the  invention  is  the  location, 
form,  size,  or  any  other  characteristic  of  the  means  employed,  the  patent 
must  distinctly  specify  the  peculiarities  in  which  his  invention  is  to  be 
found.  —  American  Lava  v.  Steward,  155  Fed.  731 ;  84  C.  C.  A.  157. 

Store  Co.  v.  Store  Co.  150  Fed.  141;  Bullock  v.  Gen.  Elec.  149  Fed.  409. 

Note:  This  rule  is  undoubtedly  sound,  but  this  is  a  dangerous  case.  See 
same  pat.  sustained  128  Fed.  599. 

§  310.    General  —  Invalidity  —  Reissue. 

If  the  defendant  means,  by  the  very  vague  answer  to  the  bill,  to  set  up  and 
to  rely  on  a  fraud  by  which  the  commissioner  was  misled  and  deceived  and 
induced  to  reissue  the  patent,  and  that  the  plaintiff  or  its  assignors  were  the 
guilty  parties,  that  question  cannot  be  raised  in  this  collateral  proceeding, 
and  can  only  be  considered  in  some  direct  suit  to  impeach  and  set  aside  the 
patent.  —  Eureka  v.  Bailey,  78  U.  S.  488;  20  L.  Ed.  209. 

Rubber  v.  Goodyear,  9  Wall.  788. 


282  THE    FIXED    LAW    OF    PATENTS  §311 

In  this  very  matter  of  reissued  patents  it  has  also  been  frequently  decided 
that  it  is  a  good  defense  in  a  suit  on  such  a  patent  to  show  that  the  Commis- 
sioner exceeded  his  authority  in  granting  it.  Such  a  defense  is  established 
by  showing  that  the  rescinded  patent  is  for  a  different  invention  from  that 
described  in  the  original;  inasmuch  as  the  statute  declares  that  it  must  be 
for  the  same  invention.  —  Mahn  v.  Harwood,  112  U.  S.  354;  28  L.  Ed.  665; 
5  S.  Ct.  174. 

Burr  v.  Duryee,  1  Wall.  531;  Gill  v.  Wells,  22  Wall.  1;  Collar  v.  Van  Deusen, 
23  Wall.  530;  Wood  Paper  Pat.  23  Wall.  566;  Leggett  v.  Avery,  101  U.  S.  259; 
James  v.  Campbell,  104  U.  S.  368. 

§311.     General  —  License  or  Purchase. 

The  defendant  cannot  justify  his  act  by  proving  license  under  other  patents. 
—  Blanchard  v.  Putnam,  75  U.  S.  420;  19  L.  Ed.  433.    ' 
Curt.  Pat.  350,  353;   Carver  v.  Mfg.  Co.  2  Story,  432. 

Defendants  were  innocent  infringers.  When  they  discovered  the  fact  they 
purchased  a  legal  title  to  the  patent  for  this  territory.  Held:  That  such 
purchase  converted  their  act  into  a  legal  right,  and  was  equivalent  to 
an  original  lawful  purchase  or  manufacture  of  the  machine.  —  Eunson  v. 
Dodge,  85  U.  S.  414;  21  L.  Ed.  766. 

That  part  of  the  defendant's  affidavit  which  asserts  that  a  certain  named 
patentee  has  served  the  defendant  with  notice  of  a  claim  for  damages  for 
infringement  of  letters  patent  by  the  defendant's  use  of  the  machinery  and 
appliances  furnished  to  it  by  the  plaintiff,  and  that  by  such  use  the  defendant 
is  also  liable  to  another  patentee,  affords  no  ground  of  defense  to  this  action. 
A  purchaser  of  property  who  has  had  the  full  use  and  enjoyment  of  the  same, 
and  is  in  the  undisturbed  possession  thereof  in  the  absence  of  fraud,  cannot 
withhold  the  purchase  price  because  a  third  person  claims  to  have  a  superior 
title  thereto,  or  an  adverse  right  therein,  and  threatens  to  bring  suit  to  enforce 
the  same,  or  because  of  an  alleged  liability  on  the  part  of  a  purchaser  to  a 
patentee  for  an  infringement  of  letters  patent  by  reason  of  the  use  of  the 
priority.  —  Consumers  v.  Danville,  50  Fed.  778;   1  C.  C.  A.  663. 

Wanzer  v.  Truly,  17  How.  584;  Krumbhaar  v.  Birch,  83  Pa.  St.  426;  Geist 
v.  Stier,  134  Pa.  St.  216. 

To  permit  any  undisclosed  improvements  controlled  by  either  party  to 
be  set  up  for  the  purpose  of  limiting  the  rights  of  the  other  under  the  contract 
at  bar,  and  especially  fcr  diminishing  the  apparent  extent  or  validity  of  its 
patents,  would  effect  an  unjust  evasion  of  the  stipulated  terms.  —  B.  &  S. 
Fastener  v.  B.  G.  Fastener,  58  Fed.  818;  7  C.  C.  A.  498. 

While,  under  the  contract,  the  state  of  the  art  could  not  be  shown  to  defeat 
the  validity  of  the  patents  under  the  contract,  it  could  be  shown  to  determine 
the  scope  of  the  claims,  the  character  of  the  invention  and  the  applicability 
of  the  rule  of  equivalents.  —  B.  &  S.  Fastener  v.  B.  G.  Fastener,  58  Fed.  818; 
7  C.  C.  A.  498. 

Complainant  proved  infringement  by  the  production  of  an  exhibit  made 
according  to  the  terms  of  the  patent,  and  proved  that  the  same  had  been  made 
by  defendant.  Defendants  denied  infringement  in  their  answer  and  alleged 
invalidity  of  the  patent.  After  the  case  was  ready  for  final  hearing,  defend- 
ants having  taken  no  proofs,  defendant  moved  to  amend  their  answer  and 
set  up  a  license.  This  license  ran  from  complainant  to  one  Bry,  who  was  an 
importer  and  dealer,  and  provided  a  royalty  and  also  provided  that  but  one 
royalty  should  be  paid  on  such  goods.    Defendant  claimed  this  license  a  bar 


§  312  DEFENSES  283 

to  recovery.  Held:  We  are  not  able  to  read  the  complainant's  license  to 
Bry  as  giving  any  sanction  to  the  manufacture  by  the  defendants  of  the 
patented  fabric.  The  defendants  are  neither  parties  nor  privies  to  that  instru- 
ment. That  they  themselves  are  not  bound  by  any  of  its  provisions  is  too 
plain  for  argument.  The  licensee  thereunder  is  Jean  Bry,  and  as  to  him  it 
is  non-assignable  personal  license.  There  is  no  contrac  ,  relation  whatever 
between  the  complainant  and  the  defendants ;  hence  no  accounting  on  that 
basis  is  enforceable  by  the  complainant  against  the  defendants.  If,  then,  the 
Bry  license  is,  as  claimed,  a  defense  to  a  bill  for  infringement,  the  complainant 
is  remediless  as  against  the  defendants  in  respect  to  their  transactions  with 
Bry.  Upon  the  defendants'  theory,  by  their  own  simple  election  to  resort  to 
Bry's  license  they  acquired,  as  against  the  owner  of  the  patent,  a  right  to  manu- 
facture without  liability  to  account  to  him.  But,  if  Bry's  license  is  thus 
available  to  the  defendants,  it  is  equally  available  to  every  other  unlicensed 
manufacturer  in  the  country.  A  construction  of  a  license  which  leads  to 
such  results  is  not  to  be  lightly  adopted.  —  Hanifen  v.  Lupton,  101  Fed. 
462;   41  C.  C.  A.  462. 

§  312.     General  —  Non-Infringement. 

Courts  did  not,  perhaps,  at  first  distinguish  clearly  between  a  defense 
which  would  authorize  a  verdict  and  judgement  in  favor  of  the  defendant  in 
a  particular  action,  leaving  the  plaintiff  free  to  use  his  patent,  and  to  bring 
other  suits  for  its  infringement;  and  one  which,  if  successful,  would  require 
the  Court  to  enter  a  judgement  not  only  for  the  defendant  in  the  particular 
case,  but  one  which  declares  the  patent  to  I  e  void.  This  distinction  is  now 
well  settled.  —  Grant  v.  Raymond,  6  Pet  ?xS;  8  L.  Ed.  376. 

There  is  no  inconsistency  ir  the  two  allegations.  The  first  is  a  direct, 
positive  denial  of  infringement ;  the  second,  that  the  acts  of  the  defendant 
charged  as  infringing  the  patent  had  been  done  by  it  since  1891.  It  does  not 
concede  that  these  acts  infringed  the  patent,  but  asserts,  in  legal  effect, 
that  if,  as  the  complainant  claims,  they  do  so  infringe  it,  then  the  performance 
of  these  acts  dated  from  a  period  six  years  prior  to  the  patent,  sustaining 
the  defense  of  a  public  use,  and  so  establishing  want  of  novelty.  —  Robinson 
v.  American,  135  Fed.  693;  68  C.  C.  A.  331. 

The  infringement  was  conceded  in  the  Circuit  Court  by  the  counsel  for  de- 
fendant, and  such  fact  was  recited  in  the  opinion  of  the  circuit  judge.  This 
understanding  was  adhered  to  in  the  preparation  of  printed  briefs  on  both 
sides.  Appellee  having  submitted  the  case  on  briefs  in  this  court,  counsel 
for  appellant  on  the  oral  argument  called  attention  to  an  alleged  distinguish- 
ing feature  of  the  defendant's  structure  which  he  claimed  relieved  it  from 
infringement.  Even  if  his  proposition  were  sound  from  a  mechanical  stand- 
point, we  should  hesitate  to  entertain  the  same  at  this  time  in  view  of  the 
history  of  the  case,  which  shows  that  this  defense  has  been  expressly  and 
deliberately  waived  by  counsel.  —  Railway  v.  Munroe,  147  Fed.  241 ;  77 
C.  C.  A.  383. 

The  answer  denied  infringement.  A  supplemental  answer  alleged  use  under 
a  patent  to  defendant,  which  patent,  on  its  face  was  an  infringement  of  the 
patent  sued  on.  Held:  This  pleading,  of  course,  presented  no  defense  to  the 
suit.  Its  sole  effect  was  to  annul  the  denial  of  infringement  contained  in  the 
answer  and  to  relieve  plaintiff  of  the  necessity  of  proving  it.  It  had  this 
effect  because  it  is  apparent  from  an  inspection  of  said  patent  that  the 
apparatus  described  in  it  and  to  which  it  related  is  an  infringement  of  plain- 
tiff's two  patents  sustained  and  held  to  be  infringed,  and  it  is  alleged  thatthe 
apparatus  in  use  by  defendant  is  of  that  character.    This  left  the  second 


284  THE    FIXED    LAW    OF    PATENTS  §§  313-314 

defense  of  the  original  answer  as  the  only  defense  to  the  suit.  —  Buser  v. 
Novelty,  151  Fed.  478;  81  C.  C.  A.  16. 

Defendant  avers  that  it  ceased  the  sale  of  said  grain  drill  long  prior  to  the 
beginning  of  the  present  action.  Answers  in  equity  must  be  full,  unequiv- 
ocal, and  responsive  to  the  bill.  The  indefinite,  evasive  averments  of  the 
answer  in  this  case  signally  fail  to  respond  to  the  requirements  of  that  rule 
and  well  justify  us  in  treating  them  as  negative  pregnants  admitting  the  truth 
of  the  definite  averments  of  the  bill  which  are  not  fully  answered.  —  Deere 
v.  Dowagiac,  153  Fed.  177;  82  C.  C.  A.  351. 

§313.     General  —  Non-Patentability. 

We  do  not  attach  much  significance  to  the  act,  which  was  intended  to 
create  an  easy  system  of  pleading.  Proof  that  there  is  no  invention  strikes 
at  the  root  of  the  whole  claim.  The  patent  is  based  on  an  affirmative  act 
of  which  this  is  the  direct  negative.  It  needed  no  statute  to  aid  or  justify 
this  defense.  It  is  provable  when  it  exists  under  any  general  denial,  like  the 
fact  of  not  guilty  or  non-assumpsit  in  cases  where  guilt  or  a  promise  is  first  to  be 
established.  —  Reckendorfer  v.  Faber,  92  U.  S.  347;  23  L.  Ed.  719. 

A  valid  defense  not  given  by  the  statute  often  arises  where  the  question 
is,  whether  the  thing  patented  amounts  to  a  patentable  invention.  This 
being  a  question  of  law,  the  courts  are  not  bound  by  the  decision  of  the  Com- 
missioner, although  he  must  necessarily  pass  upon  it.  —  Mahn  v.  Harwood, 
112  U.  S.  354;  28  L.  Ed.  665;  5  S.  Ct.  174. 

Brown  v.  Piper,  91  TJ.  S.  38;  Glue  Co.  v.  Upton,  97  U.  S.  3;  Dunbar  v.  Myers. 
94  U.  S.  187;  Atlantic  v.  Brady,  107  U.  S.  199;  Slawson  v.  R.  R.  107  TJ.  S.  652; 
King  v.  Gallun,  109  U.  S.  101. 

This  defense  is  one  which  may  be  availed  of  without  setting  it  up  in  an 
answer.  —  Hendy  v.  Golden,  127  U.  S.  370;  32  L.  Ed.  207;  8  S.  Ct.  1275. 

Dunbar  v.  Myers,  94  TJ.  S.  187;  Slawson  v.  Grand,  107  TJ.  S.  649;  Mahn  v. 
Harwood,  112  TJ.  S.  354. 

Want  of  patentability  is  a  defense,  though  not  set  up  in  an  answer  or  plea. 
—  May  v.  Juneau,  137  U.  S.  408;  34  L.  Ed.  729;  11  S.  Ct.  102. 

Brown  v.  Piper,  91  TJ.  S.  37;  Dunbar  v.  Myers,  94  TJ.  S.  187;  Slawson  v.  Grand, 
107  U.  S.  649;   Hendy  v.  Golden,  127  U.  S.  370. 

Although  want  of  novelty  is  not  pleaded,  the  patent  may  be  declared  void 
for  want  of  novelty.  —  Richards  v.  Chase,  158  U.  S.  299;  39  L.  Ed.  991; 
15  S.  Ct.  831. 

Dunbar  v.  Myers,  94  TJ.  S.  187;  Slawson  v.  Grand,  107  TJ.  S.  649;  Brown  v. 
Piper,  91  U.  S.  37. 

§  314.     General  —  Non-Utility. 

The  burden  is  upon  the  defendant  to  prove  want  of  utility.  He  must  either 
show  that  it  is  theoretically  impossible  for  such  a  device  to  operate,  or 
demonstrate  by  clear  proof  that  a  person  skilled  in  the  art  to  which  the 
invention  pertains  has  endeavored  in  good  faith  to  make  the  patent  work, 
and  has  been  unable  to  do  so ;  and  it  follows  that  such  evidence  is  overthrown 
if  it  is  demonstrated  by  practical  experiments  of  credible  persons  that  they 
have  succeeded  in  producing  by  the  patent  process  the  results  claimed  by  the 
patent.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

The  proposition  that  the  invention  is  without  utility  is  sufficiently  answered 


§§  315-317  DEFENSES  285 

by  the  fact  that  defendants  persistently  use  it.  —  Rumford  v.  New  York, 
134  Fed.  385;  67  C.  C.  A.  367. 

The  appellee  company,  failing  to  use  any  of  the  older  forms  of  clamping 
jaws,  and  seizing  upon  appellant's  success,  is  hardly  in  a  position  to  question 
the  utility  of  the  novel  feature.  —  Cazier  v.  Mackie-Lovejoy,  138  Fed.  654; 
71  C.  C.  A.  104. 

It  is  asserted  by  the  defendant  that  the  complainant  never  made  fasteners 
under  the  patent.  If  this  be  true  it  is  wholly  immaterial  to  the  present 
controversy.  Where  it  is  asserted  that  a  patented  device  is  inoperative  and 
lacks  utility,  evidence  that  it  has  never  been  put  to  use  is  persuasive,  but  in  a 
case  like  the  present,  where  the  fact  that  the  device  is  useful  and  operative 
can  be  seen  at  a  glance,  such  evidence  is  negligible.  The  complainant  had  a 
right  to  use  the  patent  in  any  way  it  saw  fit.  —  U.  S.  Fastener  v.  Bradley, 
149  Fed.  222;  79  C.  C.  A.  180. 

§  315.     General  —  Res  Judicata. 

This  court  described  the  rule  in  Aspden  v.  Nixon,  4  How.  476,  in  such  cases 
to  be,  that  a  judgement  or  decree,  set  up  as  a  bar  by  plea,  or  relied  on  as  evi- 
dence by  way  of  estoppel,  must  have  been  made  by  a  court  of  competent 
jurisdiction  upon  the  same  subject  matter,  between  the  same  parties  for  the 
same  purpose.  —  Packet  Co.  v.  Sickles,  65  U.  S.  333;   16  L.  Ed.  650. 

In  the  absence  of  a  plea  other  than  res  adjudicata  based  upon  an  interfer- 
ence and  in  the  absence  of  any  proof  other  than  the  record,  the  prima  facie 
of  the  patent  in  suit  will  entitle  a  decree.  —  Garratt  v.  Siebert,  98  U.  S.  75 ; 
25  L.  Ed.  84. 

Without  respect  to  pleading,  wherever  a  former  recovery  is  properly  in 
evidence  —  as  here  it  was  by  agreement  of  the  parties  —  full  effect  should 
be  given  to  it,  so  far  as  it  bears  upon  the  issue  presented.  The  issue  here 
being  novelty  of  invention,  and  that  fact  having  been  determined  by  the  prior 
adjudication,  the  former  decree  becomes  conclusive  evidence  of  the  validity 
of  the  patent  as  between  the  parties  affected  by  such  prior  adjudication.  — ■ 
Bradley  v.  Eagle,  58  Fed.  721 ;  7  C.  C.  A.  442. 

§  316.     Statutory  —  Abandonment. 

It  must,  then,  be  open  to  every  person,  charged  with  an  infringement,  to 
show  in  his  defense  that  the  patentee  had  abandoned  his  invention  before 
he  obtained  his  patent.  —  Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed. 
939. 

The  defense  of  abandonment  was  not  pleaded,  and  the  appellant  had  no 
opportunity  to  meet  it  by  evidence.  It  was  discovered  by  the  court  below 
at  the  final  hearing,  and  it  rested  on  the  statement  in  the  patent  which  we 
have  quoted,  and  that  alone.  The  mere  statement  was  insufficient  to  sup- 
port it.  —  Mast  v.  Dempster,  82  Fed.  327;  27  C.  C.  A.  191. 

§317.     Statutory  —  Fraud  or  Misrepresentation  in  Specification. 

Since  that  time  (the  Act  1832)  it  has  been  definitely  settled  that  neither 
reissued  nor  extended  patents  can  be  abrogated  by  an  infringer  in  a  suit 
against  him  for  infringement,  upon  the  ground  that  the  letters  patent  were 
procured  by  fraud  in  prosecuting  the  application  for  the  same  before  the 
commissioner.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 


286  THE    FIXED    LAW    OF    PATENTS  §§  318-320 

Rubber  v.  Goodyear,  9  Wall.  797;  Stimpson  v.  R.  R.  4  How.  404;  R.  R.  v. 
Stimpson.  14  Pet.  458. 

The  defendants  when  sued  for  an  infringement,  were  not  at  liberty  to  set 
up  as  a  defense  that  the  patent  had  been  fraudulently  obtained,  no  fraud 
appearing  on  its  face.  —  Railroad  v.  DuBois,  79  U.  S.  47 ;  20  L.  Ed.  265. 

Rubber  v.  Goodyear,  9  Wall.  788. 

Whether  under  the  present  act  the  defense  of  defective  specification 
implies  fraudulent  intent,  the  court  said: 

There  is  plausibility  in  this  argument,  and  if  it  were  necessary  to  the 
decision  of  this  case,  it  might  give  us  some  embarrassment.  —  Loom  Co. 
v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

The  right  given  to  the  infringer  to  make  this  defense  is  a  right  given  to 
him  personally,  and  to  him  alone,  and  the  effect  of  a  successful  defense  of 
this  character  by  one  infringer  is  simply  to  establish  the  fact  that,  as  between 
him  and  the  patentee,  no  right  of  action  exists  for  the  reasons  set  up  in  such 
defense.  But  the  patentee  is  not  prevented  by  any  such  decision  from  suing 
a  hundred  other  infringers  if  so  many  there  be,  and  putting  each  of  them 
to  an  expensive  defense,  —  in  which  they  all,  or  some  of  them,  may  be 
defeated  and  compelled  to  pay,  because  they  are  not  in  possession  of  the 
evidence  on  which  the  other  infringer  succeeded.  On  the  other  hand,  the 
suit  of  the  Government,  if  successful,  declares  the  patent  void,  sets  it  aside 
as  of  no  force,  vacates  it  or  recalls  it,  and  puts  an  end  to  all  suits  which  the 
patentee  can  bring  against  anybody.  —  United  States  v.  Am.  Bell,  128 
U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

§  318.     Statutory  —  Fraud    or    Unfairness   as   Against   Another 
Inventor. 

The  charge  that  the  original  patentee  in  this  case  fraudulently  and  sur- 
reptitiously obtained  the  patent  for  that  which  he  well  knew  was  invented  by 
another,  unaccompanied  by  the  further  allegation  that  the  alleged  first 
inventor  was  at  the  time  using  reasonable  diligence  in  adapting  and  per- 
fecting the  invention  is  not  sufficient  to  defeat  the  patent,  and  constitutes 
no  defense  to  the  charge  of  infringement.  —  Agawam  v.  Jordan,  74  U.  S. 
583;  19  L.  Ed.  177. 

Reed  v.  Cutter,  1  Story,  599. 

§  319.     Statutory  —  Non-Inventorship. 

Viewed  in  any  light  the  proposition  amounts  to  the  charge  that  the  inven- 
tion was  made  by  the  person  therein  mentioned,  and  not  by  the  assignor  of 
the  complainant,  and  the  burden  to  prove  it  is  on  the  respondents,  not  only 
because  they  make  the  charges,  but  because  the  presumption  arising  from 
the  letters  patent  is  the  other  way.  —  Agawam  v.  Jordan,  74  U.  S.  583; 
19  L.  Ed.  177. 

§  320.     Statutory  —  Prior  Patent  or  Publication. 

The  defense  of  anticipation  by  a  prior  patent  must  be  raised  by  the  statu- 
tory notice.  —  Blanchard  v.  Putnam,  75  U.  S.  420;  19  L.  Ed.  433. 

Patented  inventions  cannot  be  superseded  by  the  mere  introduction  of  a 
foreign  publication  of  the  kind,  though  of  a  prior  date,  unless  the  description 
and  drawings  contain  and  exhibit  a  substantial  representation  of  the  patented 
improvement  in  such  full,  clear  and  exact  terms  as  to  enable  any  person  skilled 


§  320  DEFENSES  287 

in  the  art  or  science  to  which  it  appertains  to  make,  construct  and  practise 
the  invention  to  the  same  practical  extent  as  they  would  be  enabled  to  do  if 
the  information  was  derived  from  a  prior  patent.  Mere  vague  and  general 
representations  will  not  support  such  a  defense,  as  the  knowledge  supposed  to  be 
derived  from  the  publication  must  be  sufficient  to  enable  those  skilled  in  the 
art  or  science  to  understand  the  nature  and  operation  of  the  invention  and 
to  carry  it  into  practical  use.  Whatever  may  be  the  particular  circumstances 
under  which  the  publication  takes  place,  the  account  published  to  be  of  any 
effect  to  support  such  a  defense,  must  be  an  account  of  a  complete  and 
operative  invention  capable  of  being  put  into  practical  operation.  —  Sey- 
mour v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Web.  P.  C.  719;  Curt.  Pat.  278  a;  Hill  v.  Evans,  6  Law  T.  N.  S.  90;  Betts  v. 
Menzies,  4  Bert.  &  S.  Q.  S.  999. 

The  state  of  the  art,  in  the  absence  of  notice  and  proof  has  no  bearing 
upon  the  question  whether  the  patentee  was  the  first  inventor.  —  Railroad 
v.  DuBois,  79  U.  S.  47 ;  20  L.  Ed.  265. 

Neither  the  defendant  in  an  action  at  law,  nor  a  respondent  in  an  equity 
suit,  can  be  permitted  to  prove  that  the  invention  described  in  the  prior 
patent,  or  the  invention  described  in  the  printed  publication,  was  made  prior 
to  the  date  of  such  patent  or  printed  publication,  for  the  reason  that  the  pa- 
tent or  publication  can  only  have  the  effect  as  evidence  that  is  given  to  the 
same  by  the  Act  of  Congress.  Unlike  that,  the  presumption  in  respect  to  the 
invention  described  in  the  patent  in  suit,  if  it  is  accompanied  by  the  applica- 
tion for  the  same,  is  that  it  was  made  at  the  time  the  application  was  filed ; 
and  the  complainant  or  plaintiff  may,  if  he  can,  introduce  proof  to  show  that 
it  was  made  at  a  much  earlier  date.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Evidence  to  sustain  the  defense  that  the  improvement  had  been  patented 
or  described  in  some  printed  publication,  is  sufficient,  if  the  patent  introduced 
for  the  purpose,  whether  foreign  or  domestic,  was  duly  issued  or  the  complete 
description  of  the  invention  was  published  in  some  printed  publication, 
prior  to  the  patented  invention  in  suit;  and  the  patent  offered  in  evidence 
or  the  printed  publication  will  be  held  to  be  prior,  if  it  is  of  prior  date  to  the 
patent  in  suit,  unless  the  patent  in  suit  is  accompanied  by  the  application 
for  the  same,  or  unless  the  complainant  introduces  parol  proof  to  show  that 
his  invention  was  actually  made  prior  to  the  date  of  the  patent,  or  prior  to 
the  time  the  application  was  filed.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Where  the  thing  patented  is  an  entirety,  consisting  of  a  single  device 
or  combination  of  old  elements  incapable  of  division  or  separate  use,  the 
respondent  cannot  escape  the  charge  of  infringement  by  alleging  or  proving 
that  a  part  of  the  entire  invention  is  found  in  a  prior  patent,  printed  publi- 
cation or  machine  and  another  part  in  another  prior  exhibit,  and  still  another 
in  a  third  exhibit,  and  from  these  three  or  any  greater  number  of  such 
exhibits  draw  the  conclusion  that  the  patentee  is  not  the  original  and  first 
inventor  of  the  patented  improvement.  —  Imhauser  v.  Buerk,  101  U.  S.  647 ; 
25  L.  Ed.  945. 

Bates  v.  Coe,  98  U.  S.  31. 

It  is  no  answer  to  patents  and  publications  set  up  that  they  are  mere  paper 
machines  and  incapable  of  successful,  practical  working.  —  Pickering  v. 
McCullough,  104  U.  S.  310;  26  L.  Ed.  749. 

It  does  not  lie  in  the  mouth  of  a  party  who  is  infringing  both  the  im- 
provement and  the  original  invention  to  set  up  the  existence  of  the  first 


288  THE    FIXED    LAW    OF    PATENTS  §§  321-322 

patent  as  an  excuse  for  the  infringement.  It  is  only  the  patentee  of  the 
original  invention  who  has  the  right  to  complain  of  the  use  made  of  his  inven- 
tion. —  Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017;  6  S.  Ct.  970. 

The  general  rule  laid  down  in  Seymour  v.  Osborne,  78  U.  S.  516,  and  in 
Cohn  v.  U.  S.  93  U.  S.  366,  and  affirmed  in  Downton  v.  Yaeger,  108  U.  S. 
466  recited  and  approved.  —  Eames  v.  Andrews,  122  U.  S.  40;  30  L.  Ed. 
1064;  7  S.  Ct.  1073. 

There  is  a  clear  distinction  in  law  between  merely  anticipatory  matter, 
which,  under  the  statute,  must  be  specially  pleaded  in  defense,  and  the  state 
of  the  art,  although  they,  of  course,  at  times  run  into  each  other.  —  Parsons 
v.  Seelye,  100  Fed.  452;  40  C.  C.  A.  484. 

Edmund  Pat.  2  ed.  48. 

§  321.     Statutory —  Prior  Public  Use  or  Sale. 

Evidence  to  show  that  the  invention  of  the  original  patentee,  as  finally 
perfected,  was  on  sale  and  in  public  use  more  than  two  years  before  he  applied 
for  a  patent  is  entirely  wanting,  and  if  such  evidence  was  offered,  it  could  not 
be  admitted  under  the  pleadings,  as  no  such  defense  is  set  up  in  the  answer. 
—  Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed.  177. 

Foster  v.  Goddard,  1  Black  518. 

Prior  use  and  knowledge  of  the  thing  patented  may  be  pleaded,  but  the 
defendant  cannot  be  allowed  to  give  evidence  in  support  of  such  defense,  if 
seasonable  objection  is  made,  unless  it  appears  that  he  gave  the  statutory 
notice  in  his  answer.  —  Roemer  v.  Simon,  95  U.S.  214;  24  L.  Ed.  384. 

Blanchard  v.  Putnam,  8  Wall.  420. 

The  answer  set  up  "  that  the  alleged  invention  was  in  public  and  common 
use,  and  on  sale,  with  and  by  the  knowledge  and  consent  of  the  patentee,  for 
more  than  two  years  before  the  application."  It  did  not  in  terms  allege,  that 
such  public  use  was  "  in  this  country,"  as  the  statute  provides.  While  this 
defense  may  not  have  been  pleaded  with  technical  accuracy,  yet  the  testi- 
mony tending  to  establish  it,  was  received  on  the  final  hearing  without  any 
objection.  The  first  time  the  question  has  been  raised,  as  appears  from  the 
record,  is  on  the  argument  of  the  appeal  in  this  court;  and  when  it  is  too 
late.  —  Smith  &  Davis  v.  Mellon,  58  Fed.  705;  7  C.  C.  A.  439. 

Roemer  v.  Simon,  95  U.  S.  214;   Loom  Co.  v.  Higgins,  105  U.  S.  580. 

§  322.     Miscellaneous. 

Defenses  of  the  kind,  if  the  thing  patented  is  an  entirety  and  incapable  of 
division  or  separate  use,  must  be  addressed  to  the  invention  and  not  merely 
to  one  or  more  of  the  claims  of  the  patent  if  less  than  the  whole  of  invention. 
More  than  one  patent  may  be  included  in  one  suit  and  more  than  one  inven- 
tion may  be  secured  by  the  same  patent ;  in  which  case  the  several  defenses 
may  be  made  to  each  patent  in  suit  and  to  each  invention  included  in  the  bill 
of  complaint.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Gill  v.  Wells,  22  WaU.  27. 

Each  of  these  defenses  (statutory)  it  will  be  seen  goes  to  the  entire  inven- 
tion, and  not  to  separate  parts  of  the  thing  patented ;  and  the  provision  is, 
that  if  any  one  or  more  of  the  special  matters  alleged  shall  be  found  for  the 
defending  party,  the  judgement  or  decree  shall  be  rendered  in  his  favor,  with 
costs.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

R.  S.  4920. 


§  322  DEFENSES  289 

The  fact  that  the  answer  duly  sworn  to  cites  anticipatory  patents  and 
states  that  the  device  was  well  known  in  the  art  prior  to  complainant's  inven- 
tion does  not  seem  to  tally  very  well  with  the  allegation  that  the  inventor 
had  failed  to  point  out,  in  his  patent,  how  to  use  and  apply  his  invention, 
and  that  it  requires  further  invention  to  use  and  apply  it.  —  Loom  Co.  v. 
Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

In  this  case  a  decree  pro  confesso  had  been  taken  and  the  case  sent  to  a 
master.  Then  defendants  raised  objections  as  to  the  validity  of  the  reissue, 
etc.  Held:  We  think  that  the  objection  to  the  decree  going  to  the  validity 
of  the  patent,  and  the  whole  cause  of  action  cannot  be  sustained.  —  Thomp- 
son v.  Wooster,  114  U.  S.  104;  29  L.  Ed.  105;  5  S.  Ct.  788. 

We  have  the  material  for  ascertaining  its  meaning  in  that  view,  by  means 
of  the  evidence  on  that  point  contained  in  the  record,  which,  although 
objected  to  on  the  ground  that  no  prior  use  or  knowledge  of  the  invention 
claimed  had  been  specifically  set  up  in  the  answer  as  a  defense,  was  neverthe- 
less, admissible  for  the  purpose  of  defining  the  limits  of  the  grant  in  the 
original  patent  and  the  scope  of  the  invention  described  in  the  specification. 
—  Eachus  v.  Broomall,  115  U.  S.  429;  29  L.  Ed.  419;  6  S.  Ct.  229. 

Vance  v.  Campbell,  1  Black.  427;  Brown  v.  Piper,  91  U.  S.  37. 

It  may  be  true  that  the  device  used  is  better  than  that  of  the  plaintiff, 
but  this  cannot  relieve  them  from  the  charge  of  infringement  if  the  devices 
are  substantially  alike.  —  Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017; 
6  S.  Ct.  970. 

Machine  v.  Murphy,  97  U.  S.  120. 

It  is  not  the  rule  that  the  decision  of  the  Commissioner  of  Patents  is 
final  as  to  the  matters  involved  in  granting  a  patent,  except  as  to  the  questions 
specifically  enumerated  as  defenses  in  the  five  subdivisions  of  section  4920 
of  the  R.  S.  Or  that,  unless  substantially  the  same  thing  existed  before,  the 
article,  if  useful,  is  new  and  patentable ;  or  that  the  decision  of  the  Commis- 
sioner of  Patents  to  that  effect  is  not  reviewable  in  a  suit  on  the  patent.  — 
Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158;  6  S.  Ct.  1027. 

Thompson  v.  Boisselier,  114  U.  S.  1;    Yale  v.  Greenleaf,  117  U.  S.  554. 

An  affidavit  of  defense  is  insufficient  to  prevent  judgment,  unless  it  sets 
forth  all  the  facts  necessary  to  constitute  a  substantial  defense.  Mere  general 
averments  amounting  to  legal  conclusions  will  not  do.  The  specific  facts  must 
be  stated,  so  that  the  court  may  draw  the  proper  conclusions.  Nothing 
should  be  left  to  conjecture,  for  that  which  is  not  stated  must  be  taken  not 
to  exist.  —  Consumers  v.  Danville,  50  Fed.  778;  1  C.  C.  A.  663. 

Bryan  v.  Harrison,  37  Pa.  St.  233;  Marsh  v.  Marshall,  53  Pa.  St.  396;  Peck 
v.  Jones,  70  Pa.  St.  83;   Asay  v.  Lieber,  92  Pa.  St.  377. 

It  would  seem  that  the  defense  of  laches  will  not  be  favorably  regarded, 
when  the  defendant  denies  infringement  and  then  attempts  to  establish 
laches  through  the  acquiescence  of  complainant  in  the  infringement  of 
defendant's  concern.  —  Imperial  v.  Stein,  77  Fed.  612;  23  C.  C.  A.  353. 

That  a  defendant  in  an  action  at  law,  where  the  plaintiff  has  pleaded  the 
terms  of  the  statute  limiting  recoveries  to  six  years,  in  the  event  of  the  failure 
of  plaintiff  to  prove  under  such  pleading,  the  defendant  need  not  have 
pleaded  the  statute  to  take  advantage  of  the  facts,  see  Peters  v.  Hanger, 
127  Fed.  820;  62  C.  C.  A.  898. 


290  THE    FIXED    LAW    OF    PATENTS  §  323 

The  conviction  that  there  was  no  merit  in  such  defense,  and  the  entire 
abandonment  of  the  same  after  it  had  been  set  up  in  the  answer,  seems  to  us 
to  be  entitled  to  great  weight  as  the  opinions  of  experts  against  their  interest. 
—  Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436. 

Assuming  that  this  question  (that  the  patent  is  void  on  its  face)  may  be 
presented  for  the  first  time  on  appeal,  it  is  manifest  that  the  defendant's 
contention  cannot  be  maintained.  The  patent  deals  with  an  abstruse  and 
complicated  art  and  there  is  nothing  existing  prior  to  the  date  of  its  applica- 
tion, of  which  the  court  can  take  judicial  notice,  which  throws  any  light 
upon  the  question  of  invention.  Obviously  the  patent  is  valid  on  its  face 
and  it  was  the  duty  of  the  defendant  to  prove  the  contrary.  —  Fox  v.  Knicker- 
bocker, 165  Fed.  442;  C.  C.  A. 


DEMURRER. 

Dismissing  Bill  on  §  323 
Judicial  Notice  §  324  (see  §  705) 
Patentability  and  Novelty  §  325 
Validity  §  326 


Miscellaneous  §  327 

See  —  Appeals  §  122;   Jurisdiction  § 

713;   Pleading  §  791;    Title  §  925 


§  323.     Dismissing  Bill  on. 

While  patent  causes  are  usually  disposed  of  upon  bill,  answer  and  proof, 
there  is  no  objection,  if  the  patent  be  manifestly  invalid  upon  its  face,  to  the 
point  of  being  raised  by  demurrer.  —  Richards  v.  Chase,  158  U.  S.  299;  39 
L.  Ed.  991;  15  S.  Ct.  831. 

Dunbar  v.  Myers,  94  U.  S.  187;  Slawson  v.  Grand,  107  U.  S.  649;  Brown  v. 
Piper,  91  U.  S.  37. 

We  think  the  court  erred  in  holding  upon  demurrer  that  the  patent  was 
void  upon  its  face.  It  may  be  admitted  that  the  patent  is  one  of  narrow 
limitations,  but  we  are  not  prepared  to  hold  that  in  the  circumstances,  which 
may  be  susceptible  of  proof,  the  patent  should  be  held  void  in  the  absence  of 
any  anticipation,  and  supported,  as  it  is  possible  it  may  be,  by  evidence  that 
it  fulfils  a  useful  purpose,  and  has  been  extensively  adopted  by  the  public  in 
practical  use,  and  further  supported  by  the  presumption  of  validity  arising 
from  the  allowance  of  the  patent,  the  force  of  which  presumption  is  aug- 
mented by  the  fact  that  there  was  a  serious  contest  in  the  office.  It  is 
undoubtedly  established  law  that  the  court  may,  in  a  clear  case,  dismiss  a 
bill  upon  demurrer ;  but  this  court  has  on  former  occasions  in  substance  said 
that  this  ought  only  to  be  done  when  there  is  no  room  for  thinking  that  any 
evidence  could  be  adduced  which  would,  if  put  into  the  case,  alter  the  clear 
conviction  of  the  court.  —  Milner  v.  Yesbera,  111  Fed.  386;  49  C.  C.  A.  397. 

Richards  v.  Elevator,  158  U.  S.  299;  American  v.  Buckskin,  72  Fed.  508; 
Mfg.  Co.  v.  Scherer,  100  Fed.  459. 

We  have  not  been  unmindful  in  the  consideration  of  this  case  of  the  ad- 
monition so  frequently  made  by  courts,  that  patents  should  not  be  declared 
invalid,  upon  demurrer  or  otherwise,  upon  the  face  of  the  patent  itself,  unless 
the  invalidity  so  clearly  appears  that  no  testimony  can  change  the  legal 
aspect  of  the  case,  and  that  if  doubt  exists,  the  complainant  is  entitled  to  its 
benefit.  But  in  cases  thus  clear  on  the  face  of  the  patent  itself,  courts  may, 
even  where  the  question  is  not  raised  by  the  pleadings,  suo  sponte,  declare 
the  patent  invalid  and  dismiss  the  bill.  —  Wills  v.  Scranton,  153  Fed.  181 ; 
82  C.  C.  A.  355. 

Brown  v.  Piper,  91  U.  S.  37;   Slawson  v.  Grand,  107  U.  S.  649. 


§§  324-325  DEMURRER  291 

That  the  question  here  presented  may  property  be  decided  on  demurrer 
was  decided  by  the  Supreme  Court  in  Richards  v.  Chase,  158  U.  S.  299.  This 
court  has  frequently  approved  this  practice,  believing  it  for  the  interests  of 
both  parties  that  the  court,  when  convinced  that  the  complainant  cannot 
succeed,  should  say  so  in  limine  and  thus  save  them  from  the  expense  and 
annoyance  of  a  protracted  litigation.  —  Kuhn  v.  Lock-Stub,  165  Fed.  445; 
C.  C.  A. 

Fowler  v.  City,  110  Fed.  749,  affd.  121  Fed.  747;  Lappin  v.  Corning,  94  Fed. 
162,  affd.  99  Fed.  1004;   Conley  v.  Marum,  83  Fed.  309,  affd.  85  Fed.  990. 

§  324.     Judicial  Notice. 

It  will  be  observed  that  the  learned  judge  in  the  court  below  was  able  to 
point  out  instances  of  similar  devices  within  his  personal  observation  of  a 
kind  necessarily  within  common  knowledge.  Herein  is  the  distinction 
between  this  case  and  the  fibre  chamois  cases  (just  decided)  72  Fed.  508, 
516.  —  Heaton  v.  Schlochtermayer,  72  Fed.  520;   18  C.  C.  A.  674. 

It  is  well  settled  that  in  considering  the  question  of  the  validity  of  a 
patent  on  its  face,  the  court  may  take  judicial  notice  of  facts  of  common  and 
general  knowledge  tending  to  show  that  the  device  or  process  patented  is 
old,  or  lacking  in  invention,  and  that  the  court  may  refresh  and  strengthen 
its  recollections  and  impression  of  what  facts  were  of  common  and  general 
knowledge  at  the  time  of  the  application  for  the  patent  by  reference  to  any 
source  of  general  information  which  is  known  to  the  court  to  be  reliable, 
and  to  have  been  published  prior  to  the  application  for  the  patent.  Brown 
v.  Piper,  91  U.  S.  38.  The  presumption  from  the  issuance  of  the  patent  is 
that  it  involves  both  novelty  and  invention.  The  effect  of  dismissing  the 
bill  upon  demurrer  is  to  deny  to  the  complainant  the  right  to  adduce  evi- 
dence to  support  the  presumption.  Therefore  the  court  must  be  able,  from 
the  statements  on  the  face  of  the  patent,  and  from  the  common  and  general 
knowledge  already  referred  to,  to  say  that  the  want  of  novelty  and  invention 
is  so  palpable  that  it  is  impossible  that  evidence  of  any  kind  could  show  the 
fact  to  be  otherwise.  Hence  it  must  follow  that,  if  the  court  has  any  doubt 
whatever  with  reference  to  the  novelty  or  invention  of  that  which  is  patented, 
it  must  overrule  the  demurrer,  and  give  the  complainant  an  opportunity, 
by  proof,  to  support  and  justify  the  action  of  the  patent  office.  This  is  the 
view  which  has  been  taken  by  the  Supreme  Court  and  the  most  experienced 
patent  judges  upon  the  circuit.  —  American  v.  Buckskin,  72  Fed.  508;  18 
C.  C.  A.  662. 

N.  Y.  v.  N.  J.,  137  U.  S.  445;  Mfg.  Co.  v.  Adkins,  36  Fed.  554;  Blessing  v. 
Copper,  34  Fed.  753;  Bottle  v.  De  La  Vergne,  47  Fed.  59;  Industries  v.  Grace, 
57  Fed.  124;  Goeble  v.  Supply,  55  Fed.  825;  Hanlon  v.  Primrose,  56  Fed.  600; 
Dick  v.  Well,  25  Fed.  105;  Kaolatype  v.  Hoke,  30  Fed.  444;  Coop  v.  Development, 
47  Fed.  899;  Krick  v.  Jansen,  52  Fed.  823;  Mfg.  Co.  v.  Housman,  58  Fed.  870; 
Davock  v.  Railroad,  69  Fed.  468;   Henderson  v.  Tompkins,  60  Fed.  758. 

§  325.     Patentability  and  Novelty. 

While  patent  causes  are  usually  disposed  of  upon  bill,  answer  and  proof, 
there  is  no  objection,  if  the  patent  be  manifestly  invalid  upon  its  face,  to  the 
point  being  raised  by  demurrer.  —  Richards  v.  Chase,  158  U.  S.  299;  39 
L.  Ed.  991;   15  S.  Ct.  831. 

Dunbar  v.  Myers,  94  IT.  S.  187;  Slawson  v.  Grand,  107  U.  S.  649;  Brown  v. 
Piper,  91  U.  S.  37. 

The  rule  is  now  well  settled  that  a  defendant  to  a  patent  infringement  bill 
may  raise  the  question  on  demurrer  whether  the  alleged  invention,  as  dis- 


292  THE    FIXED    LAW    OF    PATENTS  §326 

closed  by  the  specifications  of  the  patent,  is  void  of  patentable  novelty  or 
invention.  —  American  v.  Buckskin,  72  Fed.  508;   18  C.  C.  A.  662. 
Richards  v.  Elevator,  158  U.  S.  299;   West  v.  Rae,  33  Fed.  45. 

Undoubtedly,  want  of  patentability  may  be  adjudged  upon  demurrer,  but 
only  in  exceptional  cases,  where  the  question  is  entirely  free  from  doubt. 
Ordinarily,  a  patent  should  not  be  defeated  without  a  hearing  on  the  proofs. 

—  Chinnock  v.  Paterson,  112  Fed.  531;  50  C.  C.  A.  384. 

New  York  v.  New  Jersey,  137  U.  S.  445;  Caldwell  v.  Powell,  73  Fed.  488; 
Mfg.  Co.  v.  Scherer,  100  Fed.  459;   Beer  v.  Walbridge,  100  Fed.  465. 

Under  the  well  settled  rule  of  this  court,  a  patent  is  to  be  declared  void 
upon  its  face,  "  only  when  there  is  no  room  for  thinking  that  any  evidence 
can  be  adduced  which  would,  if  put  into  the  case,  alter  the  clear  conviction 
of  the  court  that  there  is  no  patentable  invention  in  the  production  patented." 

—  Drake  v.  Brownell,  123  Fed.  86;  59  C.  C.  A.  216. 

Milner  v.  Yesbera,  111  Fed.  386;  Strom  v.  Weir,  83  Fed.  170;  Richards  v. 
Chase,  158  U.  S.  299. 

There  is  nothing  new  in  this  device.  This  is  a  matter  of  such  common 
knowledge  that  the  court  below  took  judicial  notice  of  it,  and  properly  held 
the  patent  void  on  demurrer  for  lack  of  novelty.  The  fact  that  the  action 
was  one  at  law  did  not  place  the  initial  pleading  beyond  the  reach  of  the 
demurrer.  —  Thomas  v.  St.  Louis,  149  Fed.  753;  79  C.  C.  A.  89. 

Brown  v.  Piper,  91  U.  S.  37;  Slawson  v.  Railroad,  107  U.  S.  649;  Diamond  v. 
Excelsior,  156  U.  S.  611;  Richards  v.  Chase,  158  U.  S.  299;  Richards  v.  Michigan, 
102  Fed.  508;  id.,  179  U.  S.  606;  id.,  186  U.  S.  479;  American  v.  Buckskin, 
72  Fed.  508;  Strom  v.  Weir,  83  Fed.  170;  Northwood  v.  Dalzell,  100  Fed.  98; 
Drake  v.  Brownell,  123  Fed.  86;  Baker  v.  Duncombe,  146  Fed.  744. 

§  326.     Validity. 

It  is  no  longer  open  to  question  that  where  the  case  as  presented  is  clear, 
and  the  court  finds  no  difficulty  in  understanding  the  character  and  scope  of 
the  invention  from  the  patent  itself,  when  tested  by  the  common  knowledge 
pertaining  to  it,  and  thereupon  discerns  that  the  patent  is  not  sustainable, 
the  proper  and  expedient  course  is  to  dispose  of  the  case  on  demurrer,  and 
thus  put  an  end  to  useless  litigation.  —  Strom  v.  Weir,  83  Fed.  170;  27 
C.  C.  A.  502. 

Locomotive  v.  Medart,  158  U.  S.  68;  Richards  v.  Elevator,  158  U.  S.  299; 
American  v.  Buckskin,  72  Fed.  508. 

Undoubtedly,  if  there  appears  upon  the  face  of  the  patent  something 
inhering  in  the  substance  of  the  invention  which  is  recondite  or  abstruse, 
something  which  creates  a  difficulty  for  the  court  in  fully  comprehending 
its  nature  or  its  limitations,  and  the  court,  upon  applying  the  common 
knowledge  of  the  art,  is  embarrassed  with  doubt  as  to  the  proper  conclusion 
to  be  reached,  such  difficulty,  reinforced  by  presumption  of  the  validity  of 
the  patent,  would  indicate  the  propriety  of  refusing  to  dismiss  the  bill  upon 
demurrer,  and  awaiting  the  further  development  of  the  invention  by  the 
proofs.  —  Strom  v.  Weir,  83  Fed.  170;  27  C.  C.  A.  502. 

That  where  a  device  has  shown  such  large  utility  as  to  put  seeming  want  of 
novelty  in  doubt,  a  demurrer  will  not  be  sustained,  see  Higgin  v.  Scherer, 
100  Fed.  459;  40  C.  C.  A.  491. 

We  are  of  the  opinion  that  the  case  is  one  where  evidence  of  a  prior  art 
and  of  the  commercial  value  of  the  patented  article  may  be  persuasive  that 


§  327  DEMURRER  293 

the  patent  is  valid,  and  that  the  question  is  too  doubtful  to  be  decided  upon 
the  face  of  the  patent  upon  demurrer.  —  Beer  v.  Walbridge,  100  Fed.  465; 
40  C.  C.  A.  496. 

The  patent  is  not  so  clearly  and  indubitably  void  of  invention  as  to  justify 
a  ruling  to  that  effect  upon  demurrer.  —  Faries  v.  Brown,  102  Fed.  508; 
42  C.  C.  A.  483. 

The  patent  had  been  sustained  on  appeal  in  a  former  suit.  Subsequently, 
owing  to  the  discovery  of  a  prior  construction,  a  disclaimer  had  been  made. 
Held:  The  bill  presents  the  disclaimer  as  well  as  the  patent,  and,  with  the 
concession  that  in  the  prior  art  the  returning  ball  had  been  retarded  by  an 
up  grade,  the  case  may  properly  be  disposed  of  on  demurrer;  and,  for  the 
reasons  set  forth  in  our  former  opinion  (111  Fed.  904)  we  have  reached  the 
conclusion  that  the  patent  discloses  no  patentable  invention  in  claims  here 
in  controversy.  —  Brunswick  v.  Klumpp,  131  Fed.  255;  65  C.  C.  A.  447. 

The  manufacture  of  stovepipes  had  employed  the  skill  of  numberless 
artisans  for  generations  without  the  earlier  discovery  of  the  simple  locking  de- 
vice of  the  patent.  Under  such  circumstances  can  it  be  said,  confidently  and 
without  doubt,  that  such  device  would  have  occurred  to  any  skilled  mechanic 
engaged  in  such  manufacture,  and  called  for  no  exercise  of  the  inventive 
faculty?  Unless  that  can  be  said,  this  patent  should  not  have  been  on  de- 
murrer held  to  be  void  for  lack  of  invention.  —  Jackes  v.  Hemp,  140  Fed. 
254;  71  C.  C.  A.  646. 

General  v.  Campbell,  137  Fed.  600. 

Although  the  presumption  from  the  issuance  of  a  patent  is  that  it  involves 
both  novelty  and  invention,  yet  the  question  of  its  validity  may  be  raised 
by  demurrer.  —  Jackes  v.  Hemp,  140  Fed.  254;  71  C.  C.  A.  246. 

American  v.  Buckskin,  72  Fed.  508. 

The  court  below  sustained  a  demurrer  on  the  ground  that  the  patent  was  on 
its  face  void  for  lack  of  patentable  novelty.  While  such  a  decree  may  be 
entered  where  a  case  is  clear  from  doubt,  we  are  of  opinion  the  present  was 
not  one  of  that  character.  —  Hogan  v.  Westmoreland,  154  Fed.  66;  83  C. 
C.  A.  178. 

Caldwell  v.  Powell,  73  Fed.  488;  Chinnock  v.  Paterson,  112  Fed.  531. 

§  327.    Miscellaneous. 

When  there  is  a  demurrer  to  the  whole  bill,  and  also  to  part,  and  the  latter 
only  is  sustained,  the  regular  decree  is  to  dismiss  so  much  of  the  bill  as  seeks 
relief  in  reference  to  the  matters  adjudged  bad,  and  to  overrule  the  demurrer 
to  the  residue,  and  direct  the  defendant  to  answer  thereto.  —  Powder  v. 
Powder,  98  U.  S.  126;  25  L.  Ed.  77. 

That  the  court,  on  demurrer,  will  not  pass  upon  questions  requiring  evi- 
dence of  experts,  see  American  v.  Buckskin,  72  Fed.  508;  18  C.  C.  A.  622. 

It  is  a  general  principle  of  equity  pleading  that,  as  a  demurrer  proceeds 
upon  the  ground  that,  admitting  the  facts  stated  in  the  bill  to  be  true,  the 
complainant  is  not  entitled  to  the  relief  he  seeks,  all  matters  of  fact  which 
are  stated  in  the  bill  are  admitted  by  the  demurrer,  and  cannot  be  disputed 
in  arguing  the  question  whether  the  defense  thereby  made  be  good  or  not, 
and  such  admission  extends  to  the  whole  manner  and  form  in  which  it  is 
here  stated;   or,  to  state  the  principle  more  concisely,  every  change  in  the 


294  THE    FIXED    LAW    OF    PATENTS  §  328 

bill,  well  pleaded,  is  absolutely  admitted  by  the  demurrer.  —  Caldwell  v. 
Powell,  73  Fed.  488;  19  C.  C.  A.  592. 

It  has  been  law  time  out  of  mind  that  a  demurrer  to  an  entire  declaration 
must  be  overruled  if  there  be  one  good  count.  Such  demurrer  asserts  that 
no  cause  of  action  is  shown.  It  therefore  raises  no  further  question  if  one 
count  be  good.  The  argument  in  such  case  may  properly  cover  all  the  counts, 
but  the  ruling  is  complete  with  the  determination  that  one  count  is  good.  — 
Standard  v.  Crane,  76  Fed.  767;  22  C.  C.  A.  549. 

It  is  contended  by  appellant  that  the  court  below  erred  in  disposing  of 
the  demurrer  upon  the  assumption  that  the  state  of  the  art  was  set  forth  in 
the  specifications;  Fibre  Co.  v.  Grace,  52  Fed.  124  being  cited  in  support 
of  such  contention.  That  decision,  however,  is  opposed  to  the  great  weight 
of  authority.  —  Lyons  v.  Drucker,  106  Fed.  416;  45  C.  C.  A.  368. 

Fougeres  v.  Murbarger,  44  Fed.  291;  Studebaker  v.  Illinois,  42  Fed.  52;  Button 
Fastener  v.  Schlochtmeyer,  72  Fed.  520. 

That  the  presence  of  the  slightest  evidence  of  novelty  is  sufficient  to 
defeat  a  demurrer  for  want  of  invention,  see  Lyons  v.  Drucker,  106  Fed.  416; 
45  C.  C.  A.  368. 

A  decree  on  demurrer,  in  the  absence  of  any  specific  statement  or  showing 
in  the  pleadings,  will  be  presumed  to  have  been  upon  the  merits.  —  Bradford 
v.  Kisinger-Ison,  113  Fed.  811;  51  C.  C.  A.  483. 

Ashley  v.  Board,  60  Fed.  55;  Terry  v.  Davy,  107  Fed.  50;  Cattle  Co.  v.  Frank, 
148  U.  S.  603. 

There  can  no  longer  be  a  doubt  that  where,  in  an  infringement  suit,  profert 
of  the  patent  is  made  in  the  usual  form,  the  patent  is  regarded  as  part  of 
the  bill  and  will  be  examined  on  demurrer.  —  Fowler  v.  City  of  N.  Y.  121 
Fed.  747;  58  C.  C.  A.  113. 

Heaton  v.  Schlochtmeyer,  69  Fed.  592;  Chinnock  v.  Paterson,  110  Fed.  199; 
International  v.  Maurer,  44  Fed.  618. 


DESIGNS. 

Statutory  Provisions  §  328 
Definition  §  329 
Identity  §  330 

Infringement  §  331  (see  §  445) 
Invention  §  332  (see  §  588) 
Mechanical  §  333 


Novelty  §  334 

Patentability  §  335 

Penalty  §  336 

Miscellaneous  §  337 

See  —  Claims  §  231;  Damages  §  281 


§  328.     Statutory  Provisions. 

Any  person  who  has  invented  any  new,  original,  and  ornamental  design 
for  an  article  of  manufacture,  not  known  or  used  by  others  in  this  country 
before  his  invention  thereof,  and  not  patented  or  described  in  any  printed 
publication  in  this  or  any  foreign  country  before  his  invention  thereof,  or 
more  than  two  years  prior  to  his  application,  and  not  in  public  use  or  on  sale 
in  this  country  for  more  than  two  years  prior  to  his  application,  unless  the 
same  is  proved  to  have  been  abandoned,  may,  upon  payment  of  the  fees 
required  by  law  and  other  due  proceedings  had,  the  same  as  in  cases  of  in- 
vention or  discoveries  covered  by  section  4886,  obtain  a  patent  therefor.  — 
R.  S.  4929. 


§  329  DESIGNS  295 

Patents  for  designs  may  be  granted  for  the  term  of  three  years  and  six 
months,  or  for  seven  years,  or  for  fourteen  years,  as  the  applicant  may,  in 
his  application,  elect.  —  R.  S.  4931. 

All  the  regulations  and  provisions  which  apply  to  obtaining  or  protecting 
patents  for  inventions  or  discoveries  not  inconsistent  with  the  provisions  of 
this  Title,  shall  apply  to  patents  for  designs.  —  R.  S.  4933. 

Section  4932  provides  for  conditions  arising  under  the  old  act,  now  wholly 
obsolete.  The  amendment  of  Feb.  4,  1887,  makes  the  following  provision 
for  protection  against  infringement: 

That  hereafter,  during  the  term  of  letters  patent  for  a  design,  it  shall  be 
unlawful  for  any  person  other  than  the  owner  of  said  letters  patent,  without 
the  license  of  such  owner,  to  apply  the  design  secured  by  such  letters  patent, 
or  any  colorable  imitation  thereof,  to  any  article  of  manufacture  for  the 
purpose  of  sale,  or  to  sell  or  expose  for  sale  any  article  of  manufacture  to 
which  such  design  or  colorable  imitation  shall,  without  the  license  of  the 
owner,  have  been  applied,  knowing  that  the  same  has  been  so  applied.  *  *  * 

The  remainder  of  this  amendment  is  the  provision  for  the  recovery  of 
damages  and  profits,  and  will  be  found  quoted  under  the  title  Damages. 

§  329.     Definitions. 

The  Acts  of  Congress  which  authorize  the  granting  of  patents  for  designs 
were  plainly  intended  to  give  encouragement  to  the  decorative  arts.  They 
contemplate  not  so  much  utility  as  appearance,  and  that,  not  an  abstract 
impression  or  picture,  but  an  aspect  given  to  those  objects  mentioned  in  the 
acts.  It  is  a  new  and  original  design  for  a  manufacture,  whether  of  metal 
or  other  material.  —  Gorham  v.  White,  81  U.  S.  511;  20  L.  Ed.  7-31. 

Modified:  Smith  v.  Whitman,  148  U.  S.  674. 

As  the  Acts  of  Congress  embrace  only  designs  applied  or  to  be  applied, 
they  must  refer  to  finished  products  of  invention  rather  than  to  the  process 
of  finishing  them,  or  to  the  agencies  by  which  they  are  developed.  —  Gorham 
v.  White,  81  U.  S.  511 ;  20  L.  Ed.  731. 

Modified:  Smith  v.  Whitman,  148  U.  S.  674. 

We  are  in  the  habit  of  regarding  a  design  as  a  thing  of  distinct  and  fixed 
individuality  of  appearance  —  a  representation,  a  picture,  a  delineation, 
a  device.  A  design  of  such  a  character,  of  course,  addresses  itself  to  the 
senses  and  the  taste,  and  produces  pleasure  or  admiration  in  its  contempla- 
tion. But  in  the  patent  before  us,  the  alleged  invention  is  claimed  to  be  some- 
thing more  than  such  a  design.  It  is  claimed  to  have  an  active  power  of 
producing  a  physical  effect  upon  the  rays  of  light,  so  as  to  produce  different 
shades  and  colors  according  to  the  direction  in  which  the  various  corrugated 
lines  are  viewed  —  a  sort  of  kaleidoscopic  effect.  It  is  possible  that  such  a 
peculiar  effect,  produced  by  such  a  particular  design,  impressed  upon  the 
substance  of  india-rubber,  may  constitute  a  quality  of  excellence  which  will 
give  to  the  design  a  specific  character  and  value  and  distinguish  it  from  other 
similar  designs  which  have  not  such  an  effect.  —  New  York  v.  New  Jersey, 
137  U.  S.  445;  34  L.  Ed.  741 ;  11  S.  Ct.  193. 

Design,  in  the  view  of  the  patent  law,  is  that  characteristic  of  a  physical 
substance  which,  by  means  of  lines,  images,  configuration,  and  the  like, 
taken  as  a  whole,  makes  an  impression,  through  the  eye,  upon  the  mind  of 
the  observer.  The  essence  of  a  design  resides,  not  in  the  elements  individ- 
ually, nor  in  their  method  of  arrangement,  but   in  the  tout  ensemble  —  in 


296  THE    FIXED    LAW    OF    PATENTS  §§  330-331 

that  indefinable  whole  that  awakens  some  sensation  in  the  observer's  mind. 
Impressions  thus  imparted  may  be  complex  or  simple;  in  one  a  mingled 
impression  of  gracefulness  and  strength,  in  another  the  impression  of  strength 
alone.  But  whatever  the  impression,  there  is  attached  in  the  mind  of  the 
observer  to  the  object  observed,  a  sense  of  uniqueness  and  character.  — 
Pelouze  v.  American,  102  Fed.  916;  43  C.  C.  A.  52. 

§  330.     Identity. 

We  are  now  prepared  to  inquire  what  is  the  true  test  of  identity  of  design. 
Plainly,  it  must  be  sameness  of  appearance,  and  mere  difference  of  lines  in 
the  drawing  or  sketch,  a  greater  or  smaller  number  of  lines,  or  slight  variances 
in  configuration,  insufficient  to  change  the  effect  upon  the  eye,  will  not  destroy 
the  substantial  identity.  —  Gorham  v.  White,  81  U.  S.  511 ;  20  L.  Ed.  731. 

The  details  of  the  two  designs,  are,  in  several  particulars,  not  the  same, 
but  to  this  we  would  attach  no  importance  if  the  general  effect  was  sub- 
stantially identical.  On  the  other  hand,  their  elementary  features  are,  to  a 
very  considerable  extent,  precisely  alike,  yet  this,  too,  is  immaterial,  because 
the  impression  of  the  whole  upon  the  eye  of  even  a  casual  observer  is  made 
plainly  different,  not  only  by  the  partial  diversity  of  their  elements,  but 
also  by  the  difference  in  arrangement  and  correlation  of  the  constituents 
which  are  common  to  both.  —  Monroe  v.  Anderson,  58  Fed.  398;  7  C.  C.  A. 
272. 

The  suit  was  brought  upon  a  patent,  not  for  a  mantel  but  for  "a  design 
for  a  mantel."  At  best,  the  patented  design  and  that  which  is  alleged  to 
infringe,  are  not  of  a  very  high  order,  and  the  mantels  to  which  they  are 
applied  are  quite  commonplace  in  style  and  character.  It  is  by  no  means 
improbable  that  an  ordinary  purchaser  would  be  wholly  regardless  of,  and 
absolutely  inattentive  to,  such  designs  upon  such  articles,  and  it  may 
readily  be  supposed  that  such  a  purchaser  might  be  misled  by  a  statement 
that  the  mantel  having  the  alleged  infringing  design  was  that  of  the  com- 
plainant. But  design  is  a  distinct  matter;  and,  as  to  that,  accepting  the 
suggestion  of  learned  counsel  that  nothing  is  entitled  to  more  weight  with  the 
court  than  "  the  testimony  of  its  own  eyesight  "  we  can  only  say  that  each 
of  these  judges  who  heard  the  argument  of  this  case  is,  from  observation  of 
the  two  designs,  entirely  satisfied  that  they  are  substantially  different  in 
their  effect  upon  the  eye,  and  that  his  perception  was  not  dependent  upon 
the  fact  that  he  saw  the  two  designs  side  by  side  and  heard  counsel  compare 
and  contrast  them,  but  that  their  difference  would  be  manifest  to  an  ordinary 
observer,  giving  the  usual  attention  (if  any)  of  a  purchaser  to  that  subject. 
—  Monroe  v.  Anderson,  58  Fed.  398;  7  C.  C.  A.  272. 

It  has  been  said  that  in  matters  of  design  patents,  infringement  must  be 
determined  by  the  similarity  of  appearance  evident  to  the  eyes  of  an  ordinary 
observer,  and  that  an  ordinary  observer  is  an  intending  purchaser  of  the 
article  in  question,  familiar  with  the  various  designs  of  the  article  sought  to 
be  purchased,  and  who  seeks  to  purchase  them  for  the  uses  to  which  they  are 
generally  adapted.  The  eye  of  the  court  is  also  that  of  a  judge  competent 
to  pass  upon  the  question  of  similarity.  —  Byram  v.  Friedberger,  100  Fed. 
963;  41  CCA.  121. 

§  331.     Infringement. 

We  hold  therefore,  that  if,  in  the  eye  of  an  ordinary  observer,  giving 
such  attention  as  a  purchaser  usually  gives,  two  designs  are  substantially 
the  same,    if   the  resemblance    is   such    as  to   deceive   such   an   observer, 


§  331  DESIGNS  297 

inducing  him  to  purchase  one  supposing  it  to  be  the  other,  the  first  one 
patented  is  infringed  by  the  other.  —  Gorham  v.  White,  81  U.  S.  511;  20 
L.  Ed.  731. 

Modified:   Smith  v.  Whitman,  148  U.  S.  674. 

We  do  not  say  that  in  determining  whether  two  designs  are  substantially 
the  same,  differences  in  the  lines,  the  configuration,  or  the  modes  by  which 
the  aspects  they  exhibit  are  not  to  be  considered ;  but  we  think  the  controlling 
consideration  is  the  resultant  effect.  —  Gorham  v.  White,  81  U.  S.  511;  20 
L.  Ed.  731. 

Modified:  Smith  v.  Whitman,  148  U.  S.  674;  McCrea  v.  Holdsworth,  6  Ch.  Ap. 
L.  Rep.  418. 

A  design  is  to  be  tested  as  to  its  novelty  and  infringement  as  a  whole.  — 
Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct.  946. 

In  the  absence  of  testimony  to  establish  the  identity  of  the  act,  the  court 
will  upon  the  introduction  of  the  admitted  article,  determine  the  question  by 
comparison.  —  Kibbe  v.  Jennings,  122  U.  S.  640;  30  L.  Ed.  861. 

Following,  Gorham  v.  White,  81  U.  S.  511. 

As  none  of  the  defendant's  articles  infringe  the  only  specific  design  ex- 
hibited in  the  patent  and  shown  in  the  drawing,  the  decree  is  reversed.  — 
New  York  v.  New  Jersey,  53  Fed.  810;  4  C.  C.  A.  21. 

Defendant's  mat,  therefore,  is  not  an  infringement  of  the  "  specific  design 
exhibited  in  the  patent  and  shown  in  the  drawing."  If  the  change  of  shape 
involved  no  change  of  design,  because  whoever  was  shown  the  square  mat 
and  told  to  make  it  oblong,  with  the  same  design,  would  inevitably  produce 
an  oblong  mat  of  a  single  specific  pattern.  But  that  is  not  this  case.  Mani- 
festly in  changing  from  the  square  to  the  oblong,  there  must  be  a  change  of 
pattern,  a  change  which  is  not  a  mere  duplication  of  the  details  of  the  original, 
but  a  rearrangement  of  the  principal  lines  of  the  figure,  and  such  rearrange- 
ment is  not  necessarily  confined  to  a  single  pattern.  —  New  York  v.  New 
Jersey,  53  Fed.  810;  4  C.  C.  A.  21. 

Gorham  v.  White,  14  Wall.  528. 

The  point  to  be  determined  by  the  criterion  sanctioned  is  whether  "  the 
designs  are  substantially  the  same;  "  that  is,  whether  a  purchaser  giving  the 
usual  attention  to  the  subject-matter  of  the  patent,  —  the  design  —  would 
not  be  deceived  into  supposing  the  two  designs  to  be  the  same ;  not  whether 
a  purchaser  not  giving  any  attention  to  the  design  might  be  led  to  assume  that 
an  article  embodying  the  one  design  was  the  same  article  as  another  by  or 
upon  which  the  other  design  had  been  portrayed.  —  Monroe  v.  Anderson,  58 
Fed.  398;  7  C.  C.  A.  272. 

Gorham  v.  White,  14  Wall.  511. 

A  sameness  of  appearance  which  is  due  to  a  sameness  to  forms  which  were 
common  property  does  not  go  to  establish  infringement.  —  Soehner  v. 
Favorite,  84  Fed.  182;  28  C.  C.  A.  317. 

The  head  of  the  defendant 's  design  does  not  materially  differ  from  that  of 
the  patent,  being  distinguishable  from  it  only  by  the  absence  of  the  ray-like 
members,  "  e  ";  and  we  cannot  suppose  that  the  removal  of  these  append- 
ages was  at  all  likely  to  be  observed  by  an  ordinary  purchaser.  —  Scofield 
v.  Browne,  158  Fed.  305 ;  85  C.  C.  A.  556. 

Gorham  v.  White,  14  Wall.  511. 


298  THE    FIXED    LAW   OF   PATENTS  §  332 

When  the  question  involving  the  infringement  of  a  design  patent  is  pre- 
sented, the  court  is  especially  entitled  to  have  put  before  it  exhibits  to  which 
the  testimony  of  experts  may  be  referred,  and  by  means  of  which  it  may 
make  its  own  comparison  and  deductions.  —  Gray  v.  Grinberg,  159  Fed. 
138;  86  CCA.  328. 


§  332.     Invention. 

Utility  as  an  element  of  invention  may  be  considered.  —  Smith  v.  Whit- 
man, 148  U.  S.  674;  37  L.  Ed.  606;  13  S.  Ct.  768. 

Discriminating  and  limiting  Gorham  v.  White,  81   U.  S.  511. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Northrup  v.  Adams,  2  B.  &  A.  567; 
Foster  v.  Crossin,  44  Fed.  62;  Jennings  v.  Keble,  10  Fed.  669;  Ripley  v.  Elson, 
49  Fed.  927. 

The  true  test  of  identity  of  design  is  sameness  of  appearance  —  in  other 
words  sameness  of  effect  upon  the  eye.  —  Smith  v.  Whitman,  148  U.  S.  674; 
37  L.  Ed.  606;   13  S.  Ct.  768. 

Jennings  v.  Kibbe,  10  Fed.  669;  Gorham  v.  White,  81  U.  S.  511;  Ripley  v. 
Elson,  49  Fed.  927. 

The  difference  in  the  curve  at  the  bottom  is  one  which  would  suggest  itself 
to  any  workman,  and  does  not  involve  that  exercise  of  inventive  genius 
which  is  as  necessary  to  support  a  design  patent  as  a  mechanical  patent.  — 
Westinghouse  v.  Triumph,  97  Fed.  99;  38  C  C.  A.  65. 

Smith  v.  Saddle  Co.,  148  U.  S.  674;  Northrup  v.  Adams,  2  Ban.  &  A.  567; 
Fed.  Cas.  10,328;    Foster  v.  Crossin,  44  Fed.  62. 

The  exercise  of  the  inventive  faculty  is  just  as  essential  to  the  validity  of 
a  design  patent  as  it  is  to  the  validity  of  a  patent  for  any  kind  of  a  mechanical 
device.  —  Myers  v.  Sternheim,  97  Fed.  625 ;  38  C  C.  A.  345. 

Smith  v.  Saddle,  148  U.  S.  674;  Hammond  v.  Agricultural  Works,  7  Fed.  716. 

To  entitle  an  inventor  to  the  benefit  of  the  section  in  regard  to  design 
patent,  "  there  must  be  originality,  and  the  exercise  of  the  inventive  faculty." 
"  Mere  mechanical  skill  is  insufficient.  There  must  be  something  akin  to 
genius,  —  an  effort  of  the  brain  as  well  as  the  hand."  —  Cary  v.  Neal,  98 
Fed.  617;  39  C  C  A.  189. 

Smith  v.  Saddle  Co.  148  U.  S.  674. 

Assembling  old  elements  to  form  a  design  more  convenient  and  useful  with- 
out actual  invention  does  not  constitute  novelty.  —  American  v.  Newgold, 
113  Fed.  877;  51  C.  C.  A.  501. 

If  there  be  a  doubt  as  to  whether  the  departures  constituted  invention, 
it  should  be  resolved  in  favor  of  the  patent,  not  only  by  reason  of  the  pre- 
sumption arising  from  the  grant,  but  also  because  the  patented  construction 
was  adopted  and  retained  on  account  of  the  novelty  of  the  design,  notr- 
withstanding  certain  objections  resulting  from  its  peculiar  conformation, 
and,  furthermore  because  of  the  evidence  as  to  the  much  greater  popularity 
of  the  new  design,  because  of  its  attractive  appearance,  and,  finally,  because 
of  the  actual  bodily  imitation  by  defendants  of  the  exact  patented  con- 
struction, under  circumstances  which  indicate  an  inequitable  attempt 
to  appropriate  the  benefits  shown  to  have  resulted  from  the  harmonious 
arrangement  and  proportions  of  the  patented  design.  —  West  v.  Frank, 
149  Fed.  423;   79  C  C  A.  359. 


§§  333-334  DESIGNS  299 

§  333-     Mechanical. 

Section  4922  of  the  Revised  Statutes  was  not  intended  to  embrace  a  patent 
for  such  a  design  as  is  set  forth  in  the  design  letters  patent  under  considera- 
tion. It  was  intended,  in  order  that  a  design  might  be  patentable,  that  it 
should  of  itself,  as  an  artistic  configuration,  present  something  new  and  use- 
ful from  an  aesthetic  point  of  view.  Within  the  meaning  of  the  act,  there  is 
nothing  artistic,  ornamental,  or  decorative  in  the  design  of  a  horseshoe 
calk;  it  is  essentially  a  mechanical,  and  not  an  aesthetic,  device.  It  is  im- 
possible to  suppose  that  it  should  be  bought  or  used  because  of  its  aesthetic 
features.  Its  success  as  a  calk  would  depend  upon  its  useful,  and  not  its 
artistic,  character.  —  Williams  v.  Kemmerer,  145  Fed.  928;  76  C.  C.  A.  466. 

Rowe  v.  Blodgett,  103  Fed.  873;   112  Fed.  61. 

§  334.     Novelty. 

A  design  is  to  be  tested  as  to  its  novelty  and  infringement  as  a  whole. 

—  Dobson  v.  Dornan,  118  U.  S.  10;  30  L.  Ed.  63;  6  S.  Ct.  946. 

In  order  to  be  novel  the  design  must  be  the  result  of  industry,  effort, 
genius  or  expense,  and  new  or  original  as  applied  to  articles  of  manufacture. 

—  Smith  v.  Whitman,  148  U.  S.  674;  37  L.  Ed.  606;  13  S.  Ct.  768. 

The  mere  adaptation  of  shape  without  producing  any  novel  and  general 
effect,  is  not  invention.  —  Paine  v.  Snowden,  50  Fed.  776;   1  C.  C.  A.  122. 
Gorham  v.  White,  14  Wall.  511. 

The  design  was  for  the  grouping  of  certain  Odd  Fellows  symbols  in  the 
panel  of  a  rug.  The  court  held:  The  learned  judge  below  said  that  if  the 
question  of  novelty  and  invention,  under  the  terms  of  the  statute,  had  been 
raised  for  the  first  time  in  this  suit,  his  judgment  possibly  would  have  been 
different;  and  we  strongly  incline  to  the  opinion  that,  but  for  the  prior  ad- 
judications upon  the  subject,  a  finding  that  this  patent  is  not  supported 
by  invention,  within  the  meaning  of  the  law,  would  have  been  correct.  — 
Stewart  v.  Smith,  58  Fed.  580;  7  C.  C.  A.  380. 

The  novelty  of  a  design  is  to  be  tested,  not  by  investigation  of  the  means 
employed  for  its  creation,  but  by  ocular  comparison  of  the  design  itself 
with  prior  designs  which  are  alleged  to  be  substantially  the  same,  and  when 
tried  by  this  test  the  novelty  of  the  design  covered  by  the  patent  in  suit  is 
made  quite  apparent.  —  Braddock  v.  Macbeth,  64  Fed.  118;  12  C.  C.  A.  70. 

To  entitle  a  party  to  a  patent  for  a  design  under  this  act  there  must  be 
originality  and  the  exercise  of  the  inventive  faculty.  This  is  so  because  the 
statute  so  declares,  and  because  it  has  been  so  decided  by  the  Supreme  Court. 
In  Smith  v.  Saddle  Co.  148  U.  S.  674,  the  court  said:  "  The  exercise  of  the 
inventive  or  originative  faculty  is  required,  and  a  person  cannot  be  permitted 
to  select  an  existing  form,  and  simply  put  it  to  a  new  use,  any  more  than  he 
can  be  permitted  to  take  a  patent  for  the  mere  double  use  of  a  machine.  If, 
however,  the  selection  and  adaptation  of  an  existing  form  is  more  than  the 
exercise  of  the  imitative  faculty,  and  the  result  is  in  effect,  a  new  creation, 
the  design  may  be  patentable." 

In  the  case  at  bar,  what  the  plaintiff  did,  and  all  that  he  did,  was  to  sub- 
stitute for  the  platform  which  had  previously  been  used  on  the  rear  end  of 
existing  street  cars,  an  open  compartment  precisely  similar  to  the  open 
compartment  which  was  in  use  at  the  front  end  of  these  cars.  This  was  noth- 
ing more  than  the  exercise  of  the  imitative  faculty,  and  did  not  rise  to  the 
dignity  of  invention.  —  Hammond  v.  Stockton,  70  Fed.  716;  17  C.  C.  A.  356. 


300  THE    FIXED    LAW    OF    PATENTS  §  335 

To  entitle  a  person  to  a  patent  under  section  4929  R.  S.,  the  design  must 
be  new,  useful,  and  original,  in  shape  or  configuration.  It  is  not  shown  to 
be  either  new  or  original,  and  such  changes  in  outline  as  are  visible  to  the 
eye  relate  merely  to  details,  and  do  not  involve  any  invention.  —  Koenen  v. 
Drake,  101  Fed.  466;  41  C.  C.  A.  466. 

§  335-     Patentability. 

It  is  the  appearance  itself  which  attracts  attention  and  calls  out  favor 
or  dislike.  It  is  the  appearance  itself,  no  matter  by  what  agency  caused, 
that  constitutes  mainly,  if  not  entirely,  the  contribution  to  the  public  which 
the  law  deems  worthy  of  recompense.  The  appearance  may  be  the  result 
of  peculiarity  of  configuration,  or  of  ornament  alone,  or  of  both  conjointly; 
but  in  whatever  way  produced,  it  is  the  new  thing  or  product,  which  the 
patent  law  regards.  To  speak  of  the  invention  as  a  combination  or  process, 
or  to  treat  it  as  such,  is  to  overlook  its  peculiarities.  —  Gorham  v.  White, 
81  U.S.  511;  20  L.Ed.  731. 

Modified:  Smith  v.  Whitman,  148  U.  S.  674. 

The  thing  invented  or  produced,  for  which  a  patent  is  given,  is  that  which 
gives  a  peculiar  or  distinctive  appearance  to  the  manufacture,  or  article 
to  which  it  may  be  applied,  or  to  which  it  gives  form.  —  Gorham  v.  White, 
81  U.  S.  511;  20  L.  Ed.  731. 

Modified:  Smith  v.  Whitman,  148  U.  S.  674. 

If  the  patented  design  consisted  in  a  transfer  of  an  old  form  which  had 
existed  upon  something  else  to  a  watch  case,  or  in  the  mere  adaptation 
by  imitation  of  a  pre-existing  form  to  a  watch-case,  it  would  not  have  been 
invention.  If  the  adaptation  "  is  more  than  the  exercise  of  the  imitative 
faculty,  and  the  result  is  in  effect  a  new  creation,  the  design  may  be  pat- 
entable." —  Untermeyer  v.  Freund,  58  Fed.  205;  7  C.  C.  A.  183. 

Smith  v.  Saddle  Co.  148  U.  S.  674. 

The  statute  which  protects  inventors  requires  the  production  of  a  new  and 
pleasing  design.  The  invention  demanded  consists  in  the  conception  and 
production  of  a  design  which  can  be  characterized.  —  Caldwell  v.  Powell, 
73  Fed.  488;   19  C.  C.  A.  592. 

N.  Y.  v.  N.  J.  137  U.  S.  446. 

A  claim  for  the  general  design  of  a  scroll  as  applied  to  ornamentation 
of  stoves  is  too  broad  to  be  sustained  in  such  form.  —  Soehner  v.  Favorite, 
84  Fed.  182;   28  C.  C.  A.  317. 

When  so  placed  (a  washer  for  thill-couplings)  it  is  as  much  out  of  sight  as 
was  the  horse-shoe  calk  in  Rowe  v.  Blodgett,  112  Fed.  61,  with  which  cause 
the  one  at  bar  seems  to  be  on  all  fours.  It  is  another  instance  of  the  "  lib- 
eral "  if  not  lax  practice  in  issuing  design  patents  which  was  therein  referred 
to.  The  washer,  like  the  horse-shoe  calk,  is  not  intended  for  display,  but 
for  an  obscure  use.  There  is  no  evidence  that  its  form  appeals  in  any  way 
to  the  eye,  or  serves  to  commend  it  to  purchasers  and  users  as  a  thing  of 
beauty.  There  is  not  a  scintilla  of  evidence  that  the  sale  of  a  single  washer 
was  ever  induced  by  any  attractiveness  in  its  appearance.  Functional 
utility  entitled  the  patentee  to  the  mechanical  patent  already  discussed, 
but  mere  functional  utility  did  not  entitle  him  to  a  design  patent  for  the 
same  article.  —  Bradley  v.  Eccles,  126  Fed.  945;  61  C.  C.  A.  669. 

There  is  nothing  in  the  shape  or  construction  of  the  basket  of  the  patent 
in  suit  which  "  appeals  in  any  way  to  the  eye,  or  serves  to  commend  it  to 


§§336-337  DESIGNS  301 

purchasers  and  users  as  a  thing  of  beauty."  It  is  not  useful  as  a  design. 
"  There  must  be  'originality  and  beauty;  mere  mechanical  skill  is  not  suffi- 
cient.' "  —  Roberts  v.  Bennett,  136  Fed.  193;  69  C.  C.  A.  533. 

Bradley  v.  Eccles,  126  Fed.  945;  Rowe  v.  Blodgett,  103  Fed.  873;  Bevin  v. 
Starr,  114  Fed.  362;   Eaton  v.  Lewis,  115  Fed.  635,  affd.  127  Fed.  1018. 

If  the  plaintiff  was  entitled  to  any  patent  for  the  advantages  claimed  for 
such  a  construction,  they  were  covered  by  the  prior  mechanical  patent. 
"  Functional  utility  entitled  the  patentee  to  the  mechanical  patent  already 
discussed,  but  mere  functional  utility  did  not  entitle  him  to  a  design  patent 
for  the  same  article."  —  Roberts  v.  Bennett,  136  Fed.  193;  69  C.  C.  A.  533. 

Bradley  v.  Eccles,  126  Fed.  945;   Royal  v.  Art,  121  Fed.  128. 

§  336.     Penalty. 

The  act  of  Feb.  4,  1887,  which  imposes  a  penalty  for  the  infringement  of 
a  design  is  not  unconstitutional  on  the  ground  that  a  court  of  equity  will  not 
enforce  a  penalty  or  forfeiture.  —  Untermeyer  v.  Freund,  58  Fed.  205;  7 
C.  C.  A.  183. 

Root  v.  Railway,  105  U.  S.  189;  Story  Eq.  Jus.  2,  Sec.  1319;  Stephens  v.  Gladding, 
15  How.  454;   Stephens  v.  Cady,  2  Curt.  200. 

The  patent  is  for  a  single  design.  It  is  true  that,  in  order  to  protect  the 
patentee  from  any  form  of  infringement,  the  patent  has  three  claims.  There 
was,  however,  only  one  border  and  sale.  It  was  a  single  transaction.  In  no 
view,  then,  that  can  be  taken  of  the  case,  are  the  defendants  to  be  subjected 
to  two  penalties.  —  Gimbel  v.  Hogg,  97  Fed.  791 ;  38  C.  C.  A.  419. 

In  law  and  in  fact,  the  defendants  were  simply  purchasers  from  the  manu- 
facturer and  sellers  to  the  government.  In  making  the  sale,  the  defendants 
acted  in  perfect  good  faith,  in  utter  ignorance  of  any  infringement  of  any 
patent  rights,  and  without  any  knowledge  whatever  that  the  manufacturer 
had  applied  to  the  carpeting  the  complainant's  design  without  license.  We 
are,  then,  of  opinion  that  the  defendants  are  not  chargeable  with  any  penalty, 
under  the  act  of  Feb.  4,  1887.  —  Gimbel  v.  Hogg,  97  Fed.  791 ;  38  C.  C.  A. 
419. 

By  the  plain  terms  of  the  statute,  the  penalty  is  incurred  by  the  seller  of 
an  article  to  which  a  patented  design  has  been  applied  without  license,  only 
where  he  sells  "  knowing  that  the  same  has  been  so  applied."  —  Gimbel  v. 
Hogg,  97  Fed.  791 ;  38  C.  C.  A.  419. 

Such  knowledge  is  not  to  be  imputed  to  the  seller  from  the  "  notice  to 
the  public  "  by  the  marking  required  of  the  patentee  by  section  4900,  Rev. 
St.  It  may  be  reasonable  enough  to  hold  such  constructive  notice  sufficient 
as  against  the  manufacturer  who  applied  the  design;  for,  if  he  did  so  without 
license,  he  must  have  known  the  fact.  But  the  public  notice  by  marking, 
under  section  4900,  gives  no  information  whatever  to  a  seller  of  an  infringe- 
ment committed  by  the  manufacturer,  and  that  section  had  no  such  purpose. 
—  Gimbel  v.  Hogg,  97  Fed.  791 ;  38  C.  C.  A.  419. 

Pirkl  v.  Smith,  42  Fed.  410;  Dunlap  v.  Schofield,  152  U.  S.  244;  Smith  V. 
Stewart,  55  Fed.  481;    Stewart  v.  Smith,  58  Fed.  580. 

§  337-     Miscellaneous. 

A  machine  for  producing  a  design  may  be  patented,  and  a  claim  covering 
the  means  for  producing  such  design  is  not  a  design  claim  within  the  meaning 
of  the  statute.  —  Clark  v.  Bonsfield,  77  U.  S.  133;  19  L.  Ed.  862. 


302  THE    FIXED    LAW    OF    PATENTS  §  337 

It  would  seem  that  an  architectural  design,  such  as  an  improvement  in 
the  construction  of  jails,  is  not  patentable.  —  Jacobs  v.  Baker,  74  U.  S.  295; 
19  L.  Ed.  200. 

It  has  a  claim  for  an  entire  pattern,  and  then  a  separate  claim  for  each 
of  the  eighteen  component  parts  making  up  the  whole.  The  bill  alleges  in- 
fringement by  making  and  selling  of  the  "  invention,"  and  of  carpets  con- 
taining the  "  invention."  Even  if  the  defendants  can  raise  this  point  after 
a  decree  pro  confesso  (see  Thompson  v.  Wooster,  114  U.  S.  104)  the  patent 
must  be  held  valid  at  least  for  the  purposes  of  this  case.  —  Dobson  v.  Hart- 
ford, 114  U.  S.  439;  29  L.  Ed.  177;  5  S.  Ct.  945. 

Classification  of  designs.  —  Smith  v.  Whitman,  148  U.  S.  674;  37  L.  Ed. 
606;  13  S.  Ct.  768. 

That  marking  patented  is  necessary  to  recovery  of  damages  in  the  ab 
sence  of  a  specific  notice,  see  Dunlap  v.  Schofield,  152  U.  S.  244;  38  L.  Ed. 
426;   14  S.  Ct.  576. 

The  patent  contains  no  separate  claim  for  the  border,  as  in  Dobson  v. 
Carpet  Co.,  114  U.  S.  439,  and  the  defendant's  combination  of  his  central 
panel  with  the  complainant's  border,  cannot  be  held  to  be  an  infringement 
unless  complainant  first  produced  such  combination  and  exhibited  it  in 
his  patent  so  clearly  and  fully  that  one  skilled  in  the  art  would  understand 
that  it  was  that  specific  combination  which  the  patent  claimed.  As  none 
of  the  defendant's  mats  infringe  the  only  specific  design  exhibited  in  the 
patent  and  shown  in  the  drawing  the  decree  is  reversed.  —  New  York  v. 
New  Jersey,  53  Fed.  810;  4  C.  C.  A.  21. 

Form  and  shape  are  elements  of  a  design.  —  Gaskill  v.  Myers,  81  Fed.  854; 
26  C.  C.  A.  642. 

Hammond  v.  Agricultural  Works,  70  Fed.  716. 

Note:  This  is  both  true  and  untrue.  While  form  and  shape  are  of  the  es- 
sence of  a  design,  form  and  shape  are  never  in  and  of  themselves  the  essence 
of  a  design. 

Whether  a  form  which  gives  more  increased  beauty  can  be  the  subject 
of  a  valid  design  patent,  quaere.  —  Soehner  v.  Favorite,  84  Fed.  182 ;  28 
C.  C.  A.  317. 

A  design  which,  by  its  peculiar  construction,  would  convey  a  false  idea 
of  the  utility  of  the  article  would  be  a  species  of  deception  which  could  hardly 
be  said  to  be  an  improvement  in  a  useful  art,  which  the  patent  laws  are 
designed  to  encourage.  —  Soehner  v.  Favorite,  84  Fed.  182;  28  C.  C.  A.  317. 

We  should  think  it  very  doubtful  whether  the  word  "  useful,"  introduced 
by  revision  of  the  patent  laws  into  the  statute,  is  to  have  the  same  meaning 
that  it  has  in  the  section  providing  for  patents  for  useful  inventions.  The 
whole  purpose  of  Congress,  as  pointed  out  by  Mr.  Justice  Strong,  speaking  for 
the  Supreme  Court,  in  the  case  of  Gorham  Co.  v.  White,  14  Wall.  511,  was  to 
give  encouragement  to  the  decorative  arts.  —  Westinghouse  v.  Triumph,  97 
Fed.  99;  38  C.  C.  A.  65. 

The  designers  of  articles  of  manufacture  not  otherwise  entitled  to  receive 
design  patents  cannot  justify  the  issuance  of  such  patents  on  any  theory 
that  the  design  is  a  trademark.  —  Rowe  v.  Blodgett,  112  Fed.  61 ;  50  C.  C.  A. 
120. 


§  338 


DESTRUCTION    OF    INFRINGING    MACHINE 


303 


The  practice  of  the  Patent  Office  in  issuing  design  patents  seems  not  to 
have  been  uniform.  Prior  to  1871  it  was  "  not  only  liberal,  but  lax,"  until 
in  a  carefully  considered  opinion,  commissioner  Leggett  (Ex  parte  Parkin- 
son, 1871  Dec.  Com.  Pat.  251)  conformed  it  to  a  construction  of  the  law 
which  substantially  found  approval  in  the  cases  above  cited  (Northrup  v. 
Adams,  2  Ban.  &  A.  567;  Smith  v.  Saddle  Co.,  148  U.  S.  679;  Ex  Parte 
Parkinson,  supra).  In  another  case,  in  1873  (In  re  Seaman,  4  0.  G.  691), 
the  same  commissioner  indicated  the  test  to  be  applied  by  examiners  when 
an  article  of  manufacture  is  presented  with  the  request  for  a  design  patent: 

"  Is  its  form,  without  reference  to  the  function  of  the  article,  intended  to 
be  ornamental,  and  is  the  article  itself  a  thing  which  may,  for  any  practical 
purpose,  have  a  merely  ornamental  configuration,  and  therefore  have,  in 
that  sense,  sufficient  utility  to  warrant  the  grant  of  a  patent?  " 

It  would  seem  from  the  patent  in  suit  that  this  test  is  no  longer  applied, 
and  that  the  practice  of  the  office  has  again  become  "  not  only  liberal,  but 
lax."  —  Rowe  v.  Blodgett,  112  Fed.  61 ;  50  C.  C.  A.  120. 

The  drawing  is  about  seven  inches  long  and  two  inches  wide  and  shows 
alternate  sections  of  close  and  open  weaving  about  three-quarters  of  an  inch 
wide,  separated  by  longitudinal  strands,  those  on  the  outside  being  of 
greater  width  than  the  others.  The  outside  sections  have  the  open 
weave,  are  a  little  over  an  inch  in  width  and  are  subdivided  by  two 
longitudinal  strands  about  five-sixteenths  of  an  inch  apart.  The  central 
section  shows  three  bands  of  close  weaving  and  two  of  open  weaving.  No 
one  contends  that  the  design  as  shown  in  the  drawings  could  be  applied, 
without  change,  to  a  bed-spring  intended  for  actual  use.  A  design  patent 
for  which  such  an  elastic  construction  is  asserted  can  hardly  be  said  to  deal 
fairly  with  the  public.  The  public  is  entitled  to  know  what  it  may  and  may 
not  do  and  the  patent  in  hand  fails  to  give  this  information  as  explicitly 
as  it  should.  —  Tompkins  v.  New  York,  159  Fed.  133;  86  C.  C.  A.  323. 


DESTRUCTION   OF   INFRINGING   MACHINE. 
An  Obsolete  Rule  §  338 

§  338.    An  Obsolete  Rule. 

That  when  the  entire  machine  is  an  infringement  it  may  be  ordered  de- 
livered up  to  be  destroyed.  —  Birdsell  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed. 
768;  5S.  Ct.  244. 

To  the  contrary,  see  American  v.  Kitsell,  35  Fed.  521. 

Among  the  prayers  of  the  bill  was  one  that  the  infringing  machines  should 
be  delivered  up  to  be  destroyed.  This  was  an  unusual  prayer,  although,  of 
course,  not  an  unwarranted  one  if  the  circumstances  called  for  it.  It  was 
only,  however,  by  inadvertence  that  it  was  sanctioned  here ;  and  application 
having  been  made  to  reform  the  mandate  so  as  to  exclude  this  relief,  it  will 
be  recalled  and  corrected  accordingly.  —  American  v.  Mills,  162  Fed.  147. 

American  v.  Kitsell,  35  Fed.  521;  Birdsell  v.  Shaliol,  112  U.  S.  485. 


DISCLAIMER. 

Statutes  §  339 
Delay  §  340 
Effect  §  341 
Failure  to  File  §  342 
Pending  Suit  §  343 


I      Purpose  and  Effect  §  344 
Miscellaneous  Rules  §  345 
See  —  Abandonment  §  1;  Costs  §  274; 
Double  Patenting  §  357;    Reissue  § 


304  THE    FIXED    LAW    OF    PATENTS  §§  339-340 

§  339.     Statutes. 

When  judgment  or  decree  is  rendered  for  the  plaintiff  or  complainant, 
in  any  suit  at  law  or  in  equity,  for  the  infringement  of  a  part  of  a  patent, 
in  which  it  appears  that  the  patentee,  in  his  specification,  claimed  to  be  the 
original  and  first  inventor  or  discoverer  of  any  material  or  substantial  part 
of  the  thing  patented,  of  which  he  was  not  the  original  and  first  inventor, 
no  costs  shall  be  recovered  unless  the  proper  disclaimer,  as  provided  by  the 
patent  laws,  has  been  entered  in  the  Patent  Office  before  the  suit  was  brought. 
—  R.  S.  973. 

Whenever,  through  inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  a  patentee  has  claimed  more  than  that  of 
which  he  was  the  original  or  first  inventor  or  discoverer,  his  patent  shall 
be  valid  for  all  that  part  which  is  truly  and  justly  his  own,  provided  the  same 
is  a  material  or  substantial  part  of  the  thing  patented;  and  any  such  pat- 
entee, his  heirs  or  assigns,  whether  of  the  whole  or  any  sectional  interest 
therein,  may,  on  payment  of  the  fee  required  by  law,  make  disclaimer  of 
such  parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or  to  hold 
by  virtue  of  the  patent  or  assignment,  stating  therein  the  extent  of  his  in- 
terest in  such  patent.  Such  disclaimer  shall  be  in  writing,  attested  by  one 
or  more  witnesses,  and  recorded  in  the  Patent  Office ;  and  it  shall  thereafter 
be  considered  as  part  of  the  original  specification  to  the  extent  of  the  interest 
possessed  by  the  claimant  and  by  those  claiming  under  him  after  the  record 
thereof.  But  no  such  disclaimer  shall  affect  any  action  pending  at  the  time 
of  its  being  filed,  except  so  far  as  may  relate  to  the  question  of  unreasonable 
neglect  or  delay  in  filing  it.  —  R.  S.  4917. 

Section  4922  is,  substantially,  a  combination  and  repetition  of  sections  973 
and  4917. 

The  effect  of  failure  to  disclaim  as  a  bar  to  costs  is  considered  also  under  the 
title  Costs. 


§  340.     Delay. 

Considering  that  the  question  of  the  validity  of  the  new  claim  in  the 
reissue  is  a  question  of  law  upon  the  face  of  the  patent,  and  that  its  validity 
has  been  sanctioned  by  the  Commissioner  of  Patents  in  granting  the  reissue, 
and  upheld  by  the  circuit  court,  there  has  been  no  unseasonable  delay  in 
entering  a  disclaimer;  for  the  plaintiffs  were  not  bound  to  disclaim  until 
after  a  judgement  of  this  court  upon  the  question.  —  Gage  v.  Herring,  107 
U.  S.  640;  27  L.  Ed.  601 ;  2  S.  Ct.  819. 

O'Reilly  v.  Morse,  15  How.  62,  120;   Seymour  v.  McCormick,  19  How.  96. 

Upon  seasonably  recording  in  the  Patent  Office  a  disclaimer,  the  patentee 
may  maintain  a  suit  upon  the  part  which  he  is  entitled  to  hold,  although  in 
a  suit  brought  before  the  disclaimer  he  cannot  recover  costs.  —  Gage  v. 
Herring,  107  U.  S.  640;  27  L.  Ed.  601;  2  S.  Ct.  819. 

R.  S.  4917,  4922;  O'Reilly  v.  Morse,  15  How.  62,  120;  Vance  v.  Campbell, 
1  Black,  427. 

The  complainant  failed  to  file  a  disclaimer  until  after  the  case  had  been 
once  before  the  circuit  court  of  appeals,  and  it  was  contended  that  this 
disclaimer  came  too  late  to  save  complainant's  rights.  Held:  But  the 
circuit  court  in  that  case,  with  such  evidence  before  it,  did  not  consider 
disclaimer  necessary.      It  was  only  when  the  decision  of  this  court  was 


§  341  DISCLAIMER  305 

filed,  that  the  owners  of  the  patent  were  appraised  of  the  necessity  of  dis- 
claimer and  they  filed  it  within  two  months  thereafter.  They  certainly 
acted  with  reasonable  promptness.  —  Thompson  v.  Bushnell,  96  Fed.  238; 
37  C.  C.  A.  456. 


§  341.     Effect  of. 

Matters  properly  disclaimed  cease  to  be  a  part  of  the  invention;  and 
it  follows  that  the  construction  of  the  patent  must  be  the  same  as  it  would  be 
if  such  matters  had  never  been  included  in  the  description  of  the  invention 
or  the  claim  of  the  specification.  —  Dunbar  v.  Meyers,  94  U.  S.  187 ;  24  L.  Ed. 
34. 

16  Stat,  at  L.  206;  Seed  v.  Higgins,  8  El.  &  Bl.  767;  O'Reilly  v.  Morse,  15  How. 
121;   Taylor  v.  Archer,  8  Blatchf.  317. 

We  are  aware  of  no  principle  which  will  permit  a  patent  to  be  defeated  for 
want  of  novelty  in  respect  to  the  subject-matter  which  has  been  eliminated 
from  it  by  disclaimer.  —  Schwarzwalder  v.  N.  Y.,  66  Fed.  152;  13  C.  C.  A. 
380. 

The  office  of  a  disclaimer  is  to  enable  the  patentee  to  save  himself 
from  the  peril  of  the  defense  of  want  of  novelty.  Matters  which  have  been 
properly  disclaimed  cease  to  be  a  part  of  the  invention.  —  Schwarzwalder 
v.  N.  Y.,  66  Fed.  152;  13  C.  C.  A.  380. 

Dunbar  v.  Meyers,  94  U.  S.  194. 

The  literal  effect  of  a  disclaimer  is  to  confine  the  claim  to  a  method  in 
which  no  other  elements  are  employed  except  such  as  those  mentioned.  It  is 
to  be  observed,  however,  that  the  part  disclaimed  is  not  part  of  the  descrip- 
tive matter,  but  a  recital  intended  to  enlarge  the  scope  of  the  claim.  The 
disclaimer  consequently  operates  only  to  expunge  from  the  claim  what  other- 
wise would,  by  force  of  the  recital,  be  incorporated  into  it  constructively. 
Obviously  it  was  intended  to  obliterate  the  recital  from  the  patent,  and  to 
have  no  other  effect.  The  patent,  after  the  disclaimer,  is  to  be  read  exactly 
as  though  the  recital  had  never  been  inserted.  —  Schwarzwalder  v.  N.  Y.,  66 
Fed.  152;  13  C.  C.  A.  380. 

While  a  disclaimer  in  the  text  of  the  specification,  admitting  known  meth- 
ods of  performing  a  given  function,  precludes  a  broad  claim  for  means  for 
performing  that  function,  it  does  not  preclude  a  claim  for  specific  and  novel 
means  for  performing  the  same.  —  Hillborn  v.  Hale,  69  Fed.  958 ;  16  C.  C.  A. 
569. 

The  filing  of  a  disclaimer  does  not  change  the  invention  claimed  in  the 
patent,  but  distinguishes  what  is  new  from  what  is  old.  —  Albany  v.  Worth- 
ington,  79  Fed.  966;  25  C.  C.  A.  258. 

Chem.  Wks.  v.  Lauer,  Fed.  Cas.  12,135. 

That  a  disclaimer  may  operate  to  defeat  a  patent  previously  adjudicated 
and  held  valid,  see  Brunswick  v.  Klumpp,  131  Fed.  255;  65  C.  C.  A.  447. 

That  a  disclaimer  may  operate  to  raise  a  presumption  that  the  invention 
was  not  novel,  or  that  the  alleged  infringement  was  not  within  the  scope 
of  the  patent  after  disclaimer,  see  Societe  v.  Lueders,  142  Fed.  753 ;  74  C.  C.  A. 
15. 


306  THE    FIXED    LAW    OF    PATENTS  §§  342-343 

§  342.     Failure  to  File. 

No  disclaimer  has  yet  been  entered,  but  the  delay  is  not  unreasonable. 
The  objectionable  claim  was  sanctioned  by  the  office,  held  valid  by  a  circuit 
court,  and  differed  upon  here.  Under  such  circumstances  the  patentee  has 
a  right  to  insist  upon  it,  and  not  disclaim  until  the  highest  court  to  which  it 
could  be  carried  had  pronounced  its  judgement.  The  omission  to  disclaim 
does  not  render  the  patent  altogether  void;  and  he  is  entitled  to  proceed  in 
this  suit  for  an  infringement  of  that  part  of  his  invention  which  is  legally 
claimed  and  described,  but  he  cannot  recover  costs.  —  O'Reilly  v.  Morse, 
15  How.  62;   14  L.  Ed.  601. 

The  complainant  having  failed  to  file  a  disclaimer  of  the  invalid  claim  of  his 
reissue,  each  party  will  bear  his  own  costs  in  this  court  and  one-half  the  ex- 
pense of  printing  the  record.  —  Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed. 
954;  6  S.  Ct.  934. 

Silsby  v.  Foote,  20  How.  378. 

On  the  assumption  that  it  was  incumbent  on  him  to  disclaim,  if  his  omis- 
sion to  do  so  was  the  result  of  unreasonable  neglect  or  delay,  the  complain- 
ants were  not  entitled  to  recover  anything,  while,  if  there  was  no  such  neglect 
or  delay,  they  were  entitled  to  recover  damages  but  no  costs.  No  disclaimer 
was  necessary  to  the  recovery  either  of  damages  or  of  costs  unless  Williames 
in  those  3  claims  or  one  or  more  of  them,  included  something  to  which  he 
was  not  entitled.  —  McNeely  v.  Williames,  96  Fed.  978;  37  C.  C.  A.  641. 

The  effect  of  these  provisions  (R.  S.  sees.  973;  4922)  is  to  save  the  claims 
which  are  valid  if  they  are  definitely  distinguishable  from  those  parts  of  the 
patent  claimed  without  right,  whether  there  has  been  disclaimer  or  not. 
But  if  there  has  been  no  disclaimer  entered  in  the  Patent  Office  before  suit 
brought,  it  is  specifically  provided  that  the  patentee  shall  not  recover  costs. 
—  Johnson  v.  Foos,  141  Fed.  73;  72  C.  C.  A.  105. 

O'Reilly  v.  Morse,  15  How.  120;  Seymour  v.  McCormick,  19  How.  97;  Gage 
v.  Herring,  107  U.  S.  640;  Metallic  v.  Brown,  110  Fed.  665;  Fairbank  v.  Stickney, 
123  Fed.  79;   Kahn  v.  Starrels,  136  Fed.  597;   Ide  v.  Trorlicht,  115  Fed.  137. 


§  343.     Pending  Suit. 

Under  the  act  of  1837,  disclaimers  could  be  made  as  well  after  as  before 
the  commencement  of  suit.  It  would,  in  such  case,  be  the  duty  of  the  court 
to  see  that  the  defendant  was  not  injuriously  surprised  and  to  impose  such 
terms  as  right  and  justice  might  require.  The  question  of  unreasonable 
delay  would  be  open  for  the  consideration  of  the  court,  and  the  complainant 
could  recover  no  costs.  We  see  no  reason  for  turning  a  party  out  of  court 
to  renew  the  litigation  after  fifing  the  disclaimer,  thus  subjecting  both  parties 
to  the  delay  and  expense  which  must  necessarily  follow,  and  without  any 
benefit  to  either.  —  Smith  v.  Nichols,  88  U.  S.  112;  22  L.  Ed.  566. 

Tuck  v.  Bramhill,  6  Blatchf.  104;  Silsby  v.  Foote,  14  How.  220;  Aikin  v. 
Dolan,  3  Fish,  197;  Taylor  v.  Archer,  8  Blatchf.  315;  Myers  v.  Frame,  8  Blatchf. 
446;    Guyon  v.  Serrill,  1  Blatchf.  244;    Hall  v.  Wiles,  2  Blatchf.  194. 

Pending  suits  may  proceed,  but  the  disclaimer,  when  recorded,  becomes 
a  part  of  the  original  specification  and  must  be  taken  into  account  in  con- 
struing the  patent,  and  in  ascertaining  the  rights  of  the  parties  to  the  suit, 
unless  it  appears  that  the  effect  of  the  disclaimer  is  to  enlarge  the  nature  of 
the  invention,  and  prejudice  the  rights  of  the  respondents.  —  Dunbar  v. 
Meyers,  94  U.  S.  187;  24  L.  Ed.  34. 


§  344  DISCLAIMER  307 

Perry  v.  Skinner,  1  Web.  P.  C.  253;  Ralston  v.  Smith,  9  C.  B.  (N.  S.)  117; 
Smith  v.  Nichols,  21  Wall.  117;  Guyon  v.  Serill,  1  Blatchf.  245;  Hall  v.  Wiles, 
2  Blatchf.  198. 

Had  the  purpose  of  the  disclaimer  been  to  reform  or  alter  the  description 
of  the  invention,  or  convert  the  claim  from  one  thing  into  something  else, 
it  might  have  been  objectionable,  as  patents  can  only  be  amended  for  mis- 
takes of  this  kind  by  a  reissue.  But  the  disclaimer  in  this  case  appears  to 
have  been  made  to  obviate  an  ambiguity  in  the  specification,  and  with  no 
idea  of  obtaining  the  benefit  of  a  reissue.  If  the  clauses  had  the  effect  of 
broadening  the  patent  the  disclaimer  removes  the  objection.  If  they  did  not, 
the  disclaimer  could  do  no  harm,  and  cannot  be  made  the  subject  of  criti- 
cism. —  Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 


§  344.     Purpose  and  Effect  of. 

The  law  which  requires  and  permits  disclaimer  is  not  penal  but  remedial. 
It  is  intended  for  the  protection  of  the  patentee  as  well  as  the  public,  and 
ought  not  to  receive  a  construction  that  would  restrict  its  operation  within 
narrower  limits  than  its  words  fairly  import.  —  O'Reilly  v.  Morse,  15  How. 
62;  14  L.  Ed.  601. 

Whether  the  patent  is  illegal  in  part  because  he  claims  more  than  he  has 
sufficiently  described,  or  more  than  he  invented,  he  must  in  either  case 
disclaim,  in  order  to  save  the  portion  to  which  he  is  entitled;  and  he  is  al- 
lowed to  do  so  when  the  error  was  committed  by  mistake.  —  O'Reilly  v. 
Morse,  15  How.  62;  14  L.  Ed.  601. 

The  reasonable  presumption  is  that  the  disclaimer  was  inserted  in  the 
patent  subsequently  granted,  because  it  had  been  previously  invented  by 
another.  —  Ashcroft  v.  Boston,  97  U.  S.  189;  24  L.  Ed.  982. 

It  is  a  patentee  who  "  has  claimed  more  than  that  of  which  he  was  the 
original  or  first  inventor  or  discoverer,"  and  only  "  such  patentee  "  or  his 
assigns  who  can  make  a  disclaimer;  and  the  disclaimer  can  be  a  disclaimer 
only  "  of  such  parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or 
hold  by  virtue  of  the  patent  or  assignment."  A  disclaimer  can  be  made 
only  when  something  has  been  claimed  of  which  the  patentee  was  not  the 
original  or  first  inventor  and  when  it  is  intended  to  limit  a  claim  in  respect 
to  the  thing  so  not  originally  or  first  invented.  It  is  true  that  in  so  disclaim- 
ing or  limiting  a  claim  descriptive  matter  on  which  the  disclaimed  claim 
is  based,  may,  as  incidental,  be  erased  in  aid  of  or  as  auxiliary  to  the  dis- 
claimer. But  the  statute  expressly  limits  a  disclaimer  to  a  rejection  of  some- 
thing before  claimed  as  new  or  as  invented,  when  it  was  not  new  or  invented 
and  which  the  patentee  or  his  assignee  no  longer  chooses  to  claim  or  hold. 
It  is  true  that  this  same  end  may  be  reached  by  a  reissue,  when  the  patentee 
has  claimed  as  his  own  invention  more  than  he  had  a  right  to  claim  as  new, 
but,  if  a  claim  is  not  to  be  rejected  or  limited,  but  there  is  merely  "  a  defective 
or  insufficient  specification,"  that  is,  description,  as  distinguished  from  a 
claim,  the  only  mode  of  correcting  it  was  and  is  by  a  reissue.  —  Union  v. 
U.  S.  112  U.  S.  624;  28  L.  Ed.  828;  5  S.  Ct.  475. 

A  disclaimer  is  usually  and  properly  employed  for  the  surrender  of  a 
separate  claim  in  a  patent,  or  some  other  distinct  and  separate  matter, 
which  can  be  exscinded  without  mutilating  or  changing  what  is  left 
standing.  Perhaps  it  may  be  used  to  limit  a  claim  to  a  particular 
class  of  objects,  or  even  to  change  the  form  of  a  claim   which   is   too 


308  THE    FIXED    LAW    OF    PATENTS  §344 

broad  in  its  terms;  but  certainly  it  cannot  be  used  to  change  the 
character  of  the  invention.  And  if  it  requires  an  amended  speci- 
fication or  supplemental  description  to  make  an  altered  claim  intelligible 
or  relevant  whilst  it  may  possibly  present  a  case  for  a  surrender  and  reissue, 
it  is  clearly  not  adapted  to  a  disclaimer.  A  man  cannot  by  merely  filing 
a  paper  drawn  by  his  solicitor,  make  to  himself  a  new  patent  or  one  for  a 
different  invention  from  that  which  he  has  described  in  his  specification. 
—  Hailes  v.  Albany,  123  U.  S.  582;  31  L.  Ed.  284;  8  S.  Ct.  262. 

The  object  of  4917  is  to  enable  the  patentee  to  disclaim  what  he  has  not 
invented;  and  4922  is  to  legalize  and  uphold  suits  brought  on  patents  men- 
tioned in  4917.  —  Hailes  v.  Albany,  123  U.  S.  582;  31  L.  Ed.  284;  8  S.  Ct.  262. 

A  disclaimer  cannot  be  employed  to  amend  or  revise  the  grant.  Such 
change  should  be  made  by  other  proceedings.  —  Collins  v.  Coes,  130  U.  S.  56; 
32  L.  Ed.  858;  9  S.  Ct.  514. 

We  think  this  section  (4917)  broad  enough  to  cover  disclaimers  made  to 
avoid  the  effect  of  having  included  in  the  patent  more  devices  than  could 
properly  be  made  the  subject  of  a  single  patent.  The  power  to  disclaim  is  a 
beneficial  one,  and  ought  not  to  be  denied  except  where  it  is  resorted  to  for 
a  fraudulent  and  deceptive  purpose.  —  Sessions  v.  Romadka,  145  U.  S.  29; 
36  L.  Ed.  609;  12  S.  Ct.  799. 

Tuck  v.  Bramhill,  6  Blatchf.  95;  Hailes  v.  Albany,  123  U.  S.  582;  Reed  v. 
Cutter,  1  Story,  590;  Wyeth  v.  Stone,  1  Story,  273;  Gunson  v.  Sewell,  1  Blatchf.  244; 
Hall  v.  Wiles,  2  Blatchf.  194;  Smith  v.  Nichols,  88  U.  S.  112;  Dunbar  v.  Meyers, 
94  U.  S.  187. 

Does  not  give  any  increased  validity  to  a  patent.  —  Grant  v.  Walter,  148 
U.  S.  547;  37  L.  Ed.  552;  13  S.  Ct.  699. 

In  the  case  under  consideration  the  disclaimer  was  not  of  a  claim  but  of 
certain  statements  of  the  specification,  which  if  retained  might  be  construed 
to  have  the  effect  of  illegally  broadening  the  second  claim.  We  think  there 
is  no  force  in  the  criticism  that  a  disclaimer  may  not  extend  to  a  part  of  the 
specification  as  well  as  to  a  distinct  claim.  —  Carnegie  v.  Cambria,  185  U.  S. 
403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

Hurlbut  v.  Schillinger,  130  U.  S.  456;  Schillinger  v.  Gunther,  17  Blatchf.  66; 
Schwarzwalder  v.  N.  Y.  66  Fed.  152. 

Faure  has  filed  a  bill  in  equity  for  the  repeal  of  the  Brush  patent,  upon 
the  ground  that  he  (Faure)  was  the  prior  inventor  of  the  broad  invention 
described  in  his  patent.  The  court  found  that  he  was  not  the  inventor  of 
the  subject  of  certain  claims,  and  that  upon  filing  his  disclaimer,  thus  limiting 
the  first  claim  of  his  patent,  the  accumulator  company  was  entitled  to  a 
decree.  The  complainant  in  that  case,  being  the  defendant  here,  filed  such 
a  disclaimer.  After  the  disclaimer,  this  bill  was  dismissed  upon  Faure's 
motion.  Inasmuch  as  the  defendant,  being  the  owner  of  the  Faure  patent, 
has,  as  the  result  of  a  direct  issue  on  the  subject  of  priority,  disclaimed  the 
right  of  Faure,  in  this  country  to  the  invention,  except  as  limited,  a  renewal 
of  a  discussion  of  the  question  of  priority  is  useless.  —  Electric  v.  Brush,  52 
Fed.  130;  2  C.  C.  A.  682. 

But,  in  differentiating  his  process  from  both  of  these,  the  patentee  had 
defined  it  so  clearly,  so  specifically,  so  exactly,  that  there  can  be  no  room  for 
doubt  as  to  what  the  process  was  which  he  actually  did  give  to  the  world 
in  exchange  for  the  monopoly  to  practise  it,  whatever  doubt  there  may  be 


§  345  DISCLAIMER  309 

as  to  what  he  meant  to  give  or  the  patent  office  meant  to  take.  —  Jackson  v. 
Birmingham,  79  Fed.  801;  25  C.  C.  A.  196. 

That  where  the  limitations  or  requirements  of  a  disclaimer  point  to  an 
invention  which  would  require  an  amended  specification,  or  a  supplemental 
description,  a  disclaimer  is  not  the  proper  method  of  correcting  a  patent,  see 
National  v.  Stecher,  81  Fed.  395;  26  C.  C.  A.  448. 

Hailes  v.  Stove  Co.  123  U.  S.  582. 

In  considering  the  scope  and  effect  to  be  given  a  disclaimer  the  same  rules 
are  to  be  observed  as  in  construing  any  other  written  instrument,  and  so  as 
to  carry  out  the  intention  of  the  person  executing  it,  as  indicated  by  its  lan- 
guage when  construed  with  reference  to  the  proceedings  of  which  it  forms 
a  part.  It  cannot  be  read  independently  of  its  relation  to  the  original  speci- 
fications, of  which  it  becomes  a  part  when  recorded.  —  Graham  v.  Earl,  92 
Fed.  155;  34  C.  C.  A.  267. 

In  view  of  the  fact  that  the  four  varieties  of  this  class  of  saws  were  well- 
known  in  the  art,  and  their  differences  clearly  recognized,  as  the  evidence 
shows,  no  amended  specification  or  supplemental  description  is  required  to 
make  the  new  claim  intelligible  and  a  disclaimer  of  the  circular  and  back 
saws,  leaves  the  patent  in  force  as  to  the  other  varieties  of  the  class.  — Thomp- 
son v.  Bushnell,  96  Fed.  238;  37  C.  C.  A.  456. 

They  do  not  disclaim  anything.  Their  avowed  purpose  is  "to  limit  the 
scope  of  the  letters  patent  to  the  mixing  of  molten  metal  preparatory  to 
further  treatment."  This  we  find  to  be  the  limit  of  the  patent  as  originally 
granted.  The  disclaimers,  therefore,  do  not  comply  with  the  statutory  re- 
quirements, that  the  patentee  shall  give  up  some  material  and  sub- 
stantial part  of  the  thing  patented  of  which  he  was  not  the  original  inventor. 
—  Cambria  v.  Carnegie,  96  Fed.  850;  37  C.  C.  A.  593. 

If  the  patent,  when  construed  upon  what  stands  "  within  its  four  corners," 
claims  more  than  the  actual  invention,  the  patentee  must  disclaim  the  excess 
in  order  to  save  that  to  which  he  is  really  entitled.  —  Lamb  v.  Lamb,  120 
Fed.  267;  56  C.  C.  A.  247. 


§  345.     Miscellaneous  Rules. 

After  a  case  has  been  heard  and  decided  upon  its  merits,  the  plaintiff 
could  not  file  disclaimer  in  court  or  introduce  new  evidence  upon  that  or 
any  other  subject  except  at  a  rehearing  granted  by  the  court  upon  terms.  — 
Roemer  v.  Neumann,  132  U.  S.  103;  33  L.  Ed.  277;  10  S.  Ct.  12. 

After  the  decision  of  the  circuit  court  had  been  announced,  a  new  solicitor 
for  the  complainant  was  substituted,  who  thought  that  his  client  was  en- 
titled to  the  benefit  of  a  disclaimer,  and  applied  to  the  circuit  court  for  a 
re-hearing  after  it  should  have  been  filed.  This  motion  was  denied.  The 
proposed  disclaimer,  which  has  not  been  filed,  is  contained  in  the  record.  It 
is  not  properly  in  the  case,  for,  as  the  allowance  of  the  motion  for  a  re-hearing 
on  condition  that  the  disclaimer  should  be  filed  was  a  matter  of  discretion,  its 
rejection  is  not  a  subject  of  appeal.  —  National  v.  Stecher,  81  Fed.  395;  26 
C.  C.  A.  448. 

Roemer  v.  Bernheim,  132  U.  S.  103. 


310  THE    FIXED    LAW    OF    PATENTS  §§346-347 

DISCOVERY. 

Statutory  Origin  §  346  General    Statement    and    Definition 

I       §  347 

§  346.     Statutory  Origin. 

The  constitutional  provision  (Art.  I,  Sec.  8)  employs  the  term  "  discov- 
eries," and  that  term  has  always  been  employed  in  Sec.  4886,  thus: 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture  or  composition  of  matter,  or  any  new  and  useful 
improvement  thereof  *  *  *  may  *  *  *  obtain  a  patent  therefor. 

The  term  is  also  used  elsewhere  in  the  statutes,  but  these  are  the  significant 
instances. 

§  347.     General  Statement  and  Definition. 

From  a  practical  point  of  view,  it  has  little  significance.  No  line  of  dis- 
tinction has  ever  been  drawn  between  invention  and  discovery.  It  is  be- 
lieved that  a  nice  psychological  distinction  exists  between  the  act  of  dis- 
covery and  the  act  of  invention;  but  since  it  is  not  the  mental  act,  but  the 
disclosure  of  that  act  in  material  form,  which  constitutes  a  patentable  dis- 
covery or  invention,  such  a  refinement  becomes  wholly  immaterial.  Some- 
times an  effort  has  been  made  to  make  "  discovery  "  synonymous  with 
"  pioneer  "  or  "  generic  "  invention,  as  in  the  quotations  below;  but  that 
distinction  does  not  hold  in  all  cases.  Many  very  simple  and  unimportant 
improvements  have  been  stumbled  upon,  and  in  that  way  "  discovered," 
without  the  ordinary  laborious  task  of  "  puzzling  out  "  or  "  working  out  " 
an  invention ;  but  such  discovery  of  an  invention  does  not  necessarily  make 
it  a  "  pioneer  "  or  "  generic." 

The  subject  of  discovery  as  constituting  patentable  invention  is  fully 
considered  under  the  title  Invention. 

Such  inventions  partake  of  the  nature  of  discoveries,  either  found  out  by 
experiment  or  the  result  of  a  happy  thought,  which,  when  once  expressed, 
is  plain  to  all  intelligent  persons,  who  could  point  out  at  once  many  devices 
for  making  it  effectual.  Anyone  can  perceive  the  difference  of  such  a  case 
from  the  invention  of  a  labor  saving  machine,  which  is  a  mere  combination 
of  certain  mechanical  devices  to  produce  a  desired  manufacture  in  a  cheaper 
or  better  manner.  —  Burr  v.  Duryee,  68  U.  S.  531 ;  17  L.  Ed.  750. 

McClurg  v.  Kingsland,  7  How.  202. 

In  doing  this  (applying  the  undulatory  theory  of  sound  to  practice)  both 
discovery  and  invention,  in  the  popular  sense  of  those  terms,  were  involved ; 
discovery  in  finding  the  art,  and  invention  in  devising  means  for  making  it 
useful.  For  such  discoveries  and  such  inventions  the  law  has  given  the  dis- 
coverer and  the  inventor  the  right  to  a  patent  as  discoverer  for  the  useful 
art,  process,  method  of  doing  a  thing  he  had  found ;  and  as  inventor  for  the 
means  he  had  devised  to  make  his  discovery  one  of  actual  value.  Other 
inventors  may  compete  with  him  for  ways  of  giving  effect  to  the  discovery, 
but  the  new  art  he  has  found  will  belong  to  him  and  those  claiming  under 
him  during  the  life  of  his  patent.  If  another  discovers  a  different  art  or 
method  of  doing  the  same  thing,  reduces  it  to  practical  use,  and  gets  a  patent 
for  his  discovery,  the  new  discovery  will  be  the  property  of  the  new  discov- 
erer, and  thereafter  the  two  will  be  permitted  to  operate  each  in  his  own 
way  without  interference  by  the  other.  The  only  question  between  them 
will  be  whether  the  second  discovery  is  in  fact  different  from  the  first.  — 
Telephone  Cases,  126  U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778. 


§348 


DIVISIONAL   PATENTING 


311 


DIVISIONAL  PATENTING. 

(See  §  52) 

Statute  and  General  Rule  §  348 

Co-Pending  Applications  §  349 

Dates  of  Issue  §  350 

Distinguished  from  Double  Patenting 

§351 

Extending  Monopoly  §  352 


Generic  and  Specific  Inventions  §  353 
Identity  §  354 
Second  Patent  Void  §  355 
See  —  Abandonment  §  9;    Anticipa- 
tion §  70;   Reissue  §  869 


§  348.     Statute  and  General  Rule. 

The  only  statutory  authority  for  divisional  patenting  is  that  relating  to 
reissues. 

*  *  *  The  Commissioner  may,  in  his  discretion,  cause  several  patents  to  be 
issued  for  distinct  and  separate  parts  of  the  thing  patented,  upon  demand 
of  the  applicant,  and  upon  payment  of  the  required  fee  for  a  reissue  of  each 
of  such  reissued  letters  patent.  *  *  *  —  R.  S.  4916. 

Of  course  it  is  well  settled  that  double  patenting  is  not  permissible ;  and 
since  the  decision  of  U.  S.  ex  rel.  Steinmetz  v.  Allen,  192  U.  S.  543,  (infra)  it 
is  clear  that  arbitrary  requirement,  such  as  separate  patenting  of  machine 
and  product,  and  machine  and  process,  is  in  violation  of  the  statute.  Further 
than  that,  no  general  rule  exists.  In  the  nature  of  things,  no  general  rule 
can  be  framed  to  meet  all  cases.  The  "  genus  and  species  "  rule  which  has 
been  a  more  or  less  popular  doctrine  in  the  Patent  Office  in  recent  years 
is  one  of  those  theories  possessing  much  abstract  beauty,  but  little  practi- 
cal utility.  It  is  believed  that,  on  the  one  hand,  some  discretion  must  be 
left  to  the  Patent  Office  (Bennett  v.  Fowler,  infra),  and  that,  on  the  other, 
some  latitude  must  be  left  to  the  applicant  (Thomson-Houston  v.  Elmira, 
infra).  A  striking  example  of  clerical  technicality  is  shown  in  the  case  of 
Benjamin  v.  Dale,  quoted  below;  but  errors  of  this  kind  are  far  more  rare 
than  the  errors  of  applicants  in  splitting  up  inventions  and  in  double  patent- 
ing, as  will  be  seen  from  the  cases  under  Double  Patenting. 

Two  valid  patents  for  the  same  invention  cannot  be  granted  either  to  the 
same  or  to  a  different  party.  —  Miller  v.  Eagle,  151  U.  S.  186;  38  L.  Ed.  121 ; 
14  S.  Ct.  310. 

Suffolk  v.  Hayden,  70  U.  S.  315;  James  v.  Campbell,  104  U.  S.  382;  Mosler  v. 
Mosler,  127  U.  S.  355;  Underwood  v.  Gerber,  149  U.  S.  224;  Odiorne  v.  Gerber,  2 
Mason,  28. 

It  may  be  that  if  the  improvements  set  forth  in  both  specifications  had 
been  incorporated  in  one  patent,  the  patentee  taking  care  to  protect  himself 
as  to  all  his  improvements  by  proper  and  several  claims,  it  would  have  been 
sufficient.  It  is  difficult,  perhaps  impossible,  to  lay  down  any  general  rule 
by  which  to  determine  when  a  given  invention  or  improvement  shall  be 
embraced  in  one,  two  or  more  patents.  Some  discretion  must  necessarily 
be  left  to  the  head  of  the  Patent  Office.  It  is  often  a  nice  and  perplexing 
question.  —  Bennett  v.  Fowler,  75  U.  S.  445;  19  L.  Ed.  431. 

Where  the  inventions  were  one  and  the  same,  the  patent  office  was  in 
error  in  dividing  the  invention,  and  as  it  adjudged  that  plaintiff  was  the  prior 
inventor,  he  was  the  one  entitled  to  the  patent.  —  DuBois  v.  Kirk,  158  U.  S. 
58;  39  L.  Ed.  895;  15  S.  Ct.  729. 

Statement:  The  application  was  for  process  and  apparatus;  division  was 
required  under  rule  41  of  the  office;  applicant  appealed  to  examiner-in- 
chief;    the  primary  examiner  refused  to  answer,  and  transmit  the  record; 


312  THE    FIXED    LAW    OF    PATENTS  §  349 

applicant  petitioned  the  Commissioner  and  petition  was  denied.  Mandamus 
was  then  brought  to  compel  the  Commissioner  to  require  the  primary  ex- 
aminer to  forward  an  appeal;  this  was  dismissed  by  Supreme  Court  D.  C. 
on  writ  of  error. 

Held:  It  was  the  duty  of  the  primary  examiner  to  accord  a  hearing,  or, 
refusing  to  do  so,  to  grant  an  appeal.  It  was  the  duty  of  the  Commissioner 
to  compel  an  appeal.  Held  also:  That  rule  41  as  amended  Feb.  1,  1900, 
providing, 

"  Claims  for  a  machine  and  its  product  must  be  presented  in  separate 
applications. 

"  Claims  for  a  machine  and  the  process  in  the  performance  of  which  the 
machine  is  used  must  be  presented  in  separate  applications,"  was  bad  and 
in  violation  of  4886  R.  S.  —  Steinmetz  v.  Allen,  192  U.  S.  543;  48  L.  Ed.  555; 
24  S.  Ct.  416. 

While  two  or  more  inventions  residing  in  the  same  combination  or  struc- 
ture may  be  covered  by  a  corresponding  number  of  claims  in  a  single  patent, 
the  law  does  not  require  them  all  to  be  claimed  in  the  same  patent,  and  the 
invention  may,  at  the  option  of  the  patentee,  be  secured  by  different  patents. 
It  is  quite  immaterial  that  both  inventions  originate  at  the  same  time  and 
form  a  single  conception.  —  Thomson-Houston  v.  Elmira,  71  Fed.  396;  18 
C.  C.  A.  145. 

Cochrane  v.  Deener,  94  U.  S.  780;  Miller  v.  Mfg.  Co.,  151  U.  S.  198. 

This  case  is  a  striking  example  of  the  unfortunate  result  of  too  close  ad- 
herence to  rule.  Benjamin  came  to  the  Patent  Office  with  a  meritorious 
invention  —  a  simple  one  which  was  quite  sufficiently  described  in  a  brief 
specification.  The  specification  and  the  drawings  showed  his  cluster- 
unit,  by  itself  and  also  made  practically  a  commercial  article  by  the  use  of  a 
cover  and  switch;  varieties  of  cover  with  and  without  bushing  being  shown. 
He  asked  for  seven  claims.  The  logical  way  would  have  been  to  include 
the  genus  and  its  varieties  in  the  same  patent  and  a  half  dozen  claims  would 
have  covered  every  possible  combination  which  he  was  entitled  to  hold.  — 
Benjamin  v.  Dale,  158  Fed.  617;  85  C  C.  A.  439. 

By  the  time  the  Patent  Office  got  through  with  him,  Benjamin  was  the 
holder  of  four  separate  patents  granted  upon  divisional  applications  split 
off  from  his  original  one;  the  four  patents  together  containing  98  claims. 
It  does  not  seem  just  that  the  patentee,  who  was  powerless  to  obtain  any 
modification  of  the  rule  for  dividing  applications,  should  be  made  to  suffer 
from  such  misdirected  energy.  There  seems  sufficient  authority  to  warrant 
a  construction,  which  will  hold  that  these  two  patents,  based  on  a  single 
original  application  and  issued  on  the  same  day  are  to  be  treated  as  a  single 
one.  —  Benjamin  v.  Dale,  158  Fed.  617;  85  C.  C.  A.  439. 

Note:  Every  lawyer  who  has  prosecuted  patent  applications  in  certain 
divisions  of  the  Patent  Office  will  welcome  this  holding.  While  the  great 
majority  of  the  examiners  exercise  their  departmental  functions  in  a  con- 
servative and  considerate  manner,  there  are  some  who  suffer  from  the  "  mis- 
directed energy,"  as  the  court  says,  and  particularly  along  those  lines  where 
the  applicant  is  the  least  able  to  counteract  such  activity  by  appeal  or  other- 
wise. 


§  349.    Co-Pending  Applications. 

It  js  true  that  under  well  settled  rules,  inasmuch  as  the  two  patents  were 
pending  in  the  patent  office  at  the  same  time,  and  both  of  them  were  granted, 
there  is  a  prima  facie  presumption  that  each  was  properly  granted.    Never- 


§349  DIVISIONAL    PATENTING  313 

theless,  it  is  clear  to  us  that  both  patents  are  for  the  same  thing,  so  far  as  any 
inventive  quality  is  concerned,  and  that  only  one  of  them  can  stand.  — 
Brooks  v.  Sacks,  81  Fed.  403;  26  C.  C.  A.  456. 
Boyd  v.  Tool  Co.,  158  U.  S.  260. 

Even  where  each  of  several  applications  which  subsequently  ripen  into 
patents  to  the  same  inventor  discloses  all  the  inventions  claimed  in  all  the 
applications,  and  they  are  all  pending  at  the  same  time,  no  one  of  the  appli- 
cations or  patents  can  be  used  to  anticipate  any  of  the  claims  of  the  others 
which  it  does  not  itself  claim  and  secure.  —  Anderson  v.  Collins,  122  Fed. 
451 ;  58  C.  C.  A.  669. 

Ide  v.  Trorlicht,  115  Fed.  137;  Walk.  Pat.  sec.  180;  Westinghouse  v.  Dayton, 
106  Fed.  724;  Suffolk  v.  Hayden,  3  Wall.  315;  Graham  v.  McCormick,  11  Fed. 
859;   Graham  v.  Mfg.  Co.,  11  Fed.  138. 

When  the  patent  first  granted  is  distinctly  and  only  for  an  improvement 
on  another  invention  which  is  already  the  subject  of  a  prior  application 
then  pending,  and  on  which  a  later  patent  is  granted,  the  patent  for  the  im- 
provement in  no  wise  interferes  with  the  other  application  or  the  patent 
issued  thereon.  —  Cleveland  v.  Detroit,  131  Fed.  853;  68  C.  C.  A.  233. 

Dayton  v.  Westinghouse,  118  Fed.  573;  Miller  v.  Eagle,  151  U.  S.  186;  Thom- 
son-Houston v.  Ohio,  80  Fed.  712;   Palmer  v.  Lozier,  90  Fed.  734. 

The  patentee  filed  three  applications  successively  and  at  separate  times. 
The  claim  of  the  patent  in  suit  was,  in  substance,  included  in  the  first  ap- 
plication, and  the  construction  was  disclosed  in  all  three  applications.  The 
claim  in  suit  materialized  in  the  third  application.  Held:  Under  these  cir- 
cumstances, we  think  the  third  application  should  be  regarded  as  an  amend- 
ment to  the  first,  and  both  should  be  treated  as  a  single  continuing  applica- 
tion. However  this  may  be,  it  is  apparent  that  during  the  whole  period  from 
the  filing  of  the  first  application  to  the  granting  of  the  patent  in  suit,  the 
applicant  was  insisting  upon  his  right  to  have  a  patent  for  the  invention 
specified  in  the  claim  in  controversy,  and  that  he  never  intended  to  relinquish 
or  abandon  it.  It  is  well  settled  that  an  inventor  by  describing  an  invention 
in  a  patent  granted  to  him  does  not  preclude  himself  from  patenting  it 
subsequently.  His  omission  to  claim  what  he  describes  may  operate  as  a 
disclaimer  or  an  abandonment  of  the  matter  claimed;  but  it  has  no  such 
effect  when  it  appears  that  the  matter  thus  described  but  not  claimed  was 
the  subject  of  a  pending  application  in  the  Patent  Office  by  him  for  another 
patent.  —  Kinnear  v.  Wilson,  142  Fed.  970;   74  C.  C.  A.  232. 

Thomson-Houston  v.  Elmira,  71  Fed.  396;  Suffolk  v.  Hayden,  3  Wall.  315; 
Barbed  Wire  Case,  143  U.  S.  275. 

The  first  application  was  sufficiently  broad  to  have  earned  the  claims  of 
the  second  application.  Six  months  after  the  first  application  was  filed, 
another  application  was  filed  eventuating  in  the  patent  in  suit.  The  first 
application  also  went  to  patent.  Held:  The  specifications  in  that  applica- 
tion for  564,586  (the  first  application)  were  full  enough  to  warrant  the  making 
of  the  claims  here  in  controversy.  At  any  time  the  application  might  have 
been  amended  by  adding  such  claims,  and  in  our  opinion  it  is  immaterial 
that,  instead  of  thus  amending  it,  he  took  the  broader  claims  on  another 
application,  filed  while  the  first  was  pending.  The  second  may  fairly  be 
considered  a  continuation  of  the  first,  and  thus  Berliner's  application  ante- 
dates the  public  use,  and  the  facts  will  not  sustain  the  contention  that  he 
abandoned  the  invention  here  in  suit.  —  Victor  v.  American,  145  Fed.  350; 
76  C.  C.  A.  180. 


314  THE    FIXED   LAW   OF   PATENTS  §350 

§  350.     Dates  of  Issue. 

We  do  not  understand  this  general  doctrine  to  be  denied,  but  it  is  said  that 
if,  by  some  chance,  the  application  for  the  fundamental  patent  is  delayed 
in  its  course  through  the  patent  office  until  a  patent  on  the  evolved  improve- 
ment has  issued,  then  the  patent  on  the  fundamental  invention  is  void.  In 
cases  where  the  delay  in  the  issuing  of  the  patent  for  the  main  invention 
cannot  be  charged  to  the  laches  or  fraud  of  the  patentee,  such  a  rule  would  be 
a  hard  one ;  and  unless  it  is  required  by  the  express  words  of  the  statute,  or  by 
the  express  holding  of  the  Supreme  Court,  we  should  be  inclined,  if  possible, 
to  avoid  declaring  it  to  exist.  The  contention  of  counsel  for  defendant  in 
this  behalf  instead  of  having  the  support  of  the  authority  of  the  Supreme 
Court,  is  in  the  teeth  of  two  decisions  of  that  tribunal.  —  Thomson-Houston 
v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Suffolk  v.  Hayden,  3  Wall.  315;   Barb.  Wire  Pat.,  143  U.  S.  280. 

(General  rule  by  Judge  Taft.) 

We  cannot  yield  to  the  argument  based  on  such  a  distinction,  because  we 
cannot  accept  its  minor  premise,  to  wit,  that  the  later  granting  of  the  patent 
for  the  main  invention  extends  the  monopoly  of  the  earlier  improvement 
patent.  The  patent  for  the  improvement  expires  in  17  years.  After  that 
any  one  may  use  the  improvement  without  infringing  the  patent  issued  upon 
it.  If  he  uses  the  improvement  without  a  license  to  use  the  main  invention  he 
is  liable  for  the  infringement,  not  of  the  patent  for  the  improvement,  but 
of  the  patent  for  the  main  invention ;  and,  in  estimating  the  damages  for  the 
same,  the  value  of  the  main  invention,  and  not  that  of  the  improvement, 
would  be  the  basis  for  estimating  the  damages. 

It  can  make  no  difference  in  considering  this  question  whether  the  patent 
for  the  improvement  issues  to  the  patentee  of  the  main  invention  or  to 
another.  The  right  of  the  public  to  use  the  improvement  when  the  patent 
on  it  expires  is  exactly  the  same,  whether  the  patentees  of  the  two  inventions 
are  the  same  or  not,  because  in  each  case  the  improvement  can  only  be 
used  with  the  license  of  the  patentee  of  the  main  invention.  If  the  patentee 
of  the  improvement  is  a  stranger  to  the  main  invention,  it  is  manifest  that 
he  can  derive  no  benefit  from  the  limitation  upon  the  use  of  his  invention 
after  his  patent  expires,  because  of  the  patent  on  the  main  invention.  Why, 
then,  does  he  derive  an  advantage  if  he  happens  to  own  the  main  patent? 
The  only  advantage  conferred  by  the  issue  of  the  patent  for  the  main  in- 
vention is  the  legitimate  monopoly  for  the  statutory  period  of  that  invention, 
and  of  no  other.  Did  the  personality  of  the  owner  of  two  different  patents 
affect  the  validity  of  either,  then  the  anomalous  result  would  follow  that 
the  owner  of  one  patent  would  avoid  it  by  acquiring  ownership  of  another. 
According  to  the  argument  of  counsel,  the  patentees  of  the  earlier  improve- 
ment patent  and  of  the  later  main  patent  being  the  same  person,  the  main 
patent  is  void.  Let  us  suppose  that  they  were  different  persons,  but  that, 
by  mesne  assignments,  the  two  patents  became  the  property  of  one  person; 
the  effect  upon  the  public  use  of  the  improvement  patent  is  exactly  the  same 
as  if  the  now  owner  had  been  the  inventor  and  patentee  of  both.  Does  the 
unity  of  title  avoid  the  main  patent,  which  was  valid  before?  It  must 
do  so  if  the  argument  of  counsel  for  defendant  in  this  behalf  is  to  be 
followed,  for  the  effect  of  the  unity  of  title  is  "  to  extend  the  monopoly  " 
of  the  earlier  improvement  patent  in  the  sense  in  which  counsel  uses  that 
phrase.  To  our  minds,  this  conclusion  is  reductio  ad  absurdum.  The  fact 
that  a  patent  for  an  improvement  may  expire  before  the  patent  for  the  main 
invention  is  the  result  of  several  circumstances,  —  one  that  a  patent  may 
be  taken  out  for  an  improvement  on  a  patentable  invention,  another  that 
there  is  no  limitation  by  statute  upon  the  time  within  which  a  patent  may 
issue  upon  an  application  after  it  is  filed,  provided  the  applicant  is  not  guilty 


§351  DIVISIONAL    PATENTING  315 

of  violating  the  two  years'  restriction  imposed  by  the  statute,  and  a  third 
that  the  course  of  an  application  for  a  generic  or  broad  invention  may  legiti- 
mately take  longer  in  its  course  through  the  patent  office  than  a  comparatively 
unimportant  improvement  on  that  invention.  —  Thomson-Houston  v. 
Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Where  each  of  several  applications  which  subsequently  ripen  into  patents 
to  the  same  inventor,  describes  an  entire  machine  and  the  inventions  claimed 
in  all  of  the  applications,  but  no  one  of  the  applications  claims  any  invention 
claimed  in  any  of  the  others,  and  they  are  all  pending  at  the  same  time, 
the  respective  dates  of  the  applications  and  of  the  patents,  and  the  dates 
when  the  applications  were  filed  are  immaterial,  and  the  applications  and 
the  patents  cannot  be  used  to  anticipate  each  other.  —  Ide  v.  Trorlicht,  115 
Fed.  137;  53  C.  C.  A.  341. 

Walk.  Pat.,  180;  Westinghouse  v.  Dayton,  106  Fed.  724;  Suffolk  v.  Hayden, 
3  Wall.  315;  Graham  v.  McCormick,  11  Fed.  859;  Graham  v.  Mfg.  Co.,  11  Fed. 
141. 

At  any  time  the  application  (first  filed)  might  have  been  amended  by  adding 
such  claims,  and  in  our  opinion  it  is  immaterial  that,  instead  of  thus  amend- 
ing it,  he  took  the  broader  claims  on  another  application  filed  while  the  first 
was  pending.  The  second  may  fairly  be  considered  a  continuation  of  the 
first,  and  thus  Berliner's  application  (the  first  filed,  the  second  did  not) 
antedates  the  public  use,  and  the  facts  will  not  sustain  the  contention  that 
he  abandoned  his  invention  here  in  suit.  —  Victor  v.  American,  145  Fed. 
350;   76  C.  C.  A.  180. 

The  circuit  court  held  that  "  it  is  very  doubtful  whether  the  second  patent 
is  not  to  be  regarded  as  invalid  because  anticipated  by  the  first  patent.  As 
I  understand  the  rule  the  patent  numbered  first  takes  precedence  of  the 
other."  This  is  a  correct  statement  of  the  general  rule.  But  where  the 
patentee  has  had  an  application  pending  for  the  allowance  of  the  later 
numbered  patent  at  the  time  when  the  earlier  numbered  patent  was  issued, 
and  especially  when  it  was  through  no  fault  of  his  that  his  original  application 
for  a  single  patent  was  split  up  and  a  plurality  of  patents  issued,  an  exception 
is  made  to  the  enforcement  of  this  rule.  —  Benjamin  v.  Dale,  158  Fed.  617; 
85  C.  C.  A.  439. 

Underwood  v.  Gerber,  149  U.  S.  224;  Writing  Machine  v.  Elliott,  106  Fed.  507; 
Willcox  v.  Machine  Co.,  93  Fed.  206;  Crown  v.  Standard,  136  Fed.  841;  Electrical 
v.  Brush,  52  Fed.  137;  Thomson-Houston  v.  Elmira,  71  Fed.  404;  Independent 
v.  Jeffrey,  76  Fed.  989;  Badische  v.  Klipstein,  125  Fed.  554. 


§  351.     Distinguished  from  Double  Patenting. 

We  have  no  disposition  to  depart  from  the  rules  in  respect  to  the  identity 
of  patents  and  the  method  of  determining  it,  here  adverted  to,  which  we 
deem  sound  and  reasonable ;  but  it  would  be  a  misapplication  of  them,  and 
contrary  to  their  spirit  and  purpose,  to  say  that  independent  inventions 
may  not  be  the  proper  subjects  of  independent  patents,  even  though  they 
may  relate  to  the  same  subject-matter,  and  one  may  dominate  the  other 
in  the  same  field.  —  Dayton  v.  Westinghouse,  118  Fed.  562;  55  C.  C.  A.  390. 

Miller  v.  Mfg.  Co.,  151  U.  S.  186;  Palmer  v.  Lozier,  90  Fed.  732;  Thomson- 
Houston  v.  Ohio,  80  Fed.  712;  Allins;ton  v.  Globe,  89  Fed.  865;  Thomson- 
Houston  v.  Jeffrey,  101  Fed.  121;  Thomson-Houston  v.  Hoosick,  82  Fed.  461; 
Industrial  v.  Wilcox,  112  Fed.  535. 


316  THE    FIXED   LAW   OF   PATENTS  §352-353 

§  352.     Extending  Monopoly. 

Having  stated  that  he  had  made  the  specific  mechanism  of  the  automatic 
shunting  device  the  subject  of  an  application  for  another  patent,  the  appli- 
cant proceeds  to  say,  "  I,  therefore,  limit  myself  in  this  application  to  the 
general  or  broad  claims  upon  the  automatic  shunting  device."  The  present 
case  is  not  one  where  the  invention  contemplates  more  than  one  congeries 
of  parts  which,  separately,  constitute  a  distinct  organization.  It  seems  a 
necessary  inference  that  the  applicant  for  this  patent  sought  to  gather  in 
and  monopolize  all  means  which  might  be  employed  for  the  organization  of  an 
automatic  shunting  device,  other  than  such  that  he  had  chosen  to  represent 
by  his  actual  invention.  This  he  could  not  do.  —  Western  v.  Williams- Abbott, 
108  Fed.  952;   48  C.  C.  A.  159. 

The  truth  is  that  the  kernel  of  the  invention  was  taken  out  of  this  and  made 
the  subject  of  another  application.  Having  disclaimed  it,  the  patentee 
cannot  now  claim  that  invention  to  be  within  the  scope  of  the  patent  here 
in  suit,  —  Western  v.  Williams- Abbott,  108  Fed.  952;  48  C.  C.  A.  159. 

Thomas  v.  Spring,  77  Fed.  420. 

The  feature  which  gives  validity  to  the  patent  in  suit  was  expressly  carved 
out  of  No.  554,874  and  reserved  for  patenting  in  No.  580,281.  The  specifi- 
cation expressly  says  so.  The  patent  is  thus  clearly  within  the  rule  of  Thomson- 
Houston  v.  Elmira,  71  Fed.  396.  —  Hillard  v.  Fisher,  159  Fed.  439 ;  86  C.  C.  A. 
469. 

§  353*     Generic  and  Specific  Inventions. 

The  rule  rests  upon  the  broad  and  obvious  ground  that,  if  the  second 
patent  is  for  an  invention,  that  was  necessary  to  the  use  of  the  invention 
first  patented,  it  cannot  be  sustained.  Undoubtedly,  as  pointed  out  in 
Miller  v.  Mfg.  Co.,  151  U.  S.  186,  if  the  second  patent  is  for  a  distinct  and 
separate  invention,  or,  to  put  the  matter  in  another  way,  has  not  been  made 
integral  with  another  invention  already  patented,  so  as  to  be  fairly  necessary 
to  its  use,  it  should  be  sustained  if  the  other  requisite  conditions  exist.  — 
Palmer  v.  Lozier,  90  Fed.  732;  33  C.  C.  A.  255. 

Lock  v.  Hosier,  127  U.  S.  354;  Plummer  v.  Sargent,  120  U.  S.  442;  Ohio  v. 
Thomson-Houston,  80  Fed.  712. 

The  conception  of  a  mechanism  capable  merely  of  producing  motion  in  a 
pre-determined  form,  and  the  conception  of  this  mechanism  combined  with 
other  elements,  in  a  machine  producing  work  theretofore  done  only  by  hand, 
are  distinct.  Had  the  "  movement  "  been  in  the  prior  art,  we  think  that 
Palmer's  claims  to  the  protection  by  letters  patent  of  his  quilting  machine 
would  be  well  founded.  As  he  has  produced  not  only  a  quilting  machine, 
but  a  part  of  that  machine  which  may  be  used  in  other  machines,  we  see  no 
reason  why,  by  properly  seeking  protection  for  all  that  he  has  invented, 
he  should  be  deprived  of  the  protection  of  letters  patent  for  that  which 
he  regards  as  his  chief  invention.  —  Palmer  v.  Brown,  92  Fed.  925 ;  35  C.  C.  A. 
86. 

Suffolk  v.  Hayden,  3  Wall.  315. 

By  the  general  rule  of  patent  law,  a  patent  for  the  specific  device  would 
cover  all  those  equivalents,  the  range  of  which  would  be  more  or  less  broad 
according  to  the  scope  of  the  invention.  Such  equivalents  represent,  in 
legal  contemplation,  the  same  invention.  One  cannot  divide  an  integral 
invention,  or  have  two  patents  for  the  same  thing.  —  Western  v.  Williams- 
Abbott,  108  Fed.  952;  48  C.  C.  A.  159. 


§§354-355  DIVISIONAL    PATENTING  317 

Miller  v.  Mfg.  Co.,  151  U.  S.  186;  Palmer  v.  Lozier,  90  Fed.  732;  Fassett  v. 
Mfg.  Co.,  62  Fed.  404. 

Since,  therefore,  the  invention  of  the  specific  means  covered  by  these 
claims  for  the  special  means  and  the  generic  invention  were  for  independent 
inventions,  and  neither  had  been  given  to  the  public,  it  was  competent  for  the 
inventor  to  take  out  a  patent  for  each ;  and  we  do  not  perceive  that  in  such 
case  it  would  be  material  that  the  taking  out  of  the  one  patent  was  prior 
to  that  of  the  other.  —  Dayton  v.  Westinghouse,  118  Fed.  562;  55  C.  C.  A. 
390. 

No  valid  reason  exists  why  the  patentee  of  an  invention  may  not  enjoy 
the  privilege  of  a  stranger  in  thereafter  obtaining  a  patent  for  an  independent 
invention  made  by  him,  although  it  relate  to  the  matter  of  his  former  patent, 
and  was  described  but  not  claimed,  therein,  provided  he  has  not  dedicated 
such  independent  invention  to  the  public.  —  Dayton  v.  Westinghouse,  118 
Fed.  562;  55  C.  C.  A.  390. 

Thomson-Houston  v.  Ohio,  80  Fed.  712. 


§  354.     Identity. 

The  presumption  is  that  Jensen  invented  something  new,  or  he  would 
not  have  secured  the  second  patent.  Where  two  patents  apparently  described 
and  claimed  the  same  article,  the  question  of  identity  is  open  for  examination, 
with  the  presumption  in  favor  of  their  diversity.  —  Norton  v.  Jensen,  90 
Fed.  415;  33  C.  C.  A.  141. 

Rob.  Pat.,  896. 

Are  the  two  patents  for  the  same  invention?  Looking  first  to  the  letters 
patent  themselves,  and  comparing  their  claims  we  are  unable  to  say  that  the 
combination  claimed  in  the  earlier  is  identical  with  that  claimed  in  the  later, 
since  the  later  specifically  claims  elements  not  enumerated  in  the  earlier. 
As  the  claims  are  not  coextensive,  the  fact  that  the  given  element  is  common 
to  both  may  be  of  little  consequence.  The  test  of  identity  afforded  by  a 
comparison  of  the  claims  of  the  two  patents,  however,  is  not  conclusive. 
We  must  be  satisfied  further  that  there  are  substantial  differences,  not  merely 
varying  descriptions  of  one  invention,  or  descriptions  of  a  single  invention  in 
different  applications  to  use.  —  Palmer  v.  Brown,  92  Fed.  925 ;  35  C.  C.  A.  86. 

Miller  v.  Mfg.  Co.,  151  U.  S.  186;  Thomson-Houston  v.  Elmira,  71  Fed.  396; 
Simonds  v.  Hathorn,  90  Fed.  201. 

That  where  a  substantial  difference  exists,  in  the  two  methods  of  dealing 
with  the  subject  matter,  it  is  not  a  case  of  double  patenting,  see  Municipal 
v.  National,  117  Fed.  284;  46  C.  C.  A.  270. 

§  355-     Second  Patent  Void. 

It  seems  to  me  his  second  patent  must  have  been  taken  out  as  a  matter 
only  of  greater  caution,  through  fear  that,  by  some  possible  interpretation 
of  the  claims  of  the  first  every  method  of  using  the  electric  currents  would 
not  be  covered.  To  my  mind,  this  was  unnecessary;  and  unless  the  patents 
are  to  be  limited  to  details,  the  claims  of  the  first  patent  cover  every  form  of 
current  particularized  in  either.  I  think,  therefore,  that  under  Leggett  v. 
Oil  Co.,  149  U.  S.  287  and  more  particularly  and  clearly  under  Miller  v. 
Mfg.  Co.,  151  U.  S.  186,  the  second  patent  is  void.  (Putnam  dissenting.)  — 
Gamewell  v.  Municipal,  61  Fed.  948;  10  C.  C.  A.  184. 


318  THE    FIXED    LAW    OF    PATENTS  §356 

One  cannot  lawfully  have  two  patents  for  one  invention.  When  once  the 
invention  has  been  used,  there  is  the  consideration  of  a  grant,  its  value  for 
that  purpose  is  spent,  and  there  is  nothing  in  it  on  which  a  second  grant  can  be 
supported.  And  this  rule  holds  good  though  the  scope  of  the  patents  may  be 
different.  One  cannot  extract  an  essential  element  of  his  invention  from  a 
former  patent,  without  which  the  former  patent  would  not  have  been  granted 
and  make  it  the  subject  of  a  subsequent  patent.  —  Palmer  v.  Lozier,  90  Fed. 
732;  33  C.  C.  A.  255. 

Miller  v.  Mfg.  Co.,  151  U.  S.  186. 

That  where  two  patents  have  been  taken  out  on  the  same  general  invention 
and  it  appears  that  the  combination  of  the  first  patent  would  be  inoperative 
without  including  the  combination  claimed  in  the  second  patent,  the  second 
patent  is  void,  see  Industrial  v.  Wilcox,  112  Fed.  535;  50  C.  C.  A.  387. 

Miller  v.  Mfg.  Co.,  151  U.  S.  186. 


DOUBLE  PATENTING. 

General  Rules  §  356  Unitary  Device  §  360 


Disclaimer  in  Later  Patent  §  357  (see 

§339) 

Extending  the  Monopoly  §  358 

Seniority  and  Priority  §  359  (see  § 

808) 


Miscellaneous  Rules  §  361 
See  —  Abandonment  §  9;    Anticipa- 
tion §  70;   Defenses  §  320;   Improve- 
ment §  439;    Invention  §  617 


§  356.     General  Rules. 

If  two  patents  be  granted  for  the  same  invention  the  latter  is  void.  — 
Suffolk  v.  Hayden,  70  U.  S.  315;  18  L.  Ed.  76. 

It  is  hardly  necessary  to  remark  that  the  patentee  could  not  include  in  a 
subsequent  patent  any  invention  embraced  or  described  in  a  prior  patent  to 
himself,  any  more  than  he  could  an  invention  embraced  or  described  in  a 
prior  patent  to  a  third  person.  Indeed,  not  so  well;  because  he  might  get 
a  patent  for  an  invention  before  patented  to  a  third  person  in  this  country 
if  he  could  show  that  he  was  the  first  and  original  inventor,  and  if  he  should 
have  an  interference  declared.  —  James  v.  Campbell,  104  U.  S.  356 ;  26  L.  Ed. 
786. 

A  man  cannot  have  two  separate  patents  for  the  same  invention.  The 
later  patent  is  void.  —  McCreary  v.  Pennsylvania,  141  U.  S.  459;  35  L.  Ed. 
817;   12  S.  Ct.  40. 

A  later  application  covering  the  same  invention  as  a  former  application 
would  be  void.  —  Washburn  v.  Beat  Em  All,  143  U.  S.  275;  36  L.  Ed.  154; 
12  S.  Ct.  443. 

Suffolk  v.  Hayden,  70  U.  S.  315. 

Two  valid  patents  for  the  same  invention  cannot  be  granted  either  to 
the  same  or  to  a  different  party.  —  Miller  v.  Eagle,  151  U.  S.  186 ;  38  L.  Ed. 
121;  14  S.  Ct  310. 

Suffolk  v.  Hayden,  70  U.  S.  315;  James  v.  Campbell,  104  U.  S.  382;  Mosler  v. 
Mosler,  127  U.  S.  355;  Underwood  v.  Gerber,  149  U.  S.  224;  Odiorne  v.  Ames- 
bury,  2  Mason,  28. 

When  a  patentee  secures  two  patents  for  the  same  invention,  the  later 
patent  is  void.  —  Fassett  v.  Ewart,  62  Fed.  404;  10  C.  C.  A.  441. 
Miller  v.  Mfg.  Co.,  151  U.  S.  186. 


§§  357-358  DOUBLE    PATENTING  319 

The  mere  fact  that  a  subsequent  patent  embraces  broader  claims  than  those 
of  the  prior  patent,  which  might  have  been  made  in  the  prior  patent,  does  not 
take  it  outside  the  rule  of  Miller  v.  Mfg.  Co.  that  a  subsequent  patent  for  the 
same  invention  is  void.  —  Fassett  v.  Ewart,  62  Fed.  404;   10  C.  C.  A.  441. 

A  subsequent  patent,  especially  to  the  same  patentee  for  the  same  in- 
vention, even  embracing  broader  claims  is  void.  —  Russell  v.  Kern,  69  Fed. 
94;   16  C.  C.  A.  154. 

Miller  v.  Mfg.  Co.,  151  U.  S.  186;  Oval  v.  Sandy  Creek,  69  Fed.  285;  Heald  v. 
Rice,  104  U.  S.  737. 

The  rule  in  Miller  v.  Mfg.  Co.,  151  U.  S.  198  construed  and  explained  at 
length.  —  Thomson-Houston  v.  Elmira,  71  Fed.  396;  18  C.  C.  A.  145.- 

Suffolk  v.  Hayden,  3  Wall.  315;  Barbed  Wire  Case,  143  U.  S.  275;  Accumulator 
v.  Brush,  52  Fed.  130. 

The  improvement  described  in  claim  1  of  the  second  patent,  having  been 
distinctly  claimed  in  a  previous  patent,  is  not  patentable,  unless  the  last 
patentee  was  the  earlier  inventor.  —  Morrin  v.  Lawler,  99  Fed.  977;  40 
C.  C.  A.  204. 

James  v.  Campbell,  104  U.  S.  356;  Machine  Co.  v.  Hedden,  148  U.  S.  490; 
Mathews  v.  Flower,  25  Fed.  830. 

§  357-     Disclaimer  in  Later  Patent. 

The  switching  devices  having  been  fully  described,  the  matter  of  disclaimer 
inserted  in  the  later  patent  is  of  no  more  value  in  determining  its  scope  and 
interpretation  as  to  the  claims  in  which  the  switches  are  an  element,  than  is 
the  matter  of  disclaimer  inserted  in  the  earlier  patent  as  to  the  claims  in 
which  the  contact  device  is  an  element.  —  Thomson-Houston  v.  Hoosick, 
82  Fed.  461 ;  27  C.  C.  A.  419. 

That  the  settlement  of  priorities  on  interference,  where  the  patentee  has 
a  plurality  of  applications,  relating  to  the  same  general  subject  matter, 
does  not  entitle  him  to  claim  the  counts  awarded  him  on  the  interference  to 
be  amended  into  either  application,  regardless  of  the  specification  and  the 
particular  species  of  the  application,  see  Nelson  v.  Farmer,  95  Fed.  145;  37 
C.  C.  A.  32. 

The  complainant  relies  upon  the  disclaimer  of  the  earlier  patent:  "  I  do 
not  here  claim  any  of  the  features  also  shown  and  claimed  in  my  application 
and  serial  Nos.  157,771,"  etc.  Though  reference  is  here  made  to  the  appli- 
cation for  the  patent  in  suit,  it  is  evident  that  a  patentee  cannot  thus  with- 
draw the  invention  which  actually  is  embodied  in  the  structure  claimed. 
He  cannot  patent  the  structure,  and  by  disclaimer  withdraw  the  invention 
which  makes  the  structure  patentable.  —  Otis  v.  Portland,  127  Fed.  557; 
62  C.  C.  A.  339. 

Rob.  Pat.  sec.  465;  Miller  v.  Eagle,  151  U.  S.  186;  Palmer  v.  Lozier,  90  Fed. 
745. 

§  358.    Extending  the  Monopoly. 

When  one  inventor  makes  a  generic  invention  and  also  subordinate, 
specific  inventions,  and  presents  the  whole  series  in  a  set  of  contemporaneous 
applications,  the  patentee  must  not  be  enabled,  by  an  ingenious  use  of  general 
terms,  to  enlarge  the  boundaries  of  each  invention,  to  extend  each  into  the 
borders  of  another,  and  obtain  a  series  of  overlapping  patents.  —  Elec. 
Accum.  Co.  v.  Brush  52  Fed.  130;  2  C.  C.  A.  682. 


320  THE    FIXED    LAW    OF    PATENTS  §  359 

Now,  after  this  lavish  issue  of  patents  involving  the  same  subject  matter, 
and  to  the  same  patentees,  could  the  monopoly  be  still  further  broadened 
and  prolonged  by  the  grant  of  a  later  patent?  We  have  no  hesitation  in 
responding  negatively.  Such  an  extension  of  exclusive  privileges  would  be 
a  sheer  abuse  of  the  patent  laws.  —  Reynolds  v.  Standard,  68  Fed.  483;  15 
C.  C.  A.  516. 

Following,  Miller  v.  Eagle,  151  U.  S.  186. 

He  made  a  machine  which  was  a  perfect  embodiment  of  his  generic  idea, 
and  which  he  thought  a  better  mechanism.  He  applied  for  a  patent  on  this 
machine,  knowing  it  to  be  a  full  embodiment  of  his  generic  idea,  and  erro- 
neously thinking  it  better  as  a  practical  mechanism.  He  did  not  patent  an 
improvement  upon  his  old  mechanism.  Surely,  under  such  circumstances, 
he  cannot  now  invalidate  or  limit  his  prior  patent  by  showing  that  all  he 
had  claimed  in  his  first  patent  had  previously  been  invented  by  himself.  — 
Otis  v.  Portland,  127  Fed.  557;  62  C.  C.  A.  339. 

The  patentee  cannot  subsequently  start  afresh  and  say:  "  I  have  now  an- 
other machine,  which  is  exactly  like  the  old  one  in  the  use  of  the  generic 
idea.  I  desire  a  patent  upon  it,  but  I  do  not  claim  the  feature  in  which  the 
machine  of  my  new  application  differs  from  the  old,  but  I  claim  what  is 
exactly  the  same  as  the  old.  I  claim  that  machine  again,  and  all  others 
containing  the  same  invention."  Yet  this  is  substantially  the  case  before 
us.  —  Otis  v.  Portland,  127  Fed.  557;  62  C.  C.  A.  339. 

It  is  insisted  that  though  patent  No.  757,762  was  applied  for  more  than 
two  years  after  patent  No.  736,999,  and  was  allowed  almost  eight  months 
afterwards,  it  constitutes  the  generic  patent  —  No.  736,999  being  for  a 
specific  invention  only.  This  is  not  a  case  in  which  a  patentee,  having  first 
made  application  for  a  patent  for  a  generic  invention,  has  subsequently 
applied  for  patents  for  specific  improvements.  This  is  a  case  in  which  a 
patentee,  possessed  of  an  alleged  generic  idea,  elected  to  first  apply  for  a 
patent  for  a  specific  embodiment  embracing  the  essential  feature  of  the 
generic  idea,  and  later  specifying  such  essential  feature  in  another  specific 
embodiment,  claims  that  the  generic  idea  growing  out  of  such  essential 
feature,  belongs  to  the  later,  and  not  to  the  earlier,  patent.  To  allow  this, 
it  seems  to  us,  would  be  to  make  the  second  patent  overlap  the  first,  a  result 
that  involves  the  patentee  in  this  dilemma,  either  that  his  second  patent  is 
not  generic  in  the  respect  named,  or  that  it  is  a  double  patenting.  —  Morse 
Chain  v.  Link  Belt,  164  Fed.  331 ;  C.  C.  A. 


§  359.     Seniority  and  Priority. 

As  between  two  patents  for   the    same   invention    priority   of   date   in 
filing  does  not  control.  —  Birmingham  v.  Gates,  78  Fed.  350;  24  C.  C.  A.  132. 
Miller  v.  Mfg.  Co.,  151  U.  S.  186. 

Where  two  patents  are  issued  on  the  same  day  by  the  Patent  Office,  and 
there  is  no  other  evidence  of  seniority  between  them  than  such  as  appears 
from  their  serial  numbers,  the  earlier  in  number  must  be  regarded  the 
senior  and  the  earlier  in  publication.  —  Crown  v.  Standard,  136  Fed.  841 ; 
69  C.  C.  A.  200. 

If  the  invention  of  the  later  patent  is  patented  by  the  earlier  patent,  the 
earlier  must,  of  course,  invalidate  the  later,  for  there  cannot  be  two  valid 
patents  for  the  same  invention,  and  the  later  patent  is  therefore  void.  — 
Crown  v.  Standard,  136  Fed.  841 ;  69  C.  C.  A.  200. 


§§360-361  DOUBLE    PATENTING  321 

§  360.     Unitary  Device. 

That  where  two  patents  from  the  same  inventor  disclose  and  cover  the 
same  general  invention,  and  each  covers  separate  and  minor  inventions,  the 
inventions  claimed  being  inseparably  involved  in  the  same  patents,  the  later 
patent  is  void,  see  Thomson-Houston  v.  Hoosick,  82  Fed.  461 ;  27  C.  C.  A.  419. 

Miller  v.  Mfg.  Co.,  151  U.  S.  198. 

The  device  patented  in  the  first  patent  is  the  same  as  that  in  the  second. 
The  same  elements  are  claimed  in  combination  in  the  first  as  in  the  second. 
A  difference  in  statement  of  their  functions  cannot  and  does  not  make  them 
different  claims  or  different  combinations.  —  Thomson-Houston  v.  Jeffery, 
101  Fed.  121 ;  41  C.  C.  A.  247. 

Thomson-Houston  v.  Hoosick,  82  Fed.  461. 

It  is  identical  with  the  essential  feature  of  the  patent  in  suit  and  it  comes 
within  the  rule  that  forbids  the  issuance  of  a  second  patent  to  a  patentee  for 
an  alleged  invention,  the  essential  characteristic  of  which  has  been  already 
patented  to  the  same  patentee.  —  Newark  v.  Ryan,  102  Fed.  693;  42  C.  C.  A. 
594. 

The  matter  sought  to  be  covered  by  the  later  patent  is  inseparably  in- 
volved in  the  matter  embraced  in  the  earlier  patent,  and,  therefore,  the 
claims  in  controversy  are  void.  —  Thomson-Houston  v.  Western,  158  Fed. 
813;  86  C.  C.  A.  73. 

Miller  v.  Mfg.  Co.,  151  U.  S.  198. 

§  361.     Miscellaneous  Rules. 

The  defendants  insist  that  as  337,298  is  the  earlier  patent,  and  is  for  the 
same  invention  as  337,299,  the  latter  patent  is  void.  This  conclusion  would 
be  true  if  the  premises  were  true.  The  application  was  filed  on  the  same  day, 
the  patents  were  issued  on  the  same  day,  and  are  owned  by  the  same  person. 
The  testimony  shows  that  it  can  never  be  ascertained  which  patent  actually 
first  received  the  final  signature  which  rendered  it  a  complete  and  final  deed ; 
the  mere  fact  that  one  has  an  earlier  number  signifies  merely  that  the  patent 
office  followed  Brush's  alphabetical  order;  so  that  a  judicial  ascertain- 
ment of  the  fact  of  priority  is  impossible,  and  there  are  no  known  pre- 
sumptions which  can  be  resorted  to  upon  which  to  base  a  finding.  The  owner 
of  both  patents  has  elected  to  regard  337,299  as  the  one  upon  which  it  will 
rest  its  title  to  a  monopoly,  and  we  are  of  opinion  that  it  had  such  power  of 
choice.  What  would  be  the  condition  of  separate  owners  of  two  separate 
and  contemporaneous  patents  for  the  same  inventions?  is  a  question  which 
has  not  yet  arisen  but  it  is  obviously  improper  that  337,298  should  be  left  in  a 
condition  where  it  can  be  assigned  or  made  the  subject  of  sale.  It  has  been 
suggested  that  a  disclaimer  should  be  filed,  but  the  sections  to  the  statute 
in  regard  to  disclaimer,  were  not  intended  for,  and  do  not  seem  applicable 
to,  a  case  of  this  sort  in  which  the  patentee  was  the  actual  and  first  inventor 
of  the  whole  of  the  described  and  patentable  thing  which  is  specified  in  the 
patent.  It,  therefore,  seems  proper  that  a  final  decree  should  be  framed  in 
accordance  with  the  circumstances  of  the  case,  and  should,  in  connection 
with  the  finding  of  the  validity  of  the  specified  claims  of  337,299,  adjudge 
337,298  to  be  inoperative,  and  prohibit  its  assignment  for  sale.  —  Elec. 
Accum.  Co.  v.  Brush,  52  Fed.  130;  2  C.  C.  A.  682. 

The  owner  of  two  conflicting  patents  is  not  bound  under  R.  S.  4918,  to 
move  to  cancel  the  senior  patent  before  he  can  maintain  suit  upon  the  other 
patent.  —  Western  Elec.  Co.  v.  Sperry,  59  Fed.  295;  8  C.  C.  A.  129. 

Disapproving,  Roll  Paper  Co.  v.  Knapp,  44  Fed.  609. 


322  THE    FIXED   LAW   OF    PATENTS  §  362 

It  is  contended  that  the  invention  described  and  claimed  in  the  earlier 
patent  is  for  one  form  of  the  alleged  invention  described  in  the  later  patent, 
and  covered  by  the  first  of  those  claims  thereof,  and  that  no  one  could  use 
the  invention  of  the  earlier  patent  without  infringing  these  later  claims. 
The  question  there,  raised  is  a  serious  one,  but  we  do  not  deem  it  necessary 
to  consider  it.  —  Westinghouse  v.  Edison,  63  Fed.  588;  11  C.  C.  A.  342. 

Miller  v.  Mfg.  Co.,  151  U.  S.  186. 

The  first  two  claims  contain  no  patentable  improvement  upon  the  form 
specifically  described  in  the  claims  of  its  predecessor,  and  are  void.  —  West- 
inghouse v.  N.  Y.,  63  Fed.  962;  11  C.  C.  A.  528. 

At  the  bar  the  United  States  rested  the  point  of  issuance  of  a  subsequent 
patent  for  the  same  invention,  Miller  v.  Mfg.  Co.,  151  U.  S.  186.  The  prin- 
ciple of  this  decision  is  evident  and  was  stated  as  early  as  1865  in  Suffolk  v. 
Hayi^en,  3  Wall.  315;  and  appears  from  the  record  that  it  was  recognized 
by  the  patent  office  before  Miller  v.  Mfg.  Co.  was  decided.  We  may  remark 
that  the  facts  in  the  case  at  bar  on  their  face  are  not  like  those  of  Miller  v. 
Mfg.  Co.  as  here  the  two  patents  claimed  to  interfere  were  not  issued  to  the 
same  applicant;  and  the  acquirement,  after  it  issued  by  the  Am.  Bell  Tel. 
Co.  of  the  Berliner  patent  of  Nov.  2,  1880  would  not  necessarily  estop  the 
assignee.  —  Am.  Bell.  Tel.  Co.  v.  U.  S.  68  Fed.  542;  15  C.  C.  A.  569. 

To  avoid  the  objection  of  double  patenting,  it  is  not  enough  to  show  that 
the  prior  patent  claims  a  specific  machine,  and  that  the  later  patent  contains 
broader  claims,  which  embrace  both  the  prior  specific  machine  and  other 
machines  as  well.  Two  patents  may  be  regarded  as  for  the  same  invention, 
though  one  claims  only  a  special  machine,  and  the  other  claims  broadly  a 
genus  which  includes  the  former.  —  Otis  v.  Portland,  127  Fed.  557;  62  C.  C.  A. 
339. 

Miller  v.  Eagle,  151  U.  S.  186;   Rob.  Pat.  sees.  464,  465. 

The  question  whether  two  patents  are  for  the  same  invention  is  to  be 
determined  from  a  comparison  of  the  documents  themselves,  no  extrinsic 
evidence  being  necessary  to  enable  the  court  to  ascertain  their  meaning  and 
true  conclusion.  —  Thomson-Houston  v.  Western,  158  Fed.  813;  86  C  C.  A. 
73. 

The  change  in  phraseology  between  the  claims  of  the  two  patents  import 
nothing  of  substance  into  the  claims  of  the  later  patent  which,  in  different 
language,  describe  the  same  combinations  covered  by  the  claims  of  the  earlier 
patent.  —  Thomson-Houston  v.  Western,  158  Fed.  813;   86  C.  C.  A.  73. 

DRAWINGS. 

Statutory  Provisions  §  362  I       Rules  §  363 

General     Statement     and     General  '       See  —  Claims  §  192 

§  362.     Statutory  Provisions. 

*  *  *  A  copy  of  the  specification  and  drawings  shall  be  annexed  to  the 
patent  and  be  a  part  thereof.  —  R.  S.  4884. 

When  the  nature  of  the  case  admits  of  drawings,  the  applicant  shall  fur- 
nish one  copy  signed  by  the  inventor  or  his  attorney  in  fact,  and  attested 
by  two  witnesses,  which  shall  be  filed  in  the  Patent  Office;   and  a  copy  of 


§§  363-364  EMPLOYER   AND    EMPLOYEE  323 

the  drawing,  to  be  furnished  by  the  Patent  Office,  shall  be  attached  to  the 
patent  as  a  part  of  the  specification.  —  R.  S.  4889. 

Sec.  4916,  which  provides  for  reissues,  has  the  following  in  regard  to  draw- 
ings in  reissue  cases: 

*  *  *  nor  in  case  of  a  machine  patent  shall  the  model  or  drawings  be 
amended,  except  each  by  the  other;  but  where  there  is  neither  model  nor 
drawing,  amendments  may  be  made  upon  proof  satisfactory  to  the  Com- 
missioner *  *  * 

§  363.     General  Statement  and  General  Rules. 

Since  the  drawings  form  a  part  of  the  specification,  special  rules  relating 
thereto  will  be  found  under  Specification. 

Where  the  drawings  merely  show  an  alternative  construction  and  both 
covered  by  same  claims,  the  difference  is  not  material.  —  Schreiber  v.  Grimm, 
72  Fed.  671 ;  19  C.  C.  A.  67. 

Bussell  v.  Stevens,  137  U.  S.  423;  Wells  v.  Curtis,  66  Fed.  318. 

A  drawing  is  not  to  be  regarded  as  a  working  plan,  unless  it  is  so  stated  in 
the  specification.  —  Elgin  v.  Creamery,  80  Fed.  293;  25  C.  C.  A.  426. 
Caverly  v.  Deere,  66  Fed.  305. 

The  object  of  the  drawings  filed  in  the  patent  office  is  attained  if  they 
clearly  exhibit  the  principles  involved,  and,  in  a  case  like  this,  rigid  adherence 
to  the  dimensions  thus  exhibited  is  not  required  or  expected,  and  if  an  in- 
telligent mechanic  would  so  proportion  the  dimensions  as  to  secure  practical 
results,  inutility  is  not  demonstrated  by  experiments  with  material  identical 
in  form  and  proportion  of  parts  with  the  drawings  in  the  patent.  —  Crown 
v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

The  drawings  are  not  required  to  be  working  plans.  They  must  be  read  in 
connection  with  the  description  and  claims,  and  any  inferences  arising  from 
omissions  or  inconsistencies  in  the  drawings  must  yield  to  a  legally  sufficient 
specification.  —  Western  v.  American,  131  Fed.  75;  65  C.  C.  A.  313. 

That  an  obvious  error  in  a  drawing,  which  would  not  mislead  any  person 
skilled  in  the  art,  is  insufficient  to  defeat  a  patent,  see  Edison  v.  Novelty, 
167  Fed.  977;  C.  C.  A. 


EMPLOYER  AND  EMPLOYEE. 

General  Statement  §  364 

Contract  —  Future  Inventions  §  365 

(see  §  430) 

License  —  Implied  §  366  (see  §  749) 

Rights  of 

Employee  §  367 


Employer  §  368 
Miscellaneous  Rulings  §  369 

See  —  Assignment  §  149;  Government 
§  429;  Liceme  §  749;  Licensor  and 
Licensee  §  765 


§  364.     General  Statement. 

No  statutory  provision  exists  except  that  relating  to  government  em- 
ployees. Those  provisions  and  the  special  rulings  as  to  employees  of  the  gov- 
ernment will  be  found  under  the  title  Government.  Questions  of  title  and 
rights  as  between  employers  and  employees  will  also  be  found  under  Assign- 
ment and  License. 


324  THE    FIXED    LAW    OF    PATENTS  §§  365-366 

§  365.     Contract  —  Future  Inventions. 

Complainant  and  defendant  contracted  that  in  consideration  of  the  em- 
ployment of  defendant  and  wages  paid  him,  defendant  would  give  complain- 
ant the  exclusive  use  of  any  improvements  he  might  make  upon  their  partic- 
ular machines  while  in  their  employ  or  after.  Held:  such  argument  to  be 
neither  unconscionable,  unreasonable  nor  contrary  to  public  policy.  —  Bon- 
sack  v.  Hulse,  65  Fed.  864;  13  C.  C.  A.  180. 

Registering  Co.  v.  Sampson,  L.  R.  19  Eq.  465;  1  Sedg.  Dam.  455;  Horner  v. 
Graves,  7  Bing.  735;  Ammunition  v.  Nordenfelt,  1  Ch.  630;  Match  v.  Rosber,  106 
N.  Y.  473;  Morse  v.  Morse,  103  Mass.  73. 

We  now  pass  to  the  defence  that  the  contract  was  not  enforceable  in  equity 
upon  the  theory  of  lack  of  consideration  and  lack  of  mutuality.  This  con- 
tract, however,  was  not  without  consideration.  It  was  not  only  by  its  own 
express  terms  in  consideration  of  the  employment  of  the  defendant,  but  this 
contract  was  signed  and  delivered  before  the  employment  actually  com- 
menced, and  before  the  defendant  was  permitted  to  enter  the  complainant's 
factory.  The  hiring,  the  engagement  to  pay  wages  and  the  introduction  of 
the  defendant  into  the  complainant's  establishment  and  to  its  methods  and 
processes,  constituted  a  valid  consideration  for  his  agreement  to  assign  his 
inventions  made  during  the  term  of  employment.  —  Mississippi  v.  Franzen, 
143  Fed.  501 ;   74  C.  C.  A.  135. 

Bonsack  v.  Hulse,  65  Fed.  864;  Thibodeau  v.  Hildreth,  124  Fed.  892;  Rob. 
Pat.  sec.  414;  Green  v.  Richards,  23  N.  J.  Eq.  32,  35;  Grove  v.  Hodge,  55  Pa. 
504,  516. 


§  366.     License  —  Implied. 

For  equitable  rights  of  employer,  see  Hapgood  v.  Hewitt,  119  U.  S.  226; 
30  L.  Ed.  369;  7  S.  Ct,  193. 

Distinguishing:  McClurg  v.  Kingsland,  42  U.  S.  202;  Continental  v.  Em- 
pire, 8  Blatchf.  295;  Whiting  v.  Graves  3  B.  &.  A.  222;  Wilkins  v.  Spafford, 
3  B.  &  A.  274. 

An  employee  or  shop  license  growing  out  of  the  employment  of  the  in- 
ventor, confers  an  unassignable  right  only.  —  Hapgood  v.  Hewitt,  119  U.  S. 
226;  30  L.  Ed.  369;  7  S.  Ct,  193. 

Troy  v.  Corning,  55  U.  S.  193;  Oliver  v.  Rumford,  109  U.  S.  75. 

Where  the  employee  invents  in  the  line  of  his  employment  with  the  tools  and 
at  the  expense  of  his  employer,  the  fact  that  his  wages  are  not  increased 
on  account  of  such  services  as  was  the  case  in  McClurg  v.  Kingsland,  42  U.  S. 
202,  makes  no  vital  difference.  —  Solomons  v.  U.  S.  137  U.  S.  342;  34  L.  Ed. 
667;  11  S.  Ct.  88. 

When  employee  allows  his  invention  to  be  constructed  and  used  by  his 
employer  before  patent  he  cannot  claim  royalty  or  right  of  injunction  there- 
after. —  Dable  v.  Flint,  137  U.  S.  41 ;  34  L.  Ed.  618;  11  S.  Ct.  8. 

Wade  v.  Metcalf,  129  U.  S.  202. 

Where  employee  makes  an  invention  in  the  shops  and  with  the  tools  of 
employer,  the  employer  gains  an  implied  license,  and  such  implied  license 
may  be  succeeded  to  by  a  corporation  as  successor  in  business,  if  such  course 
is  acquiesced  in  bv  the  inventor.  —  Lane  v.  Locke,  150  U.  S.  193;  37  L.  Ed. 
1049;   14  S.  Ct.  78. 

McClurg  v.  Kingsland,  42  U.  S.  202;  Solomons  v.  U.  S.  137  U.  S.  342. 


§  367  EMPLOYER    AND    EMPLOYEE  325 

When  an  employee  made  and  introduced  his  invention  in  employer's  fur- 
naces and  told  his  employer  he  could  use  the  same  so  long  as  he  remained  in 
defendant's  employ,  such  facts  gave  defendant  an  implied  license,  at  least 
during  the  period  of  employment  of  plaintiff.  —  Keyes  v.  Eureka,  158  U.  S. 
150;  39  L.  Ed.  920;  15  S.  Ct.  772. 

The  fact  that  the  invention  was  made  and  the  drawings  prepared  outside 
the  hours  and  the  shops  of  the  employer,  so  long  as  the  invention  was  reduced 
to  practice  and  made  in  the  employer's  shops  by  the  employee  and  with  his 
consent,  does  not  secure  him  the  right  to  damages  for  infringement  by  his 
employer.  —  Gill  v.  U.  S.  160  U.  S.  426;  40  L.  Ed.  480;  16  S.  Ct.  322. 

An  employee  paid  by  salary  or  wages,  who  devises  an  important  method 
of  doing  his  work,  using  the  property  or  labor  of  his  employer  to  put  his 
invention  into  practical  form,  and  assenting  to  the  use  of  such  improvements 
by  his  employer,  cannot,  by  taking  out  a  patent  upon  such  invention,  re- 
cover a  royalty  or  other  compensation  for  such  use.  —  Gill  v.  U.  S.  160  U.  S. 
426;  40  L.  Ed.  480;  16  S.  Ct.  322. 

Pennock  v.  Dialogue,  27  U.  S.  1;  Grant  v.  Raymond,  31  U.  S.  218;  McClurg  v. 
Kingsland,  42  U.  S.  202;  Solomons  v.  U.  S.  137  U.  S.  342;  Lane  v.  Locke,  150 
U.  S.  193;   McAleer  v.  U.  S.  150  U.  S.  424;  Keyes  v.  Eureka,  158  U.  S.  150. 

There  was  some  evidence  to  show  that  the  original  patterns  were  destroyed 
by  fire  before  the  machines  sold  by  appellant  were  made  and  it  is  insisted  that 
the  scope  of  the  license  should  be  limited  by  the  life  of  the  identical  patterns. 
The  duration  and  scope  of  a  license  must  depend  upon  the  nature  of  the  in- 
vention and  the  circumstances  out  of  which  an  implied  license  is  presumed, 
and  both  must  at  last  depend  upon  the  intention  of  the  parties.  —  Withing- 
ton  v.  Kinney,  68  Fed.  500;  15  C.  C.  A.  531. 

Rob.  Pat.  sees.  809-811;   Montross  v.  Mabie,  30  Fed.  4. 

Complainant  was  employed  as  an  expert  machinist  to  devise  and  con- 
struct an  improved  machine  and  to  direct  the  making  of  patterns  for  the 
same  for  machine  to  be  made  and  sold.  Later,  complainant  obtained  a  patent, 
and  after  ten  years  brought  suit.  Held:  Upon  this  state  of  facts,  we  con- 
clude that  the  appellee  must  be  presumed  to  have  granted  to  appellant's 
licensor  a  personal  license  to  make  and  sell  machines  embodying  the  im- 
provements covered  by  his  patent.  —  Withington  v.  Kinney,  68  Fed.  500; 
15  CCA.  531. 

McClurg  v.  Kingsland,  1  How.  202;  Solomons  v.  U.  S.  137  U.  S.  342;  Lane  v. 
Locke,  150  U.  S.  193;  Hapgood  v.  Hewitt,  119  U.  S.  226. 

The  case  is,  therefore,  of  an  inventor,  who  was  a  workman  in  the  employ 
of  another,  manufactures  for  him,  in  his  shop,  and  with  his  materials,  and 
upon  weekly  wages,  machines  which  the  employer  uses  as  a  part  of  his  tools, 
without  knowledge  of  any  objection  thereto,  and  for  which  the  inventor 
during  the  terms  of  his  employment,  obtains  a  patent  and  thereafter  seeks 
to  restrain  the  employer  from  the  use  of  the  particular  machine  or  machines 
which  had  been  thus  made  in  the  employer's  shop,  under  the  supervision 
of  the  employee,  and  apparently  as  a  part  of  his  ordinary  mechanical  work. 
On  the  authority  of  Gill  v.  U.  S.,  160  U.  S.  426,  the  employee-patentee  was 
estopped.  —  Blauvelt  v.  Interior,  80  Fed.  906;  26  C  C  A.  243. 

§  367.     Rights  of  —  Employee. 

Persons  employed,  as  much  as  employers,  are  entitled  to  their  own  in- 
dependent inventions,  and  if  the  suggestions  communicated  constitute  the 


326  THE    FIXED    LAW    OF    PATENTS  §  368 

whole  substance  of  the  improvement  the  rule  is  otherwise,  and  the  patent, 
if  granted  to  the  employer,  is  invalid  because  the  real  invention  or  discovery 
belongs  to  the  person  who  made  the  suggestion.  —  Union  v.  Vandeusen,  90 
U.  S.  530;  23  L.  Ed.  128. 
Agawam  v.  Jordan,  7  Wall.  602. 

When  a  person  has  discovered  a  new  and  useful  principle  in  a  machine 
manufacture  or  composition  of  matter,  he  may  employ  other  persons  to 
assist  in  carrying  out  that  principle,  and  if  they,  in  the  course  of  experiments 
arising  from  that  employment,  make  discoveries  ancillary  to  the  plan  and 
preconceived  design  of  the  employer,  such  suggested  improvements  are  in 
general  to  be  regarded  as  the  property  of  the  party  who  discovered  the  origi- 
nal principle,  and  they  may  be  embodied  in  his  patent  as  part  of  his  inven- 
tion. —  Union  v.  Vandeusen,  90  U.  S.  530;  23  L.  Ed.  128. 

As  to  rights  of  a  person  employed  to  invent,  see  Hapgood  v.  Hewitt,  118 
U.  S.  226;  30  L.  Ed.  369;  7  S.  Ct.  193. 

McClurg  v.  Kingsland,  42  U.  S.  202;  Continental  v.  Empire,  8  Blatchf.  295; 
Whiting  v.  Graves,  3  B.  &  A.  222;  Wilkins  v.  Spafford,  3  B.  &  A.  274. 

In  the  absence  of  evidence  of  an  agreement  that  the  employer  should  have 
any  interest  in  any  patentable  improvement  which  the  employee  might  make 
during  the  period  of  his  employment,  it  would  seem  that  the  title  to  the  in- 
vention made  or  to  any  patent  subsequently  obtained  by  him,  would  be 
unaffected  by  the  fact  of  his  service  and  in  the  use  of  his  employer's  shop, 
materials  and  the  service  of  his  employees  while  devising  and  perfecting  his 
invention.  —  Withington  v.  Kinney,  68  Fed.  500;  15  C.  C.  A.  531. 

Hapgood  v.  Hewitt,  119  U.  S.  226. 

§  368.     Rights  of  —  Employer. 

The  inventor,  while  in  the  employ  of  the  defendant  made  his  invention 
and  perfected  the  same  with  the  tools  and  while  under  pay  of  defendant,  and 
in  his  shops.  Defendant  increased  the  inventor's  wages  by  reason  of  such 
invention.  The  invention  was  put  in  practice  by  plaintiff  in  defendant's 
shops  and  used  without  any  agreement  or  license.  Subsequently  the  in- 
ventor quit  from  another  cause  and  this  suit  was  brought.  Held:  That  such 
employment  and  conduct  gave  the  employer  a  shop  right  to  said  invention. 
—  McClurg  v.  Kingsland,  1  How.  202;  11  L.  Ed.  102. 

Note:  This  leading  case  has  generally  been  construed  too  broadly.  The 
court  did  not  hold  in  express  terms  that  the  mere  employment  or  the 
extra  pay  constituted  the  license,  independent  of  the  subsequent  conduct. 
This  case  is  good  for  what  it  holds,  but  it  by  no  means  establishes  the 
relations  of  employer  and  employee  definitely. 

Persons  employed,  as  much  as  employers,  are  entitled  to  their  own  inde- 
pendent inventions,  but  where  the  employer  has  conceived  the  plan  of  an 
invention  and  is  engaged  in  experiments  to  perfect  it,  no  suggestion  from 
an  employee,  not  amounting  to  a  new  method  or  arrangement,  is  sufficient 
to  deprive  the  employer  of  the  exclusive  property  in  the  perfected  improve- 
ment. But  where  the  suggestions  go  to  make  up  a  complete  and  perfect 
machine,  embracing  the  substance  of  all  that  is  embodied  in  the  patent 
subsequently  issued  to  the  party  to  whom  the  suggestions  were  made,  the 
patent  is  invalid,  because  the  real  invention  or  discovery  belonged  to  an- 
other. —  Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed.  177. 

Pitts  v.  Hall.  2  Blatchf.  234;  Allen  v.  Rawson,  1  Man.  G.  &  S.  574:  Alden  v. 
Dewey,  1  Story,  336;  Minters  Pat.  1  Web.  P.  C.  132;  Curt.  Pat.  99;  Reed  v. 
Cutter,  1  Story,  599. 


§369  EMPLOYER   AND    EMPLOYEE  327 

No  one  is  entitled  to  a  patent  for  that  which  he  did  not  invent  unless  he 
can  show  a  legal  title  to  the  same  from  the  inventor  or  by  operation  of  law ; 
but  when  a  person  has  discovered  an  improved  principle  in  a  machine,  manu- 
facture or  composition  of  matter,  and  employs  other  persons  to  assist  him  in 
carrying  out  that  principle,  and  they  in  the  course  of  experiments  arising 
from  that  employment  make  valuable  discoveries  ancillary  to  the  plan  and 
preconceived  design  of  the  employer,  such  suggested  improvements  are  in 
general  to  be  regarded  as  the  property  of  the  party  who  discovered  the 
original  improved  principle,  and  may  be  embodied  in  his  patent  as  a  part 
of  his  invention.  —  Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed.  177. 

A  manufacturing  corporation  which  has  employed  a  skilled  workman, 
for  a  stated  compensation,  to  take  charge  of  its  works,  and  to  devote  his 
time  and  services  to  devising  and  making  improvements  in  articles  there 
manufactured,  is  not  entitled  to  a  conveyance  of  patents  obtained  for  inventions 
made  by  him  while  so  employed,  in  the  absence  of  express  agreement  to  that 
effect.  —  Dalzell  v.  Dueber,  149  U.  S.  315;   37  L.  Ed.  749;   13  S.   Ct.   886. 

Hapgood  v.  Hewitt,  119  U.  S.  226. 

That  an  agreement  by  an  employee  to  keep  forever  secret  for  the  benefit 
of  his  employer  any  invention  or  discovery  ho  may  make  during  the  te-m  of 
his  emplovment,  is  not  unconscionable,  see  Thibodeau  v.  Hildreth,  124  Fed. 
892;  60  C.  C.  A.  78. 

We  do  not  think  that  defendant  is  estopped,  by  reason  of  the  relation 
of  the  parties  and  his  own  conduct,  to  deny  such  equitable  title  in  complain- 
ant. Both  must  rest  upon  the  same  basis  of  fact  and  law.  Whether  the 
complainant  would  have  been  justified  in  claiming  what  is  called  a  shop  right 
or  a  right  to  a  license,  irrevocable  or  otherwise,  is  not  the  question  raised  by 
its  bill.  The  claim  is  for  the  whole  and  exclusive  title,  and  the  demand  for  a 
legal  assignment  of  the  same.  —  Pressed  Steel  v.  Hansen,  137  Fed.  403;  71 
C.  C.  A.  207. 


§  369.     Miscellaneous  Rulings. 

Suggestions  from  another,  made  during  the  progress  of  experiments, 
in  order  that  they  may  be  sufficient  to  defeat  a  patent  subsequently  issued, 
must  have  embraced  the  plan  of  the  improvement  and  must  have  furnished 
such  information  to  whom  the  communication  was  made  that  it  would  have 
enabled  an  ordinary  mechanic,  without  the  exercise  of  any  ingenuity  and 
special  skill  on  his  part  to  construct  and  put  the  improvement  in  successful 
operation.  —  Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed.  177. 

This  evidence  brings  the  case  clearly  within  the  terms  of  the  decision  of 
McClurg  v.  Kingsland,  1  How.  202,  where  it  was  declared  that  if  a  person 
employed  in  the  manufactory  of  another,  while  receiving  wages,  makes 
experiments  at  the  expense  and  in  the  manufactory  of  the  employer  has  his 
wages  increased  in  consequence  of  the  useful  result  of  the  experiments, 
makes  the  article  invented,  and  permits  his  employer  to  use  it,  no  compensa- 
tion for  its  use  being  paid  or  demanded,  and  then  obtains  a  patent  for  it, 
the  patent  is  invalid  and  void. 

And  as  the  employer  could  defend  himself  on  the  ground  of  public  use, 
so  could  a  third  person. 

And  the  fact  that  the  employer  just  before  application  purchased  an  in- 


328  THE    FIXED    LAW    OF    PATENTS  §  370 

terest  in  the  patent  to  be  granted  does  not  avoid  the  fact  of  public  use  by 
him.  —  Worley  v.  Loker,  104  U.  S.  340;  26  L.  Ed.  821. 

Pardy  was  a  mechanic  and  patent  solicitor.  Hooker  employed  him  to  get 
up  a  machine  and  gave  Pardy  his  own  ideas  as  to  how  the  desired  result 
could  be  accomplished.  The  agreement  was  that  Hooker  was  to  pay  all 
cost  of  the  work  and  pay  Pardy  for  his  services,  and  was  to  own  and  control 
the  patent  that  should  be  issued  covering  the  machine.  Hooker  paid  all  the 
cost  of  the  machines  and  paid  Pardy  in  full.  We  are  of  opinion  that  such 
suit  (for  infringement)  cannot  be  sustained,  in  view  of  the  distinct  agreement 
between  Hooker  and  Pardy.  We  are  of  the  opinion,  however,  that  the  court 
below  was,  in  view  of  the  evidence,  in  error  in  adjudging  Pardy  was  not  the 
inventor  of  the  machine  patented.  Hooker  knew,  or  must  be  held  to  have 
known,  that  such  patent  could  not  have  been  issued  except  upon  the  oath 
that  Pardy  was  the  inventor.  Hooker  did  not  himself  apply  for  such  patent, 
and  there  is  nothing  to  indicate  that  he  ever  contemplated  doing  so.  It  is 
true,  as  has  been  said,  that  he  gave  Pardy  his  own  ideas  and  employed  him 
to  get  up  such  a  machine  as  he  (Hooker)  desired,  but  the  accomplishment 
of  the  desired  end  was  evidently  left  to  Pardy.  The  court  should  not  have 
adjudged  the  patent  to  be  void,  or  that  Pardy  was  not  the  inventor.  —  Pardy 
v.  Hooker,  148  Fed.  631 ;  78  C.  C.  A.  403. 


EQUITY. 

The  Statutes  §  370 

Jurisdiction  §  371 

Miscellaneous  §  372 

See  —  Actions  §  24;  Damages  §  282; 

Decrees  §  301;    Defenses  §  306;    In- 


junction §  533;  Interferences  §  582; 
Interfering  Patents  §  586;  Jurisdic- 
tion §§  717-20;  Pleading  and  Prac- 
tice §  788;   Profits  §  825 


§  370.     The  Statutes. 

General  jurisdiction  of  courts  of  equity  in  patent  causes  is  given  under 
629  R.  S.  The  specific  powers  of  courts  of  equity  in  such  actions  is  found 
in  4921  R.  S.,  from  which  is  quoted: 

The  several  courts  vested  with  jurisdiction  of  cases  arising  under  the  patent 
laws  shall  have  power  to  grant  injunctions  according  to  the  course  and  prin- 
ciples of  courts  of  equity,  to  prevent  the  violation  of  any  right  secured  by 
patent,  on  such  terms  as  the  court  may  deem  reasonable;  and  upon  a  decree 
being  rendered  in  any  such  case  for  an  infringement,  the  complainant  shall 
be  entitled  to  recover,  in  addition  to  the  profits  to  be  accounted  for  by  the 
defendant,  the  damages  the  complainant  has  sustained  thereby;  and  the 
court  shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its  direc- 
tion. And  the  court  shall  have  the  same  power  to  increase  such  damages, 
in  its  discretion,  as  is  given  to  increase  the  damages  found  by  verdicts  in 
actions  in  the  nature  of  actions  of  trespass  upon  the  case. 


That  said  courts  (U.  S.  circuit  courts),  when  sitting  in  equity  for  the  trial 
of  patent  causes,  may  empanel  a  jury  of  not  less  than  five  and  not  more  than 
twelve  persons,  subject  to  such  general  rules  in  the  premises  as  may,  from 
time  to  time,  be  made  by  the  Supreme  Court,  and  submit  to  them  such 
questions  of  fact  arising  in  such  cause  as  such  circuit  court  shall  deem  ex- 
pedient. 

And  the  verdict  of  such  jury  shall  be  treated  and  proceeded  upon  in  the 
same  manner  and  with  the  same  effect  as  in  the  case  of  issues  sent  from 
chancery  to  a  court  of  law  and  returned  with  such  findings. 


§  371  EQUITY  329 

Further  consideration  of  this  subject  will  be  found  under  Jurisdiction, 
especially  under  §§  717-720. 


§  371.     Jurisdiction. 

A  bill  in  equity  for  a  naked  account  of  profits  and  damages  against  an 
infringer  cannot  be  sustained;  that  such  relief  ordinarily  is  incidental  to 
some  other  equity,  the  right  to  enforce  which  secures  to  the  patentee  his 
standing  in  court ;  that  the  most  general  ground  for  equitable  interposition 
is,  to  recover  to  the  patentee  the  enjoyment  of  his  specific  right  by  injunc- 
tion, against  a  continuance  of  the  infringement,  but  that  grounds  of  equitable 
relief  may  arise  other  than  by  way  of  injunction  as  when  the  title  of  the 
complainant  is  equitable  merely,  or  equitable  interposition  is  necessary  on 
account  of  the  impediments  which  prevent  a  resort  to  remedies  purely  legal ; 
and  such  an  equity  may  arise  out  of  and  inhere  in  the  nature  of  the  account 
itself,  springing  from  special  and  peculiar  circumstances  which  disable  the 
patentee  from  a  recovery  at  law  altogether,  or  render  his  remedy  in  a  legal 
tribunal  difficult,  inadequate  and  incomplete;  and  as  such  cases  cannot 
be  defined  more  exactly,  each  must  rest  upon  its  own  peculiar  circumstances, 
as  furnishing  a  clear  and  satisfactory  exception  from  the  general  rule.  — 
Root  v.  Ry.  105  U.  S.  189;  26  L.  Ed.  975. 

It  is  the  fundamental  characteristic  and  limit  of  the  jurisdiction  in  equity 
that  it  cannot  give  relief  where  there  is  a  plain  and  adequate  and  complete 
remedy  at  law;  and  hence  it  has  no  original,  independent  and  inherent 
power  to  afford  redress  for  breaches  of  contract  or  torts  by  awarding  dam- 
ages ;  for  to  do  that  was  the  very  office  of  proceedings  at  law.  When,  how- 
ever, relief  was  sought  which  equity  alone  could  give,  as  by  way  of  injunction 
to  prevent  a  continuance  of  the  wrong,  in  order  to  avoid  multiplicity  of 
suits  and  to  do  complete  justice,  the  court  assumed  jurisdiction  to  award 
compensation  for  the  past  injury,  not,  however,  by  assessing  damages, 
which  was  the  peculiar  office  of  a  jury,  but  requiring  an  account  of  profits, 
on  the  ground  that  if  any  had  been  made,  it  was  equitable  to  require  the 
wrong  doer  to  refund  them,  as  it  would  be  inequitable  that  he  should  make 
a  profit  out  of  his  own  wrong.  —  Root  v.  Ry.,  105  U.  S.  189;  26  L.  Ed.  975. 

It  is  impossible,  we  think,  to  maintain  that  the  Act  of  1870  was  meant 
to  obliterate  the  distinctions  between  the  two  jurisdictions,  or  even  to  con- 
fuse the  boundaries  between  them.  It  is  the  settled  doctrine  of  this  court 
that  this  distinction  of  jurisdiction  between  law  and  equity,  is  constitutional  to 
which  the 7th  Amendment  forbids  any  infringement  of  the  right  of  trial  by  jury, 
as  fixed  by  the  common  law.  And  the  doctrine  applies  to  patent  cases  as 
well  as  to  others.  —  Root  v.  Ry.  105  U.  S.  189 ;  26  L.  Ed.  975. 

A  court  of  equity  is  to  decide  on  the  law  and  fact  (LeGuen  v.  Gouveneur,  1 
Johns.  Cas.  500)  and  an  appeal  in  equity  is  an  appeal  upon  the  law  and  fact 
involved  in  the  case  (Adams,  Eq.,  375)  and  that,  "  in  absence  of  any  re- 
strictive clauses,  every  appellate  tribunal  is  clothed  with  all  the  powers  of 
the  tribunal  appealed  from,  and  is  bound  to  exercise  them  upon  the  same 
principles,"  (Briggs  Petition,  29  N.  H.  553)  and  "  ordinarily,  from  the  nature 
of  judgments,  the  decision  of  an  appellate  tribunal  must  have  as  great 
force,  at  least,  as  the  judgment  of  the  inferior  tribunal  upon  the  same  matter 
would  have  if  no  appeal  had  been  taken."  (Blake  v.  Oxford,  64  N.  H.  302.) 
—  Richmond  v.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

For  general  discussion  of  equity  jurisdiction  see  Crown  i\  Aluminum,  108 
Fed.  845;  48  C.  C.  A.  72. 


330  THE    FIXED    LAW    OF    PATENTS  §§  372-373 

Hoe  v.  Knapp,  27  Fed.  204;  New  York  v.  Hollingsworth,  56  Fed.  224;  Packard 
v.  Lacing,  70  Fed.  66;  Germain  v.  Wilgus,  67  Fed.  598;  Root  v.  Railway,  105 
U.  S.  189;  Shaw  v.  Cooper,  7  Pet.  292;  Walk.  Pat.  sec.  106. 

§372.     Miscellaneous. 

We  are  aware  of  no  rule  which  converts  a  court  of  equity  into  an  instru- 
ment for  the  punishment  of  simple  torts.  —  Livingston  v.  Woodworth,  15 
How.  546;  14  L.  Ed.  809. 

A  court  of  equity  will  not  interfere  to  enjoin  even  a  pending  suit  at  law, 
much  less  the  bringing  of  one,  in  the  future,  when  the  theory  of  the  bill  is 
that  there  is  a  perfect  defense  to  each  suit.  —  Hapgood  v.  Hewitt,  119  U.  S. 
226;  30  L.  Ed.  369;  7  S.  Ct.  193. 

Grand  v.  Winegar,  82  U.  S.  373;    1  High  Injunctions,  sees.  89-93  &  cases. 

A  court  of  equity  will  not  grant  a  decree  on  another  ground,  where  the 
bill  charges  actual  fraud  as  the  ground  of  relief,  and  the  fraud  is  not  proven. 
—  Dashiell  v.  Grosvenor,  66  Fed.  334;  13  C.  C.  A.  593. 

The  evidence  also  shows  that  Tremaine  &  Pain  had  constructed  the  ap- 
paratus, and  put  it  in  use  in  the  hall  of  the  Aeolian  Company  in  New  York 
on  an  organ  of  the  Ferrand  &  Votey  Organ  Company  built  for  the  Aeolian 
Company,  as  early  as  1895,  and  it  was  there  publicly  used  and  exhibited 
in  actual  use  for  playing  the  organ  for  at  least  two  years.  This  was  suffi- 
cient to  enable  appellees  to  maintain  this  action  without  showing  that  it 
had  been  in  constant  use  ever  since.  —  Los  Angeles  v.  Aeolian,  143  Fed.  880; 
75  C.  C.  A.  8S. 

Pitts  v.  Wemple,  1  Biss.  87;  Stitt  v.  Easton,  22  Fed.  649;  Masseth  v.  Johnston, 
59  Fed.  613. 

Note:  This  rule  (Hawley,  J.,  Gilbert  and  Morrow,  J.  J.,  concurring)  is,  to 
say  the  least  startling,  if  the  opinion  is  correctly  reported.  It  will  be  noted 
that  the  patent  sued  on  is  that  to  Tremaine  &  Pain,  and  that  the  use  shown 
by  the  evidence  was  that  of  the  complainant  and  its  predecessor  in  business 
of  the  device  of  the  patent  in  suit. 


EQUIVALENTS. 

General  Statement  and  Definitions  § 

373 

Combinations  §  374 

Generic  Inventions  §  375 

Improvements  §  376  (see  §  430) 

Known  Elements  §  377 


Range  §  378 
Identity  §  379 
Miscellaneous  Rulings  §  380 
See  —  Claims    §    194;    Infringement 
§§  468.  499.  528;  Process  s  816;  Speci- 
fication §  909 


§  373-     General  Statement  and  Definitions. 

The  Patent  Statute  does  not  use  the  word  equivalent.  The  doctrine  has 
been  long  and  slow  in  development;  and  since,  in  every  case,  the  question 
is  likely  to  be  quite  as  much  a  question  of  fact  as  of  law,  the  rules  which  have 
been  established  should  be  regarded  rather  as  rules  of  evidence  than  as  fixed 
rules.  The  subject  of  equivalents  also  arises  under  Claims  —  Construction, 
and  under  Infringement  —  Combinations  —  Identity. 

The  term  equivalent,  when  speaking  of  machines,  has  a  certain  definite 
meaning,  but  when  used  with  regard  to  chemical  action  of  such  fluids  as 
can  be  discovered  onlv  by  experiment,  it  only  means  equally  good.  —  Tyler 
v.  Boston,  74  U.  S.  327;  19  L.  Ed.  93. 


§373  EQUIVALENTS  331 

Devices  in  one  machine  may  be  called  by  the  same  name  as  those  con- 
tained in  another,  and  yet  they  may  be  quite  unlike  in  the  sense  of  the  patent 
law,  in  a  case  where  those  in  one  of  the  machines  perform  different  functions 
from  those  in  the  other.  In  determining  about  similarities  and  differences, 
courts  of  justice  are  not  governed  merely  by  the  names  of  things;  but  they 
look  at  the  machines  and  their  devices  in  the  light  of  what  they  do  or  what 
office  or  function  they  perform,  and  how  they  perform  it,  and  find  that  a  thing 
is  substantially  the  same  as  another,  if  it  performs  substantially  the  same 
function  or  office  in  substantially  the  same  way  to  obtain  substantially  the 
same  result,  and  that  devices  are  substantially  different  when  they  perform 
different  duties  in  a  substantially  different  way,  or  produce  a  substantially 
different  result.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 
Cahoon  v.  Ring,  1  Cliff.  620. 

Equivalents  may  be  claimed  by  a  patentee  of  an  invention  consisting  of  a 
combination  of  old  elements  or  ingredients,  as  well  as  of  any  other  valid 
patented  improvement,  provided  the  arrangement  of  parts  comprising  the 
invention  is  new,  and  will  produce  a  new  and  useful  result.  Such  a  patentee 
may  doubtless  invoke  the  doctrine  of  equivalents  as  against  an  infringer  of 
the  patent;  but  the  term  "  equivalent  "  as  applied  to  such  an  invention, 
is  special  in  its  signification,  and  somewhat  different  from  what  is  meant 
when  the  term  is  applied  to  an  invention  consisting  of  a  new  device  or  an 
entirely  new  machine.  —  Imhauser  v.  Buerk,  101  U.  S.  647;  25  L.  Ed.  945. 

In  this  sense  the  mechanical  devices  used  by  the  defendant  are  known 
substitutes  or  equivalents  employed  in  complainant's  machine  to  effect  the 
same  result;  and  this  is  the  proper  meaning  of  the  term  "  known  equivalent," 
in  reference  to  a  pioneer  machine  such  as  that  of  complainant.  Otherwise,  a  dif- 
ference in  the  particular  devices  used  to  accomplish  a  particular  result  in  such  a 
machine  would  always  enable  a  defendant  to  escape  the  charge  of  infringe- 
ment, provided  such  devices  were  new  with  the  defendant  in  such  a  machine, 
because,  as  no  machine  for  accomplishing  the  result  existed  before  that  of 
the  plaintiff,  the  particular  device  alleged  to  avoid  infringement  could  not 
have  existed  or  been  known  in  such  a  machine  prior  to  the  plaintiff's  inven- 
tion. —  Morley  v.  Lancaster,  129  U.  S.  263 ;  32  L.  Ed.  715 ;  9  S.  Ct.  299. 

An  equivalent,  in  the  law  of  patents,  is  defined  to  be  "  any  act  or  substance 
which  is  known  in  the  arts  as  a  proper  substitute  for  some  other  art  or  sub- 
stance, employed  already  as  an  element  in  an  invention,  whose  substitution 
for  that  other  act  or  substance  does  not  in  any  manner  vary  the 
idea  of  means.  It  possesses  three  characteristics:  (1)  It  must  be 
capable  of  performing  the  same  office  in  the  invention  as  the  act 
or  substance  whose  place  it  supplies;  (2)  it  must  relate  to  the  form  of  em- 
bodiment alone,  and  not  affect  in  any  degree  the  idea  of  means;  (3)  it  must 
have  been  known  in  the  arts,  at  the  date  of  the  patent,  as  endowed  with  this 
capability."  —  Duff.  Mfg.  Co.  v.  Forgie,  59  Fed.  772;  8  C.  C.  A.  261. 

1  Rob.  Pat.  sec.  247. 

One  who  claims  and  secures  a  patent  for  a  new  machine  thereby  neces- 
sarily claims  and  secures  a  patent  for  every  mechanical  equivalent  for  the 
device,  because,  within  the  meaning  of  the  patent  law,  every  mechanical 
equivalent  of  a  device  is  the  same  thing  as  the  device  itself.  A  device  which 
is  constructed  on  the  same  principle.,  which  has  the  same  mode  of  operation, 
and  which  accomplishes  the  same  result  as  another  by  the  same  means,  or  by 
equivalent  mechanical  means,  is  the  same  device,  and  a  claim  in  a  patent 
for  one  such  device  claims  and  secures  the  other.  —  Lourie  v.  Lenhart,  130 
Fed.  122;  64  C.  C.  A.  456. 

Machine  Co.  v.  Murphy,  97  U.  S.  120. 


332  THE    FIXED    LAW    OF    PATENTS  §  374 

An  equivalent  is  defined  as  a  thing  which  performs  the  same  function, 
and  performs  that  function  in  substantially  the  same  manner,  as  the  thing 
of  which  it  is  alleged  to  be  an  equivalent.  But  in  the  application  of  rules 
on  the  subject  we  must  have  in  view  the  patent  alleged  to  be  infringed.  If 
it  is  for  a  primary  invention  —  one  which  performs  a  function  never  per- 
formed by  an  earlier  invention  —  the  patentee  will  have  the  right  to  treat  as 
infringers  those  who  make  or  use  machines  operating  on  the  same  principle 
and  performing  the  same  functions  by  analogous  or  equivalent  combinations, 
even  though  the  infringing  machine  may  be  an  improvement  of  the  original. 
But  if  the  invention  is  a  secondary  invention,  that  is,  one  which  performs  a 
function  previously  performed  by  earlier  inventions,  but  which  performs 
that  function  in  a  substantially  different  way  from  any  which  preceded  it; 
an  improvement  on  a  known  machine  by  a  mere  change  of  form  or  a  new 
combination  of  parts,  the  patentee  cannot  treat  another  as  an  infringer 
who  has  improved  the  original  machine  by  the  use  of  a  different  form  or 
combination  performing  the  same  functions.  The  first  inventor  of  improve- 
ments cannot  invoke  the  doctrine  of  equivalents  and  suppress  all  other 
improvements.  —  Central  v.  Coughlin,  141  Fed.  91 ;  72  C.  C.  A.  93. 

A  mechanical  equivalent  which  may  be  substituted  for  an  omitted  mechan- 
ical element  in  a  combination  claim  is  one  that  performs  the  same  function 
by  applying  the  same  course  to  the  same  object  through  the  same  means 
and  mode  of  application.  —  Hardison  v.  Brinkman,  156  Fed.  962;  87  C.  C.  A. 


§  374.     Combinations. 

A  combination  is  substantially  different  from  that  patented  when  the  sub- 
stitute for  the  ingredient  left  out  to  perform  the  same  function  was  not  known 
as  a  proper  substitute  therefor  when  the  invention  was  patented.  —  Seymour 
v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Old  ingredients  known  at  the  date  of  the  letters  patent  granted  for  an 
invention,  consisting  of  a  combination  of  old  ingredients,  if  also  known  at 
that  date  as  a  proper  substitute  for  one  or  more  of  the  ingredients  of  the  in- 
vention secured  by  the  letters  patent,  are  the  equivalents  of  the  correspond- 
ing ingredients  of  the  patented  combination.  Such  old  ingredients  so  known 
at  the  date  of  the  letters  patent  granted,  are  the  equivalents  of  the  ingre- 
dients of  the  patented  combination,  and  no  others,  and  it  may  be  added  that 
that  and  that  only,  is  what  is  meant  by  the  rule  that  inventors  of  a  new  com- 
bination of  old  ingredients  are  as  much  entitled  to  claim  equivalents  as  any 
other  class  of  inventors.  —  Gill  v.  Wells,  89  U.  S.  1 ;  22  L.  Ed.  699. 

Gould  v.  Rees,  15  Wall.  194. 

A  party  who  merely  substitutes  another  old  ingredient  for  one  of  the 
ingredients  of  a  combination  is  an  infringer,  if  the  substitute  performs  the 
same  function  as  the  ingredient  for  which  it  was  substituted,  and  was  well 
known  at  the  date  of  the  patent  as  a  proper  substitute  for  the  omitted  ingre- 
dient ;  but  the  rule  is  otherwise  if  the  ingredient  substituted  was  a  new  one  or 
performed  substantially  a  different  function,  or  was  not  known  at  the  date 
of  the  plaintiff's  patent  as  a  proper  substitute  for  the  one  omitted,  as  in 
that  event  he  does  not  infringe.  —  Gill  v.  Wells,  89  U.  S.  1 ;  22  L.  Ed.  699. 

Roberts  v.  Harnden,  2  Cliff.  504. 

By  an  equivalent  in  such  a  case  is  meant  that  the  ingredient  substituted 
for  the  One  withdrawn  performs  the  same  function  as  the  other,  and  that  it 
was  well  known  at  the  date  of  the  patent  securing  the  invention  as  a  proper 


§  374  EQUIVALENTS  333 

substitute  for  the  one  omitted  in  the  patented  combination.  —  Gill  v.  Wells, 
89  U.  S.  1 ;  22  L.  Ed.  699. 
Gould  v.  Rees,  15  Wall.  194. 

A  patent  for  a  novel  combination  may  invoke  the  doctrine  of  equivalents. 
—  Norton  v.  Jensen,  9  Fed.  859;  1  C.  C.  A.  452. 

Imhauser  v.  Buerk,  101  U.  S.  655;  Norton  v.  Can  Co.  45  Fed.  638;  Carter  v. 
Baker,  1  Sawy.  516;  Seymour  v.  Osborne,  11  Wall.  516;  Machine  Co.  v.  Murphy, 
97  U.  S.  125;   Wicke  v.  Ostrum,  103  U.  S.  469. 

We  do  not  say  what  the  result  might  be  if  the  patentee  makes  his  descrip- 
tion of  the  elements  of  his  combination  broad  enough  to  include  in  each  or 
any  of  them  any  kind  of  mechanism  adapted  to  produce  the  same  result 
as  a  step  in  the  operation.  —  Wells  v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Phoenix  v.  Spiegel,  133  U.  S.  360. 

"  Mechanical  equivalents  "  as  the  phrase  is  to  be  understood  in  this  con- 
nection, are  such  devices  as  were  known  previously,  and  which,  in  the  partic- 
ular combinations  of  devices  specified  as  constituting  the  patented  invention, 
can  be  adapted  to  perform  the  functions  of  those  specified  devices  for  which 
they  are  employed  as  substitutes  without  changing  the  inventor's  idea  of 
means.  In  other  words,  without  introducing  an  original  idea,  producing, 
as  the  result  of  it,  an  improvement  which  is  itself  a  patentable  invention.  — 
Jensen  v.  Norton,  67  Fed.  236;   14  C  C.  A.  383. 

Rob.  Pat.  248,  253,  254. 

And  here  it  may  be  remarked  in  applying  the  doctrine  of  equivalents, 
a  distinction  is  made  between  inventions  of  specific  devices  and  inventions 
of  combinations.  In  a  simple  invention  the  range  of  equivalents  is  much 
wider  than  in  a  combination.  In  the  former  a  change  which  would  be  held 
to  be  a  substitution  of  equivalents  may  in  the  latter  be  considered  to  be  an 
introduction  of  a  new  idea  of  means.  Therefore  it  is  said,  with  reference  to 
such  elements  in  any  combination  as  constitute  its  subordinate  means,  no 
other  element  can  be  equivalent  unless  they  are  equivalent  inventions; 
that  is,  unless  they  not  merely  perform  the  same  functions,  but  perform  them 
by  applying  the  same  force  to  the  same  object  through  the  same  mode  of 
application.  It  is  only  when  an  invention  is  broad  and  primary  in  its  char- 
acter, and  the  mechanical  functions  performed  by  the  machine  are,  as  a 
whole,  entirely  new  that  the  courts  are  disposed  to  make  the  range  of  equiv- 
alents correspondingly  broad.  —  Erie  v.  American,  70  Fed.  58;  16  C.  C.  A. 
632. 

1  Rob.  Pat.  254;  Wells  v.  Curtis,  66  Fed.  318;  Miller  v.  Mfg.  Co.  151  U.  S.  207. 

The  doctrine  of  mechanical  equivalents  is  governed  by  the  same  rules  and 
has  the  same  application  when  the  infringement  of  a  patent  for  a  combina- 
tion is  in  question  as  when  the  issue  is  over  an  infringement  of  a  patent  for 
any  other  invention.  —  National  v.  Interchangeable,  106  Fed.  693 ;  45  C.  C  A. 
544. 

Schroeder  v.  Brammer,  98  Fed.  880;  Imhauser  v.  Buerk,  101  U.  S.  647;  Gris- 
wold  v.  Harker,  62  Fed.  389;  Thomson  v.  Bank,  53  Fed.  250;  Seymour  v.  Os- 
borne, 11  Wall.  516;  Gould  v.  Rees,  15  Wall.  187;  Fay  v.  Cordesman,  109  U.  S. 
408;  Water-Meter  Co.  v.  Desper,  101  U.  S.  332;  Gage  v.  Herring,  107  U.  S.  640; 
Machine  Co.  v.  Murphv,  97  U.  S.  120;  National  v.  American,  53  Fed.  367;  Belding 
v.  Challenge,  152  U.  S.  100. 

The  doctrine  of  mechanical  equivalents  is  governed  by  the  same  rules 
and  has  the  same  application  when  the  infringement  of  a  patent  for  a  com- 


334  THE    FIXED   LAW   OF    PATENTS  §375 

bination  is  in  question  as  when  the  issue  is  over  the  infringement  of  a  patent 
for  any  other  invention.  —  Brammer  v.  Schroeder,  106  Fed.  918;  46  C.  C.  A. 
41. 

Imhauser  v.  Buerk,  101  U.  S.  647;  Griswold  v.  Harker,  62  Fed.  389;  Thomson 
v.  Bank,  53  Fed.  250;  Seymour  v.  Osborne,  11  Wall.  516;  Gould  v.  Rees,  15  Wall. 
187;  Fay  v.  Cordesman,  109  U.  S.  408;  Water-Meter  Co.  v.  Desper,  101  U.  S.  332; 
Gage  v.  Herring,  107  U.  S.  640;  Machine  Co.  v.  Murphy,  97  U.  S.  120;  National  v. 
American,  53  Fed.  367;   Belding  v.  Challenge,  152  U.  S.  100. 

The  learned  judge  who  decided  the  case  below  had  no  doubt  "  that  the 
defendant's  straps  and  buckles  are  an  equivalent  of  the  complainant's  cords 
and  hooks,"  and  in  this  we  agree  with  him;  but  he  held  that  the  complain- 
ants were  not  entitled  to  invoke  the  doctrine  of  equivalency,  and  this  ruling 
we  think  was  erroneous.  By  the  changes  in  phraseology  which  were  made 
pending  the  application,  nothing  can  fairly  be  said  to  have  surrendered 
or  disallowed  that  which  the  third  claim  as  finally  approved  plainly  indicated. 
That  claim,  as  broadly  expressed,  is  for  "  lacing  devices;  "  and  it  is  not  to 
be  implied  that  either  the  Patent  Office  on  the  one  side  or  the  applicant  on 
the  other  contemplated  any  limitation  of  it  which  would  admit  of  its  evasion 
by  means  so  palpably  colorable  as  the  substitution  of  straps  for  cords  and 
buckles  for  hooks.  In  no  case  is  a  patentee  to  be  denied  protection  commen- 
surate with  the  scope  of  his  actual  and  distinctly  described  and  claimed  in- 
vention by  excluding  him  from  the  benefit  of  the  doctrine  of  equivalents. 
That  doctrine  should  have  been  applied;  for  it  is  plainly  obvious  that  the 
departures  made  by  the  defendant  are  merely  formal,  "  and  of  such  character 
as  to  suggest  that  they  are  studied  evasions  of  those  described  in  the  claim 
in  issue."  —  Lepper  v/Randall,  113  Fed.  627;  51  C.  C.  A.  337. 

Hillborn  v.  Mfg.  Co.,  69  Fed.  958;  Societe  v.  Rehfuss,  75  Fed.  657;  Bundy  v. 
Detroit,  94  Fed.  524;  Boston  v.  Bemis,  80  Fed.  287. 

The  range  of  equivalents  covered  by  the  patent  corresponds  with  the 
character  of  the  invention,  and  includes  all  forms  which  embody  the  sub- 
stance of  the  invention,  and  by  like  mechanical  co-operation  effect  sub- 
stantially the  same  result.  —  Dowagiac  v.  Brennan,  127  Fed.  143;  62  C.  C.  A. 
257. 

In  a  combination  patent  for  an  improvement  in  the  arrangement  or  adapt- 
ation of  old  elements,  the  inventor  is  not  entitled  to  a  broad  interpretation 
of  the  doctrine  of  mechanical  equivalents,  so  as  to  cover  a  device  not  specif- 
icallv  included  in  his  claims  and  specifications.  —  Hardison  v.  Brinkman, 
156  Fed.  962;  87  C.  C.  A.  8. 

Miller  v.  Eagle,  151  U.  S.  186. 


§  375-     Generic  Inventions. 

If  the  patentee  be  the  original  inventor  of  a  device  or  machine,  he  will  have 
the  right  to  treat  as  infringers  all  who  make  devices  operating  on  the  same 
principle,  and  performing  the  same  functions  by  analogous  means  or  equiva- 
lent combinations,  even  though  the  infringing  machine  may  be  an  improve- 
ment of  the  original  and  patentable  as  such.  —  McCormick  v.  Talcott,  61 
U.S.  402;   15  L.  Ed.  930. 

The  combination  of  the  first  claim  of  the  patent  being  new,  and,  conse- 
quently never  having  been  applied  in  such  a  combination,  the  complainant 
is  entitled  to  the  doctrine  of  equivalents  as  applied  to  the  combination.  — 
Clough  v.  Gilbert,  106  U.  S.  166;  27  L.  Ed.  138;  1  S.  Ct.  198. 


§  375  EQUIVALENTS  335 

If  the  state  of  the  art  was  such  as  to  entitle  the  patentee  to  a  broad  claim 
for  any  device  for  performing  the  function  by  such  or  similar  means,  the  de- 
fendants would  infringe.  —  Newton  v.  Furst,  119  U.  S.  373;  30  L.  Ed.  442; 
7  S.  Ct.  369. 

Where  an  invention  is  one  of  a  primary  character,  and  the  mechanical 
functions  performed  by  the  machine  are,  as  a  whole,  entirely  new,  all  sub- 
sequent machines  which  employ  substantially  the  same  means  to  accomplish 
the  same  result  are  infringements,  although  the  subsequent  machine  may 
contain  improvements  in  the  separate  mechanisms  which  go  to  make  up 
the  machine.  —  Morley  v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct. 
299. 

McCormick  v.  Talcott,  61  U.  S.  402;  Chicago  v.  Sayles,  97  U.  S.  554;  Clough  v. 
Barker,  106  U.  S.  166;  Duff  v.  Sterling,  107  U.  S.  636;  Consolidated  v.  Crosby,  113 
U.  S.  157;  Tilghman  v.  Proctor,  102  U.  S.  707;  Nelson  v.  Hartford,  1  Web.  P.  C. 
295. 

Where  an  inventor  has  combined  for  the  first  time  one  organization  of 
mechanism  for  performing  all  the  several  steps  of  an  entire  machine  process, 
his  invention  is  infringed  by  another  employing  three  sets  of  mechanism 
in  combination,  provided  each  mechanism  individually  considered  is  a 
proper  equivalent  for  the  corresponding  mechanism  of  the  former  patent, 
and  the  fact  that  the  mechanism  is  more  simple  makes  no  difference.  —  Mor- 
ley v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 

In  the  case  of  a  pioneer  patent,  where  the  specification  has  described  or 
indicated  an  alternative  construction,  the  claims  will  be  construed  to  in- 
clude such  alternative  construction.  —  Morley  v.  Lancaster,  129  U.  S.  263 ; 
32  L.  Ed.  715;  9  S.  Ct.  299. 

It  is  well  settled  that  a  greater  degree  of  liberality  and  a  wider  range  of 
equivalents  are  permitted  where  the  patent  is  of  a  pioneer  character  than 
when  the  invention  is  simply  an  improvement,  may  be  the  last  and  success- 
ful step,  in  the  art  theretofore  partially  developed  by  other  inventors  in 
the  same  field.  —  Cimiotti  v.  American,  198  U.  S.  399;  49  L.  Ed.  1100;  25  S. 
Ct.  697. 

Westinghouse  v.  Boyden,  170  U.  S.  537;  Singer  v.  Cramer,  192  TJ.  S.  265. 

General  application  of  doctrine  and  full  discussion  of  the  cases  in  Reece 
v.  Globe,  61  Fed.  958;  10  C.  C.  A.  194. 

Morley  v.  Lancaster,  129  U.  S.  263;  Mfa;.  Co.  v.  Adams,  151  U.  S.  139;  Miller  v. 
Mfg.  Co.  151  U.  S.  186;  Union  v.  U.  S.  112  U..  S.  624;  Brooks  v.  Fisk.  15  How. 
212;  Klein  v.  Russell,  19  Wall.  433;  Vulcanite  v.  Davis,  102  U.  S.  222;  Bene  v. 
Jeantet,  129  U.  S.  683;  Gordon  v.  Warder,  150  U.  S.  47;  Keystone  v.  Phoenix, 
95  U.  S.  274;  Fay  v.  Cordesman,  109  U.  S.  408;  Mfg.  Co.  v.  Sargent,  117  U.  S.  373; 
Dryfoos  v.  Wiese,  124  U.  S.  32;  Burns  v.  Meyer,  100  U.  S.  671;  Huber  v.  Mfg. 
Co.  148  U.  S.  270;  Brown  v.  Mfg.  Co.  57  Fed.  731;  Winans  v.  Denmead,  15 
How.  330;  Sewall  v.  Jones,  91  U.  S.  171;  Eddy  v.  Dennis,  95  U.  S.  560;  Werner  v. 
King,  96  U.  S.  218;  Electric  v.  LaRue,  139  U.  S.  601;  Hoyt  v.  Home,  145  U.  S. 
302;   Lehigh  v.  Mellon,  104  U.  S.  112. 

The  question  of  infringement  is  controlled  by  the  principles  restated  in 
Machine  Co.  v.  Lancaster,  129  U.  S.  263,  and  confirmed  in  subsequent  and 
recent  cases  (Miller  v.  Mfg.  Co.  151  U.  S.  186)  and  which  makes  these  actual 
differences,  which  would  be  important  in  a  subordinate  patent,  unessential 
when  a  patent  for  a  pioneer  invention  is  under  examination.  If  such  differences 
should  be  regarded  by  courts  as  essential,  when  the  claims  do  not  make 


336  THE    FIXED    LAW    OF    PATENTS  §  375 

the  specific  devices  essential,  patents  for  pioneer  inventions  would  ordinarily 
have  but  little  value.  —  Westinghouse  v.  N.  Y.  63  Fed.  962;  11  C.  C.  A.  528. 

If  the  invention  had  been  of  a  time  recorder,  as  a  new  thing  containing 
these  parts,  the  claims  might  cover  all  modes  of  so  bringing  the  impression 
platen  into  operation,  but  as  it  was,  they  can  cover  only  substantially  these 
means.  —  Bundy  v.  Columbian,  64  Fed.  851 ;  12  C.  C.  A.  442. 

In  view  of  prior  inventions  he  cannot  be  deemed  a  "  pioneer  in  the  art," 
and  therefore  cannot  invoke  the  doctrine  of  equivalents,  as  the  courts  apply 
that  doctrine  to  primary  inventions,  so  as  to  include  all  forms  of  devices 
which  operate  to  perform  the  same  functions  or  accomplish  the  same  result. 
—  Wells  v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Miller  v.  Mfg.  Co.  151  U.  S.  186. 

Whether  he  specifically  claims  in  his  patent  the  benefit  of  equivalents 
or  not,  the  law  allows  them  to  him  according  to  the  nature  of  his  patent. 
If  it  is  a  mere  improvement  on  a  successful  machine,  a  mere  tributary  in- 
vention, or  a  device  the  novelty  of  which  is  confined  by  the  past  art  to  the 
particular  form  shown,  the  range  of  equivalents  is  narrowly  restricted.  If 
it  is  a  pioneer  patent  with  a  new  result,  the  range  is  very  wide,  and  is  not 
restricted  by  the  failure  of  the  patentee  to  describe  and  claim  combinations 
of  equivalents.  Nothing  will  restrict  the  pioneer  patentee's  rights  in  this 
regard  save  the  use  of  language  in  his  specifications  and  claims  which  permits  no 
other  reasonable  construction  than  one  attributing  to  the  patentee  a  positive 
intention  to  limit  the  scope  of  his  invention  in  some  particular  to  the  exact 
form  of  the  device  he  shows,  and  a  consequent  willingness  to  abandon  to  the 
public  any  other  form,  should  it  be  adopted  and  prove  useful.  —  McCor- 
mick  v.  Aultman,  69  Fed.  371 ;  16  C.  C.  A.  259. 

Distinguishing,  Keystone  v.  Phoenix,  95  U.  S.  274;  Brown  v.  Mfg.  Co. 
57  Fed.  731. 

Winans  v.  Denmead,  15  How.  330;  Vulcanite  v.  Davis,  102  TJ.  S.  222;  Reece  v. 
Globe,  61  Fed.  958;  Mfg.  Co.  v.  Adams,  151  U.  S.  139;  Miller  v.  Mfg.  Co.  151 
U.  S.  186. 

Claim  1  of  the  patent  in  suit  is  a  very  broad  one,  and,  as  we  held  it  valid, 
it  would  seem  that  no  method  of  making  the  connection  between  the  actu- 
ating jacks  and  the  crank  shaft,  by  means  well  known  in  the  arts  at  the  date 
of  the  patent,  would  evade  it.  —  Bresnahan  v.  Tripp,  72  Fed.  920;  ID  C.  C.  A. 
237. 

The  pioneer  inventor  is  entitled  to  a  generic  claim,  under  which  will  be 
included  every  species  included  within  the  genus.  In  addition  to  such  generic 
claim,  he  may  include  in  the  same  application,  specific  claims  for  one  or 
more  of  the  species.  —  Von  Schmidt  v.  Bowers,  80  Fed.  121 ;  25  C.  C.  A.  323. 

Machine  Co.  v.  Lancaster.  129  TJ.  S.  263;  Clough  v.  Barker.  106  IT.  S.  166; 
Clough  v.  Mfg.  Co.  106  U.  S.  178;  Rob.  Pat.  sec.  535;  Hammerschley  v.  Scamoni, 
7  Fed.  584;  Telephone  v.  Spencer,  8  Fed.  509;  Machine  Co.  v.  Teague,  15  Fed. 
390;  Mfg.  Co.  v.  Buffalo,  20  Fed.  126;  Brush  v.  Electric,  52  Fed.  945;  Ex  parte 
Nagle,  1870  Com.  Dec.  137;  Ex  parte  Howland,  12  O.  G.  889. 

An  original  inventor,  a  pioneer  in  the  art,  he  who  evolves  the  original 
idea  and  brings  it  to  some  successful,  useful,  and  tangible  result,  is,  by  the  law 
of  patents,  entitled  to  a  broad  and  liberal  construction  of  his  claim;  whereas 
an  improver  is  onlv  entitled,  and  justly  so,  to  what  he  claims  and  nothing 
more.  —  Norton  v.  Jensen,  90  Fed.415;  33  C.  C.  A.  141. 

Note:  The  first  half  of  this  statement  is  good  law;  the  latter  half  is  not. 


§  376  EQUIVALENTS  337 

The  right  of  an  improver  to  equivalents  is  commensurate  with  the  extent 
of  his  invention. 

The  McCarty  patent,  being  found  at  the  "head  of  a  class,  though  in  a  well 
developed  art,  is  entitled  to  a  liberal  range  of  equivalency.  —  Lamson  v. 
Hillman,  123  Fed.  416;  59  C.  C.  A.  510. 

Consolidated  v.  Crosby,  113  U.  S.  157;  Morley  v.  Lancaster,  129  U.  S.  263; 
National  v.  Interchangeable,  106  Fed.  693;   Crown  v.  Aluminum,  108  Fed.  845. 

§  376.     Improvements. 

An  inventor  is  not  entitled,  where  his  invention  covers  a  particular  ma- 
chine for  performing  a  given  function,  to  claim  equivalency  in  any  machine 
which  performs  the  same  function.  —  Dryfoos  v.  Wiese,  124  U.  S.  32;  31 
L.Ed.  362;  8  S.  Ct.  354. 

Where  the  margin  of  invention  is  very  narrow,  the  doctrine  of  equivalents 
cannot  be  invoked  to  make  out  infringement.  —  Doze  v.  Smith,  69  Fed.  1002; 
16  C.  C.  A.  581. 

A  patent  to  the  original  inventor  of  a  machine  or  construction,  which  first 
performs  a  useful  function,  protects  him  against  all  machines  and  construc- 
tions that  perform  the  same  function  by  equivalent  mechanical  devices.  But 
a  patent  to  one  who  has  simply  made  a  slight  improvement  on  devices  that 
perform  the  same  function  before  as  after  the  improvement  is  protected 
against  those  only  which  use  the  very  improvement  he  describes  and  claims, 
or  mere  colorable  evasions  of  it.  —  Murphy  v.  Excelsior,  76  Fed.  965 ;  22 
C.  C.  A.  658. 

McCormick  v.  Talcott,  20  How.  402;  Stirrat  v.  Mfg.  Co.  61  Fed.  980. 

A  mere  improvement  of  a  narrow  character  upon  well-known  devices  for 
accomplishing  the  same  purpose  is  not  entitled  to  a  liberal  application  of 
the  doctrine  of  equivalents.  —  Muller  v.  Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. 

Miller  v.  Mfg.  Co.  151  U.  S.  186;  Wright  v.  Yuengling,  155  U.  S.  47. 

A  broad  claim,  such  as  is  now  insisted  upon,  would  make  his  claim  void 
for  anticipation.  In  view  of  the  history  of  devices  intended  to  perform  the 
same  function,  his  patent  can  only  be  saved  by  confining  him  to  the  specific 
form  he  has  described  and  claimed.  —  Jeffrey  v.  Independent,  83  Fed.  191 ; 
27  C.  C.  A.  512. 

Knapp  v.  Morss,  150  U.  S.  221;  Miller  v.  Mfg.  Co.  151  U.  S.  186;  Wells  v. 
Curtis,  66  Fed.  318;  Ney  v.  Mfg.  Co.  69  Fed.  405. 

This  invention  is  in  no  sense  one  of  a  primary  character,  and  complainant 
upon  this  ground  is  not  entitled  to  that  range  of  equivalents  accorded  to  such 
an  invention.  —  St.  Louis  v.  National,  87  Fed.  885;  31  C.  C.  A.  265. 

McCormick  v.  Talcott.  20  How.  402;  Miller  v.  Mfg.  Co.  151  U.  S.  207;  Bragg  v. 
Fitch,  121  U.  S.  478;  Wells  v.  Curtis,  66  Fed.  318. 

If  his  invention  is  one  which  has  marked  a  decided  step  in  the  art,  and  has 
proven  of  value  to  the  public,  he  will  be  entitled  to  the  benefit  of  the 
rule  of  equivalents,  though  not  in  so  liberal  a  degree  as  if  his  invention 
was  of  a  primary  character.  —  Bundy  v.  Detroit,  94  Fed.  524 ;  36  C.  C  A. 
375. 

Miller  v.  Mfg.  Co.  151  U.  S.  186. 

A  patent  to  the  original  inventor  of  a  machine  which  first  performs  a 
useful  function  protects  him  against  all  mechanisms  that  perform  the  same 


338  THE    FIXED    LAW    OF    PATENTS  §  377 

function  by  equivalent  mechanical  devices,  but  a  patent  to  one  who  simply- 
made  a  slight  improvement  on  a  device  that  performed  the  same  function 
before  as  after  the  improvement  is  protected  only  against  those  who  use  the 
very  improvement  that  he  describes  and  claims,  or  mere  colorable  evasions 
of  it.  —  M'Bride  v.  Kingman,  97  Fed.  217;  38  C.  C.  A.  123. 

Stirrat  v.  Mfg.  Co.,  61  Fed.  980;  Murphy  v.  Excelsior,  76  Fed.  965;  Adams  v. 
Lindell,  77  Fed.  432. 

He  is  not  entitled  to  a  monopoly  of  analogous  means  found  in  the  old  art. 
Subsequent  improvers  are  equally  free  to  accomplish  the  same  general  results 
by  different  means,  if  not  purely  colorable  changes.  The  range  of  equiva- 
lents allowed  to  the  combination  must  be  so  narrowed  as  to  include  nothing 
which  is  not  substantially  identical  with  the  means  employed.  —  Noonan  v. 
Chester,  99  Fed.  90;  39  C.  C.  A.  426. 

Knapp  v.  Morss,  150  U.  S.  221;  Wright  v.  Clinton,  67  Fed.  790;  Wells  v.  Curtis, 
66  Fed.  318. 

The  form  he  describes  and  claims  is  not  of  the  essence  of  his  invention,  and 
the  law  allows  a  patentee  any  form  which  is  the  equivalent  of  that  claim, 
unless  he  has  expressly  limited  himself  to  the  one  claim  he  describes,  or  unless 
it  is  necessary  to  limit  him  to  the  specific  form  in  order  to  save  his  patent 
from  anticipation.  Hoyt  was  not  a  pioneer.  But  his  invention  is  purely 
a  meritorious  one.  In  such  case  he  is  not  cut  off  from  a  reasonable  range  of 
equivalents  measured  by  the  advance  he  has  made  over  older  machines.  — 
McSherry  v.  Dowagiac,  101  Fed.  716;  41  C.  C.  A.  627. 

Bundy  v.  Detroit,  94  Fed.  524;  Penfield  v.  Chambers,  92  Fed.  639;  McCormick 
v.  Aultman,  69  Fed.  371;  Muller  v.  Tool  Co.  77  Fed.  621. 

That  in  the  case  of  a  narrow  improvement,  an  attempt  to  invoke  the  doc- 
trine of  equivalents  to  make  out  infringement  may  result  in  defeating  the 
claim  of  the  patent,  see  Hobbs  v.  Gooding,  111  Fed.  403;  49  C.  C.  A.  414.' 

Hoyt,  it  is  true,  was  not  a  pioneer;  but  his  invention  being  meritorious, 
he  is  not  cut  off  from  a  reasonable  range  of  equivalents,  measured  by  the 
advance  he  has  made  over  older  machines.  —  Dowagiac  v.  Minnesota,  118 
Fed.  136;  55  C.  C.  A.  86. 

Bundy  v.  Detroit,  94  Fed.  524;  McSherry  v.  Dowagiac,  101  Fed.  716;  Penfield 
v.  Chambers.  92  Fed.  639;  McCormick  v.  Aultman,  69  Fed.  371;  Muller  v.  Tool 
Co.  77  Fed.  621. 

The  appellant's  invention  being  obviously  not  a  pioneer,  but  only  an  im- 
provement upon  the  prior  art,  its  claims  cannot  be  given  a  liberal  interpre- 
tation ;  but  there  is  yet  a  right  to  a  reasonable  range  of  equivalents,  measured 
by  the  character  and  extent  of  the  improvement,  and  infringement  cannot 
be  avoided  by  mere  colorable  modifications  of  some  of  the  elements,  not  es- 
sentially varying  its  principle  or  mode  of  operation.  —  Heekin  v.  Baker, 
138  Fed.  63;  70  C.  C.  A.  559. 

National  v.  Interchangeable,  106  Fed.  693;  Dowagiac  v.  Minnesota,  118  Fed. 
136;    Standard  v.  Caster,  113  Fed.  162. 

§  377.     Known  Elements. 

Repeated  decisions  of  this  court  have  settled  the  rule  in  such  cases  that 
if  the  ingredient  substituted  by  the  defendant  for  the  one  left  out  in  the 
defendant's  machine  was  a  newly  discovered  one,  or  even  an  old  one  perform- 
ing some  new  function,  and  was  not  known  at  the  date  of  the  plaintiff's  patent 
as  a  proper  substitute  for  the  ingredient  left  out,  the  charge  of  infringement 
cannot  be  maintained.  —  Gill  v.  Wells,  89  U.  S.  1 ;  22  L.  Ed.  699. 


§  378  EQUIVALENTS  339 

Seymour  v.  Osborne,  11  Wall.  555;  Vance  v.  Campbell,  1  Black,  428;  Prouty 
v.  Ruggles,  16  Pet.  341. 

One  point  which  may  be  considered  in  determining  equivalents  is  the  age 
of  the  two  devices,  or  whether  the  alleged  infringement  was  known  and  in 
force  at  the  time  of  the  granting  of  complainants'  patent;  the  presumption 
being  in  such  case  that  it  was  used  as  an  equivalent,  only  to  avoid  the  charge 
of  infringement,  and  not  as  an  improvement.  —  Jones  v.  Munger,  49  Fed. 
61;   1  C.  C.  A.  158. 

Refinery  v.  Matthiesson,  2  Fish.  P.  C.  629;  O'Reilly  v.  Morse,  15  How.  123; 
Robertson  v.  Blake,  94  U.  S.  732. 

Other  constructions  may  now  appear  to  be  equivalents,  but  they  were  not 
known  to  be  such  when  the  appellee's  patent  was  issued,  and  the  patentee 
did  not  mention  them  as  such  in  his  specifications.  The  doctrine  of  equiva- 
lents, therefore,  does  not  aid  the  appellee.  —  Brown  v.  Stilwell,  57  Fed.  731 ; 
6  C.  C.  A.  528. 

Rowell  v.  Lindsay,  113  U.  S.  97;  Keystone  v.  Phoenix,  95  XT.  S.  274;  Harris  v. 
Allen,  15  Fed.  106;  Mfg.  Co.  v.  Rosenstock,  30  Fed.  67;  Smith  v.  Putnam,  45 
Fed.  202;  Otley  v.  Walkins,  36  Fed.  323;  Burns  v.  Meyer,  100  U.  S.  671;  Klein 
v.  Russell,  19  Wall.  433. 

The  means  by  which  this  or  any  other  result  or  function  is  accomplished 
may  be  many  and  various,  and,  if  those  several  means  are  not  mechanical 
equivalents,  each  of  them  is  patentable.  —  Boyden  v.  Westinghouse,  70 
Fed.  816;  17  C.  C.  A.  430. 

A  patent  covers  only  known  equivalents.  —  Magic  v.  Economy,  97  Fed. 
87;   38  C.  C.  A.  56. 

An  attempt  is  made  to  escape  from  this  conclusion  under  the  rule  that,  if 
the  element  substituted  for  the  one  withdrawn  has  been  discovered  since 
the  date  of  the  patent,  it  cannot  be  said  to  be  its  mechanical  equivalent. 
Gould  v.  Rees,  15  Wall.  187.  But  it  is  too  plain  for  argument  or  serious 
consideration  that  there  was  neither  discovery  nor  invention  in  perceiving 
and  applying  to  the  device  of  complainant  the  fact  that  an  infusible  metal 
secured  by  wax  or  other  fusible  material  was  the  mechanical  equivalent  of, 
performed  the  same  function  and  worked  the  same  result  as,  the  fusible  plug 
of  White,  and  could  be  effectually  used  as  its  substitute.  The  shot  and  the 
wax  were  not,  therefore,  newly  discovered  elements,  but  constituted  a  mere 
mechanical  substitute  for  the  element  which  White  described  and  claimed. 
—  Kinloch  v.  Western,  113  Fed.  652;  51  C.  C.  A.  369. 


§  378.     Range  of. 

A  patentee,  entitled  to  invoke  the  doctrine  of  equivalents  is  entitled  so  to 
do  whether  he  has  claimed  such  in  his  specification  or  not.  —  Goodyear  v. 
Davis,  102  U.  S.  222;  26  L.  Ed.  149. 

Depends  upon  the  extent  and  nature  of  the  invention.  —  Miller  v.  Eagle, 
151  U.  S.  186;  38  L.  Ed.  121 ;  14  S.  Ct,  310. 
Morley  v.  Lancaster,  129  U.  S.  263. 

It  is  manifest,  therefore,  that  it  was  not  meant  to  decide  that  only  pioneer 
patents  are  entitled  to  invoke  the  doctrine  of  equivalents,  but  that  it  was 
decided  that  the  range  of  equivalents  depends  upon  and  varies  with  the 


340  THE    FIXED    LAW    OF    PATENTS  §  378 

degree  of  invention.  —  Continental  v.  Eastern,  210  U.  S.  405;  51  L.  Ed.  922; 
28  S.  Ct.  748. 

Cimiotti  v.  American,  198  U.  S.  399;  Kokomo  v.  Kitselman,  189  U.  S.  8; 
Miller  v.  Eagle,  158  U.  S.  18G;  Ives  v.  Hamilton,  92  U.  S.  426;  Hoyt  v.  Home,  145 
U.  S.  302;  Deering  v.  Winona,  155  U.  S.  286;  Walk.  Pat.  sec.  362;  Rob.  Pat.  sec. 
258. 

The  range  of  equivalents  depends  upon  the  extent  and  nature  of  the  in- 
vention. If  the  invention  is  broad  or  primary  in  its  character,  the  range  of 
equivalents  will  be  correspondingly  broad,  under  the  liberal  construction 
which  the  courts  give  to  such  inventions.  —  Roemer  v.  Peddie,  78  Fed.  117; 
24  C.  C.  A.  39. 

Machine  Co.  v.  Lancaster,  129  U.  S.  263;   Miller  v.  Mfg.  Co.  151  U.  S.  207. 

We  have  discussed  this  general  question  so  fully  in  Long  v.  Mfg.  Co.  75 
Fed.  835,  and  Reece  v.  Globe,  61  Fed.  958  (an  extreme  case  in  one  way) 
and  in  Ball  v.  Ball,  58  Fed.  818  (an  extreme  case  the  other  way)  that  we  do 
not  deem  it  necessary  to  go  over  it  here.  The  case  at  bar  lies  between  the 
two  cases  last  cited ;  and  it  clearly  is  not  shut  out  from  the  expression  of  the 
Supreme  Court  cited  by  us  in  Reece  v.  Globe  at  page  962,  that  "  the  range 
of  equivalents  depends  upon  the  extent  and  nature  of  the  invention."  — 
Boston  v.  Bemis,  80  Fed.  287;  25  C.  C.  A.  420. 

While  it  is  clear  that  a  patentee  is  ordinarily  entitled  to  all  the  uses  and 
all  the  advantages  which  his  invention  developes  so  far  as  the  new  application 
does  not  involve  additional  invention,  yet  a  function  not  known  when  the 
patent  issues,  and  afterwards  developed,  cannot  ordinarily  be  used  to  broaden 
the  construction  of  a  claim.  —  Heap  v.  Tremont,  82  Fed.  449;  27  C.  C.  A. 
316. 

Reece  Globe,  61  Fed.  958;  Wright  v.  Clinton,  67  Fed.  790;  Long  v.  Mfg.  Co. 
75  Fed.  835;  Boston  v.  Bemis,  80  Fed.  287. 

The  range  of  equivalents  depends  upon  the  extent  and  nature  of  the  in- 
vention. —  Beach  v.  Hobbs,  92  Fed.  146;  34  C.  C.  A.  248. 
Miller  v.  Mfg.  Co.  151  U.  S.  186. 

The  more  meritorious  the  invention,  the  greater  the  step  in  the  art,  the 
less  the  suggestion  of  the  improvement  in  the  prior  art,  the  more  liberal  are 
the  courts  in  applying  in  favor  of  the  patentee  the  doctrine  of  equivalents. 
The  narrower  the  line  between  the  faculty  exercised  in  inventing  a  device 
and  mechanical  skill,  the  stricter  are  the  courts  in  rejecting  the  claim  of 
equivalents  by  the  patentee  in  respect  to  alleged  infringements.  —  Penfield 
v.  Chambers,  92  Fed.  630;  34  C.  C.  A.  579. 

A  patentee  who  is  the  original  inventor  of  a  device  or  machine  —  a  pioneer 
in  the  art  —  is  entitled  to  a  broad  and  liberal  construction  of  his  claims ;  but 
an  inventor  who  only  claims  to  be  an  improver,  is  only  entitled  to  what  he 
claims,  and  nothing  more.  —  Overweight  v.  Improved,  94  Fed.  155 ;  36 
C.  C.  A.  125. 

McCormick  v.  Talcott,  20  How.  402;  Norton  v.  Jensen,  90  Fed.  415. 

Note:  The  last  clause  of  the  above  statement  of  the  general  rule  attempted  to 
be  stated,  is  unqualifiedly  bad  law.  It  is  not  the  law,  and  never  has  been 
the  law,  that  an  improver  is  entitled  only  to  exactly  what  he  claims.  The 
rule  is  and  always  has  been,  that  an  improver  is  entitled  to  a  range  of 
equivalency  commensurate  with  the  extent  of  his  invention. 


§378  EQUIVALENTS  341 

This  court,  following  the  supreme  court,  has  pointed  out  in  a  number  of 
cases  that,  the  more  meritorious  the  patent,  the  more  liberal  will  the  court  be 
in  applying  the  doctrine  of  equivalents  to  cover  devices  adopted  for  the 
purpose  of  appropriating  all  that  is  good  in  a  patent  without  rendering  the 
tribute  which  the  patent  law  was  intended  to  secure,  for  a  temporary  period, 
to  those  who  by  their  ingenuity  have  made  possible  real  progress  in  the  in- 
dustrial arts.  —  King  v.  Hubbard,  97  Fed.  795;  38  C.  C.  A.  423. 

Bundy  v.  Detroit,  94  Fed.  524;  McCormick  v.  Aultman,  69  Fed.  371;  Wells  v. 
Curtis,  66  Fed.  318;  Miller  v.  Mfg.  Co.  151  U.  S.  186. 

One  who  merely  makes  and  secures  a  patent  for  a  slight  improvement  on 
an  old  device  or  combination,  which  performs  the  same  function  before  as 
after  the  improvement,  is  protected  against  those  only  who  use  the  very 
device  or  improvement  he  describes  or  mere  colorable  evasions  thereof.  In 
other  words,  the  term  "  mechanical  equivalent,"  when  applied  to  the  inter- 
pretation of  a  pioneer  patent,  has  a  broad  and  generous  signification,  while 
its  meaning  is  very  narrow  and  limited  when  it  conditions  the  construction 
of  a  patent  for  a  slight  and  almost  immaterial  improvement.  —  National  v. 
Interchangeable,  106  Fed.  693;  45  C.  C.  A.  544- 

Adams  v.  Lindell  Co.,  77  Fed.  432;  Stirrat  v.  Mfg.  Co.,  61  Fed.  980;  McCormick 
v.  Talcott,  20  How.  402;  R.  R.  Co.  v.  Sayles,  97  U.  S.  554;  Brill  v.  Car  Co.,  90  Fed. 
666. 

The  doctrine  of  mechanical  equivalents  conditions  the  construction  of 
all  these  patents,  and  in  determining  questions  concerning  them  the  breadth 
of  the  signification  of  the  term  is  proportioned  in  each  case  to  the  character 
of  the  advance  or  invention  evidenced  by  the  patent  under  consideration, 
and  is  so  interpreted  by  the  courts  as  to  protect  the  inventor  against  piracy 
and  the  public  against  unauthorized  monopoly.  —  National  v.  Interchange- 
able, 106  Fed.  693;  45  C.  C.  A.  544. 

Schroeder  v.  Brammer,  98  Fed.  880;  McSherry  v.  Dowagiac,  101  Fed.  716; 
Bundy  v.  Detroit,  94  Fed.  524;  Miller  v.  Mfg.  Co.,  151  U.  S.  186;  Penfield  v. 
Chambers,  92  Fed.  639;  McCormick  v.  Aultman,  69  Fed.  371;  Muller  v.  Tool  Co., 
77  Fed.  621. 

As  we  have  several  times  had  occasion  to  say,  and  what  is  indeed  well 
established  patent  law,  the  term  "  equivalent  "  has  a  variable  meaning, 
and  is  measured  by  the  character  of  the  invention  to  which  it  is  applied.  — 
Rich  v.  Baldwin,  133  Fed.  920;  66  C.  C.  A.  464. 

McCormick  v.  Aultman,  69  Fed.  371;  Penfield  v.  Chambers,  92  Fed.  630;  Mc- 
Sherry v.  Dowagiac,  101  Fed.  716. 

The  term  "  mechanical  equivalent  "  has  a  broad  and  generous  significat- 
ion in  the  interpretation  of  a  pioneer  patent,  a  very  narrow  and  restricted 
one  in  the  construction  of  a  patent  for  a  slight  improvement,  and,  in  the 
interpretation  of  patents  for  the  great  mass  of  inventions  between  these 
extremes,  its  meaning  is  always  proportioned  to  the  character  of  the  ad- 
vance or  invention  under  consideration.  —  Mallon  v.  Gregg,  137  Fed.  68; 
69  C.  C.  A.  48. 

National  v.  Interchangeable,  106  Fed.  693. 

In  a  combination  device  consisting  of  congeries  of  well-known  mechanical 
appliances,  no  liberality  of  construction  is  accorded  to  it  to  create  a  monopoly; 
but  is  limited  to  the  descriptive  elements  in  the  combination  as  expressed 
in  the  specifications;  and  no  great  liberality  of  the  doctrine  of  mechanical 
equivalents  can  be  indulged  in  in  its  favor.  As  the  applicant  for  such  com- 
bination of  old  devices  chooses  his  own  expressions  in  presenting  it,  and 


342  THE    FIXED   LAW   OF   PATENTS  §§  379-380 

is  required  to  enumerate  the  elements  of  his  claim,  he  is  limited  to  the  com- 
bined apparatus  as  specified.  And  no  one  is  an  infringer  of  a  combination 
claim  unless  he  uses  the  elements  thereof,  and  in  substantially  the  same 
mode  of  co-operation.  —  Portland  v.  Hermann,  160  Fed.  91 ;  87  C.  C.  A.  247. 
Cimiotti  v.  American,  198  U.  S.  399. 

General  rule  restated  without  change  and  cases  cited  in  Union  v.  Diamond, 
162  Fed.  148;  89  C.  C.  A.  172. 

That  where  the  improvement  is  a  narrow  one,  it  is  not  entitled  to  a  range 
of  equivalents  of  any  extent,  and  to  save  the  patent  where  the  alleged  in- 
fringement is  not  an  identical  act,  it  must  be  held  not  infringed,  see  Hendey 
v.  Prentice,  162  Fed.  481 ;  89  C.  C.  A.  401. 

U.  S.  Hog  v.  North,  158  Fed.  818. 

We  are  dealing,  not  with  a  great  invention,  but  with  a  meritorious  one 
which  has  made  a  distinct  advance  in  the  art  in  question.  We  think  the 
claim  should  be  given  an  interpretation  liberal  enough  to  protect  the  inventor 
from  the  use  of  machines  which  differ  only  in  nonessential  changes  which 
any  skilled  mechanic  would  know  enough  to  make.  —  Benbow-Brammer  v. 
Straus,  166  Fed.  114;  C.  C.  A. 


§  379.     Identity. 

The  ends  attained  being  the  same,  the  question  is  whether  the  means 
employed  are  identical  or  equivalent.  —  Ives  v.  Hamilton,  92  U.  S.  426 ; 
23  L.  Ed.  494. 

Authorities  concur  that  the  substantial  equivalent  of  a  thing,  in  the  sense 
of  the  Patent  Law,  is  the  same  as  the  thing  itself;  so  that  if  two  devices 
do  the  same  work  in  substantially  the  same  way  and  accomplish  substantially 
the  same  result,  they  are  the  same,  even  though  they  differ  in  name,  form 
or  shape.  —  Union  v.  Murphy,  97  U.  S.  120;  24  L.  Ed.  935. 

Curt.  Pat.  sec.  310. 

Though  some  of  the  corresponding  parts  of  the  machinery  are  not  the 
same,  and,  separately  considered,  could  not  be  regarded  as  identical  or  con- 
flicting, yet,  having  the  same  purpose  in  the  combination,  and  effecting  that 
purpose  in  substantially  the  same  manner,  they  are  equivalents  of  each  other 
in  that  regard.  —  National  v.  American,  53  Fed.  367 ;  3  C.  C.  A.  559. 

Cochrane  v.  Deener,  94  U.  S.  780. 

While  the  patentee  is  entitled  to  the  unknown  beneficial  uses  to  which 
his  invention  may  be  put,  he  cannot  prevent  the  use  of  ingredients  in  the 
combination  which  may  accomplish  the  previously  unknown  result,  but  not 
equivalents  of  the  patented  ingredient  in  the  performance  of  the  function 
which  is  specified  and  described  in  the  claim.  —  Johns  Mfg.  Co.  v.  Robertson, 
77  Fed.  985;  23  CCA.  601. 

Roberts  v.  Ryer,  91  U.  S.  150;  Wells  v.  Jacques,  5  O.  G.  364;  Rowell  v.  Lindsay, 
113  U.  S.  97. 


§  380.     Miscellaneous  Rulings. 

Every  device  which  is  used  to  produce  the  same  effect  is  not  the  equivalent 
for  another.  —  Burr  v.  Duryee,  68  U.  S.  531 ;  17  L.  Ed.  750. 
McCormick  v.  Talcott,  20  How.  405. 


§  380  EQUIVALENTS  343 

It  is  true  the  patent  cannot  be  extended  beyond  the  claim.  That 
bounds  the  patentee's  right.  But  the  claim  in  this  case  covers  the  whole 
process  invented,  and  the  complainants  seek  no  enlargement  of  the  process. 
Certainly  the  claim  of  the  process  ought  not  to  be  regarded  as  excluding  all 
other  substances  than  the  one  mentioned.  As  already  noticed,  the  specifica- 
tion avows  the  object  of  the  invention.  The  subject  to  be  treated  is  fibrous 
materials  of  a  vegetable  nature.  And  it  may  well  be  doubted,  in  view  of 
this  general  declaration  of  the  object,  whether  there  is  anything  that  limits 
the  scope  of  the  invention  to  a  process  of  treating  straw  and  other  like  ma- 
terials. —  American  v.  Fiber,  90  U.  S.  566;  23  L.  Ed.  31. 

In  machines,  when  a  broken  line  serves  the  same  purpose  as  a  curved  line 
the  one  is  the  equivalent  of  the  other.  —  Ives  v.  Hamilton,  92  U.  S.  426;  23  L. 
Ed.  494. 

The  use  of  a  pressure  bar  in  the  place  of  a  pressure  roll,  and  the  use  of 
springs  in  the  place  of  weights  to  produce  the  pressure  are  equivalents.  — 
Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed.  939. 

But  the  lever  or  its  equivalent  as  a  mechanical  instrument  is  made  an 
essential  element,  and  dispensing  with  the  lever  and  using  instead  the  human 
hand  is  not  the  use  of  an  equivalent,  although  in  the  plaintiff's  machine  the 
hand  is  applied  to  move  the  lever.  —  Brown  v.  Davis,  116  U.  S.  237;  29 
L.  Ed.  659;  6  S.  Ct.  379. 

Water  v.  Desper,  101  U.  S.  332;  Gage  v.  Herring,  107  U.  S.  640;  Fay  v.  Cordes- 
man,  109  U.  S.  408;  Sargent  v.  Hall,  114  U.  S.  63. 

As  that  used  by  the  defendants  differs  from  that  described  in  the  patent, 
just  as  that  employed  by  the  prior  patentee  does,  the  process  of  the  defend- 
ants cannot  be  construed  as  an  infringement  without  at  the  same  time  de- 
claring that  used  by  the  prior  patentee  to  be  an  anticipation.  —  Plummer  v. 
Sargent,  120  U.  S.  442;  30  L.  Ed.  737;  7  S.  Ct.  640. 

This  result  being  different  from  that  in  the  plaintiff's  device,  the  mecha- 
nism is  different  and  is  not  an  equivalent  of  Button's.  The  fourth  claim  of 
the  patent,  if  valid,  cannot  be  construed  so  as  to  cover  the  defendant's 
apparatus.  —  Grier  v.  Wilt,  120  U.  S.  412;  30  L.  Ed.  712;  7  S.  Ct.  718. 

Where  the  claims  covered  specifically  cylinders  with  chambers  or  depres- 
sions, they  cannot  be  construed  to  cover  plain  cylinders.  —  Hendy  v.  Golden, 
127  U.  S.  370;  32  L.  Ed.  207;  8  S.  Ct.  1275. 

Fay  v.  Cordesman,  109  U.  S.  408;  Sargent  v.  Hall,  114  U.  S.  63;  Shepard  v. 
Carrigan,  116  U.  S.  593;  White  v.  Dunbar,  119  U.  S.  47;  Crawford  v.  Heysinger, 
123  U.  S.  589. 

There  is  no  invention  in  substituting  one  valve  or  spring  of  a  familiar  shape 
for  another.  —  Westinghouse  v.  Boyden,  170  U.  S.  537;  42  L.  Ed.  1136; 
18  S.  Ct,  707. 

Imhauser  v.  Buerk,  101  U.  S.  647. 

Generally,  a  patentee,  no  matter  what  the  character  of  his  patent  may  be, 
can  claim  mechanical  equivalents  known  to  exist  at  the  time  of  the  applica- 
tion, whether  he  claims  them  or  not  in  his  application.  —  Hunt  Bros.  v. 
Cassidy,  53  Fed.  257;  3  C.  C.  A.  525. 

Walk.  Pat.  sec.  250;  Goodyear  v.  Davis,  102  U.  S.  230;  Tatum  v.  Gregory,  41 
Fed.  142. 


344  THE    FIXED    LAW   OF   PATENTS  §  380 

The  substitution  of  a  weight  to  perform  the  same  function  as  a  spring, 
is  an  equivalent  mechanism.  —  American  v.  Weston,  59  Fed.  147;  8  C.  C.  A. 
56. 

There  can  be  no  question  that  a  spring  rocker  is  a  perfectly  familiar  way 
of  obtaining  a  tipping  or  oscillating  motion,  as  well  as  a  pivot  or  hinge,  and 
that  one  is  a  well  known  equivalent  of  the  other.  —  M'Kay  v.  Dizer,  61  Fed. 
102;  9  C.  C.  A.  382. 

We  think  these  claims  and  specifications  (especially  in  view  of  the  state 
of  the  art)  constitute  a  fair  disclaimer  and  dedication  to  the  public  of  all 
right  on  the  part  of  the  patentee  to  protection  against  any  such  device  as 
that  used  by  the  appellee.  —  Stirratt  v.  Excelsior,  61  Fed.  980;  10  C.  C.  A. 
216. 

Keystone  v.  Phoenix,  95  U.  S  274;  Miller  v.  Brass  Co.,  104  U.  S.  350;  McClain 
v.  Ortmayer,  141  U.  S.  414;  Dobson  v.  Cubley,  149  U.  S.  117;  Heine  v.  Smith, 
43  Fed.  786;   Maddock  v.  Coxon.  45  Fed.  578. 

If  the  complainant  were  entitled  to  have  his  first  claim  construed  broadly, 
clearly  the  defendant's  device  would  be  an  infringement.  But  the  com- 
plainant's invention  being  limited,  as  we  have  seen,  by  the  prior  state  of  the 
art,  if  not  by  the  express  words  of  his  application,  to  the  use  of  a  single 
casting,  the  conclusion  necessarily  follows  that  the  defendant  has  not  in- 
fringed this  claim  of  the  patent.  —  Vulcan  v.  Smith,  62  Fed.  444;  10  C.  C.  A. 
493. 

Roemer  v.  Peddie,  132  U.  S.  313;  Snow  v.  Railway,  121  U.  S.  617;  Hoff  v. 
Mfg.  Co.  139  U.  S.  326;   Derby  v.  Thompson,  146  U.  S.  476. 

Means  must  necessarily  be  shown  in  the  specification,  but  the  identical 
means  or  the  special  devices  were  not,  in  the  language  of  Machine  Co.  v. 
Lancaster,  129  U.  S.  263,  "  necessary  constituents  "  of  the  invention  either 
in  the  specification  or  in  the  claim.  —  Westinghouse  v.  N.  Y.  63  Fed.  962; 
11  C.  C.  A.  528. 

The  distinction  suggested  by  the  circuit  court  between  inventions  em- 
ploying cranks  and  levers  visible  to  the  senses  and  those  employing  com- 
pressed air,  which  operates  by  modes  not  visible  to  the  senses,  —  as  to  which 
latter  devices  the  circuit  court  held  that,  "  in  judging  of  an  infringement  we 
are  to  direct  our  attention  rather  to  functional  equivalents  than  to  mechan- 
ical equivalents,"  —  we  do  not  think  well  taken,  even  in  favor  of  pioneer 
inventions.  The  Supreme  Court  in  its  ruling  in  the  great  leading  case  of 
O'Reilly  v.  Morse,  15  How.  62,  which  was  one  in  which  the  far  more  subtle 
agency  of  electricity  was  under  consideration,  neither  made  nor  intimated 
such  a  distinction.  —  Boyden  v.  Westinghouse,  70  Fed.  816;  17  C.  C.  A.  430. 

That  where  the  specification  contains,  in  a  basic  patent,  a  complete  de- 
scription of  a  species,  it  is  sufficient  to  include  the  genus  to  which  it  belongs, 
or  the  genera  which  might  properly  be  included  with  it.  —  American  v. 
Howland,  80  Fed.  395;   25  C.  C.  A.  500. 

Incandescent  Lamp  Pat.  159  U.  S.  465;  Read  v.  Schultze-Berge,  78  Fed.  493; 
Pearl  v.  Ocean,  Fed.  Cas.  10876;    Rob.  Pat.  sec.  517. 

It  is  very  usual  for  patentees  to  assert  that  Machine  Co.  v.  Lancaster 
has  a  very  general  application.  On  the  other  hand,  it  was  exceptionable, 
and  the  invention  in  suit  there  is  easily  distinguished  from  the  great  mass  of 
patented  combinations.  Its  underlying  idea  was  novel.  As  was  said  by 
the  Supreme  Court  at  page  273,  the  mechanical  function  performed  by  the 


§  380  EQUIVALENTS  345 

machine  covered  by  the  patent,  was  as  a  whole  entirely  new.  In  the  present 
suit,  however,  the  entirely  new  function  is  found  in  the  device  of  Woodward's 
earlier  patent,  and  the  patent  now  in  issue  shows  nothing  except  a  method 
of  making  the  new  function  more  useful.  In  this  particular  the  case  is 
essentially  unlike  the  conditions  of  the  hypothesis  stated  in  U.  S.  v.  Burdan, 
156  U.  S.  552,  as  it  is  entirely  plain  that  the  device  described  in  the  claim 
in  issue  would  infringe  the  device  of  Woodward's  entire  patent,  although  an 
improvement  on  it.  —  Boston  v.  Woodward,  82  Fed.  97 ;  27  C.  C.  A.  69. 
Machine  Co.  v.  Lancaster,  129  U.  S.  263. 

The  defendant's  rotary  machine  has  the  same  anvil  die,  and  its  cutters 
are  arranged  to  operate  in  relation  thereto  in  exactly  the  same  way  as  on 
the  reciprocating  machine.     They  must  be  classed  in  the  same  category. 

—  Diamond  v.  Goldie,  84  Fed.  972;  28  C  C.  A.  589. 

Oval  v.  Mfg.  Co.  60  Fed.  285. 
i 

• 

While  we  give  full  weight  to  the  decision  of  the  Supreme  Court  in  West- 
inghouse  v.  Boyden,  170  U.  S.  537,  and  recognize  that  it  is  an  abuse  of  the 
term  "  equivalent  "  to  employ  it  to  cover  every  combination  of  devices  in 
a  machine  which  is  used  to  accomplish  the  same  result,  we  are  of  the  opinion 
that  in  that  case  the  Supreme  Court  left  unqualified  the  previous  rulings  such 
as  recognized  in  the  case  of  Imhauser  v.  Buerk,  101  U.  S.  647.  —  Beach  v. 
Hobbs,  92  Fed.  146;  34  C.  C.  A.  248. 

Note:  I  think  it  is  a  misapprehension  of  the  holding  in  the  Westinghouse 
case,  to  regard  it  as  limiting  the  proper  use  of  equivalents,  since  the  question 
in  that  case  turned  upon  the  patentability  of  a  mechanical  process ;  and  that 
the  discussion  of  equivalency  was  largely  collateral  thereto. 

In  our  opinion,  neither  the  words  "  substantially  as  described  "  in  the 
claims  nor  the  proceedings  in  the  patent  office  in  which  the  patentee  ac- 
quiesced in  the  decision  that  these  words  must  be  inserted  after  the  word 
"  mechanism,"  in  the  claims,  prohibit  the  patentee  from  invoking  the  doc- 
trine of  known  equivalents  with  respect  to  alleged  infringers.  —  Beach  v. 
Hobbs,  92  Fed.  146;  34  C.  C.  A.  248. 

The  meritoriousness  of  an  improvement  depends,  first,  upon  the  extent  to 
which  the  former  art  taught  or  suggested  the  step  taken;  and,  second,  upon 
the  advance  made  in  the  usefulness  of  the  machine  as  improved.  —  Bundy 
v.  Detroit,  94  Fed.  524;  36  CCA.  375. 

McCormick  v.  Aultman,  69  Fed.  371. 

For  concrete  illustrations  of  what  are  and  what  are  not  mechanical  equiva- 
lents, see  Brown  v.  King,  107  Fed.  498;  46  C  C  A.  432. 

McKay  v.  Dizer,  61  Fed.  102;  Stearns  v.  Russell,  85  Fed.  218;  Foster  v.  Moore, 
Fed.  Cas.  4978;  Schreiber  v.  Grimm,  72  Fed.  671. 

The  mere  use  of  known  equivalents  for  some  of  the  elements  of  prior 
structures;  the  substitution  for  one  material  of  another  known  to  possess 
the  same  qualities,  though  not  to  the  same  degree;  the  mere  carrying  for- 
ward or  more  extended  application  of  the  original  idea,  involving  a  change 
in  form,  proportions,  or  degree,  and  resulting  in  doing  the  same  work  in 
the  same  way  and  by  substantially  the  same  means  —  is  not  patentable, 
even  though  better  results  are  secured ;  and  this  is  the  case,  although  what 
preceded  rests  alone  in  public  knowledge  and  use,  and  not  upon  a  patent. 

—  Sloan  v.  Portland,  139  Fed.  23;  71  C  C  A.  460.  t 


346 


THE    FIXED    LAW    OF    PATENTS 


§381 


Market  v.  Rowley,  155  U.  S.  621;  Wright  v.  Yuengling,  155  U.  S.  47;  Adams  v. 
Stamping,  141  U.  S.  539;  Burt  v.  Evory,  133  U.  S.  349;  Brown  v.  D.  C,  130  U.  S. 
87;  Crouch  v.  Roemer,  103  U.  S.  797;  Roberts  v.  Ryer,  91  U.  S.  150;  Smith  v. 
Nichols,  21  Wall.  115;  Hicks  v.  Kelsey,  18  Wall.  670;  National  v.  Interchangeable, 
106  Fed.  693;  National  v.  Lithographic,  81  Fed.  395. 

Note:  This  statement  of  Judge  Hook,  Eighth  Circuit,  like  most  general 
statements  of  the  kind,  is  open  to  material  criticism.  While  such  general 
propositions  are  sound,  the  specific  modifications  essential  to  equity  render 
sweeping  statements  more  or  less  dangerous. 

Jordan  in  his  specifications  took  pains  to  say  that  he  had  adopted  the 
squeezing  device,  which  he  preferred,  but  that  the  device  might  be  varied 
by  those  skilled  in  the  art  without  departing  from  the  principle  of  his  in- 
vention. The  Eldridge  patent  proves  that  this  is  true.  An  examination 
of  the  two  patents  carries  the  conviction  that  Eldridge  has  appropriated 
Jordan's  inventive  idea.  It  is  the  whole  purpose  of  the  doctrine  of  equiva- 
lency to  protect  the  inventor  against  piracy  and  secure  to  him  the  benefit 
of  that  which  he  has  invented.  —  American  v.  Hickmott,  142  Fed.  141 ; 
73  C.  C.  A.  359. 

Where  three  separate  elements,  each  performing  an  individual  function, 
are  supplanted  by  a  single  element  which  itself  performs  the  functions  of 
all  three,  it  is  quite  clear  that  the  three-fold  capacity  of  the  single  element 
is  not  the  equivalent  of  the  three  single  elements.  —  Lambert  v.  Lidgerwood, 
154  Fed.  372;  83  C.  C.  A.  350. 

Assuming  that  there  was  an  invention  at  all,  under  the  prior  decisions  of 
this  court,  it  was  of  that  class  as  to  which  there  is  barely  any  room  for  equiv- 
alents. —  U.  S.  i'.  North,  158  Fed.  818;  86  C.  C.  A.  78. 

Ford  v.  Bancroft,  98  Fed.  309.  Bradford  v.  Belknap,  105  Fed.  63.  Distinguish- 
ing Reece  v.  Globe,  61  Fed.  958. 


ESTOPPEL. 

Corporations  §  381 

Evidence  of  §  382 

Interference  Adjudication  §  383  (see 

§580) 

Licensor  or  Former  Owner  §  384 

Owner  of  Patent  or  Licensee  §  385 

Privity  §  386 

Miscellaneous  §  387 

See  —  Abandonment  §  21;   Adjudica- 


tion §  33;  Amendment  §  52;  Assign- 
ment §  149;  Attorneys  §  178;  De- 
fenses §  315;  Disclaimer  §  339; 
Employer  and  Employee  §  366; 
Infringement  §§  509-13;  Laches  § 
726;  License  §  754;  Licensor  and 
Licensee  §  765;  Pleading  and  Practice 
§  788;   Res  Judicata  §  893 


§  381.     Corporations. 

The  T.  H.  Co.  consolidated  with  the  Edison  General.  Formerly  the  T.  H. 
Co.  was  in  co-operation  with  the  Sawyer  Man  Co.  and  wras  bound  by  various 
contracts  involving  the  Sawyer  Man  lamp  patents.  This  wras  held  out  to  be 
an  estoppel.  —  Edison  Electric  v.  Sawyer-Man,  53  Fed.  592;  3  C.  C.  A.  605. 

It  has  been  suggested,  but  manifestly  cannot  be  true,  that  merely  because 
he  is  a  stockholder  in  the  cabinet  company,  the  appellant  may  not  deny  the 
validity  of  a  patent  owned  by  the  company.  —  Antisdel  v.  Chicago,  89  Fed. 
308;  32  C.  C.  A.  216. 

The  old  company  held  a  mere  license  from  the  owner  of  the  patent.  The 
managing  directors,  in  the  absence  of  the  owner  of  the  patent,  clearly  gave 
the  representatives  of  the  new  company  to  understand  that  the  patent  in 


§§  382-384  ESTOPPEL  347 

question  was  an  asset  of  the  old  company.  Held:  Representations  made  by 
the  managing  directors  and  principal  owners  of  the  old  company,  even  though 
they  were  more  explicit  than  they  are  proved  to  have  been,  in  his  absence  or 
without  his  certain  specific  knowledge,  could  not  create  an  estoppel  in  favor 
of  the  new  company  as  against  him.  —  Standard  v.  Arrott,  135  Fed.  750; 
68  C.  C.  A.  388. 

§  382.     Evidence  of. 

It  may  be  that  questions  were  there  involved  and  decided  concerning  other 
claims  of  the  patents  and  other  parts  of  steam  engines  in  steam  pumps. 
We  do  not  know,  and  estoppels  must  be  asserted.  —  Union  v.  Battle  Creek, 
104  Fed.  337;  43  C.  C.  A.  560. 

Where  an  estoppel  is  relied  on,  the  facts  upon  which  it  is  based  must  be 
proved  with  particularity  and  precision,  and  nothing  can  be  supplied  by 
inference  or  intendment.  —  Standard  v.  Arrott,  135  Fed.  750;   68  C.  C.  A. 

388 

§  383.     Interference  Adjudication. 

In  the  absence  of  proof  that  defendant  was  in  privity  with  the  applicant 
whose  patent  was  voided  on  interference  with  the  patent  in  suit,  the  de- 
fendant is  not  estopped  to  deny  the  validity  of  the  patent  in  suit.  —  McCarty 
v.  Lehigh,  160  U.  S.  110;  40  L.  Ed.  358;  16  S.  Ct.  240. 

Russell  v.  Place,  94  U.  S.  606. 

We  do  not  think  that  petitioner  was  estopped  from  insisting  upon  his 
application  by  proceeding  with  the  interference.  It  would  be  pressing  mere 
order  of  procedure  and  the  convenience  of  the  Patent  Office  too  far  to  give 
them  such  result  under  the  circumstances.  —  Steinmetz  v.  Allen,  192  U.  S. 
543 ;  48  L.  Ed.  555 ;  24  S.  Ct.  416. 

So  far  as  respects  the  Howe  patent,  and  the  machines  made  and  used  by 
the  defendant  thereunder,  it  is  clear  that  the  decisions  of  the  patent  office 
in  favor  of  Howe  have  been  acquiesced  in  by  the  complainant  for  such  length 
of  time  as  to  work  an  abandonment  of  any  claim  to  the  invention  therein 
involved.  —  Fassett  v.  Ewart,  62  Fed.  404;  10  C.  C.  A.  441. 

Gandy  v.  Marble,  122  U.  S.  432. 

§  384.     Licensor  or  Former  Owner. 

One  of  the  respondents  below  was  the  original  patentee,  and  the  title  of 
complainants  is  derived  under  assignments  from  him  for  a  pecuniary  con- 
sideration, valuable  in  law,  although  said  to  be  small.  Consequently  an 
estoppel  operates  against  him.  The  precise  nature  of  this  estoppel  does  not 
seem  to  have  been  always  clearly  apprehended.  It  is,  in  effect,  that,  when 
one  has  parted  with  a  thing  for  a  valuable  consideration,  he  shall  not,  so 
long  as  he  retains  the  consideration,  set  up  his  own  fraud,  falsehood,  error 
or  mistake  to  impair  the  value  of  what  he  has  thus  parted  with.  As  applied 
to  the  specifications  of  a  patent,  the  vendor  patentee  is  as  much  barred  from 
setting  up  that  his  allegations  therein  were  merely  erroneous  as  that  they  were 
wilfully  false.  —  Babcock  v.  Clarkson,  63  Fed.  607;   11  C.  C.  A.  351. 

Sturm  v.  Baker,  150  U.  S.  312;  Brant  v.  Iron  Co.  93  II.  S.  326;  Cropper  v 
Smith,  26  Ch.  Div.  700;  L.  R.  10  App.  Cas.  249;  Hall  v.  Conder,  2  C.  B.  N.  S.  22; 
Chambers  v.  Crichiev,  33  Beav.  374;  Brazee  v.  Schofield,  124  U.  S.  495-  Ball  v 
Ball,  58  Fed.  818;  Clark  v.  Adie,  L.  R.  2  App.  Cas.  423;  Trotman  v.  Wood,  16 
B.  N.  S.  479;  Crosthwaite  v.  Steele,  6  R.  P.  C.  190;  Ashworth  v.  Roberts,  9 
R.  P.  C.  309. 


348  THE    FIXED    LAW    OF    PATENTS  §  385 

In  a  suit  for  infringement,  brought  against  the  assignor  of  a  patent  by 
his  assignee,  the  assignor  is  estopped  from  denying  the  validity  of  his  patent. 
We  cannot  say  that  the  patent  has  been  anticipated  by  prior  structures,  or 
that  it  is  void  for  want  of  novelty  or  utility.  —  Martin  v.  Martin,  67  Fed.  786; 
14  C.  C.  A.  642. 

Babcock  v.  Clarkson,  63  Fed.  607  —  58  Fed.  581;  Ball  v.  Ball,  58  Fed.  818; 
Foulks  v.  Kamp,  3  Fed.  898;  Onderdonk  v.  Fanning,  4  Fed.  148;  Purifier  v. 
Guilder,  9  Fed.  155;  Curran  v.  Burdsall,  20  Fed.  835;  Underwood  v.  Warren,  21 
Fed.  573;  Parker  v.  McKee,  24  Fed.  808;  American  v.  Larraway,  28  Fed.  141; 
Corbin  v.  Yale,  58  Fed.  563;  Chambers  v.  Crichley,  33  Beav.  374;  Hocking  v. 
Hocking,  4  Web.  Pat.  Cas.  434;  Walton  v.  Lavator,*  29  L.  J.  C.  P.  275. 

Estoppel  was  claimed  through  patents  not  in  suit.  Held:  Non  constat  that 
patents  which  had  not  been  brought  to  our  attention,  and  not  the  one  in 
suit,  furnish  the  basis  of  this  alleged  estoppel,  if  such  an  estoppel  can  be 
maintained.  —  Martin  v.  Martin,  67  Fed.  786;  14  C.  C.  A.  642. 

Being  a  mere  subordinate,  he  cannot  be  enjoined,  under  the  circumstances 
of  this  case,  unless  his  principles  are  also  subject  to  injunction.  Under  the 
rule  in  Belnap  v.  Schild,  161  U.  S.  10,  he  cannot  be  holden  to  account  for 
profits;  so  there  is  no  ground  for  equitable  jurisdiction  against  him  severed 
from  the  person  who  employed  him.  While  a  person  occupying  a  subor- 
dinate position,  may  be  in  privity  with  his  principal,  in  the  sense  in  which 
that  word  may  properly  be  used  in  this  connection,  the  reverse  is  not  or- 
dinarily true.  —  Boston  v.  Woodward,  82  Fed.  97 ;  27  C.  C.  A.  69. 

The  plaintiff  contends  that  the  defendant  having  granted  the  license  to 
them,  for  a  valuable  consideration,  is  estopped  from  denying  that  the  patent 
is  valid,  and  we  are  of  opinion  that  he  is  right  in  this.  In  a  case  recently  de- 
cided by  this  court,  it  was  held  that  the  patentee,  after  having  transferred 
his  interest  in  the  patent,  was  precluded  from  denying  the  validity  thereof 
to  the  same  extent,  and  to  the  same  extent  only,  that  a  third  person  would 
be,  subject  to  the  limitations,  however,  that  he  could  not  allege  the  total 
invalidity  of  the  patent.  The  result  being  that  he  is  still  left  at  liberty  to 
show  that,  assuming  the  patent  to  be  valid,  it  is  nevertheless  subject  to  the 
limitations  imposed  thereon  by  the  prior  art.  —  Smith  v.  Ridgley,  103  Fed. 
875;  43  C.  C.  A.  365. 

Noonan  v.  Athletic,  99  Fed.  90;  Mfg.  Co.  v.  Scharling,  100  Fed.  87. 

The  contention  that  the  defendants  are  estopped  from  questioning  their 
(the  patent's)  validity  because  of  Ratican's  relation  to  them  is  untenable. 
Whatever  his  original  part  interest  in  them  or  his  personal  conduct  with 
respect  to  them  might  have  upon  his  present  interests,  as  to  which  we 
express  no  opinion,  the  rights  of  others  are  now  involved  in  this  case,  and 
their  relation  to  Ratican  is  not  so  clearly  shown  as  to  warrant  making  any 
orders  affecting  their  rights  on  the  assumption  of  identity  with  him.  —  St. 
Louis  v.  Sanitary,  161  Fed.  725;  88  C.  C.  A.  585. 

§  385.     Owner  of  Patent  or  Licensee. 

The  argument  is  that  the  United  States  ought  not  to  be  estopped,  as 
a  licensee,  to  deny  the  validity  of  the  patent  because  it  is  not  a  vendor,  but 
simply  a  user,  of  the  patented  article,  and  therefore  has  not  enjoyed  the 
advantage  of  a  practical  monopoly,  as  a  seller  might  have  enjoyed  it  even  if 
the  patent  turned  out  to  be  bad.  This  distinction  between  sale  and  use, 
even  for  a  non-competitive  purpose,  does  not  impress  us.  So  far  as  the  practi- 
cal advantage  secured  is  matter  for  consideration,  whether  a  thing  made 


§  385  ESTOPPEL  349 

under  a  patent  supposed  to  be  valid  is  used  or  sold,  it  equally  may  be  assumed 
that  the  thing  would  not  have  been  used  or  sold  but  for  the  license  from  the 
patentee.  —  U.  S.  v.  Harvey,  196  U.  S.  310;  49  L.  Ed.  492;  25  S.  Ct.  240. 

The  validity  of  a  patent  cannot  be  disputed  by  one  who  undertakes  to 
justify  under  a  license.  —  Piatt  v.  Fire  Extinguisher,  59  Fed.  897;  8  C.  C.  A. 
357. 

Kinsman  v.  Parkhurst,  18  How.  289;  Brown  v.  Lapham,  27  Fed.  77. 

The  fact  that  for  a  time  the  defendant  was  a  licensee  of  the  patent  in 
suit,  cannot,  of  course,  estop  the  defendant  from  disputing  its  validity  in 
a  suit  for  infringements  charged  to  have  taken  place  after  the  license  was 
withdrawn.  Such  a  fact,  in  a  doubtful  case,  might  have  considerable  evi- 
dential force  as  an  admission  of  the  validity  of  the  patent  by  the  licensee.  — 
Dueber  v.  Robbins,  75  Fed.  17;  21  C.  C.  A.  198. 

The  attempt  to  show  by  the  testimony  of  the  patentee  that  the  patent 
embraced  something  which  he  did  not  invent,  and  to  restrict  the  patent  to 
his  understanding  of  the  scope  of  the  invention,  was  unwarranted  and  im- 
proper. Even  if  he  had  been  a  party  to  the  suit,  he  could  not  have  been 
bound  by  a  mistaken  judgment  which  he  might  have  been  urged 
to  declare  of  the  scope  or  character  of  the  patent,  and,  as  against 
the  assignee  of  his  title,  his  testimony  in  that  particular  was  wholly  incom- 
petent. —  Elgin  v.  Creamery,  80  Fed.  293;  25  C.  C.  A.  426. 

The  question  here  is  whether  one  who  has  been  under  a  contract  of  agency, 
determinable  at  will,  to  sell  a  patented  article,  if  he  discovers  or  concludes 
that  the  patent  is  valid,  may  openly  repudiate  the  agency,  and,  when  sued 
for  subsequent  acts  of  infringement,  may  plead  the  invalidity  of  the  patent 
as  a  defense.  We  know  of  no  authority,  and  believe  there  is  no  sound  reason, 
to  the  contrary.  —  Antisdel  v.  Chicago,  89  Fed.  308;  32  C.  C.  A.  216. 

The  defendants  had  held  a  license  to  the  patented  machines  and  had 
marked  the  machines  patented  under  the  patent  in  suit.  The  license  had 
expired  and  the  rights  of  defendants  had  ceased.  Held:  On  questions  of 
utility  and  invention,  facts  of  this  class  are  sometimes  persuasive  as  matters 
of  evidence  but,  as  the  respondents  never  did  use  complainant's  specific 
form  of  feeder,  to  give  these  facts  any  substantial  effect  in  supplementing 
complainant's  case,  would  be  merely  reasoning  within  a  circle.  —  Cushman  v. 
Goddard,  95  Fed.  664;  37  C.  C.  A.  221. 

But  this  estoppel,  for  manifest  reasons,  does  not  prevent  him  from  denying 
infringement.  To  determine  such  an  issue,  it  is  admissible  to  show  the 
state  of  the  art  involved,  that  the  court  may  see  what  the  thing  was  which 
was  assigned,  and  thus  determine  the  primary  or  secondary  character  of 
the  patent  assigned,  and  the  extent  to  which  the  doctrine  of  equivalents  may 
be  invoked  against  the  assignor.  The  court  will  not  assume  against  an  as- 
signor, and  in  favor  of  his  assignee,  anything  more  than  that  the  invention 
presented  a  sufficient  degree  of  utility  and  novelty  to  justify  the  issuance 
of  the  patent  assigned,  and  will  apply  to  the  patent  the  same  rule  of  con- 
struction, with  this  limitation,  which  would  be  applicable  between  the  pat- 
entee and  a  stranger.  —  Noonan  v.   Chester,  99  Fed.  90;   39  C.  C.  A.  426. 

Babcock  v.  Clarkson,  63  Fed.  607:  Ball  v.  Ball.  58  Fed.  818;  Cash  Carrier  v. 
Martin,  67  Fed.  786;  Chambers  v.  Crichlev,  33  Beav.  374;  Construction  Co.  v. 
Stromberg,  66  Fed.  550;  Clark  v.  Adie,  2  App.  Cas.  423. 

After  the  termination  of  a  license,  the  parties  are  freed  from  any  estoppel 
resting  upon  them  while  in  their  former  relation.    The  licensee  may  dispute 


350  THE    FIXED    LAW    OF    PATENTS  §  386 

the  title  or  right  of  the  former  licensor  to  the  same  extent  as  a  stranger  might. 
The  estoppel  is  raised  for  the  protection  of  the  interest  which  the  assignor 
or  licensor  professed  to  convey,  and  has  no  further  office.  —  Stimpson  v. 
Stimpson,  104  Fed.  893;  44  C.  C.  A.  241. 

Mfg.  Co.  v.  Robbins,  75  Fed.  17;  Noonan  v.  Athletic,  99  Fed.  90;  Smith  v. 
Ridgley,  103  Fed.  975. 

Being  himself  the  inventor  and  applicant  for  the  patent,  defendant, 
under  well  settled  principles,  may  not  challenge  its  validity,  and  he  does 
not  undertake  to  do  so.  —  Piaget  v.  Headley,  108  Fed.  870;  48  C.  C.  A.  116. 

A  subsequent  purchaser  from  a  licensor  and  guarantor  takes  the  patent 
subject  to  all  equities,  but  this  does  not  include  any  obligations  of  the  as- 
signor. —  Bradford  v.  Kisinger-Ison,  113  Fed.  811 ;  51  C.  C.  A.  483. 

There  is  evidence  to  show  that  the  Regent  Co.  had  designed  the  alleged 
infringing  mirrors  before  employing  Curry  (one  of  the  inventors  of  the  patent 
in  suit),  that  Curry  had  no  voice  in  deciding  what  should  be  manufactured, 
and  that  his  efforts  were  directed  to  organizing  the  factory  so  as  to  produce 
better  and  cheaper  what  the  Regent  Co.  had  already  determined  upon. 
On  this  showing  there  is  basis  for  contending  that  the  Regent  Co.  is  not 
involved  in  the  estoppel  against  Curry.  —  Regent  v.  Penn,  121  Fed.  80; 
57  C.  C.  A.  334. 

Boston  v.  Woodward,  82  Fed.  97. 

Being  the  assignor,  he  cannot  be  permitted  to  as"sail  the  validity  of  his 
own  patent.  —  Wold  v.  Thayer,  148  Fed.  227;  78  C.  C.  A.  350. 
Siemens-Halske  v.  Duncan,  142  Fed.  157. 

§  386.     Privity. 

One  who,  for  his  own  interests,  assumes  the  defense  of  an  action,  is  bound 
by  the  judgment  as  if  he  had  been  a  party  thereof  or  in  privity  with  the 
defendant.  But  it  must  not  be  overlooked  that  the  rule  is  subject  to  the 
limitation  that,  in  order  that  one  not  a  party  who  has  assumed  the  burden 
of  the  defense  of  an  action  shall  be  bound  by  the  judgment  therein  rendered, 
his  connection  with  the  defense  must  be  open  and  known  to  the  opposite 
party.  Estoppels  must  be  mutual.  —  Cramer  v.  Singer,  93  Fed.  636 ;  35 
C.  C.  A.  508. 

Herm.  Estop.  157;  2  Black.  Judgm.  sec.  540;  Freem.  Judgm.  189;  Andrews 
v.  Pipe  Works.  76  Fed.  166;  Lacroix  v.  Lyons,  33  Fed.  437;  Schroeder  v.  Lahr- 
man,  26  Minn.  87;  Ass'n  v.  Rogers,  42  Minn.  123;  Allen  v.  Hall,  1  A.  K.  Marsh,  425. 

The  evidence  before  us  tends  strongly  to  show  that  the  appellants  were 
privy  in  fact  to  the  various  proceedings  involved  in  this  litigation;  but  if 
we  were  to  assume  that  the  present  appellants  were  parties  in  a  part  of  u 
prior  litigation,  and  that  they  conducted,  controlled,  and  paid  the  expenses 
of  that  in  which  they  were  not  parties  of  record,  we  could  not,  in  the  present 
aspect  of  the  case  accept  such  conditions  as  operating  as  a  strict  estoppel, 
for  the  reason  that  the  final  decree  in  the  earlier  litigation  was  not  entered 
after  this  proceeding  was  instituted,  and  is  not  so  pleaded  as  to  strictly  and 
legally  present  the  question  of  estoppel.  —  Bresnahan  v.  Tripp,  99  Fed.  280; 
39  C.  C.  A.  508. 

An  estoppel  must  be  mutual.  If  the  defendants  did  not  openly  and  avow- 
edly, to  the  knowledge  of  complainants,  undertake  the  defense  of  that  suit, 
the  complainants  would  not  have  been  estopped  by  the  decree,  if  adverse 


§  :>S7  ESTOPPEL  351 

to  them,  in  a  subsequent  suit  against  the  defendants.  —  Lane  v.  Wells, 
99  Fed.  286;   39  C.  C.  A.  528. 

Herm.  Estop,  p.  157;  Andrews  v.  Pipe  Works,  76  Fed  166;  Cramer  v.  Mfg. 
Co.  93  Fed.  636. 

Even  if  B.  had  been  a  party,  formal  admissions  made  in  pleadings  by- 
one  party  to  a  litigation  are  not  sufficient  to  bind  him  in  another  suit  be- 
tween different  parties,  involving  the  same  subject-matter.  —  American  v. 
Phoenix,  113  Fed.  629;  51  C.  C.  A.  339. 

Gramophone  v.  Gramophone,  107  Fed.  129. 

The  doctrine  is  well  settled  that  one  who  for  his  own  interest  joins  in  the 
defense  of  a  suit  to  which  he  is  not  a  party  of  record  is  as  much  concluded 
by  the  judgment  as  if  he  had  been  a  party  thereto,  provided  his  conduct 
in  that  respect  was  open  and  avowed  or  otherwise  well  known  to  the  oppo- 
site party.  An  estoppel  by  decree  exists,  although  the  demand  in  the  two 
cases  is  not  the  same,  whenever  the  question  upon  which  the  recovery  in  the 
second  case  depends  has  been  before  decided,  under  like  conditions,  between 
the  same  parties  or  those  in  privity  with  them.  —  Penfield  v.  Potts,  126  Fed. 
475;  61  C.  C.  A.  371. 

Lane  v.  Welds,  99  Fed.  286;  Southern  v.  U.  S.  168  U.  S.  1. 

§  387.     Miscellaneous. 

No  principle  is  better  settled  than  that  a  party  is  not  estopped  by  his 
silence  unless  it  has  misled  another  to  his  hurt.  —  Railroad  v.  DuBois,  79 
U.S.  47;  20  L.  Ed.  265. 

Hill  v.  Esplay,  31  Pa.  334. 

When  the  inventor  disclosed  his  invention  which  defendant  did  not  know 
was  to  be  patented  and  defendant  used  same,  he  is  not  estopped  by  such  use 
to  deny  the  validity  of  the  patent  subsequently  obtained.  —  Leggett  v. 
Standard,  149  U.  S.  287;  37  L.  Ed.  737;  13  S.  Ct.  902. 

The  fact  that  defendant  had  applied  for  a  patent  upon  the  device  which  he 
subsequently  infringed  and  failed  does  not  estop  him  from  denying  the  nov- 
elty of  the  patent  sued  on.  —  Haughey  v.  Lee,  151  U.  S.  282;  38  L.  Ed.  162; 
14  S.  Ct.  331. 

The  same  principle  is  applied  to  an  inventor  who  makes  his  discovery 
public,  looks  on,  and  permits  others  to  use  it  without  objection  or  assertion 
of  a  claim  for  a  royalty.  In  such  case  he  is  held  to  abandon  his  inchoate 
right  to  the  exclusive  use  of  his  invention,  to  which  a  patent  would  have  en- 
titled him,  had  it  been  applied  for  before  such  use.  —  Gill  v.  U.  S.  160  U.  S. 
426;  40  L.  Ed.  480;  16  S.  Ct.  322. 

Pennock  v.  Dialogue,  2  Pet.  1,  16. 

It  may  well  be  doubted  whether  the  pendency  of  a  motion  for  a  new  trial 
would  interfere  in  any  way  with  the  operation  of  the  judgement  as  an  estoppel. 
—  Hubbell  v.  U.  S.  171  U.  S.  203;  43  L.  Ed.  136;  18  S.  Ct.  828. 

Harris  v.  Bernhart,  97  Cal.  546;  Chase  v.  Jefferson,  1  Houst.  257;  Young  v. 
Brehe,  19  Nev.  379. 

The  issue  of  estoppel  may  be  raised  by  the  court  although  neither  party 
intended  to  raise  it.  —  Woodward  v.  Boston,  63  Fed.  609;  11  C.  C.  A.  353. 

It  is  said  that  the  right  to  set  up  estoppel,  was  waived  in  various  ways. 
There  was  no  waiver  by  the  pleadings.    The  estoppel  wouM  properly  arise 


352 


THE    FIXED    LAW    OF    PATENTS 


388 


as  a  matter  of  rebuttal  by  complainant  on  the  proofs,  and  not  on  the  plead- 
ings. The  complainant  might  have  anticipated  the  defense  of  invalidity  by 
inserting,  in  its  bill,  charges  and  an  avoidance.  But  it  was  at  its  option  to 
do  so,  and  it  lost  no  right  by  not  availing  itself  of  this  option.  Story  Eq.  PI. 
sec.  33.  —  Woodward  v.  Boston,  63  Fed.  609;  11  C.  C.  A.  353. 

The  defendant,  while  engaged  in  selling  the  patented  article,  had  been 
accustomed  to  represent  to  the  public  that  the  patent  was  valid.  As  against 
him,  that  was  better  proof  of  the  validity  of  the  letters  patent  than  any 
ordinary  evidence  of  public  acquiescence  could  have  been.  —  Antisdel  v. 
Chicago,  98  Fed.  308;   32  C.  C.  A.  216. 

The  appellee  contends  for  an  estoppel  by  reason  of  a  certain  release  that 
was  obtained  from  him  by  the  said  stockholder  and  another  large  stock- 
holder, as  a  co-partnership  just  about  the  time  of,  or  a  few  days  after,  the 
organization  of  the  defendant  company.  This  release  was  for  all  past  in- 
fringements of  the  parties,  in  their  own  personal  business,  and  could  not  in 
any  way  affect  the  defendant  corporation  as  an  estoppel,  even  if  the  release 
had  not  contained  as  its  concluding  paragraph,  the  following:  "  It  is  under- 
stood that  it  does  not  in  any  way  bind  or  affect  the  corporation  known  as 
the  Newark  Spring  Mattress  Company."  —  Newark  v.  Ryan,  102  Fed.  693; 
42  C.  C.  A.  594. 

In  the  absence  of  an  expressly  proved  fraud,  there  can  be  no  estoppel 
based  upon  acts  or  conduct  of  the  party  sought  to  be  estopped,  where  such 
conduct  is  as  consistent  with  honest  purpose  or  with  absence  of  negligence, 
as  with  their  opposites.  —  Standard  v.  Arrott,  135  Fed.  750;  68  C.  C.  A.  388. 


EVIDENCE. 

Statutory  Provisions  §  388 
Anticipation  (see  §  58) 

Prior  Art  §  389 

Prior  Patent  or  Publication  §  390 

Prior  Use  §  391 

Rebuttal  §  392 

Miscellaneous  §  393 
Assignment  §  394  (see  §  149) 
Depositions  §  395 
Documentary  §  396 
Exhibits  §  397 
Expert  §  398 

Infringement  §  399  (see  §  445) 
Invention  —  Fact   of   §    400    (see   § 
588) 
Law  Actions  (see  §  733) 

Depositions  §  401 


Directions  and  Instructions  §  402 

Facts  —  For  Court  §  403 

Facts  —  For  Jury  §  404 

Rules  of  §  405 

Miscellaneous  Rules  §  406 
Objections  and  Exceptions  §  407 
Parol  §  408 
Prima  Facie  §  409 
Records  and  Documents  §  410 
Miscellaneous  §  411 
See  —  Abandonment  §  11;  Anticipa- 
tion §§   71-77;    Assignment  §§   158, 
171;  Infringement  §§  487-96;  Inven- 
tion §§  620-38,  688;  Judicial  Notice 
§  705;    Priority  §   809;    Public    Use 
§  850;   Reopening  Case  §  891 


§  388.     Statutory  Provisions. 

The  Patent  Act  makes  only  the  following  special  provisions: 

Written  or  printed  copies  of  any  records,  books,  papers,  or  drawings 
belonging  to  the  Patent  Office,  and  of  letters  patent  authenticated  by  the 
seal  and  certified  by  the  Commissioner  or  Acting  Commissioner  thereof, 
shall  be  evidence  in  all  cases  wherein  the  originals  could  be  evidence ;  and 
any  person  making  application  therefor,  and  paying  the  fee  required  by  law, 
shall  have  certified  copies  thereof.  —  R.  S.  892. 


§  389  EVIDENCE  353 

Copies  of  the  specifications  and  drawings  of  foreign  letters  patent  certified 
as  provided  in  the  preceding  section,  shall  be  prima  facie  evidence  of  the  fact 
of  the  granting  of  such  letters  patent,  and  of  the  date  and  contents  thereof. 
—  R.  S.  893. 

The  printed  copies  of  specifications  and  drawings  of  patents,  which  the 
Commissioner  of  Patents  is  authorized  to  print  for  gratuitous  distribution, 
and  to  deposit  in  the  capitols  of  the  States  and  Territories,  and  in  the  clerk's 
offices  of  the  district  courts,  shall,  when  certified  by  him  and  authenticated 
by  the  seal  of  his  office,  be  received  in  all  courts  as  evidence  of  all  matters 
therein  contained.  —  R.  S.  894. 


§  389.     Anticipation  —  Prior  Art. 

No  notice  was  necessary  to  justify  the  admission  of  evidence  to  show 
the  state  of  the  art.  —  Vance  v.  Campbell,  66  U.  S.  427;   17  L.  Ed.  168. 

Evidence  of  the  state  of  the  art  is  admissible  in  actions  at  law  under  the 
general  issue  without  a  special  notice,  and  in  equity  cases  without  any 
averment  in  the  answer  touching  the  subject.  It  consists  of  proof  of  what 
was  old  and  in  general  use  at  the  time  of  the  alleged  invention.  It  is  re- 
ceived for  these  purposes  and  none  other  —  to  show  what  was  then  old,  to 
distinguish  what  was  new,  and  to  aid  the  court  in  the  construction  of  the 
patent.  —  Brown  v.  Piper,  91  U.  S.  37 ;  23  L.  Ed.  200. 

Proof  of  the  state  of  the  art  is  admissible  in  equity  cases  without  any 
averment  in  the  answer  touching  the  subject,  and  in  actions  at  law  without 
notice.  It  consists  of  proof  of  what  was  old  and  in  general  use  at  the  time 
of  the  alleged  invention  and  may  be  admitted  to  show  what  was  the  old,  or 
to  distinguish  what  is  new,  or  to  aid  the  court  in  the  construction  of  the  pat- 
ent. —  Dunbar  v.  Meyers,  94  U.  S.  187 ;  24  L.  Ed.  34. 

Evidence  showing  the  state  of  the  art  to  limit  the  construction  of  the 
patent  is  competent  under  a  general  denial  without  special  pleading.  — 
Zane  v.  Soffe,  110  U.  S.  200;  28  L.  Ed.  119;  3  S.  Ct.  562. 

We  have  the  material  for  ascertaining  its  meaning  in  that  view,  by  means 
of  the  evidence  on  that  point  contained  in  the  record,  which,  although  ob- 
jected to  on  the  ground  that  no  prior  use  or  knowledge  of  the  invention 
claimed  has  been  specifically  set  up  in  the  answer  as  a  defense,  was  never- 
theless admissible  for  the  purpose  of  defining  the  limits  of  the  grant  in  the 
original  patent  and  the  scope  of  the  invention  described  in  the  specification. 

—  Eachus  v.  Broomall,  115  U.  S.  429;  29  L.  Ed.  419;  6  S.  Ct.  229. 
Vance  v.  Campbell,  1  Black.  427;   Brown  v.  Piper,  91  U.  S.  37. 

Although  the  specification  of  the  patent  set  forth  the  state  of  the  art 
sufficiently,  the  testimony  of  an  expert  was  admissible,  though  unnecessary. 

—  Ecaubert  v.  Appleton,  67  Fed.  917;   15  C.  C.  A.  73. 

The  defense  of  want  of  invention,  including  the  right  to  introduce  evidence 
of  the  prior  art,  is  always  open,  and  it  is  not  necessary  to  set  it  up  in  the 
answer.  —  Baldwin  v.  Kresl,  76  Fed.  823;  22  C.  C.  A.  593. 

Richards  v.  Elevator  Co.  158  U.  S.  299. 

Ordinarily,  prior  patents  can  be  offered  in  evidence,  when  not  specially 
pleaded,  only  for  the  purpose  for  which  the  appellee  offers  the  patent  to  which 
his  motion  refers;   that  is  to  say,  only  for  the  purpose  of  construing  and 


354  THE    FIXED    LAW   OF    PATENTS  §§  390-391 

limiting  the  claims  of  the  patent  without  affecting  their  validity.  —  Parsons 
v.  Seelye,  100  Fed.  452;  40  C.  C.  A.  484. 

Grier  v.  Wilt,  120  U.  S.  412;  Edmund  Pat.  2  ed.  650. 

That  prior  patents  not  presented  to  the  circuit  court  and  no  explanation 
of  them  given  will  not  be  considered  on  appeal,  see  Scott  v.  Lazell,  160  Fed. 
472;  87  C.  C.  A.  456. 

§  390.     Anticipation  —  Prior  Patent  or  Publication. 

Letters  patent,  though  not  set  up  in  the  answer,  may  be  received  in  evi- 
dence to  show  the  state  of  the  art  and  to  aid  in  the  construction  of  the 
plaintiff's  claim,  though  not  to  invalidate  the  claim  on  the  ground  of  want 
of  novelty  when  properly  construed.  —  Grier  v.  Wilt,  120  U.  S.  412 ;  30  L.  Ed. 
712;  7  S.  Ct.  718. 

Vance  v.  Campbell,  66  U.  S.  427;  Railroad  v.  Dubois,  79  U.  S.  47;  Brown  v. 
Piper,  91  U.  S.  37;   Eachus  v.  Broomall,  115  U.  S.  429. 

The  respondents  cite  over  40  patents  alleged  to  either  anticipate  or  narrow 
the  art.  Our  general  observation  as  to  these  is  that  the  citation  of  so  many 
patents  by  the  respondent  in  an  infringement  suit  sometimes  tends,  as  we 
have  several  times  said,  not  so  much  to  weaken  the  complainant's  position 
as  to  strengthen  it,  by  showing  that  the  trade  had  long  and  persistently 
been  seeking  in  vain  for  what  the  complainant  finally  accomplished.  —  For- 
syth v.  Garlock,  142  Fed.  461;  73  C.  C.  A.  577. 

The  defense  (anticipation)  is  only  suggested  by  injecting  a  large  number 
of  prior  patents  into  the  record  without  any  explanatory  testimony.  If  an 
examination  of  the  prior  art  were  necessary  to  the  decision  of  the  case,  we 
should  not  sustain  the  defense  of  anticipation  upon  such  mere  production 
of  patents  for  complicated  combinations  of  machinery.  —  Bell  v.  MacKinnon, 
149  Fed.  205;  79  C.  C.  A.  163. 

That  a  prior  patent  which  fails  to  mention  or  disclose  a  use  which  it  is 
alleged  to  anticipate  will  not  be  held  to  possess  such  qualities  to  defeat  a 
subsequent  patent  of  undoubted  utility,  see  Lewis  v.  Premium,  163  Fed. 
950;  C.  C.  A. 

Barbed  Wire  Pat.  143  U.  S.  275;  Deering  v.  Winona,  155  U.  S.  286. 

The  Zimmer  publication  must  be  given  effect  as  an  anticipation  only  to 
the  extent  that  it  actually  gave  the  public  information  of  a  process  of  filtra- 
tion. It  is  not  competent  to  read  into  such  a  publication  information  which 
it  does  not  give,  or  by  expert  opinion  explain  an  otherwise  uninforming 
statement  by  evidence  of  some  apparatus  or  article  not  itself  competent  as 
an  anticipation.  —  Loew  v.  German-American,  164  Fed.  855. 

Badische  v.  Kalle,  104  Fed.  802. 

§  391.     Anticipation  —  Prior  Use. 

The  alleged  prior  use  must  be  certain  and  the  anticipating  invention  re- 
duced to  practice.  But  prior  knowledge  and  use  by  a  single  person  is  suffi- 
cient. —  Coffin  v.  Ogden,  85  U.  S.  120;  21  L.  Ed.  821. 

Gayler  v.  Wilder,  10  How.  496;  Reed  v.  Cutter,  1  Story,  590;  Bedford  v.  Hunt, 
1  Mus.  303. 

The  burden  of  proof  of  prior  use  is  on  the  defendant.  —  Brown  v.  Guild, 
90  U.  S.  181;  23  L.  Ed.  161. 


§§  392-393  EVIDENCE  355 

Under  a  general  denial  of  the  patentee's  priority  of  invention,  evidence  of 
prior  knowledge  and  use,  taken  without  objection,  is  competent  at  the  final 
hearing  on  the  question  of  the  validity  of  the  patent.  —  Zane  v.  Soffe,  110 
U.  S.  200;  28  L.  Ed.  119;  3  S.  Ct.  562. 

Loom  Co.  v.  Higgins,  105  U.  S.  580. 

Testimony  of  prior  use,  produced  after  adjudication  and  unsifted  by 
cross-examination,  is  always  to  be  accepted  with  caution.  It  must  be  most 
clear  and  convincing  to  warrant  what  is  substantially  a  reversal  of  an  ad- 
judication at  a  final  hearing.  —  Consolidated  v.  Hays,  100  Fed.  984;  41 
C.  C.  A.  142. 

Such  evidence,  especially  when  it  deals  with  experiments  which  resulted 
only  in  some  two  or  three  specimens,  which  never  left  the  shop,  and  were 
seen  years  before  by  but  a  few  persons,  who,  in  giving  their  recollection  of 
dates,  are  unable  to  fix  such  dates  by  reference  to  some  transaction  whose 
date  is  susceptible  of  definite  proof,  is  rarely  satisfactory.  —  Lein  v.  Myers, 
105  Fed.  962;  45  C.  C.  A.  148. 

That  a  mere  accidental  or  fugitive  occurrence  is  not  sufficient  in  itself  to 
defeat  a  patent,  see  Edison  v.  Novelty,  167  Fed.  977 ;  C.  C.  A. 

§  392.     Anticipation  —  Rebuttal. 

The  defendant  may  at  all  times,  under  proper  pleadings,  resort  to  prior 
use  and  the  general  history  of  the  art  to  assail  the  validity  of  a  patent  or  to 
restrain  its  construction.  The  door  is  then  opened  to  the  plaintiff  to  resort 
to  the  same  kind  of  evidence  in  rebuttal;  but  he  can  never  go  beyond  his 
claim.  —  Keystone  v.  Phoenix,  95  U.  S.  274;  24  L.  Ed.  344. 

Where  plaintiff  had  introduced  evidence  of  want  of  novelty  and  defendant 
had  rebutted  such  evidence  it  was  within  the  discretion  of  the  court  to  refuse 
to  allow  the  plaintiff  to  introduce  further  evidence.  —  St.  Paul  v.  Starling, 
140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct.  803. 

After  defendant  had  introduced  in  evidence  earlier  patents,  it  was  proper 
for  plaintiff  to  show  that  prior  to  the  date  of  any  of  them  he  had  reduced 
his  invention  to  a  working  form.  —  St.  Paul  v.  Starling,  140  U.  S.  184;  35 
L.  Ed.  404;   11  S.  Ct.  803. 

Elizabeth  v.  Nicholson,  97  U.  S.  126;  Webster  v.  Higgins,  105  U.  S.  580. 

Evidence  introduced  on  rebuttal  to  change  the  character  and  force  of 
the  prima  facie  proofs  comes  too  late  to  be  of  much  weight.  —  Forgie  v.  Oil 
Well  Supp.  Co.  58  Fed.  871 ;  7  C.  C.  A.  551. 


§  393.     Anticipation  —  Miscellaneous. 

Witness  was  asked  if  defendant's  machine  was  like  the  model  in  evidence. 
Objected  to  on  the  ground  that  no  notice  had  been  given  covering  the  model. 
Objection  overruled  and  sustained.  —  Evans  v.  Hittich,  7  Wheat.  453;  5  L. 
Ed.  496. 

The  want  of  invention  in  a  patent  is  a  matter  of  defense  unless  the  thing 
for  which  a  patent  is  claimed  shows  on  its  face  that  it  is  without  invention. 
—  Hunt  Bros.  v.  Cassidy,  53  Fed.  257 ;  3  C.  C.  A.  525. 

Walk.  Pat.  sec.  599;  Mahn  v.  Harwood,  112  U.  S.  354;  Hendy  v.  Iron  Works, 
127  U.  S.  370. 


356  THE    FIXED    LAW    OF    PATENTS  §§  394-396 

It  was  stipulated  that  testimony  in  either  one  of  two  pending  eases  might 
be  used  in  the  other.  A  patent,  without  pleading  and  without  notice  was 
introduced  in  one  case  for  other  purposes,  and  was  then  set  up  in  the  other 
case  in  anticipation.  Neither  pleading  nor  proof  was  made  to  bring  it  in. 
Held:  It  was  not  the  intention  of  the  stipulation  that  a  patent  offered  for 
one  purpose  in  one  case  could  be  used  in  the  other  case  as  an  anticipation, 
without  an  amendment  of  the  pleadings  and  without  a  scintilla  of  testimony 
by  which  the  complainant  could  be  warned  so  as  to  offer  seasonable  testi- 
mony in  regard  to  the  history  and  character  of  the  alleged  anticipation,  before 
the  record  reached  the  appellate  court.  —  Vermont  v.  Gibson,  56  Fed.  143; 
5  C.  C.  A.  451. 

§  394.     Assignment. 

The  appellee  produced  a  license  in  its  possession  absolute  on  its  face  and 
without  any  limitation  or  condition.  The  burden  of  proof  is  upon  the  appel- 
lants to  show  that  it  was  delivered  as  an  escrow.  —  Mellon  v.  D.  L.  &  W. 
154  U.  S.  673;  26  L.  Ed.  929;  14  S.  Ct.  1194. 

But  it  is  the  settled  rule  with  respect  to  the  construction  of  patents 
that  the  prior  state  of  the  art  is  admissible  in  evidence  "  to  show  what  was 
old,  to  distinguish  what  was  new,  and  to  aid  the  court  in  the  construction 
of  a  patent."  That  this  rule  applies  as  between  assignor  and  assignee  has 
been  held  by  this  court  in  two  carefully  considered  cases,  —  Ball  v.  Ball, 
58  Fed.  818,  and  Babcock  v.  Clarkson,  63  Fed.  607  —  58  Fed.  581.  —  Martin  v. 
Martin,  67  Fed.  786;   14  C.  C.  A.  642. 

Brown  v.  Piper,  91  U.  S.  37;  Eachus  v.  Broomall,  115  U.  S.  429;  Grier  v.  Wilt, 
120  U.  S.  412. 

§  395.     Depositions. 

A  deposition,  though  in  improper  form  read  in  evidence  without  objection 
and  with  acquiescence  and  consent  cannot  afterwards  be  objected  to.  — 
Evans  v.  Hittich,  7  Wheat.  453;  5  L.  Ed.  496. 

Statement:  Complainant,  on  order  under  sec.  870  Code  Civ.  Pro.  N.  Y. 
was  examined  under  objection  and  exception.  Certified  to  Supreme  Court. 
Held:  That  the  order  of  the  Circuit  Court  directing  the  president  of  de- 
fendant to  appear  before  a  master  or  commissioner  appointed  pursuant  to 
the  provisions  of  sees.  870  et  sq.  of  the  N.  Y.  Code  of  Civil  Procedure  was 
invalid  and  not  authorized  under  the  act  of  Mar.  9,  1892.  —  Hanks  v.  Inter- 
national, 194  U.  S.  303;  48  L.  Ed.  989;  24  S.  Ct.  700. 

The  courts  of  the  United  States  are  not  given  discretion  to  take  depositions 
not  authorized  by  Federal  law,  but,  in  respect  of  depositions  thereby  au- 
thorized to  be  taken,  they  may  follow  the  Federal  practice  in  the  manner  of 
taking  or  that  provided  by  the  state  law.  —  Hanks  v.  International,  194  U.  S. 
303 ;  48  L.  Ed.  989 ;  24  S.  Ct.  700, 

Note:  Holding  the  taking  of  depositions  before  trial  under  N.  Y.  Code 
to  be  bad.    Citing  cases  holding  all  sorts  of  ways. 

§  396.     Documentary. 

These  objections  to  proof  of  records  were  not  urged  in  the  court  below> 
and  by  well  settled  principles  of  practice  applicable  to  appellate  courts  they 
cannot  be  raised  here  in  the  first  instance.  —  Paine  v.  Trask,  56  Fed.  233; 
5  C.  C.  A.  497. 

Wasatch  v.  Crescent,  148  U.  S.  293;   Rules  Supreme  Court,  No.  13. 


§  396  EVIDENCE  357 

At  the  hearing  in  this  court,  the  appellee  claimed  that  this  certified  copy 
has  probative  force  of  itself  and  makes  out  a  prima  facie  case  of  an  assign- 
ment. He  cited,  as  sustaining  this  proposition,  Lee  v.  Blandy,  1  Bond,  361. 
He  might  also  have  cited  Brooks  v.  Jenkins,  3  McLean,  432;  Parker  v.  Ha- 
worth,  4  Fed.  370;  Dederick  v.  Agricultural  Co.  26  Fed.  763;  and  Rob.  Pat. 
sec.  1040,  Walker  on  Pat.  (2  ed.  sec.  495)  referring  to  these  decisions  says 
that  they  have  been  generally  acquiesced  in  for  20  years,  and  that  few  rules 
of  patent  law  have  been  more  frequently  made  the  basis  of  action  by  counsel 
and  by  courts  than  the  one  which  they  apparently  sustain.  The  author, 
however,  adds  "  but  it  hardly  seems  justified  by  statute  upon  which  it  is 
based  and  may  even  yet  be  overthrown  by  the  Supreme  Court." 

R.  S.  892,  which  provides  for  certified  copies  from  the  patent  office,  relates 
only  to  records,  books,  papers  or  drawings,  "  belonging  to  "  that  office, 
and  letters  patent.  If  the  law  required  the  original  assignments  to  remain 
on  file,  and  that  certified  copies  should  be  given  of  them,  a  different  principle 
would  be  involved;  but  the  only  thing  in  this  case  "  belonging  to  "  the  patent 
office,  is  the  record,  which  is  itself  only  secondary  evidence.  No  provision  is 
made  for  authentication  of  the  genuineness  of  the  instrument  to  be  recorded, 
as  frequent  in  laws  providing  for  registry,  but  a  forged  assignment  may  be 
recorded  equally  with  a  genuine  one.  Neither  is  there  any  method  given 
by  the  law,  by  which  any  person  prejudiced  by  the  registry  in  the  patent 
office  of  a  spurious  instrument,  can  purge  the  records.  Neither  does  this 
registry  have  the  moral  protection  presumably  given  to  local  county  and 
township  records  through  local  publicity  and  notoriety.  The  proposition 
as  made  by  the  appellee,  is  independent  of  the  support  which  sometimes 
comes  from  the  fact  that  one  party  or  the  other  to  an  alleged  instrument 
has  continued  openly  to  act  under  it,  or  from  the  credibility  given  to  ancient 
papers  and  records;  but  it  stands  as  a  universal  unqualified  claim,  with 
reference  to  all  copies  of  assignments  certified  from  the  patent  office  records. 

It  is  not,  however,  necessary  that  we  should  determine  this  point,  and  we 
refer  to  it  only  for  the  purpose  of  making  it  understood  that  we  cannot 
acquiesce  in  it  without  further  consideration.  —  Paine  v.  Trask,  56  Fed.  233; 
5  C.  C.  A.  497. 

Charges  were  presented  against  the  examiner  who  passed  the  application 
and  against  the  solicitor,  asking  for  the  dismissal  of  the  one  and  the  disbar- 
ment of  the  other.  Upon  these  charges  the  commissioner  made  a  written 
decision.  The  charges  and  the  decision  were  offered  by  the  complainants, 
and  were  properly  objected  to  as  irrelevant.  These  proceedings  were  res 
inter  alios  actae,  and  were  of  no  value  in  this  case.  —  Ecaubert  v.  Appleton, 
67  Fed.  917;  15  C.  C.  A.  73. 

The  opinion  of  the  commissioner  of  patents  was  properly  rejected  as  irrele- 
vant. The  record  of  the  judgement  or  decree  would  have  been  admissible, 
but  the  opinion  of  the  commissioner  was  not  a  decree,  and  was  not  the  find- 
ing of  facts  which  a  court  is  frequently  called  upon  to  make.  —  Ecaubert  v. 
Appleton,  67  Fed.  917;   15  C.  C.  A.  73. 

Buckingham's  Appeal,  60  Conn.  143. 

The  printed  copy  of  the  testimony  in  the  interference  proceedings  before 
the  patent  office  was  properly  rejected  upon  the  grounds  of  irrelevancy.  This 
suit  is  an  independent  one,  although  between  the  same  parties  as  in  the 
patent  office  proceeding.  —  Ecaubert  v.  Appleton,  67  Fed.  917 ;  15  C.  C.  A. 
73. 

That  uncertified  copies  of  U.  S.  letters  patent  introduced  in  evidence 
and  not  objected  to  at  the  proper  time  are  good  evidence  as  to  dates,  such 
as  the  date  of  invention,  see  Drewson  v.  Hartje,  131  Fed.  734;  65  C.  C.  A.  548. 


358  THE   FIXED   LAW    OF    PATENTS  §§  397-398 

Worley  v.  Tobacco,  104  U.  S.  340;  Roemer  v.  Simon,  95  U.  S.  214;  Loom  Co.  v. 
Higgins,  105  U.  S.  580. 

§  397.     Exhibits. 

Where  an  alleged  prior  invention  is  introduced  as  an  exhibit  and  accepted 
by  the  examiner  it  is  in  evidence ;  and  if  improper  should  have  been  stricken 
out  on  motion  before  the  court  below.  —  Clark  v.  Willimantic,  140  U.  S.  481 : 

35  L.  Ed.  521;   11  S.  Ct.  846. 
Hoskin  v.  Fisher,  125  U.  S.  217. 

If,  against  the  earnest  protest  of  their  opponent,  they  availed  themselves 
of  a  technicality  to  prevent  a  consideration  by  the  court  of  a  patent  which 
they  claimed  will  disclose  want  of  novelty  in  the  invention  of  the  patent  in 
suit,  they  cannot  complain  if  the  court  declines  to  accept  their  unsupported 
assertion  of  the  character  of  that  patent.  —  Red  Jacket  v.  Davis,  82  Fed. 
432;  27  C.  C.  A.  204. 

The  court  certainly  has  the  unquestioned  right  to  draw  its  own  conclusions 
from  an  exhibition  and  inspection  of  the  respective  machines,  or  models 
thereof,  as  well  from  the  opinion  of  expert  witnesses.  It  is  not  bound  to 
accept  such  testimony  as  conclusive.  —  Overweight  v.  Improved,  94  Fed.  155; 

36  CCA.  125. 

The  Conqueror,  166  U.  S.  111. 

Note:  As  an  illustration  of  the  manner  in  which  such  a  rule,  if  it  were  a  rule, 
would  utterly  fail,  suppose  that  the  court  had  before  it  a  Tesla  motor,  alleged 
to  be  of  the  polyphase  type,  and  the  court  should  attempt  to  pass  upon  the 
value  of  that  exhibit  regardless  of  the  expert  testimony  essential  to  determine 
whether  it  was  a  motor  of  the  polyphase  type  or  multiphase  or  lagphase,  or 
any  other  of  the  numerous  forms  of  phase  winding  which  would  be  abso- 
lutely indistinguishable  to  the  naked  eye. 

The  publication  was  put  in  evidence  by  the  defendant  himself.  He  may, 
indeed,  have  intended  to  use  it  for  another  purpose,  but  the  publication  was 
in  the  case  as  evidence  for  every  legitimate  purpose.  —  Maurer  v.  Dickerson, 
113  Fed.  870;  51  C  C.  A.  494. 

Certain  patents  were  printed  and  indexed  in  the  record  and  were  referred 
to  on  the  argument.  On  rehearing  it  was  objected  that  these  patents  were 
not  "  offered  in  evidence."  Held:  In  view  of  these  circumstances,  the  ob- 
jection made  at  this  late  day,  that  the  examiner  did  not  formally  mark  it  in 
evidence  as  an  exhibit,  is  one  not  calculated  to  commend  itself  to  an  appel- 
late court.  —  Smyth  v.  Sheridan,  149  Fed.  208;  79  C  C  A.  166. 

§  398.     Expert. 

Experts  may  be  examined  as  to  the  meaning  of  terms  of  art  on  the  prin- 
ciple of  "  cuique  in  suo  arte  credendum,"  but  not  as  to  the  construction  of 
written  instruments.  —  Corning  v.  Burden,  15  How.  252;    14  L.  Ed.  683. 

Experts  may  be  examined  to  explain  terms  of  art,  and  the  state  of  the 
art  at  any  given  time.  They  may  explain  to  the  court  and  jun>-  the  machines, 
models  or  drawings  exhibited.  They  may  point  out  the  difference  or  identity 
of  the  mechanical  devices  involved  in  their  construction.  The  maxim  of 
cuique  in  suo  arte  credendum  permits  them  to  be  examined  to  questions  of  art 
or  science  peculiar  to  their  trade  or  profession;  but  professors  or  mechanics 
cannot  be  received  to  prove  to  the  court  or  jury  what  is  the  proper  or  legal 
construction  of  any  instrument  of  writing.    A  judge  may  obtain  information 


§  398  EVIDENCE  359 

from  them,  if  he  desire  it,  on  matters  which  he  does  not  clearly  comprehend, 
but  cannot  be  compelled  to  receive  their  opinions  as  matter  of  evidence.  — 
Winans  v.  New  York  &  Erie,  21  How.  88 ;  16  L.  Ed.  68. 

It  cannot  be  expected  that  the  court  will  possess  the  requisite  knowledge 
for  this  purpose,  and  when  necessary  it  should  avail  itself  of  the  light  neces- 
sary by  evidence.  —  Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

Where  an  expert  has  merely  made  experiments  for  the  purposes  of  the 
litigation  and  from  such  experiments  testifies  that  the  results  attained  by 
defendant  could  be  attained  only  by  plaintiff's  process;  and  his  evidence  is 
rebutted  by  an  experienced  expert  who  establishes  the  fact  that  the  results 
had  been  attained  by  more  than  one  process  to  his  knowledge,  although 
he  does  not  testify  by  what  process  defendant  did  attain  such  results,  such 
evidence  is  sufficient  to  rebut  the  negative  testimony  of  complainant's 
expert.  —  Bene  v.  Jeantet,  129  U.  S.  683;  32  L.  Ed.  803;  9  S.  Ct.  428. 

It  would  seem  that  the  Supreme  Court  would  disregard  the  opinions  of 
eminent  chemists  where  such  chemists  had  found  a  degree  of  difference 
in  the  processes  to  warrant  them  in  holding  the  new  process  to  be  novel. 
Such  seems  to  be  the  position  assumed  by  Justice  Blatchford  in  the  case  of 
Commercial  v.  Fairbank,  135  U.  S.  176;  34  L.  Ed.  88;  10  S.  Ct.  972. 

Expert  testimony  is  admissible  to  explain  the  several  drawings,  models 
and  machines  that  are  exhibited  upon  the  trial,  their  operation,  purpose  and 
effect,  and  the  differences  which  exist  in  the  various  devices  involved  in  their 
construction.  The  opinion  of  an  expert  is,  in  certain  cases,  admissible  in 
evidence,  but  it  is  not  conclusive  upon  the  courts.  It  is  to  be  considered  as  the 
judgment  and  opinion  of  a  person  who  has  had  extensive  practice,  education 
and  knowledge  in  relation  to  the  particular  subject  upon  which  his  testi- 
mony is  given.  If  the  reasons  given  by  the  expert  witness  are  deemed  reason- 
able and  satisfactory,  the  court  may  adopt  them,  but,  if  they  are  unsatis- 
factory, the  court  will  discard  the  testimony  and  act  upon  its  own  knowledge 
and  judgment.  —  Norton  v.  Jensen,  49  Fed.  859;  1  C.  C.  A.  452. 

To  sustain  the  defense  of  want  of  novelty  the  defendants  have  set  up  in 
their  answer,  and  offered  in  evidence,  a  large  number  of  patents  prior  in 
date  to  those  of  the  complainant.  In  the  absence  of  any  expert  testimony 
to  explain  these  patents,  or  indicate  what  they  contain  tending  to  negative 
the  novelty  of  the  complainant's  patent,  we  do  not  feel  called  upon  to  examine 
them.  There  may  be  cases  in  which  the  character  of  the  invention  has  so 
little  complexity  that  such  expert  testimony  is  not  necessary  to  aid  the  court 
in  understanding  whether  one  patent,  or  several  patents  considered  together, 
describe  the  devices  or  combination  of  devices  which  are  the  subject  matter 
of  a  subsequent  patent ;  but  this  is  not  one  of  them.  —  Waterman  v.  Shipman, 
55  Fed.  982;  5  C.  C.  A.  371. 

Scientific  expert  evidence  is  not  wholly  reliable  when  not  subjected  to  the 
search  light  of  intelligent  cross-examination.  —  Standard  Elevator  Co.  v. 
Crane,  56  Fed.  718;  6  C.  C.  A.  100. 

If  a  valuable  patent  might  be  overthrown  by  the  testimony  of  an  expert 
without  careful  inquiry  into  and  virtual  demonstration  of  its  correctness, 
the  rights  of  patentees  would  rest  upon  the  testimony  of  such  witnesses  rather 
than  the  judgement  of  the  court.  —  National  v.  Belcher,  71  Fed.  876;  18 
C.  C.  A.  375. 


360  THE    FIXED    LAW    OF    PATENTS  §  398 

In  these  expressions  (determining  what  was  novel)  the  expert,  as  is  too 
common  in  the  taking  of  evidence  of  that  class,  goes  beyond  the  province 
of  an  expert  and  into  the  province  of  counsel  or  the  court.  —  Osgood  v. 
Metropolitan,  75  Fed.  670;  21  C.  C.  A.  491. 

No  detailed  analysis  of  the  specifications  is  made  by  any  of  them.  The 
testimony  consists  of  little  more  than  bare  opinions.  They  give  no  reasons 
for  their  conclusions.  —  Hanifen  v.  Godshalk,  84  Fed.  649;  28  C.  C.  A.  507. 

The  testimony  of  a  capable  and  conscientious  expert,  in  a  case  which 
admits  of  his  employment  cannot  but  be  at  once  helpful  to  the  court  and 
creditable  to  the  witness ;  but  it  is  a  sorry  situation  for  the  display  either  of 
skill  or  candor  when,  not  to  hurt  the  cause  he  was  employed  to  promote,  the 
expert  must  suppress  his  opinions  upon  all  matters  of  controlling  significance, 
and  restrict  his  testimony  to  the  pointing  out  of  superficial  and  obvious 
distinctions  of  structural  forms  that  involve  no  conceivable  differences 
of  function  or  operation,  —  a  task  of  mere  drudgery,  which  a  common  me- 
chanic, accustomed  to  work  by  lines  laid  down  for  him  by  another,  could 
perform  quite  as  well.  —  Chuse  v.  Ide,  89  Fed.  491 ;  32  C.  C.  A.  260. 

The  value  of  expert  testimony  generally  depends  upon  the*  facts  stated,  as 
a  reason  for  their  opinions  and  conclusions.  —  Overweight  v.  Improved,  94 
Fed.  155;  36  C.  C.  A.  125. 

Green  v.  Terwilliger,  56  Fed.  384;   1  Tay.  Ev.  sec.  58. 

That  in  the  absence  of  expert  or  scientific  explanation  of  a  physical  dis- 
tinction in  operation  urged  upon  the  argument,  the  court  will  not  consider 
such  argument,  see  Dececo  v.  Gilchrist,  125  Fed.  293;  60  C.  C.  A.  207. 

We  do  not  question  the  rule  which  permits  a  complainant  to  introduce  a 
patent  whose  mechanical  details  are  simple,  and  where  the  issue  of  infringe- 
ment is  sharply  defined,  without  burdening  the  court  with  useless  expert 
testimony.  But  this  rule  has  no  application  to  a  case  like  this,  where  the 
operative  construction  embodies  only  a  portion  of  the  two  patents  in  suit; 
where  material  and  difficult  questions  of  form,  of  operation,  and  of  equiva- 
lency of  function  are  involved ;  where  the  validity  of  a  reissue  is  challenged 
on  the  ground  that  the  reissued  patent  is  for  a  different  invention ;  and  where 
the  39  claims  of  one  of  the  patents  are  projected  before  the  court  without 
any  attempt  to  analyze  them,  or  read  them  upon  defendant's  patent  or 
commercial  machine.  —  Fay  v.  Mason,  127  Fed.  325 ;  62  C.  C.  A.  159. 

Waterman  v.  Shipman,  55  Fed.  982. 

We  are  aided  in  the  examination  of  this  question  by  the  evidence  of  experts, 
but  their  opinions  are  not  conclusive.  We  must  form  our  own  opinion,  based 
on  all  the  evidence.  —  American  v.  American,  128  Fed.  709 ;  63  C.  C.  A.  307. 

Hardwick  v.  Masland,  71  Fed.  887. 

Unhappily  we  cannot  accept  without  reservation  the  opinions  of  the 
experts  who  have  been  examined  as  witnesses,  for  they  are  necessarily 
partisans  of  the  side  calling  them,  and  essentially  advocates,  and  their 
opinions  are  contradictory,  and  tend  to  perplex,  instead  of  elucidating,  al- 
though they  appear  to  be  gentlemen  of  great  ability  and  deserved  eminence. 
—  Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436. 

The  Segrist  patents  were  not  discussed  or  explained  by  either  counsel  on 
the  a-^ument,  no  model  was  produced.     In  these  circumstances  we  are  not 


§  399  EVIDENCE  361 

disposed  to  critically  discuss  the  Segrist  patents.  —  Greene  v.  Buckley,  135 
Fed.  520;  68  C.  C.  A.  70. 

The  admission  of  an  expert  witness,  is,  of  course,  entitled  to  weight  in 
the  interpretation  of  technical  terms  employed  in  a  patent.  But  the  court 
is  not  necessarily  concluded  by  such  interpretation  when  other  satisfactory 
evidence  is  available.  —  Panzl  v.  Battle  Island,  138  Fed.  48;  70  C.  C.  A.  474. 

Defendant's  expert  claims  that  this  difference  of  operation  is  material. 
But  the  fact  that  the  defendant  commercially  manufactures  and  sells  saw- 
sets  with  this  construction  indicates  that  the  difference  is  theoretical  rather 
than  practical.  —  Morrill  v.  Hardware,  142  Fed.  756;  74  C.  C.  A.  18. 

The  defendant  undertook  to  prove  that  the  Blandfield  and  Andrews 
supporters  (the  alleged  anticipation)  were  the  embodiment  of  perfection; 
the  complainant  that  they  were  the  embodiment  of  stupidity;  and,  as  gen- 
erally happens,  both  succeeded.  —  Parramore  v.  Siegel-Cooper,  143  Fed.  516; 
74  C.  C.  A.  386. 

When  once  familiarity  with  the  nomenclature  and  the  elementary  features 
of  the  art  is  acquired,  the  character  and  functions  of  the  respective  structures 
are  found  to  be  clearly  displayed  therein  (in  the  patents).  Indeed  they  are 
far  more  illuminative  than  some  of  the  so-called  "  simplified  diagrammatic 
drawings  "  which  have  been  put  in  evidence.  If  the  expert  who  is  called  to 
testify  in  such  causes  would  only  appreciate  that  he  is  not  addressing  elec- 
trical engineers,  but  laymen,  and  if,  when  undertaking  to  describe  what  some 
particular  patent  showed  to  a  man  skilled  in  the  art,  he  would  take  the  speci- 
fications and  drawings  of  the  patent  as  his  text,  instead  of  some  conventional 
paraphrase  of  his  own  devising  with  its  lettering  entirely  changed,  he  would 
materially  lighten  the  labor  of  the  court.  —  Western  v.  Rochester,  145  Fed. 
41;  75  C.  C.  A.  313. 

We  note  that  more  than  two  thirds  of  the  nearly  1000  pages  in  this  record  are 
taken  up  by  the  testimony  of  expert  witnesses,  of  whom  there  were  11  or  12, 
arrayed  in  about  equal  numbers  on  the  opposite  sides,  and  the  reading  of  it 
has  imposed  upon  the  court  a  needless  burden.  As  a  contest  between  gentle- 
men learned  in  the  science  of  the  subject,  it  might  be  interesting  if  one  had 
leisure,  though  it  seems  sometimes  to  run  into  very  attenuated  points.  This 
prolixity  seems  not  so  much  the  fault  of  the  witnesses  as  a  mistake  of  the 
counsel.  It  is  not  the  province  of  witnesses  to  advocate  the  cause  of  the 
party  who  calls  him,  nor  to  pass  upon  the  questions  of  law  or  facts  presented 
by  the  controversy.  Frequently  an  expert  witness  may  be  of  much  aid  to  the 
court  in  explaining  matters  which  can  only  be  appreciated  and  understood 
by  learning  higher  than  the  ordinary ;  but  his  province  is  to  instruct  and  not 
to  decide;  and  even  the  instruction  is  of  uncertain  value  when  it  is  colored 
from  standing  in  the  place  of  the  partisan  for  one  of  the  parties.  Usually 
the  testimony  of  one  competent  witness  on  each  side  is  enough  to  insure  a 
full  and  fair  elucidation  of  what  is  recondite  in  the  case.  The  voice  of  a 
single  teacher  is  worth  more  than  a  confusion  of  many  tongues.  And  the 
expense  is  worse  than  useless.  —  American  v.  Cleveland,  158  Fed.  978;  86 
C.  C.  A.  182. 


§  399.     Infringement. 

The  five  averments  must  all  be  established.  —  Cammeyer  v.  Newton,  94 
U.S.  225;  24  L.  Ed.  72. 


362  THE   FIXED   LAW    OF   PATENTS  §§  400-401 

Where  denial  of  infringement  is  made  in  the  answer  under  oath,  infringe- 
ment must  be  shown  by  satisfactory  proof.  —  Lehigh  v.  Mellon,  104  U.  S. 
112;  26  L.  Ed.  639. 

The  burden  of  proof  of  infringement  is  upon  the  complainant.  —  Price  v. 
Kelly,  154  U.  S.  669;  26  L.  Ed.  634;  14  S.  Ct.  1208. 

In  a  suit  at  law  where  evidence  was  taken  and  the  question  of  infringement 
was  determined  this  court  will  not  review  the  evidence  as  if  it  were  a  suit 
in  equity.  —  St.  Paul  v.  Starling,  140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct.  803. 

§  400.     Invention  —  Fact  of. 

The  question  is  now  well  settled,  that  the  question  whether  the  alleged 
improvement  is  or  is  not  patentable,  is,  in  an  equity  suit,  a  question  for  the 
court.  —  Dunbar  v.  Meyers,  94  U.  S.  187;  24  L.  Ed.  34. 

We  have  now  to  allude  to  a  most  important  factor  in  determining  the  weight 
of  evidence,  a  factor  which  seems  to  us  to  have  been  overlooked  by  the  learned 
judge  of  the  court  below.  It  is,  that  the  burden  of  proof  is  on  the  one  who 
disputes  it,  to  repel  the  presumption  of  originality  arising  from  the  patent. 
This  is  a  well  established  rule  of  evidence,  and  is  the  result  of  long  judicial 
experience  in  considering  the  foundations  of  belief.  In  a  case  like  the  pres- 
ent, it  is  not  a  mere  balancing  of  the  weight  of  testimony  on  one  side  or  the 
other,  but  it  is  a  requirement  that  this  presumption  of  originality  of  invention 
must  be  overcome  by  proof  which  fully  satisfies  the  mind  respecting  the  fact. 
—  Keasbey  v.  American,  143  Fed.  490;  74  C.  C.  A.  510. 

When  the  question  (whether  he  knew  of  the  fact  of  the  application  of  one  of 
the  defendants  for  a  patent)  was  again  asked  him  on  cross-examination,  he 
answered,  "  To  the  best  of  my  knowledge  and  recollection,  he  never  did!  " 
This  will  not  do  as  an  answer  to  the  unequivocal  testimony  of  the  defendant 
inventor.  —  Keasbey  v.  American,  143  Fed.  490;  74  C.  C.  A.  510. 

§  401.    Law  Actions  —  Depositions. 

The  Massachusetts  interrogatories  are  sought  as  a  "  mode  of  proof  in 
trials  at  law."  The  answers  to  them  are  not  oral  testimony,  and  therefore, 
to  be  admitted  must  be  brought  within  the  exceptions  specified  in  the  Re- 
vised Statutes.  They  are  not  a  deposition  taken  under  the  circumstances 
in  which  it  is  permitted  to  take  a  deposition,  by  sections  863  and  865  of  the 
Revised  Statutes,  and,  like  the  New  York  examination,  the  Massachusetts 
interrogatories  violate  common  usage  by  seeking  to  call  the  party  in  advance 
of  the  trial  at  law,  and  to  "  subject  him  to  all  the  skill  of  opposing  counsel  to 
exact  something  which  he  may  use  then  or  not  as  suits  his  purpose." 
As  the  Massachusetts  interrogatories  fall  neither  within  the  rule  of  section 
861  nor  within  the  exceptions  allowed  by  the  following  section,  and  as  that 
rule  and  those  exceptions  provide  an  exclusive  mode  of  proof  in  trials  at 
law  in  the  federal  courts,  it  would  seem  that  the  interrogatories  are  inad- 
missible here.  —  National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372. 

Railway  v.  Botsford,  141  U.  S.  250;  ex  parte  Fisk,  113  U.  S.  713. 

It  is  further  contended  by  the  plaintiff  that  the  interrogatories  in  question 
are  admissible  as  a  statutory  substitute  for  a  bill  of  discovery  in  aid  of 
an  action  at  law,  and  are  thus  brought  within  the  provision  of  section  914 
of  the  Revised  Statutes.  This  view  of  the  Massachusetts  interrogatories 
was  taken  by  the  circuit  court  for  this  district  in  Bryant  v.  Leyland,  6  Fed. 
125.    We  think  the  contention  unsound.    The  Supreme  Court  has  constantly 


§§  402-403  EVIDENCE  363 

maintained  the  distinction  between  the  system  of  law  and  equity,  and  has 
refused  to  adopt  into  the  practice  of  the  federal  courts  any  part  of  the  prac- 
tice of  the  state  courts  which  confounds  the  two  systems.  Moreover,  the 
provisions  of  section  914  apply  only  to  suits  at  law  in  the  federal  courts,  and, 
in  the  absence  of  express  language,  can  hardly  be  intended  to  introduce  into 
the  practice  and  procedure  of  such  suits  statutory  procedure  which  is  in  its 
nature  plainly  equitable.  We  find,  therefore,  that  it  has  been  decided  by  the 
Supreme  Court  that,  if  the  statutory  interrogatories  are  to  be  treated  as  laying 
the  foundation  for  a  deposition,  they  are  inadmissible  in  federal  practice, 
because  a  deposition  is  not  authorized  to  be  taken  in  such  a  case  by  the  stat- 
utes of  the  United  States;  that  an  examination  authorized  by  state  statutes 
has  been  excluded  on  this  ground  when  such  examination  though  not  alto- 
gether similar,  was  yet  in  most  respects  similar  to  the  interrogatories  in  the 
case  at  bar,  the  grounds  for  the  exclusion,  as  stated  by  the  Supreme  Court, 
being  largely  applicable  to  the  interrogatories  in  this  case.  We  find,  further- 
more, that,  if  these  interrogatories  are  to  be  treated,  not  as  questions  put  to 
a  deponent,  but  as  a  statutory  substitute  for  a  bill  of  discovery,  they  are 
excluded  as  an  encroachment  upon  that  control  of  equity  procedure  which 
belongs  to  the  federal  courts  except  when  regulated  in  express  terms  by  an 
act  of  congress.  —  National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372. 

The  plaintiff  further  contends  that,  even  if  the  statutory  interrogatories  be 
treated  as  the  taking  of  an  ordinary  deposition,  and  hence  forbidden  by  sec- 
tion 861,  yet  they  are  permitted  by  chapter  14  of  the  Act  of  1892  (27  Stat.  7), 
which  permits  the  taking  of  depositions  in  the  mode  described  by  the  laws 
of  the  state  in  which  the  courts  are  held.  This  position  seems  to  us  plainly 
untenable.  The  act  of  1892,  as  stated  by  the  learned  judge  in  the  circuit 
court,  was  intended  only  "  to  simplify  the  practice  of  taking  depositions 
by  providing  that  the  mode  of  taking  in  instances  authorized  by  the  federal 
laws  might  conform  to  the  mode  prescribed  by  the  laws  of  the  state  in  which 
federal  courts  were  held,"  and  not  "  to  authorize  the  taking  of  depositions 
in  instances  not  heretofore  authorized  by  the  federal  statutes,  and  to  confer 
additional  rights  to  obtain  proofs  by  interrogatories  addressed  to  the  adverse 
party  in  actions  at  law."  For  these  reasons  the  exception  to  the  refusal  of 
the  judge  of  the  circuit  court  to  default  the  defendants  must  be  overruled.  — 
National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372. 

§  402.     Law  Actions  —  Directions  and  Instructions. 

The  judgement  entered  on  the  verdict  rendered  in  favor  of  the  defendants, 
in  pursuance  of  the  direction  of  the  court,  can  be  maintained  only  on  the 
ground,  either  that  the  legal  identity  of  the  furnace  described  by  Karsten 
with  that  covered  by  plaintiff's  patent  was  manifest  as  a  matter  of  law,  or 
that  it  was  established  as  a  matter  of  fact  so  conclusively  by  the  evidence 
that  a  verdict  the  other  way  could  not  be  supported,  within  the  rule  as  stated 
in  Randall  v.  Baltimore,  109  U.  S.  878.  —  Keyes  v.  Grant,  118  U.  S.  25;  30 
L.Ed.  54;  6  S.  Ct.  974. 

It  is  not  error  to  refuse  to  instruct  as  to  an  abstract  question,  and  in- 
structions should  never  be  given  upon  hypothetical  statements  of  fact,  of 
which  there  is  no  evidence.  —  Haines  v.  McLaughlin,  135  U.  S.  584;  22 
L.  Ed.  241 ;   10  S.  Ct.  876. 

§  403.     Law  Actions  —  Facts  —  For  Court. 

So  far  as  concerns  what  is  for  the  court  and  what  is  for  the  jury,  there  is  no 
essential  distinction  between  patents  for  inventions  and  other  instruments. 
Primarily  the  construction  of  all  of  them  is  for  the  court.  —  DeLoria  v. 
Whitney,  63  Fed.  611;   11  C.  C.  A.  355. 


364  THE   FIXED   LAW   OF    PATENTS  §  404 

§  404.     Law  Actions  —  Facts  —  For  Jury. 

In  law  actions  the  question  of  infringement  is  a  question  of  fact  for  the 
jury.  —  Turrill  v.  R.  R.,  68  U.  S.  491 ;  17  L.  Ed.  668. 

It  is  said  properly,  whether  one  compound  of  given  proportions  is  substan- 
tially the  same  as  another  compound  varying  in  the  proportions  —  whether 
they  are  substantially  the  same  or  substantially  different  —  is  a  question 
of  fact  and  for  the  jury.  —  Tyler  v.  Boston,  74  U.  S.  327;  19  L.  Ed.  93. 

Questions  of  fact  must  be  submitted  to  the  jury  if  there  is  so  much  resem- 
blance as  raises  the  question  at  all.  —  Tucker  v.  Spalding,  80  U.  S.  453 ; 
20  L.  Ed.  515. 

This  court  has  no  more  right  than  the  court  below  to  have  decided  that 
the  one  patent  covered  the  invention  of  the  other  or  that  it  did  not.  —  Tucker 
v.  Spalding,  80  U.  S.  453;  20  L.  Ed.  515. 

A  pure  question  of  fact  is  for  the  jury  in  an  action  at  law,  and  it  is  error 
to  take  it  away.  —  Burdell  v.  Denig,  92  U.  S.  716;  23  L.  Ed.  764. 

All  questions  of  fact  are  exclusively  for  the  jury  to  decide.  The  court  does 
not  decide  nor  instruct  you  whether  any  device  was  or  was  not  an  antici- 
pation of  plaintiff's  patent.  The  question  of  anticipation  is  purely  a  ques- 
tion of  fact  and  is  exclusively  for  the  jury  to  determine.  —  Haines  v.  Mc- 
Laughlin, 135  U.  S.  584;  22  L.  Ed.  241 ;  10  S.  Ct.  876. 

This  court  has  had  occasion  more  than  once,  to  reverse  the  trial  courts 
for  taking  away  from  the  jury  the  question  of  infringement,  which  they  have 
sometimes  done  by  rejecting  evidence  of  earlier  patents  offered  to  show 
anticipation,  and  sometimes  by  a  peremptory  instruction  that  a  patent  relied 
on  by  the  defense  was  or  was  not  infringement  of  plaintiff's  patent.  —  Coupe 
v.  Royer,  155  U.  S.  565;  39  L.  Ed.  263;  15  S.  Ct.  199. 

Tucker  v.  Spalding,  80  U.  S.  453;  Bischoff  v.  Wethered,  76  U.  S.  815;  Keyes  v. 
Grant,  118  U.  S.  36;  Royer  v.  Schultz,  135  U.  S.  319. 

There  was  no  question  to  go  to  the  jury  in  this  case  (the  court  having  de- 
termined want  of  novelty)  and  the  court  should  have  directed  a  verdict.  — 
Black  Diamond  v.  Excelsior,  156  U.  S.  611 ;  39  L.  Ed.  553;  15  S.  Ct.  482. 

This  is  a  question  of  fact,  and  in  a  law  case  should  be  submitted  to  the 
jury  under  proper  instructions,  as  to  the  law  applicable  to  the  same.  — 
Hunt  Bros.  v.  Cassidy,  53  Fed.  257 ;  3  C.  C.  A.  525. 

When  there  is  any  evidence  whatever  to  go  to  the  jury  upon  an  issue  of  fact, 
the  refusal  of  the  court  to  instruct  the  jury  to  return  a  verdict  for  the  de- 
fendant is  not  reviewable  in  this  court.  There  is  nothing  in  the  case  before 
the  court  to  make  it  an  exception  to  the  rule.  —  Singer  Mfg.  Co.  v.  Brill,  54 
Fed.  380;  4  C.  C.  A.  374. 

Explaining:  Heald  v.  Rice,  104  U.  S.  737;  Lumber  Co.  v.  Rodgers,  112 
U.  S.  659;  FondDu  Lac  v.  May,  137  U.  S.  395. 

Under  the  issue  and  evidence,  it  was  for  the  jury  to  decide  whether  the 
defendant  had  been  licensed  to  use  the  patented  appliances,  and  whether 
the  defendant  was  charged  with  notice  of  the  patent.  —  Houston  v.  Stern, 
74  Fed.  636;  20  C.  C.  A.  636. 


§§  405-407  EVIDENCE  365 

The  question  of  novelty  is  a  question  of  fact  for  the  jury,  or,  when  a  jury 
is  waived,  is  a  question  of  fact  to  be  decided  by  the  court.  —  American  v. 
Bullivant,  117  Fed.  255;  54  C.  C.  A.  287. 

Westlake  v.  Carter,  6  Fish.  P.  C.  519;   Battin  v.  Taggart,  17  How.  74. 

The  question  of  invention  is  one  of  fact,  and  after  examining  the  testimony 
we  are  of  opinion  that  there  was  sufficient  evidence  to  warrant  its  submission 
to  the  jury.  The  jury  having  found  for  the  plaintiffs,  the  verdict  should 
not  be  disturbed.  —  Willis  v.  Miller,  121  Fed.  985;  58  C.  C.  A.  286. 

§  405.     Law  Actions  —  Rules  of. 

Except  as  otherwise  prescribed  by  the  laws  of  the  United  States,  state  laws 
governing  the  admissibility  of  evidence  obtain  at  common  law.  —  Vance  v. 
Campbell,  66  U.  S.  427;  17  L.  Ed.  168. 

§  406.     Law  Actions  —  Miscellaneous  Rules. 

This  contention  (want  of  novelty  and  non-infringement)  in  each  of  its 
branches,  presents  a  mixed  question  of  law  and  of  fact.  —  Graham  v.  Earl, 
92  Fed.  155;   34  C.  C.  A.  267. 

1  Rob.  Pat.  272;   California  v.  Molitor,  113  U.  S.  609. 

That  a  patent  not  pleaded,  may  be  introduced  in  evidence  in  a  law  action, 
not  for  the  purpose  of  proving  anticipation,  but  for  the  purpose  of  showing 
the  prior  art  to  enable  the  court  to  construe  the  claim,  may  be  so  employed, 
see  Overweight  v.  Improved,  94  Fed.  155;  36  C.  C.  A.  125. 

On  objection  by  the  defendant,  the  learned  judge  below  held  that  the 
witness  might  describe  the  results  of  the  omission  of  the  connecting  mecha- 
nism, but  could  not  be  permitted  to  call  that  omission  a  "  fatal  fault,"  as  the 
word  "  fatal  "  contained  an  inference  which  went  beyond  the  province  of 
an  expert.  —  National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372. 

That  where  the  mechanism  is  such  that  it  is  difficult  for  an  ordinary 
person  to  understand  it,  an  expert  may  testify  as  to  what  are  and  what  are 
not  equivalents,  see  National  v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372. 

Curt.  Pat.  489;  Keyes  v.  Grant,  118  U.  S.  25;  Bischoff  v.  Wethered,  9  Wall. 
812. 

As  the  plaintiff  claimed  that  the  corporations  were  mere  devices  to  pro- 
tect the  individual  defendants,  evidence  showing  that  the  defendants  were 
acting  in  good  faith,  was  admissible.  —  National  v.  Leland,  94  Fed.  502;  37 
C.  C.  A.  372. 

§  407.     Objections  and  Exceptions. 

An  objection  to  the  examination  of  a  witness  should  state  specifically 
the  grounds  of  the  objection,  in  order  that  the  opposite  party  may  have  the 
opportunity  of  removing  it  if  possible.  —  Woodbury  v.  Keith,  101  U.  S.  479; 
25  L.  Ed.  939. 

Anson  and  Cole  were  both  examined  and  testified,  without  any  objection 
to  their  competency  because  of  want  of  notice.  Hence  it  is  too  late  to  object 
to  their  testimony  now.  Had  objection  been  taken  at  the  time,  the  answer 
might  have  been  amended.  —  Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed. 
939. 

Graham  v.  Mason,  5  Fish.  P.  C.  6;  Brown  v.  Hall,  3  Fish.  P.  C.  531;  Phillips 
v.  Paige,  24  How.  164;    Roemer  v.  Simon,  95  U.  S.  214. 


366  THE    FIXED    LAW    OF    PATENTS  §  408 

Plaintiff  waived  the  exception  to  the  refusal  of  this  court  to  instruct 
the  jury  to  find  for  defendant  by  proceeding  with  the  cause  and  inter- 
locutory evidence.  —  Hunt  Bros.  v.  Cassidy,  53  Fed.  257 ;   3  C.  C.  A.  525. 

Railway  v.  Cummings,  106  U.  S.  700;  Insurance  Co.  v.  Crandal,  120  U.  S.  527; 
Robertson  v.  Perkins,  129  U.  S.  236. 

Inasmuch  as  the  respondent  did  not  make  specific  and  clear  objections 
at  the  time  it  should  have  made  them,  if  it  is  intended  to  rely  thereon,  we  give 
no  weight  to  the  general  objection  interposed  at  the  close  of  the  testimony  of 
the  witness,  in  the  following  language:  "  Testimony  objected  to,  in  whole 
and  in  part,  as  incompetent  and  insufficient  on  the  issue  of  priority  of  inven- 
tion." In  no  view  of  the  rules  relating  to  objections  with  reference  to  testi- 
mony produced  in  federal  courts  can  one  so  sweeping  as  this  have  effect, 
unless  it  is  apparent  that  the  facts  intended  to  be  proved  in  whatever  form 
produced,  could  have  no  weight.  —  Westinghouse  v.  Stanley,  133  Fed.  167; 
68  C.  C.  A.  523. 

§  408.     Parol. 

Parol  evidence  and  documentary  evidence  are  admissible  to  establish 
the  statutory  defenses.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Oral  evidence  of  anticipation  must  be  regarded  with  grave  doubt.  The 
burden  of  proof  rests  upon  the  defendant  and  every  reasonable  doubt  should 
be  resolved  against  him.  — Washburn  v.  Beat  Em  All,  143  U.  S.  275 ;  36  L.  Ed. 
154;  12  S.  Ct.  443. 

Coffin  v.  Ogden,  85  U.  S.  120. 

Oral  testimony,  unsupported  by  patents  or  exhibits,  tending  to  show  prior 
use  of  a  device  regularly  patented  is,  in  the  nature  of  the  case,  open  to  grave 
suspicion.  —  Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

Washburn  v.  Beat  Em  All,  143  U.  S.  275. 

Granting  the  witnesses  be  of  the  highest  character,  and  never  so  conscien- 
tious in  their  desire  to  tell  only  the  truth,  the  possibility  of  their  being  mis- 
taken as  to  the  exact  device,  which  though  bearing  a  general  resemblance  to 
the  one  patented  may  differ  from  it  in  the  very  particular  which  makes  it 
patentable,  are  such  as  to  render  oral  testimony  particularly  untrustworthy ; 
particularly  so  if  the  testimony  be  taken  after  the  lapse  of  years  from  the 
time  the  anticipating  device  was  used.  If  there  be  added  to  this  a  personal 
bias,  or  an  incentive  to  color  the  testimony  in  the  interest  of  the  party  calling 
the  witness,  to  say  nothing  of  downright  perjury,  its  value  is,  of  course,  still 
more  seriously  impaired.  This  case  is  an  apt  illustration  of  the  wisdom  of  the 
rule  requiring  such  anticipations  to  be  proven  by  evidence  so  cogent  as  to 
leave  no  reasonable  doubt  in  the  mind  of  the  court,  that  the  transaction 
occurred  substantially  as  stated.  —  Deering  v.  Winona,  155  U.  S.  286;  39 
L.Ed.  153;  15  S.  Ct.  118. 

That  no  two  of  these  witnesses  testify  as  to  the  same  plate,  and  that  none 
of  these  old  platesare  produced,  is  urged  as  ground  upon  which  we  should 
hold  the  anticipation  not  proven.  We  are  not  unmindful  of  the  liability 
to  mistake  in  oral  evidence  of  anticipation,  and  of  the  rule  which  requires 
that  the  evidence  relied  upon  to  overthrow  the  presumption  of  novelty  should 
be  of  the  most  cogent  character.  Deering  v.  Winona,  155  U.  S.  286 ;  American 
v.  Weston,  59  Fed.  147.  Nevertheless  we  cannot  escape  the  conviction  that 
this  method  of  making  door  name-plates  is  established  as  convincingly  as 
any  such  fact  can  be  established  where  the  original  article  is  not  produced. 


§§  409-410  EVIDENCE  367 

So  far  as  we  can  see,  the  witnesses  are  without  bias  or  incentive  to  color  their 
evidence.  The  probability  of  mistake  is  reduced  to  a  minimum  by  the  very 
simple  character  of  the  subject  about  which  they  testify.  The  case  is  there- 
fore quite  exceptional,  and,  if  the  evidence  does  in  fact  produce  conviction 
beyond  all  reasonable  doubt,  we  are  unadvised  of  any  rule  which  denies  to 
it  legal  effect  in  any  class  of  cases,  criminal  or  civil.  —  Rodwell  v.  Tuchfarber, 
127  Fed.  138;  62  C.  C.  A.  252. 

The  unsatisfactory  character  of  testimony  depending  upon  the  unaided 
recollection  of  witnesses  of  events  occurring  years  previous  render  courts 
loth  to  destroy  a  patent  upon  testimony  so  unreliable.  —  United  v.  Beattie, 
149  Fed.  736;  79  C.  C.  A.  442. 

§  409.     Prima  Facie. 

The  patent  is  prima  facie  proof  of  invention.  —  Marsh  v.  Seymour,  97  U.  S. 
348;  24  L.  Ed.  963. 

Plaintiff  introduced  his  patent  in  evidence.  This  was  prima  facie  proof 
of  the  validity  of  his  patent.  —  Hunt  Bros.  v.  Cassidy,  53  Fed.  257 ;  3  C.  C.  A. 
525. 

Mitchell  v.  Tilghman,  19  Wall.  390;  Walk.  Pat.  Sec.  491;  Blanchard  v.  Put- 
nam, 8  Wall.  420;  Seymour  v.  Osborne,  11  Wall.  576. 

Counsel  for  the  appellant  insisted  that,  if  the  testimony  left  in  the  mind 
of  the  court  a  reasonable  doubt  as  to  complainant's  priority,  his  client 
was  entitled  to  the  benefit  of  it.  A  large  number  of  cases,  both  in  the  Supreme 
Court  and  in  the  circuits,  hold  that  doctrine,  nor  do  we  propose  to  dispute 
it.  If  it  were  an  open  question,  we  might  consider  whether  the  pre- 
sumption arising  from  the  granting  of  the  letters  patent,  could  not  be 
overthrown,  as  any  other  presumption  at  law  is  overthrown,  by  the  prepon- 
derance of  evidence.  But  accepting  it  as  settled  that  any  doubt  is  fatal  to 
a  claim  antagonistic  to  the  validity  of  letters  patent  themselves  because  of 
fraud,  we  can  but  say  that  in  this  case  the  principle  cannot  afford  the  appellant 
any  assistance.  The  evidence  is  too  convincing  to  permit  the  shadow  of  a 
doubt.  —  Forgie  v.  Oil  Well.  Supp.  Co.  58  Fed.  871 ;  7  C.  C.  A.  551. 

That  the  presumption  of  noninfringement  arising  from  the  grant  of  a  sub- 
sequent patent  is  overcome  by  the  finding  of  the  trial  court  that  infringement 
exists,  see  Anderson  v.  Collins,  122  Fed.  451 ;  58  C.  C.  A.  669. 

§  410.     Records  and  Documents. 

Patents  are  public  records  and  as  all  persons  are  bound  to  take  notice 
of  their  contents,  they  consequently  have  the  right  to  obtain  copies  of  them, 
by  making  proper  application  and  paying  the  required  fees.  —  Boyden  v. 
Burke,  14  How.  575;   14  L.  Ed.  548. 

The  application  is  a  public  record  which  the  defendant  and  all  others 
are  presumed  to  know.  —  Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

A  certified  copy  of  a  decision  will  be  accepted  as  against  the  official  report 
differing  from  it.  —  Gamewell  v.  Municipal,  77  Fed.  490;  23  C.  C.  A.  250. 

Some  mention  is  made  of  the  file-wrapper ;  but  this  is  of  no  consequence, 
because  at  every  point  the  application  for  the  patent  was  overruled  by  the 
examiners,  and  also  on  appeal  until  the  commissioner  was  reached,  who 


368  THE   FIXED   LAW   OF   PATENTS  §  411 

reversed  everything  appealed  against,  and  what  is  thus  referred  to  occurred 
before  the  inventor  reached  him,  and  was  wiped  out.  —  Forsyth  v.  Garlock, 
142  Fed.  461;  73  C.  C.  A.  577. 

§411.     Miscellaneous. 

It  is  perfectly  clear  that  a  person  having  an  interest  only  in  the  question 
and  not  in  the  event  of  the  suit  is  a  competent  witness;  and  in  general,  the 
liability  of  a  witness  to  a  like  action,  or  his  standing  in  the  same  predicament 
with  the  party  sued,  if  the  verdict  cannot  be  given  in  evidence,  for  or  against 
him,  and  does  not  exclude  him.  —  Evans  v.  Eaton,  7  Wheat.  356;  5  L.  Ed. 
472. 

The  court  refused  to  receive  a  disclaimer  on  the  ground  that  it  did  not 
recite  plaintiff's  interest.  Defendant  later  tried  to  introduce  some  paper  to 
limit  plaintiff's  claim.  Also  refused.  Held:  That  while  it  was  error  to  have 
refused  it  in  the  first  instance  it  was  not  error  in  the  second  case  to  which 
exception  could  be  taken.  —  Silsby  v.  Foote,  14  How.  218 ;  14  L.  Ed.  394. 

It  would  seem,  that  the  defendant  may  introduce  a  junior  patent  in 
evidence  to  justify  what  he  has  done  with  the  same  prima  facie  as  attaches 
to  the  patent  in  suit.  —  Corning  v.  Burden,  15  How.  252;   14  L.  Ed.  683. 

Note:  This  rule  is  doubtful. 

The  defendant  is  not  at  liberty  to  raise  and  prove  issues  outside  of  the 
pleadings  and  direct  the  attention  from  the  main  issue.  —  Blanchard  v. 
Putnam,  75  U.  S.  420;  19  L.  Ed.  433. 

If  the  defense  be  that  it  is  for  a  different  invention,  the  original  patent, 
though  inoperative  as  a  cause  of  action  or  to  protect  the  rights  of  the  inven- 
tor, is  yet  admissible  in  evidence  to  sustain  or  prove  such  a  defense.  —  Reedy 
v.  Scott,  90  U.  S.  352;  23  L.  Ed.  109. 

The  burden  of  proof  is  upon  defendant  when  the  patent  is  put  in  evidence. 

—  Marsh  v.  Seymour,  97  U.  S.  348;  24  L.  Ed.  963. 
Seymour  v.  Osborne,  11  Wall.  516. 

Defendant  did  not  apply  for  a  patent  until  after  he  had  seen  plaintiff's 
drawings  and  had  made  a  model  therefrom.  It  is  difficult  to  believe,  in  view 
of  this  evidence,  that  he  did  not  obtain  the  idea  of  his  alleged  invention  from 
the  prior  invention  and  patent  of  plaintiff.  —  Garrett  v.  Siebert,  98  U.  S.  75; 
25  L.  Ed.  84. 

Complainant's  testimony  as  to  the  date  of  his  invention  should  be  strictly 
construed  against  him  because  such  evidence  is  necessarily  subject  to  the 
gravest  suspicion,  however  honest  and  well  intentioned  the  witness  may  be. 

—  Clark  v.  Willimantic,  140  U.  S.  481 ;  35  L.  Ed.  521 ;  11  S.  Ct.  846. 

But  while  the  stipulation  is  undoubtedly  admissible  in  evidence  it  ought 
not  to  be  used  as  a  pitfall,  and  where  the  facts  subsequently  developed  show 
with  respect  to  a  particular  matter,  that  it  was  inadvertently  signed,  we 
think  that,  upon  giving  notice  in  sufficient  time  to  prevent  prejudice  to  the 
opposite  party,  counsel  may  repudiate  any  fact  inadvertently  incorporated 
therein.  —  Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

The  Hiram,  1  Wheat.  440;  Malin  v.  Kinney,  1  Cai.  117;  Barry  v.  N.  Y.  53 
N.  Y.  536. 


§  411  EVIDENCE  369 

The  opinion  of  the  witnesses  as  to  the  relative  cost  of  two  machines  of 
which  he  was  competent  to  judge,  was  not  objectionable  on  the  ground  that 
he  had  testified  that  he  did  not  know  what  one  of  them  had  cost.  —  Hunt  v. 
Cassidy,  53  Fed.  257;  3  C.  C.  A.  525. 

Counsel  for  complainant  was  justified  in  refusing,  as  he  did,  to  cross- 
examine  the  witness  who  was  the  author  of  the  pamphlet  offered  in  evidence 
said  to  contain  the  views  of  the  witness  on  the  patents  in  suit,  in  regard  to  its 
contents.  The  greater  part  of  it  was  scandalous  matter,  entirely  irrelevant 
to  the  present  controversy;  and  he  was  under  no  obligation  to  undertake 
to  read  and  analyze  its  contents  to  see  whether  it  contained  anything  bearing 
upon  the  issue  worthy  of  a  cross-examination.  —  Waterman  v.  Shipman,  55 
Fed.  982;  5  C.  C.  A.  371. 

It  was  incumbent  upon  the  appellant,  by  fit  objection  at  the  time,  or  by 
subsequent  motion  to  expunge,  to  have  informed  its  opponent  of  the  precise 
ground  of  objection  to  the  offering  in  evidence  of  the  former  decree.  The 
objection  could  then  have  been  obviated  by  amendment  to  the  bill,  or  by 
proper  supplemental  pleading.  It  is  too  late  to  urge  such  objection  for  the 
first  time  upon  an  appeal.  —  Bradley  v.  Eagle  Mfg.  Co.  57  Fed.  980;  6 
C.  C.  A.  661. 

Walsh  v.  Colclough,  56  Fed.  778. 

The  proposition  (of  settlement)  made  by  the  defendants  was  purely  and 
simply  an  offer  of  compromise.  It  was  not  an  admission  of  any  fact  involved 
in  the  litigation.  If  evidence  of  the  proposition  had  been  offered  by  the  plain- 
tiffs upon  the  trial  it  clearly  would  have  been  inadmissible,  against  the  de- 
fendant's objection;  for  the  law  is  well  settled  that  the  offer  of  settlement 
made  by  a  party  to  a  suit  with  a  view  to  a  compromise  or  an  amicable  ad- 
justment of  the  matter  in  dispute  is  not  admissible  against  him.  —  Holmes  v. 
Truman,  67  Fed.  542;  14  C.  C.  A.  517. 

9  Am.  &  Eng.  Enc.  Law,  353;  Stanford  v.  Bates,  22  Vt.  546;  West  v.  Smith, 
101  U.  S.  263;   Gerrich  v.  Sweetser,  4  Pick.  374. 

The  oral  testimony  of  two  officials  in  the  patent  office  was  taken  for  the 
purpose  of  proving  the  averment  in  the  bill  that  the  patent  was  issued  either 
fraudulently  or  through  the  gross  negligence  of  the  examiner,  and  was  ob- 
jected to.  The  evidence  was  admissible.  —  Ecaubert  v.  Appleton,  67  Fed. 
917;  15  C.  C.  A.  73. 

The  attention  of  the  bar  of  this  circuit  is  again  called  to  the  inexpediency 
of  allowing  irrelevant  matter  in  depositions  in  patent  causes.  —  Bonsack  v. 
Elliott,  69  Fed.  335;   16  C.  C.  A.  250. 

The  conduct  of  the  complainant  in  harassing  purchasers  of  the  product 
of  this  process  with  threats  of  litigation,  when  no  possible  ground  for  an 
action  existed  against  them  whether  the  patent  be  valid  or  not  (Goodyear  v. 
Railroad,  Fed.  Cas.  No.  5,563;  Boyd  v.  McAlpin,  id.  1748;  Brown  v.  D.  C.  3 
Mackey,  502;  3  Rob.  Pat.  927)  savors  of  an  attempt  to  use  the  process  of 
the  courts  to  win  customers  by  unfair  means,  and  thus  to  reap  a  harvest 
of  limited  duration.  It  does  not  indicate  that  confidence  in  the  validity  of 
the  patent  which  presses  to  a  full  investigation  of  rights  and  a  comprehensive 
and  decisive  conclusion.  Such  a  course  certainly  does  not  commend  the 
cause  of  a  suitor  to  a  court  of  equity.  —  American  v.  Port  Huron,  72  Fed. 
516;  18  C.  C.  A.  670. 

The  appellees  caused  it  to  be  identified,  but  failed  to  introduce  it  in  evi- 
dence, and  when  appellant  desired  this  court  to  consider  it  in  evidence  the 


370  THE    FIXED    LAW   OF   PATENTS  5  411 

appellees  objected.  They  cannot  therefore,  take  any  supposed  advantage 
from  a  patent  which  they  have  failed  to  produce  in  evidence,  and  to  the  consid- 
eration of  which  they  now  object.  —  Red  Jacket  v.  Davis,  82  Fed.  432;  27 
C.  C.  A.  204. 

Statements  of  counsel  are  not  evidence;  nor  is  the  court  bound  by  their 
construction  of  a  patent.  —  Red  Jacket  v.  Davis,  82  Fed.  432 ;  27  C.  C.  A. 
204. 

Where  both  parties  lumbered  up  the  record  with  a  mass  of  evidence  which 
was  wholly  immaterial  and  unnecessary,  costs  may  be  refused  the  successful 
party.  —  Eastman  v.  Getz,  84  Fed.  458;  28  C.  C.  A.  459. 

More  weight  is  given  to  the  testimony  of  a  witness  based  upon  facts  within 
his  own  knowledge  and  experience,  than  to  the  testimony  of  a  witness  which 
is  "  largely  the  assertion  of  theory."  —  Overweight  v.  Improved,  94  Fed. 
155;  36  C.  C.  A.  125. 

Bene  v.  Jeantet,  129  U.  S.  613;  3  Rob.  Pat.  sec.  1012. 

We  do  not  think  the  learned  judge  meant  to  maintain  that  the  structures 
to  which  he  referred  were  matters  of  which  "  judicial  notice,"  as  that  phrase 
is  used  in  our  jurisprudence,  could  be  taken.  The  reference  seems  to  have 
been  made  out  of  the  fulness  of  his  knowledge  and  experience  in  regard  to 
these  structures  and,  as  naturally,  apposite  to  and  illustrative  of  the  ques- 
tions discussed  by  counsel  in  the  suit  before  him.  No  hint  or  suggestion 
is  made  by  the  learned  judge,  that  the  knowledge  of  the  fact  referred  to  by 
him,  determined  the  result  at  which  he  arrived.  That  he  freely  stated  the 
facts  he  had  in  mind,  in  regard  to  combined  gravity  and  cable  roads,  tends 
no  more  to  invalidate  or  impeach  his  decree  than  the  fact  that  he  had  this 
knowledge,  though  he  were  silent  in  regard  to  it.  Extended  experience 
in  the  affairs  of  life,  does  not  disqualify  a  judge,  who  does  not  use  or  seek  to 
use  it  unfairly.  —  Thompson  v.  Chestnut,  127  Fed.  698;  62  C.  C.  A.  454. 

The  preliminary  question  of  the  title  in  complainants  was  raised  by  their 
failure  to  produce  the  assignment  to  them  of  the  sole  and  exclusive  right 
to  the  patent,  as  pleaded  in  the  bill.  In  view  of  the  finding  of  the  court 
below  that  complainants'  title  as  alleged  was  admitted  in  the  court  below, 
and  the  statement  of  counsel  that  the  assignment  as  pleaded  was  ready  to  be 
produced  in  court,  showing  such  exclusive  license  in  complainants,  we  con- 
clude that  title  has  been  sufficiently  proved.  —  Kirchberger  v.  American, 
128  Fed.  599;  64  C.  C.  A.  107. 

That  a  written  agreement  to  submit  certain  questions  as  to  use  under  a 
patent  to  a  court  of  competent  jurisdiction  is  competent  evidence  upon  the 
trial  of  such  an  issue,  see  Holmes  v.  Kirkpatrick,  133  Fed.  232;  66  C.  C.  A.  286. 

It  is  true  that  the  testimony  of  an  inventor  in  derogation  of  the  validity 
of  his  own  patent  is  usually  open  to  suspicion;  and  in  a  case  like  this,  where 
he  has  made  oath,  for  the  purpose  of  obtaining  a  joint  patent,  that  he  and 
another  inventor  were  the  joint  inventors  of  the  subject  matter,  the  court 
should  reject  his  subsequent  testimony  to  the  contrary,  unless  it  carries 
a  clear  conviction  that  he  did  not  intend  to  testify  falsely  originally,  but  made 
oath  under  misapprehension  or  mistake.  We  are  not  aware  of  any  rule  of 
evidence  or  any  principle  of  estoppel  which  precludes  a  witness  who  has  testi- 
fied incorrectly,  or  even  falsely,  on  a  former  occasion,  from  telling  the  truth 


§412  EXPERIMENT  371 

later.  The  joint  patentees  might  be  estopped  from  asserting  that  they  were 
not  joint  inventors  in  a  suit  against  them  by  the  owner  to  enforce  the  patent, 
but  a  third  party,  who  is  in  no  way  in  privity  with  them  or  with  the  owner, 
cannot  be  affected  by  an  estoppel.  —  De  Laval  v.  Vermont,  135  Fed.  772; 
68  C.  C.  A.  474. 

In  the  nature  of  the  case,  it  was  scarcely  to  be  expected  that  the  complain- 
ant could  prove  that  the  inventions  in  question  were  made  during  the  term 
of  Franzen's  employment  by  the  direct  and  positive  testimony  of  any  witness 
speaking  from  his  own  actual  or  personal  knowledge.  Naturally  the  com- 
plainant's reliance  would  be  on  circumstantial  evidence,  which  often  leads 
to  a  conclusion  more  satisfactory  than  direct  evidence  can  produce.  —  Mis- 
sissippi v.  Franzen,  143  Fed.  501 ;  74  C.  C.  A.  135. 

The  complainant  is  not  concluded  by  what  the  defendant  testified,  or 
prevented  from  contending  upon  the  whole  evidence  that  the  inventions 
were  actually  made  while  defendant  was  in  its  employment,  although  he 
asserted  the  contrary  when  on  the  witness  stand.  A  party  who  calls  the 
opposite  party  as  a  witness  is  not  bound  by  his  testimony,  but  may  contra- 
dict him.  —  Mississippi  v.  Franzen,  143  Fed.  501 ;  74  C.  C.  A.  135. 

1  Whart.  Ev.  sees.  484,  489;  Dravo  v.  Fabel,  132  U.  S.  487  distinguished. 

The  Circuit  Court,  and  we  on  appeal,  proceeding  on  a  bill  in  equity  of  this 
character  as  finders  of  the  facts  have  as  wide  a  range  for  drawing  inferences 
as  a  jury.  —  United  v.  Duplessis,  155  Fed.  842;  84  C.  C.  A.  76. 

It  will  thus  be  seen  that  we  have  nothing  before  us  but  the  statements  of 
the  patent  itself  and  the  patents  referred  to  in  the  specification.  With  these 
exceptions  there  is  no  prior  art.  We  are  permitted  to  consider  the  decrees 
in  the  first  circuit  as  rules  of  decision  entitled  to  the  highest  respect  but  we 
are  not  permitted  to  consider  the  facts  as  stated  in  the  opinions  either  to 
sustain  or  defeat  the  patent,  for  the  reason  that  these  facts  are  not  in  proof 
here.  We  have  nothing  more  before  us  than  if  the  case  were  here  on  demurrer 
to  the  bill.  The  rules  prescribing  the  limits  beyond  which  the  court  is  not 
permitted  to  go  at  such  hearings  is  clearly  stated  in  New  York  v.  New  Jersey, 
137  U.  S.  445.  —  American  v.  DeGrasse,  157  Fed.  660;  87  C.  C.  A.  260. 

Whether  the  application  under  which  the  patent  in  suit  was  granted  be 
called  a  formal  continuation  or  not,  of  the  original  application  for  a  patent 
with  reference  to  the  same  subject-matter,  the  admissions  and  statements 
of  the  applicant  in  the  former  case  are  not  irrelevant  to  the  issues  now  under 
consideration,  and  we  are  not  to  be  asked  to  close  our  eyes  to  evidential 
facts  upon  a  ground  so  slight  as  the  one  suggested.  —  Dodge  v.  Jones,  159 
Fed.  715;  86  C.  C.  A.  191. 


EXPERIMENT. 

General  Statement  §  412 
Abandonment  §  413  (see  §  1) 
Experimental  use  §  414 
Public  Use  §  415  (see  §  849) 
Reduction  to  Practice  §  416 
Secret  Use  §  417 


See  —  Abandonment  §  10;  Anticipa- 
tion §  78;  Priority  §  811;  Public  Use 
§  851;  Reduction  to  Practice  §  863; 
Secret  Process  or  Machine  §  898; 
Unpatented  Invention  §  930 


§  412.     General  Statement. 

The  Patent  Statute  makes  no  provision  as  to  experiment  or  experimental 
use.  This  subject  recurs  under  the  titles  Anticipation  and  Public  Use. 
The  following  is,  perhaps,  the  best  general  statement  made  by  the  courts: 

The  law  upon  the  question  of  experimental  use  is  well  settled.  It  is  the 
duty  of  the  inventor  to  file  his  application  within  two  years  after  the  com- 


372  THE    FIXED    LAW   OF    PATENTS  §  413 

pletion  of  his  invention.  He  is  permitted  to  take  the  time  necessary  to  com- 
plete the  invention  and  to  make  experiments  for  that  purpose,  but  the 
moment  the  invention  is  completed  the  two-year  period  begins  to  run.  The 
leading  case  is  Elizabeth  v.  Pavement  Co.  97  U.  S.  126.  An  experimental 
public  use  of  six  years  was  there  held  not  to  be  unreasonable.  The  invention 
was  for  a  pavement  and  durability  was  the  principal  object  sought  to  be 
attained.  An  invention  must  not  only  be  new,  it  must  be  useful.  A  pave- 
ment that  would  not  last  six  years  was  useless,  no  one  would  want  it,  no  one 
would  incur  the  expense  of  laying  it  down.  There  is  but  one  way  to  ascer- 
tain whether  a  newly  invented  pavement  is  durable  and  that  is  to  test  it 
by  public  use.  A  trial  of  two  years  will  demonstrate  nothing.  It  may  stand 
the  test  for  that  period  and  then  suddenly  disintegrate.  These  were  the  con- 
siderations which  induced  the  court  to  uphold  the  Nicholson  patent.  As 
we  shall  presently  see,  there  were  no  such  problems  to  be  solved  in  the  case 
in  hand. 

Smith  v.  Sprague,  123  U.  S.  249,  is  authority  for  the  following  proposi- 
tions : 

First.  Where  it  is  clearly  shown  that  there  was  public  use  of  an  invention 
by  the  inventor  for  more  than  two  years  prior  to  the  application,  the  burden 
rests  upon  him  to  establish  by  convincing  proof  that  the  use  was  for  the 
purpose  of  perfecting  an  incomplete  invention  by  tests  and  experiments. 

Second.  Where  the  invention  is  one  of  many  embodied  in  a  single  machine, 
or  where  the  device  contains  features  not  included  in  the  invention  covered 
by  the  claims,  experiments  intended  to  produce  more  perfect  working  of  these 
extrinsic  features  are  not  such  as  will  prevent  the  running  of  the  statutory 
limitation.  In  other  words,  the  experiments  must  be  made  for  the  purpose 
of  developing  the  invention  as  described  and  claimed  and  nothing  else. 
When  the  invention  is  completed  the  time  begins  to  run  and  it  is  of  no 
moment  that  something  else,  not  a  part  of  the  invention,  is  incomplete  and 
requires  tests  and  experiments  to  perfect  it.  (Citing  and  explaining  Egbert  v. 
Lippman,  104  U.  S.  333;  Root  v.  Railroad,  146  U.  S.  210;  Worley  v.  To- 
bacco, 104  U.  S.  340;  Perkins  v.  Paper,  2  Fed.  451;  Hall  v.  Macneale,  107 
U.  S.  90;  Harmon  v.  Struthers,  57  Fed.  637;  Swain  v.  Holyoke,  109  Fed. 
154;  Lettelier  v.  Mann,  91  Fed.  917.) 

From  these  authorities  we  deduce  the  following  propositions,  as  applicable 
to  the  present  controversy: 

1.  An  inventor  has  a  reasonable  time  in  which  to  experiment  for  the 
purpose  of  perfecting  the  invention  and  demonstrating  its  utility. 

2.  The  time  thus  spent,  if  in  good  faith,  is  no  part  of  the  two-year  statute 
of  limitations. 

3.  The  experiments  must  be  made  in  perfecting  the  invention  as  described 
and  shown. 

4.  Experiments  made  in  testing  parts  of  the  machine  not  covered  by  the 
invention  will  not  have  the  effect  of  extending  the  two-year  period. 

5.  As  soon  as  the  invention  is  completed,  viz. :  "  in  such  a  condition  that 
the  inventor  can  apply  for  a  patent  for  it,"  the  two-year  period  begins  to 
run  and  the  application  must  be  made  within  this  period. 

6.  The  fact  that  the  invention  has  been  improved  since  its  original  em- 
bodiment does  not  demonstrate  that  it  was  then  embryonic  or  incomplete. 

7.  When  a  clear  case  of  prior  public  use  is  established,  the  burden  is  on 
the  inventor  to  prove  by  convincing  proof  that  the  use  was  experimental.  — 
Eastman  v.  Mayor,  134  Fed.  844;  69  C.  C.  A.  628. 


§  413.     Abandonment. 

The  use  of  an  invention,  by  the  inventor  himself,  or  of  any  other  person 
under  his  direction,  by  way  of  experiment,  and  in  order  to  bring  his  invention 


§§  414-416  EXPERIMENT  373 

to  perfection  has  never  been  regarded  as  abandonment.  —  Elizabeth   v. 
American,  97  U.  S.  126;  24  L.  Ed.  1000. 
Curt.  Pat.  381;   Shaw  v.  Cooper,  7  Pet.  292. 

A  machine  which  has  been  in  use,  unchanged  in  the  principle  of  its  con- 
struction, for  some  30  years,  until  it  was  taken  from  the  shop  to  be  made  an 
exhibit  in  suit,  cannot  be  thrown  aside  as  an  abandoned  experiment.  — 
Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed.  939. 

It  is  only  when  experiments  fall  short  of  the  desired  result  and  are 
abandoned  as  failures  that  they  are  rejected  as  proof  of  want  of  novelty. 
—  American  v.  Wagner,  151  Fed.  576;  81  C.  C.  A.  120. 

Waterman  v.  Thomson,  2  Fish.  P.  C.  461;   Aikin  v.  Dolan,  3  Fish.  P.  C.  197. 

§  414.     Experimental  Use. 

A  machine  need  not  be  put  up  and  used  only  in  the  inventor's  own  shop 
or  premises.  He  may  have  it  put  up  and  used  in  the  premises  of  another, 
and  the  use  may  inure  to  the  benefit  of  the  owner  of  the  establishment. 
Still,  if  used  under  the  surveillance  of  the  inventor,  and  for  the  purpose 
of  enabling  him  to  test  the  machine  and  ascertain  whether  it  will  answer  the 
purpose  intended,  and  make  such  alterations  and  improvements  as  experi- 
ence demonstrates  to  be  necessary,  it  will  be  a  mere  experimental  use  and 
not  a  public  use,  within  the  meaning  of  the  statute.  —  Elizabeth  v.  American, 
97  U.S.  126;  24  L.  Ed.  1000. 

It  is  not  experimental  use  where  an  inventor  practises  his  art  generally, 
teaching  it  to  others  and  receiving  pay  therefor.  —  International  v.  Gaylord, 
140  U.  S.  55;  35  L.  Ed.  347;  11  S.  Ct.  716. 

Smith  v.  Sprague,  123  U.  S.  249;  Consolidated  v.  Wright,  94  U.  S.  92;  Egbert 
v.  Lippman,  104  U.  S.  333;  Elizabeth  v.  Nicholson,  97  U.  S.  126. 

We  are  convinced  that,  while  the  product  of  the  Rieseck  machine  was  sold, 
such  sale  was  incidental  to  its  experimental  use.  —  Penn  v.  Conroy,  159  Fed. 
943;  87  C.  C.  A.  149. 

§  415.     Public  Use. 

The  rule  of  Coffin  v.  Ogden,  18  Wall.  120  and  Egbert  v.  Lippman,  104  U.  S. 
333  followed.  —  Hall  v.  Macneale,  107  U.  S.  90;  27  L.  Ed.  367;  2  S.  Ct.  73. 

If  it  be  once  understood  that  the  object  of  the  act  "  was  to  require  the 
inventor  to  see  to  it  that  he  filed  his  application  within  two  years  from  the 
completion  of  his  invention,  so  as  to  cut  off  all  question  of  the  defeat  of  his 
patent  by  a  use  or  sale  of  it  by  others  more  than  two  years  prior  to  his  appli- 
cation," the  courts  will  no  longer  be  vexed  by  the  perplexing  questions  which 
must  frequently  arise  when  the  intent  of  the  user  and  the  bona  fides  of  the 
use  are  questions  to  be  determined  on  oral  testimony.  Isolated  cases  of 
injustice  to  inventors  may  result,  but  the  remedy  is  certain  and  sure.  The 
inventor  is  master  of  the  situation  and  has  it  in  his  power  by  prompt  action 
to  make  the  defense  of  prior  public  use  impossible.  Surely  two  years  after 
he  has  completed  his  invention  is  ample  time  in  which  to  file  his  application. 
If  he  fails  to  take  so  simple  and  reasonable  a  precaution,  why  should  it  not 
be  said  that  the  risk  is  his  and  that  he  cannot  complain  of  the  consequences 
of  his  own  supineness?  —  Eastman  v.  Mayor,  134  Fed.  844;  69  C.  C.  A.  628. 

§  416.     Reduction  to  Practice. 

A  mere  experiment  is  not  patentable.  It  must  have  been  reduced  to 
practice.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 


374  THE    FIXED    LAW    OF    PATENTS  §§  417-418 

What  constitutes  legitimate  experiment.  —  Smith  v.  Sprague,  123  U.  S. 
249;  30  L.  Ed.  141;  8  S.  Ct.  122. 

Putting  an  invention  into  public  use  for  more  than  two  years  merely  to 
test  its  efficiency,  is  not  reduction  to  practice  within  the  meaning  of  the 
cases.  —  Root  v.  Third  Ave.  146  U.  S.  210;  36  L.  Ed.  946 ;  13  S.  Ct.  100. 

Elizabeth  v.  Nicholson,  97  U.  S.  126;  Smith  v.  Sprague,  123  U.  S.  249;  Hall  v. 
Macneale,  107  U.  S.  90;   Egbert  v.  Lippman,  104  U.  S.  333. 

§  417.     Secret  Use. 

The  machine  was  kept  under  lock  and  key,  hidden  from  sight,  and  no 
employees  permitted  to  see  it  except  the  foreman.  Held:  Whatever  knowl- 
edge, if  any,  was  obtained  of  the  machine  by  the  public  was  surreptitious 
and  contrary  to  the  manifest  wish  of  the  inventor.  —  Penn  v.  Conroy,  159 
Fed.  943;  87  C.  C.  A.  149. 

Elizabeth  v.  Pavement,  97  U.  S.  126;  Jennings  v.  Pierce,  Fed.  Cas.  7283; 
Smith  v.  Sprague,  123  U.  S.  249. 

EXTENSIONS. 

General  Statement    and    Holdings  §  418 

§  418.     General  Statement  and  Holdings. 

Extensions  have  for  long  years  been  obsolete.  They  can  be  secured  only 
by  special  act  of  Congress  (see  §  268).  The  following  rulings  are  given,  not 
because  they  are  of  any  practical  use,  but  to  make  the  record  of  cases  com- 
plete. 

In  absence  of  specific  agreement  the  assignee  takes  no  interest  in  an  ex- 
tension. —  Wilson  v.  Rousseau,  4  How.  646;  11  L.  Ed.  1141. 

The  executor  or  administrator  and  not  a  former  assignee,  has  the  right 
to  apply  for  an  extension.  —  Wilson  v.  Rousseau,  4  How.  646;  11  L.  Ed. 
1141. 

1 — The  act  authorizes  an  extension  on  the  application  of  an  executor  or 
administrator. 

2  —  The  right  of  extension  inures  to  the  executor  or  administrator,  and 
not  to  an  assignee. 

3 — That  such  right  inures  to  the  administrator  notwithstanding  a  contract 
of  assignment  of  the  existing  patent. 

4  —  That  one  claiming  the  title  from  administrator  under  extension  may 
maintain  an  action  against  the  assignees  of  the  former  patent. 

5  —  That  the  fact  that  the  patentee  in  his  life  time  had  sold  all  his  rights, 
receiving  no  contingent  interest  in  the  patent,  did  not  permit  the  executor 
or  administrator  from  obtaining  extension  and  that  such  former  assignees 
acquired  no  rights  beyond  the  original  term. 

6  —  That  an  assignee  of  a  specific  territory,  limited  to  use  two  machines 
holds  such  an  interest  as  will  enable  him  to  sue. 

7  —  That  the  extended  specification  is  not  void  for  uncertainty. 

8  —  That  the  decision  of  the  Commissioners  is  not  conclusive  as  to  their 
jurisdiction. 

9  —  That  a  reissue  of  an  extended  patent  is  lawful.  —  Wilson  v.  Rousseau,  4 
How.  646;  11  L.  Ed.  1141. 

Upon  the  authority  of  Evans  v.  Eaton  and  Wilson  v.  Rousseau,  two  propo- 
sitions are  settled:   1.   That  a  special  act  of  Congress  in  favor  of  a  patentee, 


§  419 


FOREIGN    PATENT 


375 


extending  the  time  beyond  that  originally  limited,  must  be  considered  as 
engrafted  on  the  general  law.  2.  That  under  the  general  law,  in  force  when 
this  special  act  was  passed,  a  party  who  had  purchased  the  right  to  use  a 
machine  during  the  period  to  which  the  patent  was  first  limited,  was  en- 
titled to  continue  to  use  it  during  the  extension  authorized  by  law.  —  Bloomer 
v.  McQueewan,  14  How.  539;  14  L.  Ed.  532. 

Evans  v.  Eaton,  3  Wheat.  518;  Wilson  v.  Rousseau,  4  How.  688. 

Under  the  former  law  when  extensions  were  granted,  unless  special  agree- 
ment ran  to  the  contrary,  the  sale  or  license  of  a  machine  carried  with  it  the 
right  under  an  extension.  —  Mitchell  v.  Hawley,  83  U.  S.  544;  21  L.  Ed.  322. 

Under  the  Act  of  1836  a  license  or  assignment  carried  with  it  the  right 
under  the  extension  of  the  patent.  —  Eunson  v.  Dodge,  85  U.  S.  414;  21 
L.  Ed.  766. 

Wilson  v.  Rousseau,  4  How.  646;  Bloomer  v.  McQueewan,  14  How.  539;  Chafee 
v.  Belting  Co.  22  How.  217;   Bloomer  v.  Millinger,  1  Wall.  340. 

In  the  absence  of  specific  terms,  an  assignment  does  not  carry  extensions 
—  on  the  principle  that  Nemo  dat  non  habet  (Benj .  Sales,  2nd  ed.  5 ;  Peer  v. 
Humphrey,  2  Ad.  &  Ell.  495);  but  where  the  conveyance  is  of  the  invention 
whether  before  or  after  the  patent  is  obtained  the  rule  is  otherwise,  unless 
there  is  something  in  the  instrument  to  indicate  a  different  intention.  The 
rule  being  that  a  conveyance  of  the  described  invention  carries  with  it  all  its 
incidents,  and  all  the  well  considered  authorities  concur  that  the  inchoate 
right  to  obtain  a  renewal  or  extension  of  the  patent  is  as  much  an  incident 
of  the  invention  as  the  inchoate  right  to  obtain  the  original  patent;  and 
if  so  it  follows  that  both  are  included  in  the  instrument  which  conveys  the 
described  invention  without  limitation  or  qualification.  —  Hendrie  v.  Sayles, 
98  U.  S.  546;  25  L.  Ed.  176. 

Emmons  v.  Sladden,  9  O.  G.  354;  Gayler  v.  Wilder,  10  How.  477;  Clum  v. 
Brewer,  2  Curt.  520;  Carnan  v.  Bowles,  2  Bro.  Ch.  84. 

The  right  of  an  owner  of  a  patented  machine,  without  any  conditions 
attached  to  his  ownership,  to  continue  the  use  of  his  machine  during  an  ex- 
tended term  of  the  patent  is  well  settled.  —  Paper  Bag  cases,  105  U.  S.  766 ; 
26  L.  Ed.  959. 

Bloomer  v.  McQueewan,  14  How,  550;  Chaffee  v.  Boston,  63  U.  S.  223;  Mitchell 
v.  Hawley,  83  U.  S.  547;   Adams  v.  Burks,  84  U.  S.  455. 


FOREIGN  PATENT. 

Statutory  Provision  §  419 
General  Rulings  §  420 
Expiration  of  §  421 
Lapse  of  §  422 
Prior  §  423 


Miscellaneous  Rulings  §  424 
See  —  Anticipation    §§    80-85;     De- 
femes  §  320;  Evidence  §  390;   Public 
Use  §  852 


§  419.     Statutory  Provision. 

No  person  otherwise  entitled  thereto  shall  be  debarred  from  receiving  a 
patent  for  his  invention  or  discovery,  nor  shall  any  patent  be  declared  invalid 
by  reason  of  its  having  been  first  patented  or  caused  to  be  patented  by  the 
inventor  or  his  legal  representatives  or  assigns  in  a  foreign  country,  unless 
the  application  for  said  foreign  patent  was  filed  more  than  twelve  months, 
in  cases  within  the  provisions  of  section  4886  R.  S.,  and  four  months  in  cases 
of  designs,  prior  to  the  filing  of  the  application  in  this  country,  in  which  case 
no  patent  shall  be  granted  in  this  country. 


376  THE    FIXED    LAW    OF    PATENTS  §  419 

An  application  for  patent  for  an  invention  or  discovery  or  for  a  design  filed 
in  this  country  by  any  person  who  has  previously  regularly  filed  an  appli 
cation  for  a  patent  for  the  same  invention,  discovery,  or  design  in  a  foreign 
country  which,  by  treaty,  convention,  or  law,  affords  similar  privileges  to 
citizens  of  the  United  States  shall  have  the  same  force  and  effect  as  the  same 
application  would  have  had  if  filed  in  this  country  on  the  date  on  which  appli- 
cation for  patent  for  the  same  invention,  discovery,  or  design  was  first  filed 
in  such  foreign  country,  provided  the  application  in  this  country  was  filed 
within  twelve  months  in  cases  within  the  provisions  of  section  4886  of  the 
Revised  Statutes,  and  within  four  months  in  cases  of  designs,  from  the 
earliest  date  on  which  any  such  foreign  application  was  filed.  But  no  patent 
shall  be  granted  on  an  application  for  patent  for  an  invention  or  discovery 
or  a  design  which  had  been  patented  or  described  in  a  printed  publication 
in  this  or  any  foreign  country  more  than  two  years  before  the  date  of  the 
actual  filing  of  the  application  in  this  country,  or  which  had  been  in  public 
use  or  on  sale  in  this  country  for  more  than  two  years  prior  to  such  filing. 
—  R.  S.  4887. 

The  foregoing  is  the  statute  as  twice  amended  —  first  by  the  act  of  Mar.  3, 
1897,  and  second  by  the  act  of  Mar.  3,  1903.  In  order  to  understand  the  force 
and  effect  of  the  decisions  on  this  subject,  it  is  necessary  to  quote  the  section 
as  originally  found  in  the  act  of  July  8,  1870,  and  also  as  amended  by  the 
act  of  Mar.  3,  1897. 

As  originally  passed: 

No  person  shall  be  debarred  from  receiving  a  patent  for  his  invention  or 
discovery,  nor  shall  any  patent  be  declared  invalid,  by  reason  of  its  having 
been  first  patented  or  caused  to  be  patented  in  a  foreign  country,  unless 
the  same  has  been  introduced  into  public  use  in  the  United  States  for  more 
than  two  years  prior  to  the  application.  But  every  patent  granted  for  an 
invention  which  has  been  previously  patented  in  a  foreign  country  shall  be 
so  limited  as  to  expire  at  the  same  time  with  the  foreign  patent,  or,  if  there 
be  more  than  one,  at  the  same  time  with  the  one  having  the  shortest  term, 
and  in  no  case  shall  it  be  in  force  more  than  seventeen  years. 

After  the  amendment  of  Mar.  3,  1897,  the  section  read  thus: 

No  person  otherwise  entitled  thereto  shall  be  debarred  from  receiving 
a  patent  for  his  invention  or  discovery,  nor  shall  any  patent  be  declared 
invalid,  by  reason  of  its  having  been  first  patented  or  caused  to  be  patented 
by  the  inventor  or  his  legal  representatives  or  assigns  in  a  foreign  country, 
unless  the  application  for  said  foreign  patent  was  filed  more  than  seven  months 
prior  to  the  filing  of  the  application  in  this  country,  in  which  case  no  patent 
shall  be  granted  in  this  country. 

It  is  well,  also,  to  have  before  us  the  text  of  Sec.  4886,  showing  the  amend- 
ments of  Mar.  3,  1897.    The  amendments  are  shown  in  italics: 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new  and  useful 
improvements  thereof,  not  known  or  used  by  others  in  this  country,  before 
his  invention  or  discovery  thereof,  and  not  patented  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  before  his  invention  or  discovery 
thereof,  or  more  than  two  years  prior  to  his  application,  and  not  in  public  use 
or  on  sale  in  this  country  for  more  than  two  years  prior  to  his  application, 
unless  the  same  is  proved  to  have  been  abandoned,  may,  upon  payment 
of  the  fees  required  by  law,  and  other  due  proceeding  had,  obtain  a  patent 
therefor. 


§  420  FOREIGN    PATENT  377 

It  will  thus  be  seen  that  Sec.  4887  has  had  a  somewhat  varied  career.  The 
decisions  following  must  be  read  with  this  in  view. 

§  420.     General  Rulings. 

A  patent  granted  subsequent  to  a  foreign  patent  for  the  same  invention, 
is  limited  thereby  under  sec.  4887  to  the  term  for  which  the  foreign  patent 
is  granted,  and  the  word  "  term  "  is  meant  to  cover  the  full  period  of  the 
foreign  grant,  without  reference  to  the  "  terms  "  for  which  the  patent  may 
be  extended,  as  construed  in  Pohl  v.  Anchor,  134  U.  S.  381.  —  Bate  v.  Ham- 
mond, 129  U.  S.  151 ;  32  L.  Ed.  645 ;  9  S.  Ct.  225. 

Under  4887  U.  S.  R.  S.  a  patent  expires  with  the  term  of  the  shortest 
prior  foreign  patent,  the  expiration  of  term  meaning  the  term  for  which  such 
foreign  patent  was  granted,  or  could  be  kept  in  force.  Construing  Bate  v. 
Hammond,  129  U.  S.  151 ;  Pohl  v.  Anchor,  134  U.  S.  381 ;  33  L.  Ed.  953;  10 
S.  Ct.  577. 

Holmes  v.  Metropolitan,  21  F.  R.  458;  Paillard  v.  Bruno,  29  F.  R.  864;  Bate 
v.  Gillett,  31  F.  R.  809;  Huber  v.  Nelson,  38  Fed.  830. 

The  expiration  of  a  foreign  patent  prior  to  application  for  a  reissue  voids 
the  reissue.  —  Commercial  v.  Fairbank,  135  U.  S.  176;  34  L.  Ed.  88;  10 
S.  Ct.  972. 

Voids  grant  of  domestic  patent  issued  after  expiration  of  foreign  patent. 
—  Huber  v.  Nelson,  148  U.  S.  270;  37  L.  Ed.  447;  13  S.  Ct.  603. 
Bate  v.  Hammond,  129  U.  S.  151. 

Does  not  operate  to  terminate  domestic  patent  if  the  term  for  which  the 
foreign  patent  is  undisturbed.  —  Huber  v.  Nelson,  148  U.  S.  270;  37  L.  Ed. 
447;   13  S.  Ct.  603. 

Pohl  v.  Brewing  Co.  134  U.  S.  385. 

Under  the  facts  stated  (that  the  American  application  was  filed  Dec.  1, 
1876;  that  English  patent  was  issued  Jan.  29,  1877;  that  Canadian  patent 
was  issued  Jan.  9,  1877;  that  the  American  patent  was  issued  Nov.  20,  1877) 
the  invention  for  which  the  U.  S.  patent  was  issued  was  "  previously  patented 
in  a  foreign  country,"  within  the  meaning  of  those  words  in  sec.  4887 
U.  S.  R.  S.  and  the  U.  S.  patent  expired  under  the  terms  of  that  section, 
before  the  expiration  of  seventeen  years  from  its  date.  —  Bate  v.  Sulzberger, 
157  U.  S.  1;  39  L.  Ed.  601 ;  15  S.  Ct.  508. 

Compare  Bate  v.  Hammond,  129  U.  S.  151. 

Full  statement  of  present  status  of  sec.  4887. 

The  French  patent  for  a  term  of  15  years  was  issued  before  the  date  of 
the  application  for  the  United  States  patent,  and  was  in  full  force  at  that 
date,  but  lapsed  for  the  nonpayment  of  an  annuity  before  the  U.  S.  patent 
issued.  The  effect  which  the  lapse  had  upon  the  life  of  the  U.  S.  patent  de- 
pends upon  the  proper  construction  of  sec.  4887. 

No  one  of  the  five  decisions  of  the  Supreme  Court  which  may  be  supposed 
to  bear  upon  a  decision  of  this  motion  was  based  upon  the  facts  in  this  case. 
All  the  decisions  of  the  Supreme  Court  upon  sec.  4887  were  intended  to  be 
limited  to  the  question  which  arose  upon  the  precise  facts  of  the  respective 
cases,  and  are  to  be  so  regarded,  notwithstanding  any  general  language 
which  was  used. 

In  Bate  v.  Hammond,  129  U.  S.  151,  the  question  was  whether  the  U.  S. 
patent  expired  at  the  end  of  5  years  or  15  years,  from  the  date  of  the  pre- 
viously issued  Canadian  patent;  and  it  was  held  that  as  there  was  no  in- 
terruption of  the  Canadian  patent,  15  year  period  prevailed. 


378  THE    FIXED    LAW    OF    PATENTS  §420 

In  Pohl  v.  Brewing  Co.  134  U.  S.  381,  the  court  held  that  the  potential 
term  and  not  the  period  of  actual  existence,  was  to  govern. 

In  Commercial  v.  Fairbank,  135  U.  S.  176,  the  great  question  was  whether 
the  foreign  patents  were  identical  with  those  of  the  United  States,  and  finding 
them  to  be  so,  held  that  the  application  for  the  reissue  filed  subsequent  to  the 
expiration  of  a  foreign  patent  was  void. 

The  decision  of  Bate  v.  Sulzberger,  157  U.  S.  1,  was  confined  to  the  single 
point  that  the  provisions  of  sec.  4887  "  refer  to  foreign  patents  granted  pre- 
viously to  the  issue  of  letters  patent  for  the  same  invention  by  the  United 
States,  and  not  to  foreign  patents  granted  previously  to  the  application  for 
the  American  letters." 

The  case  of  Huber  v.  Mfg.  Co.,  148  U.  S.  270,  was  tried  in  circuit  court  after 
the  decision  in  the  Bate  case  and  before  that  in  the  Pohl  case.  In  this  case, 
the  application  for  the  U.  S.  patent  was  filed  more  than  7  months  after  the 
English  patent  had  become  void.  Held:  "  We  are  of  opinion  that,  as  in  the 
case  at  bar,  the  foreign  patent  was  not  in  force  when  the  U.  S.  patent  was 
issued,  the  latter  patent  never  had  any  force  or  validity ;  "  and  gave  as  the 
apparent  reason  for  the  conclusion  that  "  the  delay  in  applying  for  the  U.  S. 
patent  until  after  the  foreign  patent  expired  amounted  to  an  abandonment 
of  the  right  to  a  U.  S.  patent.  This  is  in  accordance  with  Mushet's  Case  " 
(1870)  which  was  an  application  for  an  extension  of  a  U.  S.  patent  after  the 
foreign  patent  for  the  same  invention  had  expired.  The  Huber  case  is  an 
authority  only  for  the  right  to  obtain  a  U.  S.  patent  applied  for  7  months 
after  a  foreign  patent  had  expired,  and  after  its  owners  manifestly  regarded 
it  as  of  no  importance  and  consequently  after  the  abandonment  of  the  right 
to  a  U.  S.  patent.  There  has  been  no  authoritative  decision  by  that  court 
upon  the  facts  of  the  case  at  bar. 

Section  4887  provided  that  prior  foreign  patenting  should  not  be  a  bar  to 
a  United  States  patent,  unless  under  certain  circumstances,  but  that  such 
patent  should  not  extend  beyond  the  term  of  the  life  of  its  foreign  predecessor. 
If  the  invention  or  the  right  to  a  patent  had  been  abandoned  before  the  ap- 
plication for  a  United  States  patent,  its  issuance  was  prohibited  under  an- 
other section.  If  there  had  been  no  abandonment  before  application,  but  the 
issuance  of  the  United  States  patent  was  delayed  until  the  foreign  patent  had 
become  forfeited  by  noncompliance  with  some  statutory  provision,  the  ques- 
tion is,  whether  when  issued,  its  life  had  been  destroyed,  or  whether  its  life 
was  upon  the  declared  or  legal  term  of  the  foreign  patent.  If  its  life  was  des- 
troyed, its  destruction  was  effected  while  the  application  was  under  exam- 
ination, and  was  delayed  in  the  patent  office.  Such  a  result  would  be  at 
variance  with  the  spirit  of  the  section,  the  intent  of  which  was  to  make  the 
United  States  term  coterminous  with  the  possible  foreign  term. 

But  there  is  no  requirement  that  the  foreign  patent  must  be  in  force  at 
the  date  of  the  United  States  patent,  and  in  searching  for  the  meaning  of 
the  section,  as  applied  to  this  case,  the  words  "  to  expire  at  the  same  time  " 
should  have  the  same  construction  in  each  set  of  circumstances,  and  should 
be  taken  to  mean  that  the  United  States  patent  expires  at  the  end  of  the 
term  prescribed  in  the  previous  foreign  patent.  —  Welsbach  v.  Apollo,  96 
Fed.  332;  37  C.  C.  A.  508. 

Note:  Perhaps  this  decision  should  set  at  rest  the  wandering  and  dis- 
embodied spirit  of  sec.  4887.  The  opinion  is  by  Wallace  and  concurred  in 
by  Shipman  (only  two  judges  sitting),  and  the  briefs  were  by  Bennett  for 
appellant  and  Wetmore  for  appellees.  While  other  conditions  may  arise, 
it  would  seem  that  thus  far  the  law  should  remain  settled. 

The  following  opinion  by  Judge  Lowell  is  given,  practically  in  full. 
At  the  time  the  patent  in  suit  was  issued,  section  4887  of  the  Revised 
Statutes  was  in  force  in  its  original  form.    By  virtue  of  that  section  the  patent 


§  420  FOREIGN    PATENT  379 

was  limited  to  expire  with  the  British  patent,  May  19,  1897.  The  complain- 
ant contended  that  since  the  passage  of  Act  Mar.  3,  1903,  c.  1019,  32  Stat. 
1225,  every  patent  whenever  granted  is  limited  only  by  the  term  expressed 
in  its  grant  and  is  governed  by  Rev.  St.  sec.  4884.  Under  this  contention 
the  patent  expired  May  24,  1904.  In  order  to  understand  the  legislation 
under  consideration  it  is  here  printed  in  full.  (Here  is  quoted  sec.  4887; 
Act  Mar.  3,  1897,  c.  391,  29  Stat.  692;  Act  Mar.  3,  1903,  c.  1019,  sec.  1,  32 
Stat.  1225,  above  quoted.) 

Let  us  consider  how  the  law  stood  regarding  patents  like  that  here  in  suit 
at  every  stage  of  the  legislation,  bearing  in  mind  the  necessary  distinction 
between  the  validity  of  a  patent  and  its  term.  Act  July  4,  1836,  c.  357,  sec. 
8,  5  Stat.  121,  provided  that  prior  foreign  patenting  within  six  months 
of  the  application  here  should  not  invalidate  the  domestic  patent,  which 
was  left  in  force  as  expressed  on  its  face.  Act  Mar.  3,  1839,  c.  89,  sec.  6,  5 
Stat.  354,  did  not  affect  patents  validated  by  the  act  of  1836,  but,  in  addition 
thereto,  validated  American  patents  for  inventions  which  had  been  patented 
abroad  more  than  six  months  before  the  application  here.  It  first  gave  to 
foreign  patenting  an  effect  upon  the  term  of  an  American  patent  for  the  same 
invention  by  reckoning  the  statutory  term  of  the  American  patent  from  the 
foreign  rather  than  from  the  American  issue.  The  general  codification  of 
the  patent  laws  in  Act  July  8,  1870,  c.  230,  16  Stat.  201,  materially  changed 
the  effect  given  to  foreign  patenting,  and  in  this  respect  did  not  merely 
codify  existing  legislation.  Bate  v.  Sulzberger,  157  U.  S.  1,  41.  The  American 
patent  was  made  to  expire  with  the  foreign  patent  of  shortest  term,  and  not 
at  the  usual  statutory  period  reckoned  from  the  date  of  the  foreign  applica- 
tion. The  provisions  of  sec.  25  of  the  Act  of  1870  were  substantially  like  those 
of  Rev.  Stat.  4887.  The  latter  was  expressed  in  two  sentences.  In  substantial 
accordance  with  the  acts  of  1836  and  1839  as  amended  by  the  Act  of  1870, 
the  first  sentence  declared  that  no  patent  should  be  deemed  invalid  because 
of  prior  foreign  patenting.  This  sentence  dealt  with  validity  as  affected 
by  foreign  patenting  and  with  that  subject  only.  The  second  sentence  dealt 
with  the  term  of  American  patent  as  affected  by  prior  foreign  patenting, 
and  not  at  all  with  its  validity,  carrying  out  the  radical  alteration  of  the 
term  which  was  introduced  by  the  Act  of  1870. 

When  granted,  the  patent  in  suit  fell  within  the  purview  of  both  sentences 
of  section  4887.  The  first  saved  it  from  invalidation  by  the  prior  British 
patenting.  The  second  limited  its  term  by  that  of  the  British  patent;  i.  e., 
May  19,  1897.  Had  the  legislation  remained  unchanged  to  the  present  day 
the  defense  to  this  bill  would  undoubtedly  be  complete. 

The  Act  of  Mar.  3,  1897,  was  passed  before  the  expiration  of  the  patent 
in  suit.  Section  3  amended  both  sentences  of  Rev.  Stat.  4887.  The  only 
important  amendment  to  the  first  sentence  invalidated  American  patents 
where  the  foreign  application  was  filed  more  than  seven  months  before  the 
American  application.  The  second  sentence  of  sec.  4887  was  stricken  out 
altogether.  As  thus  amended,  sec.  4887  dealt  solely  with  the  invalidation 
of  patents  by  reason  of  foreign  patenting,  and  in  no  way  affected  their  term. 
As  no  legislation  remained  to  give  to  prior  patenting  any  effect  upon  the  term 
of  an  American  patent  for  the  same  invention,  that  term  stood  as  fixed  by  the 
grant  issued  under  Rev.  Stat.  4884. 

In  order  to  save  earlier  patents  from  the  operation  of  the  Act  of  1897  as 
to  their  term  or  validity,  section  8  expressly  provided  that  the  amendment 
of  Rev.  Stat.  sec.  4887  should  not  apply  to  patents  granted  before  Jan.  1, 
1898.  These  were  left  to  be  governed  by  section  4887  in  its  original  form. 
Therefore  the  patent  in  suit  was  left  by  the  Act  of  1897  unaffected  either  as 
to  its  validity  or  as  to  its  term,  governed  as  to  the  latter  by  the  second 
clause  of  sec.  4887,  and  not  by  sec.  4884.  By  this  saving  of  rights,  some 
patents  were  left  valid  which  would  have  been  invalidated  had  the  Act  of 


380  THE   FIXED   LAW   OF   PATENTS  §  421 

1897 been  made  retroactive;  e.  g.,  cases  in  which  the  foreign  patent  had  been 
applied  for  more  than  seven  months  before  the  domestic  application.  Other 
patents  were  left  invalid  which  would  have  been  validated  had  the  Act 
of  1897  been  made  retroactive;  e.g.,  cases  in  which  the  American  patent 
had  expired  by  reason  of  the  expiration  of  the  British  patent.  The  general 
saving  of  rights  to  individuals  and  to  the  public  made  by  sec.  8  applied  alike 
to  both  cases.  The  patent  in  suit  therefore,  expired  May  19,  1897,  as  it 
would  have  done  had  the  Act  of  1897  never  been  passed. 

The  Act  of  1903  amended  sec.  4887  as  amended.  It  did  not  purport  to 
affect  the  term  of  patents  in  any  respect,  but  only  the  requisites  of  their 
validity.  Before  its  passage,  as  has  just  been  said,  the  patent  in  suit  was 
controlled  as  to  its  term  by  sec.  4887  in  its  original  form.  The  Act  of  1903 
manifested  no  intention  to  change  this  control,  or  in  effect  to  revive  a  patent 
which  had  expired  six  years  before  its  passage.  Complainant  has  referred 
to  statutes  which  repealed  earlier  legislation  imposing  penalties  or  working 
forfeitures.  These  repealing  statutes  have  often  been  given  a  retroactive 
effect.  But  the  second  sentence  of  Rev.  Stat.  4887,  imposed  no  penalty,  and 
worked  no  forfeiture.  Moreover,  the  case  does  not  stand  as  if  the  second 
sentence  of  Rev.  Stat.  4887  had  been  repealed  without  qualification.  Legis- 
lation will  not  easily  be  construed  to  destroy  by  mere  implication  rights 
expressly  saved  to  the  public  or  to  individuals  in  earlier  legislation  from  its 
retroactive  operation.  As  the  Act  of  1897  expressly  left  the  patent  in  suit 
to  expire  in  1897,  and  as  the  Act  of  1903  manifested  no  contrary  intention, 
it  follows  that  the  Sherman  patent  expired  before  this  suit  was  brought.  — 
Sawyer  v.  Carpenter,  143  Fed.  976;  75  C.  C.  A.  162. 

The  patent  laws  of  the  different  countries  vary  so  much  in  the  extent  of 
the  grant  provided  for,  and  the  limitations  placed  upon  it,  that  to  sustain 
complainant's  proposition  would  lead  to  holding  that  few,  if  any,  of  the  foreign 
patents  could  be  included  in  the  terms  of  section  4887.  The  words  "  pre- 
viously patented  in  a  foreign  country,"  must  then  be  taken  to  mean  "  pa- 
tented according  to  the  laws  and  usages  of  such  foreign  country,"  provided 
a  substantial  monopoly  is  thereby  granted.  None  of  the  cases  cited  by  the 
complainant,  all  of  which  have  been  examined,  sustains  its  contention  in 
this  respect.  Even  the  recent  case  of  Societe  v.  General  Electric  Co.  97  Fed. 
604,  so  much  relied  upon  by  complainant,  does  not,  on  the  precise  point 
determined  upon  the  facts  of  the  case,  justify  such  an  interpretation  of  the 
meaning  of  the  act  in  question.  It  is  true,  the  learned  judge  in  that  case 
said,  "  A  patent  implies  a  grant  from  the  sovereign  power,  securing  to  the 
inventor,  for  a  limited  time,  the  exclusive  right  to  make,  use,  and  vend 
the  invention."  If  he  meant  by  this  that  there  could  be  no  patent  in  a  foreign 
country,  within  the  meaning  of  section  4887,  that  was  not  covered  by  the 
precise  language  of  this  definition,  we  must  hold,  not  only  that  the  statement 
was  obiter  dictum,  but  inaccurate.  We  are  inclined  to  think,  however,  that 
the  learned  judge  in  using  the  words  "  make,  use  and  vend,"  had  in  mind 
merely  the  statutory  terms  of  the  grant  contained  in  an  American  patent, 
which  were  sufficient  for  his  then  purpose,  inasmuch  as  he  decided  that  in 
the  case  before  him  the  Swiss  government  had  granted  no  patent  at  all, 
because  the  condition  required  by  the  Swiss  law  had  not  been  complied  with, 
and  the  instrument  claimed  to  be  a  patent  was  merely  a  temporary  protection, 
with  a  promise  that  a  definitive  patent  would  be  granted  when  the  condition 
prescribed  was  fulfilled.  The  conclusion  arrived  at  by  the  court  upon  the 
facts  stated  was  correct,  and  the  reasoning  of  the  court  upon  those  facts 
was  clear  and  convincing.  —  Atlas  v.  Simonds,  102  Fed.  643;  42  C.  C.  A.  398. 

§  421.     Expiration  of. 

A  patent  granted  subsequent  to  a  foreign  patent  for  the  same  invention 
is  limited  thereby  under  sec.  4887  to  the  term  for  which  the  foreign  patent 


§  421  FOREIGN    PATENT  381 

is  granted,  and  the  word  "  term  "  is  meant  to  cover  the  full  period  of  the 
former  patent  without  reference  to  the  "  terms  "  for  which  the  patent  may 
be  extended.  As  construed  in  Pohl  v.  Anchor,  134  U.  S.  3S1.  —  Bate  v 
Hammond,  129  U.  S.  151;  32  L.  Ed.  645;  9  S.  Ct.  225. 

A  patent  shall  be  so  limited  as  to  expire  at  the  same  time  with  the  term 
limited  by  the  foreign  patent  of  prior  issue  having  the  shortest  time  to  run; 
and  the  word  "  term  "  is  not  subject  to  any  lapse  or  forfeiture  of  the  foreign 
patent.  Construing,  Bate  v.  Hammond,  129  U.  S.  151.  —  Pohl  v.  Anchor, 
134  U.  S.  381;  33  L.  Ed.  953;  10  S.  Ct.  577. 

Holmes  v.  Metropolitan,  21  F.  R.  458;  Paillard  v.  Bruno,  29  F.  R.  864;  Bate 
v.  Gillett,  31  F.  R.  809;  Huber  v.  Nelson,  38  F.  R.  830. 

"  If  your  invention  has  not  been  introduced  into  public  use  in  the  United 
States  for  more  than  two  years,  you  may,  upon  complying  with  the  condi- 
tions prescribed,  obtain  an  American  patent,  and  you  may,  if  you  can, 
obtain  a  foreign  patent.  But  the  American  patent  will  be  granted  on 
the  condition  that  if  you  obtain  the  foreign  patent  first,  your  invention 
shall  be  free  to  the  American  people  whenever  by  the  expiration  of  the 
foreign  patent  it  becomes  free  to  people  abroad ;  and  in  no  case  shall  the 
term  of  the  American  patent  exceed  seventeen  years."  This  we  deem  to  be 
a  sound  interpretation  of  the  statute,  giving  to  the  words  used  the  meaning 
required  by  their  ordinary  signification.  —  Bate  v.  Sulzberger,  157  U.  S.  1  • 
39  L.  Ed.  601 ;  15  S.  Ct.  508. 

It  would  seem  that  the  main  question  in  this  case,  namely,  whether  the 
invention  for  which  the  patent  from  the  U.  S.  was  issued  had  been  pre- 
viously patented  in  a  foreign  country,  within  the  meaning  of  those  words 
in  sec.  4887  of  the  R.  S.  and  whether  the  American  patent  expired  under 
the  terms  of  that  section  before  the  expiration  of  the  seventeen  years  from 
its  date,  was  squarely  before  the  Supreme  Court  in  the  case  of  Bate  v.  Ham- 
mond, 129  U.  S.  151,  involving  the  same  patent;  but  that  the  court  declined 
to  decide  it.  Such  was  the  statement  of  counsel  in  this  case ;  and  the  court 
acquiesced  therein  by  neither  referring  to  such  statement  nor  citing  that 
case  in  this  opinion.  It  follows,  therefore,  that  Bate  v.  Hammond  supra, 
did  not  decide  the  question  herein  determined,  although  such  interpretation 
has  been  put  upon  it  by  inexperienced  or  careless  annotators  and  digesters. 
—  Bate  v.  Sulzberger,  157  U.  S.  1 ;  39  L.  Ed.  601 ;  15  S.  Ct.  508. 

In  Bate  v.  Hammond,  129  U.  S.  164,  it  was  held  that,  so  far  as  the  term 
of  a  Canadian  statute  operated  to  curtail  the  term  of  the  United  States  patent 
under  4887  R.  S.  it  should  be  regarded  as  a  continuous  term  for  the  entire 
period.  —  Edison  v.  U.  S.  52  Fed.  300;  3  C.  C.  A.  83. 

The  failure  to  limit  the  patent  in  suit  on  its  face,  to  a  shorter  term  than  17 
years,  so  as  to  expire  at  the  same  time  with  the  prior  foreign  patent  having 
the  shortest  term,  does  not  affect  its  validity.  —  Edison  v.  U.  S.  52  Fed. 
300;   3  C.  C.  A.  83. 

Bate  v.  Hammond,  129  U.  S.  151. 

It  was  argued  that  as  a  Swedish  patent  had  lapsed  under  failure  to  comply 
with  the  statute,  under  the  Canadian  act  the  short  term  patent  could  not  be 
extended  so  as  to  come  within  Bate  v.  Hammond,  129  U.  S.  164.  Held: 
That  the  Canadian  act  applied  only  to  foreign  patents  existing  prior  to  the 
Canadian  patent ;  and,  therefore,  that  neither  directly  (Pohl  v.  Brewing  Co. 
134  U.  S.  381)  nor  indirectly,  through  the  Canadian  patent,  is  the  patent  in 


382  THE    FIXED    LAW   OF    PATENTS  §  422 

suit  affected  by  what  happened  to  the   Swedish  patent.  —  Edison  v.  U.  S. 
52  Fed.  300;  3  C.  C.  A.  83. 

It  will  be  observed  that  this  section  (4887)  while  it  extended  the  right 
of  a  foreign  inventor  and  patentee,  as  it  existed  under  the  acts  1836  and  1839, 
in  regard  to  the  limitation  by  a  two-years  public  use,  on  the  other  hand, 
changed,  in  the  interest  of  the  American  public,  the  term  for  which  such 
foreign  patentee  could  obtain  a  patent  in  the  United  States  from  14  years 
from  the  date  of  the  foreign  patent  to  a  period  to  be  measured  by  the  shortest 
term  of  the  foreign  patents  previously  obtained.  This  limitation  of  the  term 
of  the  monopoly  of  an  American  patent,  where  the  patentee  has  previously 
obtained  a  foreign  patent,  is  obviously  in  the  interest  of  those  from  whom 
tribute  is  exacted  by  such  monopoly;  and  this  purpose  to  do  justice  to  the 
American  public,  by  giving  them  the  same  privilege  as  is  accorded  to  the 
people  of  the  foreign  country  in  which  the  patent  is  first  granted,  challenges 
the  consideration  of  the  Court.  —  Atlas  v.  Simonds,  102  Fed.  643;  42  C.  C.  A. 
398. 

That  there  was  no  patent  law,  in  the  sense  of  a  legislative  enactment,  in 
Denmark,  until  1894,  does  not  affect  the  situation.  Prior  to  the  enactment 
of  the  law  of  that  year,  patents  or  enerets  were  granted  and  issued  by  the 
king,  in  exercise  of  the  royal  prerogative,  and  the  term  for  which  they  were 
granted  was  determined  according  to  what  seemed  the  exigency  of  each 
case.  Nevertheless  such  patents  were  issued  by  virtue  of  the  recognized  law- 
ful authority  vested  in  the  reigning  monarch,  and  were  acts  of  a  reigning 
sovereignty  as  completely  as  were  legislative  enactments.  —  Atlas  v.  Simonds, 
102  Fed.  643;  42  C.  C.  A.  398. 

That  sec.  4887,  before  it  was  amended,  and  as  construed  in  Bate  v.  Sulz- 
berger, 157  U.  S.  1,  was  sufficiently  drastic  to  warrant  a  strict  construction; 
and  that  the  question  of  identity  between  the  foreign  patent  and  the  domestic 
patent  depends  upon  the  claim  of  the  domestic  patent,  and  not  upon  the 
disclosure  of  the  foreign  patent,  see  Westinghouse  v.  Stanley,  138  Fed.  823; 
71  C.  C.  A.  189. 

Commercial  v.  Fairbank,  135  U.  S.  176;  Rob.  on  Pat.  sec.  623.  Criticising 
Walker  on  Pat.  (4  Ed.)  150.  Distinguishing  Siemens  v.  Sellers,  123  U.  S.  276. 
See  also  Sawyer  v.  Carpenter,  133  Fed.  238. 

If  differences  could  be  set  up  to  defeat  the  application  of  sec.  4887  of  the 
R.  S.,  even  when  they  involve  no  patentable  invention,  the  statute  would 
have  been  emasculated,  and  the  application  could  always  have  been  defeated, 
by  trivial  and  unimportant  changes,  so  that  it  would  be  left  practically 
worthless.  In  Westinghouse  v.  Stanley,  138  Fed.  823,  we  rested  on  the  fact 
that  the  differences  between  the  foreign  patent  and  the  domestic  patent 
then  in  question  involved  "  an  essential,  novel,  and  patentable  improve- 
ment." We  were  not  then  required  to  rule  directly  on  the  question 
pressed  on  us  here.  If  it  had  been  pressed  we  would  probably  have  perused 
Siemens  v.  Sellers,  123  U.  S.  276,  farther  than  we  did.  It  was  there  said 
at  page  283  "  a  patent  cannot  be  exempted  from  the  operation  of  the  law 
(sec.  4887)  by  adding  some  new  improvement  to  the  invention."  No  mere 
changes  in  detail  which  do  not  affect  the  essence  of  the  invention  as  cov- 
ered by  the  respective  patents  can  avail  this  complainant.  —  Thomson- 
Houston  v.  McLean,  153  Fed.  883;  82  CCA. 629. 

§  422.    Lapse  of. 

A  patent  shall  be  so  limited  as  to  expire  at  the  same  time  with  the  term 
limited  by  the  foreign  patent  of  prior  issue  having  the  shortest  time  to  run, 


§§  423-424  FOREIGN    PATENT  383 

and  the  word  "  term  "  is  not  subject  to  any  lapse  or  forfeiture  of  the  foreign 
patent.  Construing,  Bate  v.  Hammond,  129  U.  S.  151.  —  Pohl  v.  Anchor, 
134  U.  S.  381 ;  33  L.  Ed.  953 ;  10  S.  Ct.  577. 

Holmes  v.  Metropolitan,  21  F.  R.  458;  Paillard  v.  Bruno,  29  F.  R.  864;  Bate  v. 
Gillett,  31  F.  R.  809;   Huber  v.  Nelson,  38  F.  R.  830. 

Nor  do  we  find  it  necessary  to  express  an  opinion  whether  the  lapsing  of 
a  foreign  patent  by  the  failure  of  a  patentee  to  pay  a  renewal  fee  required 
by  the  British  law  would  shorten  the  term  of  his  patent  here.  —  Hobbs  v. 
Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct.  409. 

Bate  v.  Hammond,  129  U.  S.  151;  Pohl  v.  Anchor,  134  U.  S.  381;  Bate  v. 
Sulzberger,  157  U.  S.  36. 

§  423.     Prior. 

Neither  of  the  English  inventions  are  shown  by  the  testimony  to  have 
been  patented  until  after  Morse's  application  for  a  patent,  nor  to  have  been 
so  described  in  any  previous  publication  as  to  embrace  any  substantial  part 
of  his  invention.  And  if  his  application  for  a  patent  was  made  under  such 
circumstances,  the  patent  is  good,  even  if  in  point  of  fact  he  was  not  the 
first  inventor.  —  O'Reilly  v.  Morse,  15  How.  62;   14  L.  Ed.  601. 

By  the  Act  of  1870,  a  foreign  patent,  in  order  to  invalidate  an  American 
patent,  must  antedate  the  invention  patented.  —  Cochrane  v.  Deener,  94 
U.  S.  780;  24  L.  Ed.  139. 

Under  the  law  prior  to  the  act  of  1870  the  issue  of  a  prior  foreign  patent 
carried  the  issue  date  of  the  American  patent  back  to  it.  —  Siemens  v.  Sellers 
123  U.  S.  276;  31  L.  Ed.  153;  8  S.  Ct.  117. 

It  is  true  that  by  Rev.  Stat.  sec.  4887,  "  every  patent  granted  for  an  in- 
vention which  has  been  previously  patented  in  a  foreign  country  shall  be 
so  limited  as  to  expire  at  the  same  time  with  the  foreign  patent ;  "  but  this 
obviously  presupposes  that  the  foreign  patent  shall  have  been  obtained  by 
the  American  patentee  or  with  his  consent.  This  is  evident  from  the  some- 
what awkward  phraseology  of  the  1st  clause  of  the  section,  which  declares 
that  "  no  person  shall  be  debarred  from  receiving  a  patent  for  his  invention 
...  by  reason  of  its  having  been  first  patented  or  caused  to  be  patented  in  a 
foreign  country,"  which  evidently  means  that  the  patentee  shall  not  be  de- 
barred from  his  patent  by  reason  of  his  having  first  patented,  or  caused 
his  invention  to  be  patented  in  a  foreign  country.  Indeed  it  would  be  mani- 
festly unjust  that  a  patentee  should  lose  the  full  fruit  of  his  patent  by  the 
fact  that  some  intermeddler  had  caused  the  invention  to  be  patented  abroad, 
that  we  could  not  give  that  construction  to  the  section  unless  its  phraseology 
imperatively  demanded  it.  This  construction  would  suggest  an  excellent 
device  for  an  enemy  to  bring  about  the  termination  of  an  inconvenient  patent. 
—  Hobbs  v.  Beach,  180  U.  S.  383 ;  45  L.  Ed.  586 ;  21  S.  Ct.  409. 

§  424.     Miscellaneous  Holdings. 

The  effect  of  a  foreign  patent  of  a  different  date  is  to  limit  the  duration 
of  the  American  patent,  not  to  invalidate  it.  —  O'Reilly  v.  Morse,  15  How. 
62;  14  L.  Ed.  601. 

The  fact  that  the  domestic  patent  does  not  bear  the  same  date  as  a  foreign 
patent  does  not  render  the  domestic  patent  void,  although  the  foreign  patent 
limits  its  duration.  —  Telephone  Cases,  126  U.  S.  1 ;  31  L.  Ed.  863;  8  S.  Ct. 
778. 

O'Reilly  v.  Morse,  56  U.  S.  62;   Siemens  v.  Sellers,  123  IT.  S.  276. 


384  THE    FIXED    LAW    OF    PATENTS  §  425 

The  preamble  of  complainant's  patent  contains  a  recital  of  several  foreign 
patents  which  were  taken  out  for  the  same  invention.  (And  in  the  oath  it 
is  shown  the  same  recital  is  made.)  This  recital  is  erroneous  in  several  partic- 
ulars, but  the  record  fails  to  show  that  there  was  any  intentional  misrepre- 
sentation. So  far  as  we  can  discover,  the  requirement  of  a  reference  to 
foreign  patents  in  the  preamble  of  an  application,  is  a  mere  regulation  of  the 
patent  office,  which  is  so  far  reasonable  that  it  may  bar  the  issue  of  a  patent 
until  it  is  complied  with,  but  which  cannot  invalidate  a  patent  once  issued 
unless  perhaps  when  the  recital  is  erroneous  through  a  wilful  misrepresenta- 
tion or  some  fraudulent  purpose.  —  Heap  v.  Tremont,  82  Fed.  449 ;  27  C.  C.  A. 
316. 

Note:  It  is  a  question  if  the  statement  were  contained  in  the  oath  and 
were  false,  whether  it  would  not  amount  to  a  false  oath  which  could 
defeat  the  patent. 

The  true  meaning  and  purpose  of  the  act  of  Congress,  as  expressed  in  the 
language  used,  are  accomplished  by  applying  the  word  "  patented  "  to  the 
having  received  the  grant  of  an  exclusive  privilege  from  a  foreign  sovereign, 
if  such  privilege  amounts  to  a  substantial  monopoly.  The  contention  of 
appellant  is  that,  inasmuch  as,  under  our  present  patent  laws,  the  exclusive 
privilege  granted  to  an  inventor  is  to  "  make,  use,  and  vend  "  his  invention, 
the  words  "  patented  in  a  foreign  country  "  can  only  refer  to  an  exclusive 
privilege  to  this  full  extent,  and  are  therefore  not  applicable  to  the  privilege 
granted  by  the  Danish  patent  or  eneret,  which  is  only  "  to  make  and  allow 
to  make  "  the  thing  invented.  In  our  opinion  this  contention  is  not  tenable. 
The  Danish  word  "  eneret,"  according  to  the  Danish  expert  and  patent 
solicitor  produced  as  a  witness  by  complainant,  means  "  monopoly."  There 
can  be  no  question  that  the  exclusive  privilege  to  make  and  permit  others  to 
make  is  a  substantial  monopolv,  and  within  the  meaning  of  the  language 
employed  in  section  4887.  —  Atlas  v.  Simonds,  102  Fed.  643;  42  C.  C.  A.  398. 

The  complainant  maintains  that  the  British  patent  was  taken  out  by  an 
intermeddler  (the  evidence  was  that  simultaneous  patenting  was  ordered, 
but  that  the  parties  whether  authorized  or  not  acted  otherwise).  There  is 
no  evidence  that  the  inventor,  or  whoever  controlled  the  invention,  ever 
repudiated  the  British  patent  until  after  this  suit  was  commenced,  or  at- 
tempted to  do  so.  As  he,  whoever  he  was,  knew  that  there  was  to  be  an 
application  for  a  British  patent,  and  that  there  was  a  purpose  to  take  it 
out,  it  is  beyond  reasonable  probability  to  assume  that  he  never  informed 
himself  as  to  the  issue  of  such  a  patent.  On  the  other  hand,  the  Circuit 
Court,  and  we,  are  entitled  to  assume  that  he  obtained  knowledge  of  what 
was  done  and  acquiesced  therein,  an  hypothesis  which  would  reject  the 
conclusion  of  the  Circuit  Court  in  this  respect,  to  the  effect  that  the  British 
patent  was  properly  taken  out,  would  be  unreasonable.  —  United  v.  Du- 
plessis,  155  Fed.  842;  84  C.  C.  A.  76. 

FRAUD. 

Statute  and  General  Statement  §  425  |      -See  —  Defenses  §§  317,  318. 

§  425.     Statute  and  General  Statement. 

It  will  be  noted  that  the  first  and  second  statutory  defenses  under  Sec. 
4920  suggest  the  question  of  fraud  —  the  first  defense,  fraud  against  the  public, 
and  the  second,  fraud  against  another  inventor.  The  question  of  fraud  has 
also  arisen  in  connection  with  actions  to  cancel  patents  (see  title  Cancellation 
of  Patent) ;  but  the  question  of  fraud  has  not  entered  largely  into  the  subject 
of  patent  litigation,  as  will  be  seen  from  the  following  meagre  quotations. 


§  426  FUNCTION  385 

It  seems  to  us  that  if  Bell  was  aware,  at  the  time  that  he  filed  his  specifi- 
cations, asserted  his  claims,  and  procured  his  patents,  that  the  same  matter 
had  been  previously  discovered  and  put  into  operation  by  other  persons, 
he  was  guilty  of  such  a  fraud  upon  the  public  that  the  monopoly  which  these 
patents  grant  to  him  ought  to  be  revoked  and  annulled.  —  U.  S.  v.  Am.  Bell, 
128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

While  equity  will  always  relieve  those  who  suffer  from  acts  of  fraud,  it 
has  always  been  required  that  those  who  seek  its  jurisdiction  on  that  ac- 
count shall,  after  having  carefully  scrutinized  the  cause  of  complaint,  more 
clearly  formulate  the  allegations  of  the  same,  and  then  that  they  shall  fully 
prove  that  which  they  have  so  alleged.  —  Dashiell  v.  Grosvenor,  66  Fed.  334; 
13  C.  C.  A.  593. 

Montesquieu  v.  Sandys,  18  Ves.  302;  Price  v.  Berrington,  7  Eng.  Law.  &  Eq. 
260;  Wilde  v.  Gibson,  1  H.  L.  Cas.  620;  Glasscott  v.  Lang,  2  Phil.  Ch.  310;  Curson 
v.  Belworthy,  22  Eng.  Law.  &  Eg.  1;  Tillinghast  v.  Champlain,  4  R.  I.  173;  Fisher 
v.  Boody,  1  Curt.  206;  Eyve  v.  Potter,  15  How.  42. 

We  conclude  that  the  statement  in  the  specification  to  which  allusion  has 
been  made  is  a  statement  which  rests  upon  no  substantial  foundation,  and 
was  most  likely  inserted  in  the  specification  for  the  purpose  of  forestalling 
objections  to  the  granting  of  a  patent.  —  Mahler  v.  Animarium,  111  Fed. 
530;  49  C.  C.  A.  43L 


FUNCTION. 

Patentability  §  426 
Miscellaneous  Rules  §  427 
See —  Claims    §    196;     Infringement 
§§  448,  490,  527;    Invention   §§  594, 


600,  603;  Machine  and  Product 
§  771;  Process  §  820-1;  Product 
§  823,  Specification  §  911 


§  426.     Patentability. 

It  has  been  perfectly  well  settled  ever  since  the  time  of  Corning  v.  Burden 
that  a  function  is  not  patentable,  but  to  determine  whether  a  claim  is  so  far 
functional  in  character  as  to  be  invalid  is  a  constantly  recurring  problem. 
It  is  never  a  question  of  the  rule  itself,  but  whether  the  claim  comes  under 
the  rule.    This  subject  recurs  under  Invention  —  Result  or  Function. 

It  is  well  settled  that  a  man  cannot  have  a  patent  for  the  function  or  ab- 
stract effect  of  a  machine,  but  only  for  the  machine  which  produces  it.  — 
Corning  v.  Burden,  15  How.  252;  14  L.  Ed.  683. 

An  inventor  who  has  devised  a  machine  for  performing  a  particular  func- 
tion cannot  claim  to  cover  every  machine  performing  the  same  function.  — 
Dryfoos  v.  Weise,  124  U.  S.  32;  31  L.  Ed.  362;  8  S.  Ct.  354. 

A  function  which  is  an  incident  to  the  operation  of  a  machine  attributable 
to  the  skill  and  deftness  of  the  operator,  rather  than  a  distinct  function  of 
the  machine  cannot  be  claimed  as  novelty.  —  Union  v.  Keith,  139  U.  S. 
530;  35  L.  Ed.  261 ;  11  S.  Ct.  621. 

The  difficulty  we  have  found  with  this  claim  is,  it  is  open  to  the  objection 
(held  in  several  cases  to  be  fatal)  that  the  new  function  of  a  machine  cannot 
be  patented.  —  Westinghouse  v.  Boyden,  170  U.  S.  537;  42  L.  Ed.  1136;  18 
S.  Ct.  707. 

Corning  v.  Burden,  15  How.  252;  Burr  v.  Duryee,  1  Wall.  531;  Fuller  v. 
Yentzer,  94  U.  S.  288;   Locomotive  v.  Medart,  158  U.  S.  68;   Paper  Bag  Case,  30 


386  THE    FIXED    LAW   OF    PATENTS  §  427 

Fed.  63;    Machine  Co.  v.  Waterbury,  39   Fed.  389;    Travers  v.  Cordage  Co.  64 
Fed.  771. 

That  a  claim  for  a  function  is  invalid,  see  Goshen  v.  Bissell,  72  Fed.  67 ;  19 
C.  C.  A.  13. 

A  claim  for  a  function  is  not  patentable.  —  Boyden  v.  Westinghouse,  70 
Fed.  816;  17  C.  C.  A.  430. 

Now,  the  function  or  result  of  the  operation  of  a  machine  or  combination 
is  not  patentable  under  our  laws,  and  therefore  the  camber  in  the  beam  could 
not  be  monopolized  by  means  of  a  patent.  The  means,  the  mechanical 
device,  by  which  that  camber  was  produced  and  that  alone,  was  capable 
of  protection  by  such  a  franchise.  —  National  v.  Interchangeable,  106  Fed. 
693;  45  C.  C.  A.  544. 

Fuller  v.  Yentzer,  94  U.  S.  288;  Pencil  Co.  v.  Howard,  20  Wall.  498;  Miller  v. 
Mfg.  Co.,  151  U.  S.  186;  Knapp  v.  Morss,  150  U.  S.  221;  Carver  v.  Hyde,  16  Pet. 
513;  LeRoy  v.  Tatham,  14  How.  156;  Corning  v.  Burden,  15  How.  252;  Burr  v. 
Duryee,  1  Wall.  531. 

Again,  since  a  function  is  not  patentable,  a  combination  of  functions 
is  not ;  nor  is  a  combination  of  mechanical  devices  or  elements  and  one  of  the 
functions  of  that  combination.  —  National  v.  Interchangeable,  106  Fed.  693; 
45  C.  C.  A.  544. 

A  valid  patent  cannot  be  secured  for  a  function,  a  mode  of  operation,  or  a 
result,  separate  from  the  means  or  mechanical  devices  by  which  the  result 
is  accomplished.  —  Union  v.  Diamond,  162  Fed.  148;  89  C.  C.  A.  172. 

Fuller  v.  Yentzer,  94  U.  S.  288;   Westinghouse  v.  Boyden,  170  U.  S.  537. 


§  427.     Miscellaneous  Rules. 

The  distinction  between  a  practically  operative  mechanism  and  its  function 
is  said  to  be  difficult  to  define.  Rob.  Pat.  sec.  144.  It  becomes  more  difficult 
when  a  definition  is  attempted  of  a  function  of  an  element  of  a  combination 
which  is  the  means  by  which  other  elements  are  connected  and  by  which 
they  co-act  to  make  complete  and  efficient  the  invention.  —  Continental  v. 
Eastern,  210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748. 

An  inventor  is  entitled  to  a  beneficial  function  of  his  invention,  whether 
he  knew  all  its  beneficial  uses  or  not.  —  Goshen  v.  Bissell,  72  Fed.  67;  19 
CCA.  13. 

McCormick  v.  Aultman,  69  Fed.  371;  Roberts  v.  Ryer,  91  U.  S.  150;  Brown 
v.  D.  C.  130  U.  S.  87-103;  Eames  v.  Andrews,  122  U.  S.  40;  Miller  v.  Mfg.  Co. 
151  U.  S.  201;  Stow  v.  Chicago,  104  U.  S.  550;  Tucker  v.  Spalding,  13  Wall.  453; 
Appleton  v.  Starr,  60  Fed.  411;  Western  v.  Sperry,  58  Fed.  186;  Gait  v.  Parlin, 
60  Fed.  422;   Dixon  v.  Pfeifer,  55  Fed.  390;  Thompson  v.  National,  65  Fed.  427. 

It  is  not  always  clear  what  is  meant  by  the  use  of  this  elastic  and  indefinite 
word  "  function."  But  it  is  thought  that  the  assertion  of  a  new  function 
or  effect  should  only  be  sustained  upon  proof  of  novel  or  unexpected  properties 
or  uses  capable  of  producing  novel  results.  Smith  v.  Goodyear,  93  U.  S.  486. 
We  are  not  aware  of  any  case  where  a  claim  for  a  new  function  has  been  sus- 
tained in  the  absence  of  such  element  of  novelty  or  unexpectedness.  —  Gen- 
eral v.  Yost,  139  Fed.  568;  71  C  C.  A.  552. 


§§  42S-429 
GOVERNMENT. 


GOVERNMENT 


387 


Statutory  Provisions  §  428 

General  Rulings  §  429 

See  —  Employer  and  Employee  §  364; 


Infringement  §  498;  Injunction  §  553; 
Jurisdiction  §  715;  License  §  749 


§  428.     Statutory  Provisions. 

All  officers  and  employees  of  the  Patent  Office  shall  be  incapable,  during 
the  period  for  which  they  hold  their  appointments,  to  acquire  or  take, 
directly  or  indirectly,  except  by  inheritance  or  bequest,  any  right  or  interest 
in  any  patent  issued  by  the  Office.  —  R  S.  480. 

No  royalty  shall  be  paid  by  the  United  States  to  any  one  of  its  officers 
or  employees  for  the  use  of  any  patent  for  the  system,  or  any  part  thereof, 
mentioned  in  the  preceding  section  (marine  engines),  nor  for  any  such  patent 
in  which  said  officer  or  employee  may  be  directly  or  indirectly  interested. 
—  R.  S.  1673. 


The  Secretary  of  the  Interior  and  the  Commissioner  of  Patents  are  author- 
ized to  grant  any  officer  of  the  Government,  except  officers  and  employees  of 
the  Patent  Office,  a  patent  for  any  invention  of  the  classes  mentioned  in 
sec.  4886  of  the  Revised  Statutes  when  such  invention  is  used  or  to  be  used 
in  the  public  service,  without  the  payment  of  any  fee:  Provided,  That  the 
applicant  in  his  application  shall  state  that  the  invention  described  therein, 
if  patented,  may  be  used  by  the  Government,  or  any  of  its  officers  or  em- 
ployees in  prosecution  of  work  for  the  Government,  or  by  any  other  person 
in  the  United  States,  without  the  payment  to  him  of  any  royalty  thereon, 
which  stipulation  shall  be  included  in  the  patent.  —  Act  Mar.  3,  1883,  ap- 
pended to  4886  R.  S. 

§  429.     General  Rulings. 

As  will  be  seen,  the  Government  has  no  different  property  rights  and  no 
different  exemption  from  liability  than  any  other  person  or  corporation. 
Of  course,  an  injunction  will  not  lie,  and  actions  lie  in  the  Court  of  Claims 
instead  of  in  the  circuit  court.  The  subject  of  jurisdiction  is  treated  under 
Jurisdiction  —  Court  of  Claims,  and  the  subject  of  governmental  infringement 
is  treated  under  Infringement  —  Government. 

The  government  of  the  United  States  has  no  prerogative  right  which  gives 
it  any  right  to  use  the  patented  invention  of  a  citizen  on  other  terms  than 
any  citizen.  —  James  v.  Campbell,  104  U.  S.  356 ;  26  L.  Ed.  786. 

There  is  no  difference  between  the  government  and  any  other  employer. 
If  one  is  employed  to  devise  and  perfect  an  instrument,  or  means  for  accom- 
plishing a  desired  result,  he  cannot,  after  successfully  accomplishing  his  work 
for  which  he  was  employed  plead  title  thereto  as  against  his  employer.  That 
which  he  has  been  employed  and  paid  to  accomplish,  becomes,  when  ac- 
complished the  property  of  his  employer.  So  also  when  one  is  in  the  employ 
of  another  in  a  certain  line  of  work,  and  devises  an  improved  method  or  in- 
strument for  doing  the  work,  and  uses  the  property  of  his  employer  and  the 
services  of  other  employees  to  develop  and  put  in  practicable  form  his  in- 
vention, and  explicitly  assents  to  the  use  by  his  employer  of  his  invention, 
a  jury,  or  a  court  trying  the  facts,  is  warranted  in  finding  that  he  has  so  far 
recognized  the  obligations  of  service  flowing  from  his  employment  and  the 
benefits  resulting  from  his  use  of  the  property,  and  the  assistance  of  the  co- 


388 


THE    FIXED    LAW    OF    PATENTS 


§  430 


employees  of  his  employer,  as  to  have  given  to  such  employer  an  irrevocable 
license  to  use  such  invention.  —  Solomons  v.  U.  S.  137  U.  S.  342;  34  L.  Ed. 
667;    11  S.  Ct.  88. 

McClurg  v.  Kingsland,  42  U.  S.  202. 

The  government  has  no  more  right  to  appropriate  a  man's  property 
invested  in  a  patent  than  it  has  to  take  his  property  vested  in  real  estate; 
nor  has  the  fact  that  an  inventor  is  at  the  time  of  his  invention  in  the  employ 
of  the  government  transfer  to  it  any  title  or  interest  therein.  There  is  no 
difference  between  the  government  and  any  other  employer  in  this  respect. 
But  when  he  is  employed  to  and  does  invent  in  his  capacity,  the  government 
acquires  the  same  rights,  and  the  same  rules  obtain,  as  in  the  case  of  any  other 
employee.  —  Solomons  v.  U.  S.  137  U.  S.  342;  34  L.  Ed.  667;  11  S.  Ct.  881. 

It  would  seem  that,  although  the  contractor  in  the  performance  of  his 
contract  and  with  the  knowledge  of  the  officers  of  the  government  may  in- 
fringe a  patent  in  the  actual  performance  of  such  work  (as  infringing  a 
process  for  laying  a  pavement)  the  government  is  in  no  way  liable  in  damages. 
—  Schillinger  v.  U.  S.  155  U.  S.  163;  39  L.  Ed.  108;  15  S.  Ct.  85. 

Harlan  and  Shiras  dissenting. 

There  is  no  doubt  whatever  of  the  proposition  laid  down  in  Solomons  v. 
U.  S.  137  U.  S.  342,  that  the  mere  fact  that  a  person  is  in  the  employ  of  the 
Government  does  not  preclude  him  from  making  improvements  in  the  ma- 
chines with  which  he  is  connected,  and  obtaining  patents  therefor  as  his 
individual  property,  and  that  in  such  cases  the  government  would  have  no 
more  right  to  seize  upon  and  appropriate  such  property  than  any  other 
proprietor  would  have.  On  the  other  hand,  it  is  equally  clear  that,  if  the 
patentee  be  employed  to  invent  or  devise  such  improvements,  his  patents 
obtained  therefor  belong  to  his  employer,  since  in  making  such  improve- 
ments he  is  merely  doing  what  he  was  hired  to  do.  —  Gill  v.  U.  S.  160  U.  S. 
426;  40  L.  Ed.  480;  16  S.  Ct.  322. 

The  United  States  may  be  sued  by  a  patentee  for  their  use  of  his  invention 
under  a  contract  made  with  him  bv  the  United  States  or  by  their  authorized 
officers.  —  Belknap  v.  Schild,  161  U.  S.  10;  16  L.  Ed.  599;  16  S.  Ct.  443. 

U.  S.  v.  Burns,  79  U.  S.  246;  U.  S.  v.  Palmer,  128  U.  S.  262;  U.  S.  v.  Berdan,  156 
U.  S.  552. 


IMPROVEMENT. 

Statute  Authority  and  General  State- 
ment §  430 

Carrying  Forward  §  431 
Claims  §  432  (see  §'  184) 
Combinations  §  433  (see  §  249) 
General  Rules  §  434 
Generic  §  435 

Infringement  of  §  436  (see  §  445) 
Mechanical  Skill  §  437 
Old  Device,  New  Use  §  438 
On  Prior  Patent  to  Same  Inventor 
§439 


Patentability  §  440 
Scope  —  Limitations  §  441 
Specific  §  442 
Utility  §  443 
Miscellaneous  §  444 
See  —  Assignment  §§  160-62;  Claims 
§§  198,    205;     Divisional    Patenting 
§  348;  Double  Patenting  §  356;  Em- 
ployer and  Employee  §  365;    Equiva- 
lents    §  376;     Infringement    §§  471, 
506-7;   Invention  §§  646-8,  659. 


§  430.     Statute  Authority  and  General  Statement. 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art,  ma- 
chine, manufacture,  or  composition  of  matter,  or  any  new  and  useful  im- 
provement thereof  *  *  *  —  R.  S.  4886. 


§  431  IMPROVEMENT  389 

The  term  "  improvement  "  is  used  with  great  freedom  in  the  statute, 
by  the  Patent  Office,  and  by  the  courts.  It  is  no  more  definable  than  the 
term  invention.  Some  have  tried  to  classify  improvements  as  a  separate 
class  of  inventions,  but  the  attempt  has  not  proved  wholly  satisfactory. 
The  author  has  not  undertaken  to  correct  the  custom  and  usage  of  the  legis- 
lative, executive  or  judicial  departments  of  Government,  however  wrong 
or  loose  the  same  may  have  been.  Supplemental  sections  will  be  found 
under  Infringement  and  Invention. 

§  431.     Carrying  Forward. 

But  a  mere  carrying  forward  or  new  or  more  extended  application  of  the 
original  thought,  a  change  only  in  form,  proportions  or  degree,  the  substitu- 
tion of  equivalents,  doing  substantially  the  same  thing  in  the  same  way  by 
substantially  the  same  means  with  better  results,  is  not  such  invention  as 
will  sustain  a  patent.  These  rules  apply  alike,  whether  what  preceded  was 
covered  by  a  patent  or  rested  only  in  public  knowledge  or  use.  In  neither 
case  can  there  be  an  invasion  of  such  domain  and  an  appropriation  of  any- 
thing found  there.  In  one  case  everything  belongs  to  the  prior  patentee; 
in  the  other  to  the  public  at  large.  —  Smith  v.  Nichols,  88  U.  S.  112;  22  L.  Ed. 
566. 

The  mere  carrying  forward  of  an  old  idea,  though  effecting  an  im- 
provement, is  not  invention.  —  Guidet  v.  Brooklyn,  105  U.  S.  550;  26  L.  Ed. 
1106.      • 

In  short,  this  is  a  patent  for  superior  workmanship,  and  within  all  the 
authorities  is  invalid.  This  court  has  repeatedly  stated  that  all  improve- 
ment is  not  invention.  If  a  certain  device  differs  from  what  precedes  it 
only  in  superiority  of  finish,  or  in  greater  accuracy  of  detail,  it  is  but  carrying 
forward  of  an  old  idea,  and  does  not  amount  to  invention.  Thus  if  it  had 
been  customary  to  make  an  article  of  unpolished  metal  it  does  not  involve 
invention  to  polish  it.  If  a  telescope  had  been  made  with  a  certain  degree 
of  power,  it  involves  no  invention  to  make  one  which  differs  from  the  other 
only  in  its  having  greater  power.  If  boards  had  heretofore  been  planed  by 
hand,  a  board  better  planed  by  machinery  would  not  be  patentable,  al- 
though in  all  those  cases  the  machinery  itself  may  be  patentable.  —  Risdon 
v.  Medart,  158  U.  S.  68;  39  L.  Ed.  899;  15  S.  Ct.  745. 

Smith  v.  Nichols,  88  U.  S.  112;  Pickering  v.  McCullough,  104  U.  S.  310;  Burt 
v.  Evory,  133  U.  S.  349;   Wooster  v.  Calhoun,  11  Blatchf.  215. 

A  mere  carrying  forward  or  an  extended  application  of  the  original  device 
with  the  change  only  in  degree,  is  not  patentable  invention.  —  Eames  v. 
Worcester,  123  Fed.  67;  60  C.  C.  A.  37. 

Smith  v.  Nichols,  21  Wall.  112;  Burt  v.  Evory,  133  U.  S.  349;  Grant  v.  Walter, 
148  U.  S.  547;  Market  v.  Rowley,  155  U.  S.  621;  Fox  v.  Perkins,  52  Fed.  205; 
Galvin  v.  Grand  Rapids,  53  Fed.  165. 

It  is  not  invention  to  merely  carry  forward  an  invention  shown  in  a  prior 
machine.  —  Van  Epps  v.  United,  143  Fed.  869;  75  C.  C.  A.  77. 
Smith  v.  Nichols,  21  Wall.  112;  Ansonia  v.  Electrical,  144  U.  S.  11. 

This  simplifying  of  the  process  may  have  involved  an  exercise  of  the  in- 
ventive faculties,  but  surely  does  not  entitle  its  author  to  rank  as  a  pioneer. 
Such  improvements  are  a  part  of  the  evolution  and  natural  development 
of  every  art.  An  inventor  of  such  an  improvement  must  be  confined  strictly 
to  the  particular  advantage  which  he  has  made  and  cannot  levy  tribute 


390  THE    FIXED    LAW    OF    PATENTS  §§  432-434 

on  the  improvement  of  others.  —  Universal  v.  Sonn,  154  Fed.  665;  83  C.  C.  A. 
422. 

§  432.     Claims. 

An  inventor  who  has  made  an  improvement  in  a  machine  cannot  include 
all  previous  inventions,  and  have  a  claim  to  the  whole  art,  discovery,  or 
machine  which  he  has  improved.  All  others  have  an  equal  right  to  make 
improved  machines,  provided  they  do  not  embody  the  same  or  substantially 
the  same  devices  or  combination  of  devices,  which  constitute  the  peculiar 
characteristic  of  the  previous  invention.  —  Burr  v.  Duryee,  68  U.  S.  531 ; 
17  L.  Ed.  750. 

A  patent  is  addressed  to  those  familiar  with  the  art.  A  new  and  useful 
improvement  upon  an  old  machine  is  just  as  much  the  subject  of  a  patent 
as  a  new  machine.  All  that  the  inventor  is  required  to  do  is  to  point  out  dis- 
tinctly the  part  he  claims  as  new,  so  as  to  advise  the  public  as  to  the  extent 
of  his  invention,  and  what  is  thereby  withdrawn  from  the  public.  —  Goshen 
v.  Bissell,  72  Fed.  67;  19  C.  C.  A.  13. 

Parks  v.  Booth,  102  U.  S.  96;  Seymour  v.  Osborne,  11  Wall.  516;  Roberts  v. 
Nail  Co.  53  Fed.  916;   2  Rob.  Pat.  530-534. 

The  claims  of  a  patent  covering  a  mere  improvement  upon  prior  machines, 
which  were  capable  of  accomplishing  the  same  general  result,  must  receive 
a  narrow  interpretation.  —  Greene  v.  Buckley,  135  Fed.  520;  68  C.  C.  A.  70. 

Morley  v.  Lancaster,  129  U.  S.  263. 

§  433«     Combinations. 

Improvements  in  machines  protected  by  letters  patent  may  also  be  men- 
tioned, of  a  much  more  numerous  class,  where  all  the  ingredients  of  the  in- 
vention are  old,  and  where  the  invention  consists  entirely  of  a  new  combina- 
tion of  old  ingredients,  whereby  a  new  and  useful  result  is  obtained,  and  many 
of  them  are  of  great  utility  and  value,  and  are  just  as  much  entitled  to  pro- 
tection as  those  of  any  other  class.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

Union  v.  Matthieson,  2  Fish.  P.  C.  605. 

The  patent  is  not  a  pioneer  or  primary  one  in  any  sense,  and  the  owner  is 
not  entitled  to  much  range  of  equivalents.  The  claims  must  be  limited  in 
their  scope  to  the  actual  combination  of  essential  parts  as  shown,  and  cannot 
be  construed  to  cover  other  combinations  of  elements  or  different  construc- 
tion of  arrangement.  —  St.  Louis  v.  American,  156  Fed.  574;  84  C.  C.  A.  340. 

Cimiotti  v.  American,  198  U.  S.  399;  Kokomo  v.  Kitselman,  189  U.  S.  8;  Greene 
v.  Buckley,  135  Fed.  520. 

§  434.     General  Rule. 

Nor  can  its  validity  be  impeached  upon  the  ground  that  it  is  an  improve- 
ment upon  a  former  invention,  for  which  the  patentee  had  himself  already 
obtained  a  patent.  Any  other  inventor  might  do  so ;  and  there  can  be  no  rea- 
son, in  justice  or  in  policy,  for  refusing  the  like  privilege  to  an  original  in- 
ventor. —  O'Reilly  v.  Morse,  15  How.  62;   14  L.  Ed.  601. 

But  if  the  invention  claimed  be  itself  but  an  improvement  on  a  known 
machine  by  a  mere  change  of  form  or  combination  of  parts,  the  patentee 
cannot  treat  another  as  an  infringer  who  has  improved  the  original  machine 


§  435  IMPROVEMENT  39 1 

by  use  of  a  different  form  or  combination  performing  the  same  functions. 
The  inventor  of  the  first  improvement  cannot  invoke  the  doctrine  of  equiva- 
lents to  suppress  all  other  improvements  which  are  not  mere  colorable  in- 
vasions of  the  first.  —  McCormick  v.  Talcott,  61  U.  S.  402;   15  L.  Ed.  930. 

For  ordinary  improvers  the  stimulus  of  the  rewards  offered  by  our  patent 
laws  is  needed  to  encourage  by  the  hope  of  profit  that  zealous  eagerness  to 
improve  processes,  to  remedy  defects  in  machinery,  to  invent  new  methods 
and  appliances  for  saving  labor  and  cheapening  productions  in  the  number- 
less articles  that  are  in  daily  use.  It  is  this  stimulus  that  has  made  the 
American  mechanic  the  most  alert,  observant,  and  studious  of  any  in  the 
world,  and  it  is  the  indefinite  multiplication  of  these  small  inventions  and 
improvements  that  has  wrought  an  industrial  revolution  and  brought  this 
country  to  the  forefront  of  the  world's  commerce.  —  Crown  v.  Aluminum, 
103  Fed.  845;  48  C  C.  A.  72. 

The  alleged  improver  may  have  a  valid  patent  for  his  new  means,  and  is 
entitled  to  its  exclusive  use;  but  the  prior  patent  equally  excludes  him  from 
the  use  of  the  prior  invention,  with  or  without  his  improvement.  —  Columbia 
v.  Kokomo,  143  Fed.  116;  74  C.  C.  A.  310. 

Cochrane  v.  Deener,  94  U.  S.  780. 

§  435.     Generic. 

The  Arnold  and  Pipo  machines  merely  gave  hints  how  a  plaiting  machine 
could  be  made.  The  manufacture  of  plaits  originated  with  the  mechanism 
of  Crosby  and  Kellogg,  whose  machine  was  not  an  addition  to  an  old  struc- 
ture, as  in  Garretson  v.  Clark,  supra,  or  in  Reed  v.  Lawrence,  29  Fed.  915. 
—  Tuttle  v.  Claflin,  76  Fed.  227;  22  C.  C.  A.  138. 

If  the  evidence  was  true  that  Cramer  was  the  first  to  present  a  new  and 
useful  combination  by  mounting  his  treadle  in  the  vertical  cross-brace, 
thereby  obtaining  the  advantages  which  some  of  the  witnesses  testified  to, 
he  was  undoubtedly  entitled  to  the  protection,  and  to  the  exclusive  right  to 
mount  a  treadle  in  the  cross  brace,  no  matter  what  the  form  of  the  bearings 
of  the  treadle  might  be.  —  Singer  v.  Cramer,  109  Fed.  652;  48  C.  C.  A.  588. 

Reversed,  192  U.  S.  265. 

Winans  v.  Denmead,  15  How.  330;  Ives  v.  Hamilton,  92  U.  S.  426;  Machine 
Co.  v.  Murphy,  97  U.  S.  120;   Hoyt  v.  Home,  145  U.  S.  308. 

The  device  was  wholly  novel,  performing  a  function  never  before  per- 
formed, achieving  at  once  an  extensive  demand  and  a  successful  use ;  and 
the  invention,  small  in  character  though  it  seem,  is  therefore  entitled  to  a 
primary  rank.  —  Chicago  v.  Miller,  133  Fed.  541 ;  66  C.  C.  A.  517. 

Westinghouse  v.  Boyden,  170  U.  S.  537. 

We  think  it  cannot  be  said  that  Jordan  was  a  pioneer  inventor  in  the  sense 
that  he  was  first  to  produce  a  machine  to  successfully  form  can  bodies.  He 
was  first,  however,  to  form  can  bodies  by  the  use  of  a  rotating  horn.  His 
invention  must  be  accorded  a  place  inferior,  perhaps,  to  that  of  a  primary 
invention,  but  far  in  advance  of  those  which  constitute  but  a  slight 
improvement  on  the  prior  art.  His  claims,  therefore,  while  not  entitled  to 
the  broadest  construction  accorded  to  the  former,  are  not  to  be  restricted 
to  the  narrow  construction  applicable  to  the  latter.  He  is  entitled  to  the 
protection  of  the  doctrine  of  equivalency  in  proportion  to  the  nature  of  the 
advance  which  his  invention  indicates.  —  American  v.  Hickmott,  142  Fed. 
141;   73  C.  C.  A.  359. 


392  THE    FIXED    LAW    OF    PATENTS  §435 

Penfield  v.  Chambers,  92  Fed.  630;  McCormick  v.  Aultman,  69  Fed.  371; 
Muller  v.  Tool,  77  Fed.  621;  Letson  v.  Alaska,  130  Fed.  140;  Miller  v.  Eagle,  115 
U.  S.  186. 

The  conception  of  Bates  was  not  pioneer  invention  in  the  broad  sense 
of  the  term,  and  the  mechanism  described  in  the  patent  was  merely  an  im- 
provement upon  the  old  wire-barbing  machines.  Nevertheless  the  invention 
was  meritorious  —  a  marked  advance  in  the  art,  and  of  unquestionable  utility 
—  so  that  the  patentee  is  not  only  entitled  to  protection  of  his  monopoly 
against  colorable  evasions,  but,  for  such  protection,  is  entitled  as  well  to 
the  benefit  of  the  doctrine  of  equivalents,  commensurate  with  the  invention 
disclosed,  though  not  of  the  broad  range  which  is  accorded  an  invention 
of  primary  character.  —  Columbia  v.  Kokomo,  143  Fed.  116 ;  74  C.  C.  A.  310. 

Miller  v.  Eagle,  151  U.  S.  186;  Bundy  v.  Detroit,  94  Fed.  524;  National  v. 
Interchangeable,  106  Fed.  693. 

The  assumed  prototype  of  the  device  was  a  failure,  and  Bates  was  the 
pioneer  in  his  conception  of  a  combination,  which  solved  the  problem  where 
other  inventors  had  failed  in  the  quest.  Exact  measurement  of  the  faculty 
thus  brought  to  the  solution  is  needless  in  the  face  of  the  undeniable  achieve- 
ment. The  combination  so  devised  is  both  new  and  useful  in  the  sense  and 
within  the  objects  of  the  patent  law.  —  Columbia  v.  Kokomo,  143  Fed.  116; 
74  C.  C.  A.  310. 

The  defendant  contends  that,  inasmuch  as  Chadbourn  (the  inventor  of 
the  prior  device)  discloses  the  generic  combination,  the  only  novelty  of 
Johnson  (the  inventor  of  the  patent  in  suit)  lies  in  the  form  of  the  secondary 
motor,  or  in  the  form  of  the  secondary  valve.  This,  in  our  opinion,  is  erro- 
neous. He  (Johnson)  was  first  to  regulate  the  heat  supply,  using  a  relay  or 
secondary  motor  operated  by  compressed  air,  and  this  seems  to  have  been 
a  very  practical  and  important  contribution  to  the  art  of  heat  regulation. 
We  are  of  the  opinion,  therefore,  that  Johnson,  and  not  Chadbourn,  is  to 
be  regarded  as  the  inventor  of  the  generic  combination,  and  that  the  claims  are 
to  be  construed  not  merely  as  for  minor  and  detailed  improvements,  but  for 
a  primary  invention  in  the  specific  field  of  heat  regulation.  In  order  to  hold 
that  Chadbourn 's  patent  in  any  respect  anticipates  or  limits  the  patent  in 
suit,  we  should  be  obliged  to  lay  great  stress  upon  a  mere  verbal  suggestion 
of  Chadbourn  as  to  the  use  of  air,  and  to  ignore  the  fact  that  he  had  appar- 
ently no  conception  whatever  of  the  modifications  which  the  use  of  a  com- 
pressed-air relay  would  permit  in  practical  apparatus  for  heat  regulation. 
We  also  should  be  obliged  to  ignore  entirely  Johnson's  exact  and  definite 
conception  which  led  to  an  important  improvement  upon  an  art  which 
Johnson  had  already  brought  to  a  high  degree  of  development.  We  are  of 
opinion  that,  in  sustaining  the  Johnson  patent  and  giving  it  a  construction 
commensurate  with  Johnson's  actual  contribution  to  the  practical  art,  we 
are  well  within  the  principles  laid  down  and  applied  in  Lawther  v.  Hamilton, 
124  U.  S.  1;  Western  v.  LaRue,  139  U.  S.  601;  Potts  v.  Creager,  155  U.  S. 
597;  Cash  Register  Case,  156  U.  S.  502;  Hobbs  v.  Beach,  180  U.  S.  383; 
and  applied  by  us  in  Watson  v.  Stevens,  51  Fed.  757;  Davey  v.  Prouty,  107 
Fed.  505;  Forsyth  v.  Garlock,  142  Fed.  461.  —  Weld  v.  Johnson,  147  Fed. 
234;    77  C.  C.  A.  376. 

Gathright's  device,  though  an  improvement  upon  existing  tabulators, 
was  an  improvement  of  such  vital  importance  that  it  may  be  said  that  the 
art,  when  considered  from  a  practical  and  commercial  point  of  view,  began 
with  him.  He  converted  a  theory  into  a  fact.  His  invention  belongs  to  that 
large  class  which  have  been  treated  with  liberality  by  the  courts,  when  the 
inventor  by  an  apparently  simple  change,  addition  or  transposition  of  parts 


§§  436-437  IMPROVEMENT  393 

has  converted  imperfection  into  completeness.  —  Wagner  v.  Wycoff,   151 
Fed.  585;  81  C.  C.  A.  129. 

Westinghouse  v.  Boyden,  170  U.  S.  537;  Barbed  Wire  Patent,  143  U.  S.  275; 
Consolidated  v.  Crosby,  113  U.  S.  157;  Hobbs  v.  Beach,  180  U.  S.  383; 
Topliff  v.  Topliff,  145  U.  S.  156. 

§  436.     Infringement  of. 

One  invention  may  include  within  it  many  others,  and  each  and  all  may 
be  valid  at  the  same  time.  This  only  consequence  follows :  that  each  inventor 
is  precluded  from  using  inventions  made  and  patented  prior  to  his  own, 
except  by  license  from  the  owners  thereof.  His  invention  and  his  patent 
are  equally  entitled  to  protection  from  infringement,  as  if  they  were  inde- 
pendent of  any  connection  with  them.  —  Cochrane  v.  Deener,  94  U.  S.  780; 
24  L.  Ed.  139. 

An  improvement,  although  it  may  be  a  proper  subject  of  a  patent,  in  use 
may  involve  the  prior  invention,  and  therefore  infringe  it.  —  Morley  v.  Lan- 
caster, 129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 

That  a  narrow  improvement,  while  of  undoubted  utility,  which  must  be 
very  narrowly  construed  in  order  to  save  the  patent  from  anticipation,  must 
be  construed  equally  narrowly  as  to  infringement,  see  Tower  v.  Eagle,  94 
Fed.  361 ;  36  C.  C.  A.  294. 

That  an  improvement  suggested  by  acquaintance  with  a  prior  patented 
device  is  not  necessarily  indicative  of  infringement  or  lack  of  invention,  see 
Cushman  v.  Goddard,  95  Fed.  664;  37  C.  C.  A.  221. 

Westinghouse  v.  Boyden,  170  U.  S.  537. 

Note:  This  may  be  an  inference  from  the  Westinghouse  case,  but  its  value 
is  very  doubtful;  because  it  is  merely  an  inference,  and  unless  positively 
backed  up  by  substantial  proof,  has  very  small  evidential  value. 

That  the  claims  for  improvements  in  a  well-worked  art  will  be  strictly 
construed  when  both  patents  in  litigation  —  the  patent  sued  on  and  the 
patent  justified  under  —  are  of  such  a  character,  see  Mayor  v.  Holmquist, 
145  Fed.  179;  76  C.  C.  A.  149. 

Milwaukee  v.  Brunswick,  126  Fed.  185;  Loew  v.  Miller,  138  Fed.  889. 

§  437.     Mechanical  Skill. 

It  may  be  admitted  that  the  inventor's  later  patent  performed  the  work 
it  was  designed  to  accomplish  in  a  better  and  more  workmanlike  manner 
than  any  of  the  preceding  devices  patented,  because,  as  stated,  there  were 
constant  improvements  in  the  art  to  which  it  related.  So  far  as  this  record 
shows,  it  was  the  last  of  a  series  of  patents  designed  to  accomplish  the  same 
object.  As  such,  it  necessarily  retained  all  the  beneficial  features  of  the  earlier 
patents,  and,  to  a  certain  extent,  improved  upon  them.  Such  improvement, 
however,  was  an  improvement  in  degree  only,  and  was  therefore  not  patent- 
able. —  Busell  v.  Stevens,  137  U.  S.  423;  34  L.  Ed.  719;  11  S.  Ct.  150. 

Burt  v.  Evory,  133  U.  S.  349. 

Something  more  is  required  to  support  a  patent  than  a  slight  advance 
over  what  had  preceded  it  or  mere  superiority  in  workmanship  or  finish. 
—  International  v.  Gaylord,  140  U.  S.  55;  35  L.  Ed.  347;    11  S.  Ct.  716. 

Smith  v.  Nichols,  88  U.  S.  112;  Atlantic  v.  Brady,  107  U.  S.  192;  Pickering  v. 
McCullough,  104  U.  S.  310. 


394  THE    FIXED    LAW    OF    PATENTS  §  438 

When  the  field  is  new  inventions  are  striking  and  novel;  when  old  im- 
provements are  so  slight  as  to  fall  near  to  mechanical  skill.  —  Haughey  v. 
Lee,  151  U.  S.  282;  38  L.  Ed.  162;  14  S.  Ct.  331. 

Where,  of  a  number  of  independent  inventors  working  in  the  same  field, 
one  takes  the  last  step  which  accomplishes  the  result  sought,  a  strong  pre- 
sumption of  invention  is  raised  in  his  favor.  But  where  a  number  of  workers 
in  a  single  field,  when  confronted  by  an  obstacle  to  the  development  of  a 
device,  naturally,  and  practically  contemporaneously,  independently  sub- 
stitute one  well-known  material  for  another,  and,  finding  that  it  successfully 
overcomes  such  obstacle,  use  it  publicly  and  privately  without  any  claim 
of  exclusive  right,  the  presumption  is  raised  that  such  workers  rightly  re- 
garded the  substitution  as  a  mere  improvement,  a  mere  choice  of  material 
such  as  would  be  adopted  or  selected  by  the  skilled  workman,  or  a  double 
use.  —  Thomson-Houston  v.  Lorain,  117  Fed.  249;  54  C.  C.  A.  281. 

At  most,  this  addition  is  but  the  mere  extension  of  an  old  idea,  and  nothing 
more  than  the  ordinary  mechanical  skill  of  one  conversant  with  the  art  could 
readily  supply.  To  admit  patentability  in  this  would  be  to  hold  that  every 
duplication  ad  infinitum  of  similar  forms  founded  on  an  old  principle  would 
be  patentable  invention.  —  Standard  v.  Computing,  126  Fed.  639 ;  61  C.  C.  A. 
541. 

Smith  v.  Nichols,  21  Wall.  112;  Grant  v.  Walter,  148  U.  S.  547;  Schreiber  v. 
Grimm,  72  Fed.  671;   Soehner  v.  Favorite,  84  Fed.  182. 

It  did  not  involve  invention  to  weaken  the  entire  enclosing  head  so  that 
the  whole  head  would  yield  under  excessive  interior  pressure  produced  by 
freezing,  instead  of  weakening  a  part  of  the  enclosing  head  Such  a  change 
would  fall  within  the  established  principle  that  a  mere  carrying  forward  of 
an  original  conception  patented;  a  new  and  more  extended  application  of 
it,  involving  only  change  of  form,  proportions  or  degree ;  the  substitution  of 
equivalents  doing  substantially  the  same  thing  in  the  same  way,  by  substan- 
tially the  same  means,  with  better  results  —  is  not  such  invention  as  will 
sustain  a  patent,  —  Neptune  v.  National.  127  Fed.  563;  62  C.  C.  A.  345. 

Smith  v.  Nichols,  21  Wall.  112;  Burt  v.  Evory.  133  U.  S.  349;  Hollister  v. 
Benedict,  113  U.  S.  59. 

The  result  of  the  application  of  the  common  skill  and  experience  of  a 
mechanic,  which  comes  from  habitual  and  intelligent  practice  of  his  calling, 
to  the  correction  of  some  slight  defect  in  a  machine  or  combination,  or  to  a 
new  arrangement  or  grouping  of  its  parts,  tending  to  make  it  more  effective 
for  the  accomplishment  of  the  object  for  which  it  was  designed,  not  involving 
a  substantial  discovery,  nor  constituting  an  addition  to  our  knowledge  of  the 
art,  is  not  within  the  protection  of  the  patent  laws.  —  Sloan  v.  Portland,  139 
Fed.  23;  71  C.  C.  A.  460. 

Gates  v.  Fraser,  153  U.  S.  332;  Florsheim  v.  Schilling,  137  U.  S.  64;  Hollister 
v.  Benedict,  113  U.  S.  59;  Atlantic  v.  Brady,  107  U.  S.  192;  Dunbar  v.  Meyers, 
94  U.  S.  187;  Hotchkiss  v.  Greenwood,  11  How.  267;  Adams  v.  Lindell,  77  Fed. 
432;   Tiemann  v.  Kraatz,  85  Fed.  437. 


§  438.     Old  Device,  New  Use. 

This  inventor  took  the  well-known  parts  of  an  ordinary  double-action 
pump,  changed  some  of  them  slightly  in  form,  added  a  new  device,  and  pro- 
duced something  which  would  do  what  was  wanted.  While  nominally  he 
only  made  an  improvement  in  pumps,  he  actually  made  an  improved  pump. 
For  ordinary  uses  the  improvement  added  nothing  to  the  value  of  the  old 


§§  439-440  IMPROVEMENT  395 

pump,  but  for  the  new  and  special  purpose  in  view,  the  old  pump  was  useless 
without  the  improvement.  —  Goulds  v.  Cowing,  105  U.  S.  253;  26  L.  Ed.  987. 

All  the  elements  in  the  combination  have  been  used  before,  and  the  func- 
tions of  each  were  well  known  in  the  art,  but  it  does  not  appear  that  they  had 
ever  been  similarly,  specifically  combined  for  effectuating  the  purpose  here 
accomplished.  The  grant  of  the  patent  carries  with  it  the  presumption  of 
patentability,  and  this  presumption  has  been  strengthened  by  the  general 
acceptance  of  the  device,  the  acquiescence  of  those  skilled  in  the  art,  and 
their  willingness  to  accept  licenses  thereunder.  —  Millheim  v.  Western,  95 
Fed.  152;  37  C.  C.A.  38. 

His  contribution  to  the  art  did  not  consist  in  improving  the  form  or  loca- 
tion or  sequence  of  elements  in  an  existing  combination,  but  in  taking  and 
combining  the  elements  to  produce  a  new  result.  He  is  entitled  to  an  ap- 
plication of  the  doctrine  of  equivalents  in  proportion  to  the  scope  of  his 
invention.  —  Adam  v.  Folger,  120  Fed.  260;  56  C.  C.  A.  540. 

§  439.     On  Prior  Patent  to  Same  Inventor. 

He  must  stand  on  the  same  footing  with  any  other  inventor  of  an  improve- 
ment upon  a  previous  discovery.  Nor  is  he  bound  in  his  new  patent  to  refer 
specially  to  his  former  one.  All  that  the  law  requires  is  that  he  shall  not  claim 
as  new  what  is  covered  by  a  former  invention,  whether  made  by  himself  or 
any  other  person.  —  O'Reilly  v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

§  440.     Patentability. 

That  an  improvement  upon  a  well-known  device  is  patentable ;  and  that 
proof  of  the  existence  of  the  old  device  does  not  defeat  the  improvement.  — 
Evans  v.  Eaton,  3  Wheat.  454;  4  L.  Ed.  433. 

If  the  same  combinations  existed  before  in  machines  of  the  same  nature 
up  to  a  certain  point,  and  the  party's  invention  consists  in  adding  some  new 
machinery,  or  some  improved  mode  of  operation,  to  the  old,  the  patent 
should  be  limited  to  such  improvement,  for  if  it  includes  the  whole  machinery, 
it  includes  more  than  his  invention,  and  therefore  cannot  be  supported.  — 
Evans  v.  Eaton,  7  Wheat.  356 ;  5  L.  Ed.  472. 

Improvements  for  which  a  patent  may  be  granted  must  be  new  and  useful, 
within  the  meaning  of  the  patent  law,  or  the  patent  will  be  void,  but  the 
requirement  of  the  Patent  Act  in  that  respect  is  satisfied  if  the  combination 
is  new  and  the  machine  is  capable  of  being  beneficially  used  for  the  purpose 
for  which  it  was  designed,  as  the  law  does  not  require  that  it  should  be  of 
such  general  utility  as  to  supersede  all  other  inventions  in  practice  to  ac- 
complish the  same  object.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Lowell  v.  Lewis,  1  Mason,  182;  Bedford  v.  Hunt,  1  Mason,  302;  Many  v.  Jagger, 
1  Blatchf.  372;   Barret  v.  Hall,  1  Mason,  447. 

Particular  changes  must  be  made  in  the  construction  and  operation  of  an 
old  machine  so  as  to  adapt  it  to  a  new  and  valuable  use  not  known  before, 
and  to  which  the  old  machine  had  not  been,  and  could  not  be,  applied  without 
those  changes  and,  under  the  circumstances,  if  the  machine,  as  changed  and 
modified,  produce  a  new  and  useful  result,  it  may  be  patented,  and  the  patent 
will  be  upheld  under  existing  laws.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

Bray  v.  Hartshorn,  1  Cliff.  541;  Losh  v.  Hague,  1  Web.  P.  C.  207;  Hind.  Pat. 
95;  Phillips  v.  Page,  24  How.  166;  Norm.  Pat.  25. 


396  THE   FIXED   LAW   OF   PATENTS  §  440 

A  new  idea  may  be  engrafted  upon  an  old  invention,  but  distinct  from  the 
conception  which  preceded  it,  and  be  an  improvement.  In  such  case  it  is 
patentable.  —  Smith  v.  Nichols,  88  U.  S.  112;  22  L.  Ed.  566. 

When  a  subsequent  apparatus  is  substantially  the  same  as  one  which 
precedes  it,  it  is  not  the  proper  subject  of  a  patent;  but  if  it  be  substantially 
different  in  construction  and  mode  of  operation,  then  it  is  as  much  the  proper 
subject  of  a  patent  as  if  nothing  of  the  kind  had  ever  before  been  invented. 
—  Fuller  v.  Yentzer,  94  U.  S.  299 ;  24  L.  Ed.  107. 

Dissenting:   Waite,  Strong,  Miller,  Bradley. 

The  first  defense  is  based  on  the  theory  that  a  patent  cannot  be  valid 
unless  it  is  new  in  all  its  elements  as  well  as  in  the  combination.  But  this 
theory  cannot  be  maintained.  If  it  were  so  no  patent  for  an  improvement 
on  a  known  contrivance  or  process  could  be  valid.  And  yet  the  great  ma- 
jority of  patents  are  for  improvements  in  old  and  well  known  devices  or 
on  patented  contrivances.  —  Cantrell  v.Wallick,  117U.  S.  689;  29  L.  Ed.  1017; 
6  S.  Ct.  970. 

Seymour  v.  Osborne,  11  Wall.  516;  Loom  v.  Higgins,  105  U.  S.  580;  Hailes  v. 
Van  Wormer,  20  Wall.  353;    Star  v.  Crossman,  4  Cliff.  568. 

Two  patents  may  be  both  valid  when  the  second  is  an  improvement  upon 
the  first,  in  which  event,  if  the  second  includes  the  first,  neither  of  the  two 
patentees  can  lawfully  use  the  invention  of  the  other  without  the  other's 
consent.  —  Cantrell  v.  Wallick,  117  U.  S.  689;  29  L.  Ed.  1017;  6  S.  Ct.  970. 

Star  v.  Crossman,  4  Cliff.  568. 

The  test  of  an  improvement  is  that  it  must  be  the  product  of  an  original 
conception.  —  Burt  v.  Evory,  133  U.  S.  349 ;  33  L.  Ed.  640;  11  S.  Ct.  349. 

Pearce  v.  Mulford,  102  U.  S.  112;  Slawson  v.  Grand,  107  U.  S.  649;  Munson  v. 
N.  Y.  124  "U.  S.  601;   Smith  v.  Nichols,  88  U.  S.  112. 

It  may  be  true,  as  claimed,  that  complainants'  machine  is  superior  to 
prior  devices;  but  the  question  is  whether,  in  view  of  what  is  disclosed,  in 
the  previous  machines,  it  can  be  properly  said  that  his  machine  or  combina- 
tion constitutes  such  a  substantial  advance  or  improvement  over  prior  de- 
vices as  involves  invention,  and  will  entitle  him  to  a  patent  therefor.  "  It 
is  well  settled  that  not  every  improvement  in  an  article  is  patentable.  The 
test  is  that  the  improvement  must  be  the  product  of  an  original  conception. 
A  mere  carrying  forward  or  more  extended  application  of  an  original  appli- 
cation of  an  original  idea  —  a  mere  improvement  in  degree  —  is  not  inven- 
tion." —  Fox  v.  Perkins,  52  Fed.  205;  3  C.  C.  A.  32. 

Burt  v.  Evory,  133  U.  S.  358;  Smith  v.  Nichols,  21  Wall.  112;  Howe  v.  National, 
134  U.  S.  397;  Ansonia  v.  Electrical,  144  U.  S.  11;  Roller  Co.  v.  Walker,  138  U.  S. 
124. 

The  history  and  nature  of  the  invention  shows  that  it  did  not  consist  in  a 
mere  change  of  material.  It  was  not  an  India  rubber  surgical  instrument, 
as  distinguished  from  an  instrument  made  of  metal  or  webbing,  but  it  was 
an  improvement  upon  an  existing  India-rubber  tube,  which  was  valuable, 
and  which  the  record  shows  had  evaded  invention,  study  and  skill.  —  Stohl- 
mann  v.  Parker,  53  Fed.  925;  4  C.  C.  A.  109. 

For  any  new  and  useful  improvement  which  contained  also  the  element  of 
invention,  or  for  a  separate  invention,  a  subordinate  patent  could  be  ob- 
tained. —  Westinghouse  v.  N.  Y.  63  Fed.  962;  11  C.  C.  A.  528. 


5  441  IMPROVEMENT  397 

§  441.     Scope  —  Limitations. 

Where  the  specification  discloses  several  combinations  and  separate  in- 
ventions the  word  improvement  will  be  construed  as  in  the  plural.  —  Evans 
v.  Eaton,  3  Wheat.  454;  4  L.  Ed.  433. 

Under  the  proofs,  we  find  ourselves  unable  to  assent  to  the  proposition 
that  the  plaintiff  was  a  pioneer.  While  it  must  be  conceded  that  none  of 
the  earlier  patents  anticipate  him,  his  true  relation  to  this  particular  branch 
of  the  art  seems  to  be  nothing  more  than  that  of  an  improver.  —  Lewis  v. 
Pa.  Steel  Co.  59  Fed.  129;  8  C.  C.  A.  41. 

This  is  not  a  case  where  Adams  preceded  all  the  rest,  and  struck  out  some- 
thing which  included  and  underlay  all  that  they  produced.  It  is  a  case  in 
which  the  principles  to  be  applied,  and  the  mechanical  elements  to  be  used, 
were  all  old  and  well  known.  Many  minds  were  independently  striving  to 
accomplish  the  same  purpose.  Adams  formed  and  patented  one  com- 
bination. Edison,  Finney,  and  Sprague  devised  and  used  others.  Each 
is  entitled  to  his  own  form,  so  long  as  it  differs  from  that  of  his  com- 
petitor, and  does  not  include  theirs,  and  neither  is  entitled  to  sub- 
ject to  tribute  those  whose  combinations  are  not  mere  evasions  of  his 
own.  The  franchise  of  Adams  was  limited  by  the  state  of  the  art  to  the  spe- 
cific combination  he  described  and  claimed  in  his  patent,  and  to  palpable 
evasions  of  it.  —  Adams  Elec.  Ry.  v.  Lindell,  77  Fed.  432;  23  C.  C.  A.  223. 

No  one  can  claim  the  complete  whole,  and  each  is  entitled  only  to  the 
specific  form  or  device  which  he  produces,  and  every  other  inventor  is  en- 
titled to  his  own  specific  form,  so  long  as  it  differs  from  those  of  his  com- 
petitors, and  does  not  include  theirs.  —  Mann  v.  Hoffman,  104  Fed.  245; 
43  C.  C.  A.  514. 

Railway  v.  Sayles,  97  U.  S.  554;  Duff  v.  Pump  Co.  107  Fed.  636;  Boyd  v. 
Janesville,  158  U.  S.  260. 

When  the  advance  toward  the  desideratum  is  gradual,  and  several  inventors 
form  different  combinations  which  accomplish  the  desired  result  with  varying 
degrees  of  success,  each  is  entitled  to  his  own  combination  so  long  as  it  differs 
from  those  of  his  competitors  and  does  not  include  theirs.  —  Kinloch  v. 
Western,  113  Fed.  659;  51  C.  C.  A.  369. 

National  v.  Interchangeable,  106  Fed.  693;  Railway  v.  Sayles,  97  TJ.  S.  554; 
McCormick  v.  Talcott,  20  How.  402;  Stirrat  v.  Mfg.  Co.  61  Fed.  980;  Griswold 
v.  Harker,  62  Fed.  389;   Adams  v.  Lindell,  77  Fed.  432. 

Where  the  advance  in  the  art  is  gradual,  and  several  inventors  make  valu- 
able improvements  varying  in  degrees  of  success,  each  is  entitled  to  his  own 
combination,  so  long  as  it  differs  from  those  of  his  competitors  and  does  not 
include  theirs.  —  Ide  v.  Trorlicht,  115  Fed.  137;  53  C.  C.  A.  341. 

National  v.  Interchangeable,  106  Fed.  693;  Railway  v.  Sayles.  97  TJ.  S.  554; 
McCormick  v.  Talcott,  20  How.  402;  Stirrat  v.  Mfg.  Co.  61  Fed.  9S0;  Griswold 
v.  Harker,  62  Fed.  389;   Adams  v.  Lindell,  77  Fed.  432. 

Where  the  advance  in  the  art  is  gradual,  and  several  inventors  make 
valuable  improvements  and  form  different  combinations,  which  accomplish 
the  desired  result  with  varying  degrees  of  success,  each  is  entitled  to  his  own 
combination,  so  long  as  it  differs  from  those  of  his  competitors,  and  does  not 
include  theirs.  —  Anderson  v.  Collins,  122  Fed.  451 ;  58  C.  C.  A.  669. 

National  v.  Interchangeable,  106  Fed.  693;  Railway  v.  Sayles,  97  U.  S.  554; 
McCormick  v.  Talcott,  20  How.  402;  Stirrat  v.  Mfg.  Co.  61   Fed.  980;  Griswold  v. 


398  THE    FIXED    LAW    OF    PATENTS  §  442 

Harker,  62  Fed.  389;     Adams  v.  Lindell,  77  Fed.  432;  Ide  v.  Trorlicht,  115  Fed. 
137. 

He  did  not  acquire  the  right  to  use  the  Bradley  process  simply  because  he 
had  improved  that  process.  —  Electric  Smelting  v.  Pittsburg,  125  Fed.  926; 
60  C.  C.  A.  636. 

Where  the  advance  towards  the  desideratum  is  gradual,  and  several 
inventors  form  different  combinations  and  make  different  improvements 
which  materially  aid  to  accomplish  the  desired  results,  each  is  entitled  to 
his  own  combination  or  improvement,  so  long  as  it  differs  from  those  of  his 
competitors  and  does  not  include  theirs.  —  Mallon  v.  Gregg,  137  Fed.  68; 
69  C.  C.  A.  48. 

National  v.  Interchangeable,  106  Fed.  693;  Railway  v.  Sayles,  97  U.  S.  554; 
McCormick  v.  Talcott,  20  How.  402;  Stirrat  v.  Mfg.  Co.  61  Fed.  980;  Griswold 
v.  Harker,  62  Fed.  389;  Adams  v.  Lindell,  77  Fed.  432. 

There  is  room  for  such  an  adapter  (a  narrow  improver)  to  have  only  a 
specific  patent  for  his  particular  form  of  adaptation,  and  he  is  not  privileged 
to  exclude  others  from  gleaning  in  the  same  general  field.  —  Loew  v.  Miller, 
138  Fed.  886;  71  C.  C.  A.  266. 

Milwaukee  v.  Brunswick,  126  Fed.  171. 

It  is  not  given  to  any  person  to  preclude  all  others  from  providing  means 
for  accomplishing  any  beneficial  result.  If  the  means  are  different  —  are 
not  substantially  the  same  —  there  is  no  infringement;  there  is  not  the  use 
of  the  means  contrived  by  the  inventor;  his  idea  is  not  appropriated,  except 
the  idea  of  the  result  to  be  accomplished,  and  in  that  there  is  no  quality 
of  invention.  —  Wessel  v.  United,  139  Fed.  11;  71  C.  C.  A.  423. 

That  he  improved  upon  the  prior  structures  in  the  way  of  simplifying  the 
form  and  cheapening  the  casting  when  made  integrally,  is  undoubted,  and 
such  improvement  may  involve  invention;  but  it  is  well  settled  that  the 
patent  which  may  then  be  granted  must  be  limited  to  the  scope  of  the  actual 
invention  —  to  his  "  particular  form  of  adaptation."  —  Hunt  v.  Milwaukee, 
148  Fed.  220;  78  C.  C.  A.  116. 

Loew  v.  Miller,  138  Fed.  886. 


§  442.     Specific. 

When  a  valid  patent  has  been  obtained,  under  such  conditions  (from  a 
study  of  the  state  of  the  art)  the  claims  of  the  patentee  must  be  restricted 
to  the  precise  form  and  arrangement  of  parts  described  in  the  specification. 
Such  a  patent  is  an  entirety,  and  it  is  a  familiar  principle  that  all  the  parts 
of  the  combination  must  be  used  by  the  defendant  in  order  to  constitute 
an  infringement.  —  Mott  Iron  Works  v.  Standard,  53  Fed.  819 ;  4  C.  C.  A.  28. 

Howe  v.  Neemes,  18  Fed.  4C;  Matteson  v.  Caine,  17  Fed.  525;  Bragg  v.  Fitch, 
121  U.  S.  478;  Railway  v.  Sayles,  97  U.  S.  554. 

As  th°  ;e  means  existed  in  earlier  machines,  though  not  exactly  in  the  same 
form,  he  was  not  entitled  to  make  such  claims,  and  they  cannot  be  sustained, 
without  restrictions  on  the  specifications.  His  invention  being  not  of  a 
primary  character,  but  of  special  means  of  accomplishing  results  that  had 
hitherto  been  attained  by  means  but  little  different  in  their  nature,  the  in- 
vention was  limited  to  the  particular  means  provided.  —  Brown  v.  King, 
107  Fed.  498;  46  C.  C.  A.  432. 


§442  IMPROVEMENT  399 

MacCormick  v.  Aultman,  69  Fed.  371;  Noonan  v.  Athletic,  99  Fed.  90;  Wells 
v.  Curtis,  66  Fed.  318. 

Crary  apparently  originated  the  improvement,  but  it  was,  strictly  speaking, 
a  secondary  invention,  for  it  performs  the  function  previously  performed  by 
the  stationary  platen,  although  it  performs  it  in  a  much  better  way  than  had 
been  accomplished  by  its  predecessor.  It  was  a  substantial  and  meritorious 
invention,  and  was  not  limited  to  the  details  of  the  mechanism  shown  in  the 
specification.  —  Writing  Mach.  v.  Elliott,  108  Fed.  628;  47  C.  C.  A.  536. 

Walk.  Pat.  sec.  359. 

When  two  inventors  have  each  adopted  the  substantial  features  or  ele- 
ments of  an  earlier  invention,  making  respectively  but  slight  changes  in  or 
improvements  upon  the  earlier  device,  each  will  be  limited  to  his  own  specific 
form  of  device;  and,  if  there  are  differences  therein,  neither  device  will 
be  held  to  be  an  infringement  of  the  other.  In  all  such  cases  the  general 
words  of  a  claim,  especially  where  the  claim  contains  words  of  reference  to 
a  more  particular  description  of  the  thing  patented,  which  is  contained 
in  the  specification,  will  be  held  to  cover  only  the  structure  of  the  device  so 
particularly  described.  —  Sander  v.  Rose,  121  Fed.  835;    58  C.  C.  A.  171. 

McCormick  v.  Talcott,  20  How.  402;  Railway  v.  Sayles,  97  U.  S.  554;  National 
v.  Interchangeable,  106  Fed.  693;   Brill  v.  St.  Louis,  90  Fed.  666. 

Even  if  the  inventive  faculty,  as  distinguished  from  ordinary  mechanical 
skill,  was  exercised,  yet,  as  the  invention  is  not  primary,  and  the  patent  of 
doubtful  validity,  the  patentee  should  be  limited  to  the  specific  form  of 
machine  which  he  produced,  and  describes  in  his  specification.  —  Wilson  v. 
Townley,  125  Fed.  491 ;  60  C.  C.  A.  327. 

Railway  v.  Sayles,  97  U.  S.  554;  Morley  v.  Lancaster,  129  U.  S.  263;  McCor- 
mick v.  Talcott,  20  How.  402;  Stirrat  v.  Excelsior,  61  Fed.  980. 

To  the  extent  of  the  specific  claim,  we  are  not  inclined  to  defeat  the  patent 
merely  because  the  change  from  earlier  devices  is  slight  and  apparently 
simple,  when  it  is,  as  this  appears  to  be,  novel,  efficient,  and  popular.  — 
Bradley  v.  Eccles,  126  Fed.  945;  61  C.  C.  A.  669. 

Taking  into  consideration  then  just  what  Motsinger  has  done  —  the  con- 
structive idea  being  old,  the  mechanism  being  old,  except  his  substitution 
of  frictional  peripheral  engagement  (frictional  engagement  being  old) 
for  cog  peripheral  engagement  —  we  are  forced  to  the  conclusion,  that 
though  Motsinger's  patent  may  cover  a  valuable  improvement,  it  is 
not  a  pioneer  patent,  and  must  therefore  be  limited  to  the  substan- 
tial mechanical  means  therein  pointed  out,  or  to  their  mechanical  equiva- 
lents. .  .  . 

Considered  then,  as  a  limited  patent  for  a  specific  form  of  construction, 
we  do  not  think  the  appellee  infringes  appellant's  patent.  Progress  in  nearly 
every  field  of  mechanical  activity  is  like  the  advance  of  the  tide  —  the  last 
high  mark  having  been  attained,  not  by  a  single  thought  thrown  far  in  ad- 
vance of  the  flood,  but  by  the  column  of  thought  that  the  weight  of  the  flood 
projects.  Where  one  inventive  mind  has  run  far  out,  marking  a  distinct 
field  to  be  thereafter  covered,  it  is  not  difficult  for  the  courts  to  set  the  stakes 
that  give  boundary  to  the  advance.  But  when  the  advance  is  an  item  only 
of  a  similar  advance  all  along  the  line  —  is  borrowed  almost  altogether  from 
the  advance  along  the  line  —  care  must  be  taken  that  the  boundaries  given 
do  not  include,  up  and  down  the  line,  every  character  of  mechanism  that 
may  thereafter  bring  about  similar  results.  —  Motsinger  v.  Hendricks,  149 
Fed.  995;   79  C.  C.  A.  505. 


400 


THE    FIXED   LAW   OF   PATENTS 


443-444 


§443.    Utility. 

It  is  quite  true  that  this  was  not  a  very  important  discovery.  The  art 
in  which  it  was  devised  is  not  the  most  useful.  It  could  not  properly  be  de- 
scribed as  either  a  pioneer  or  primary  invention,  but  it  does  indicate  a  dis- 
tinct step  forward  in  the  art.  It  certainly  is  not  in  that  class  of  patented 
devices  which  are  on  the  border  line  of  mechanical  skill  and  invention,  and 
for  which  courts  have  devised  the  strictest  canons  of  construction.  It  shows 
an  ingenuity  which  courts  are  glad  to  reward,  and  which  they  will  not  allow 
technical  rules  of  interpretation  intended  to  narrow  the  scope  of  patents  of 
doubtful  merit,  to  impair  or  destroy.  —  Bonnette  v.  Koehler,  82  Fed.  428; 
27  C.  C.  A.  200. 

Blandy  v.  Griffith,  Fed.  Cas.  1529. 

It  is  not  a  pioneer  or  primary  invention,  but  its  successful  use  proves  it 
to  be  a  step  in  the  art  sufficiently  meritorious  to  warrant  the  monopoly 
of  the  patent.  —  Kisinger-Ison  v.  Bradford,  97  Fed.  502;   38  C.  C.  A.  300. 

In  that  case  (Krementz  v.  Cottle,  148  U.  S.  556)  novelty  was  found  to 
reside  in  making  a  stud  or  collar-button  by  swedging  a  piece  of  sheet  metal 
into  the  desired  form  although  the  form  was  old,  the  process  of  swedging 
metal  into  any  desired  form,  and  the  studs  made  in  the  same  way,  but  more 
solidly,  were  likewise  old.  The  patent  was  sustained  because  of  the  recogni- 
tion by  the  trade  of  the  practical  merits  of  the  stud.  So  in  this  case,  where, 
so  far  as  it  appears,  it  had  never  occurred  to  the  many  persons  who  were 
experimenting  with  asbestos  fabrics,  that  the  sheets  could  be  stitched  to  a 
solid  backing,  and  the  threads  so  embedded  in  the  fibres  as  to  be  impervious 
to  fire,  if  it  should  be  shown  that  the  article  was  practically  valuable  and 
had  created  a  new  industry,  the  question  of  patentable  novelty  might  well 
be  decided  in  favor  of  the  patent.  —  Beer  v.  Walbridge,  100  Fed.  465;  40 
C.  C.  A.  496. 

The  embodiment  of  this  conception  in  mechanical  form,  necessarily  em- 
braced the  disk  conception,  and  to  that  extent  infringed  it;  but,  though  an 
outgrowth,  it  goes  distinctly  beyond  the  disk  apparatus  substantially  im- 
proving it,  as  we  have  already  said,  in  those  features  that  give  to  the  disk 
apparatus  its  chief  merit  and  purpose.  Why  is  not  improvement  patentable? 
Its  patentability  will  exclude  no  one  who  chooses,  from  the  use  of  the  pre- 
vious disk  apparatus.  It  is  a  further  step  in  the  direction  towards  which  the 
disk  conception  was  the  first  long  step ;  it  is  a  decided  and  valuable  addition 
to  the  mechanism  used  in  oil  fields,  and  in  connection  with  the  disk  form,  for 
the  purposes  in  view,  it  has  no  predecessor  in  the  whole  previous  uses  of 
eccentrics.  This  consideration,  in  our  judgment,  raises  it  to  the  merit  of 
invention.  —  Grimes  v.  Allen,  102  Fed.  606;  42  C.  C.  A.  559. 

It  must  be  remembered,  however,  that  an  improvement  of  an  old  device 
or  a  new  combination  of  old  elements  not  infrequently  marks  a  greater  ad- 
vance in  the  art  and  discloses  a  more  useful  invention  than  the  conception 
of  the  original  machine  or  a  knowledge  of  the  old  elements  of  the  combination, 
and  that  such  an  improvement  is  equally  entitled  with  the  conception  of  the 
original  device  to  the  protection  of  a  patent.  —  National  v.  Interchangeable, 
106  Fed.  693;  45  C.  C.  A.  544. 


§  444.     Miscellaneous. 

The  right  to  improve  on  prior  devices  by  making  solid  castings  in  lieu  of  con- 
structions of  attached  parts  is  so  universal  in  the  arts  as  to  have  become  a 
common  one,  so  that  the  burden  rests  on  any  one  who  sets  up  this  improve- 


$444 


INFRINGEMENT 


401 


ment,  in  any  particular  instance  as  patentable  to  show  special  reasons  to 
support  his  claims.  —  Consolidated  v.  Holzer,  67  Fed.  907 ;   15  C.  C.  A.  63. 

Where  a  claim  is  predicated  upon  an  improvement,  the  bill  and  the  proof 
must  show  in  what  the  improvement  consists.  —  Tiemann  v.  Kraatz,  85  Fed. 
437;  29  C.  C.  A.  257. 

Peterson  v.  Wooden,  Fed.  Cas.  11,038. 

Note:  This  I  think  is  bad  law  and  without  any  sound  foundation.  The 
patent  is  prima  facie  under  the  statute. 

He  was  entirely  familiar  with  the  Painter  inventions.  He  took  his  chances 
in  the  lottery  of  infringement,  and  has  lost,  and  cannot  be  heard  now  to 
complain  that  he  was  misled.  —  Crown  v.  Aluminum,  108  Fed.  845;  48 
C.  C.  A.  72. 


INFRINGEMENT. 

The  Statute  §  445 
General  Statement  §  446 
Additions 

Elements  §  447 

Functions  §  448 
Assignor  and    Assignee 

By  Assignee  §449 

By  Assignor  §  450 

By  Inventor-Assignor  §  451 
Avoidance 

Adding     Elements    or    Functions 

§452 

Concealment  and  Subterfuge  §  453 

Impairing    Efficiency    §  454    (see 

§  470) 

Improving  Efficiency  §  455 

Omitting  Element  §  456 

Transposition  of  Parts  §  457 

Miscellaneous  Conditions  §  458 
Change  of  Form 

Colorable  §  459 

Location  §  460 

Modification  §  461 

Number  of  Parts  §  462 
Change  of  Material  §  463 
Combinations  (see  §  249) 

Adding  Elements  §  464 

Concealment  and  Subterfuge  §  465 

Construction  of  §  466 

Different  Combination,  Same  Re- 
sult §  467 

Equivalents  §  468  (see  §  373) 

Identity  §  469 

Impairing    Efficiency    §  470    (see 

§  454) 

Improvements  §  471  (see  §  430) 

Old  Elements,  New  Function  §  472 

Omitting  Element  §  473 
Contributory 

Furnishing   Material    §    474 

Intent  §  475 

Making  Elements  §  476 

Rules  §  477 

Miscellaneous  Rules  §  478 


Corporations  (see  §  271) 

Common  Carriers  §  479 

Joint  Stock  §  480 

Officers  of  §  481 

Miscellaneous  Holdings  §  482 
Defenses  (see  §  306) 

Anticipation  §  483  (see  §  58) 

Miscellaneous  §  484 
Division  or  Union  of  Parts  or  Ele- 
ments §  485 
Duplication  §  486 
Evidence  of  (see  §  388) 

Acts  of  Defendant  §  487 

Burden  §  488 

Expert  §  489 

Function  §  490  (see  §  426) 

Identity  §  491 

Law  Actions  §  492  (see  §  733) 

Parol  §  493 

Sufficiency  §  494 

Utility  —  Use  by  Defendant  §  495 

Miscellaneous  Holdings  §  496 
Generic  Patent  §  497 
Government  §  498  (see  §  428) 
Identity 

Equivalents  §  499  (see  §  373) 

Means  Employed  §  500 

Non-Essentials  §  501 

Result  or  Function  §  502 

Tests  of  §  503 

Miscellaneous  Rules  §  504 
Importation  and  Exportation  §  505 
Improvement  (see  §  430) 

By  an  Improvement  §  506 

Of  an  Improvement  §  507 
Intent  §  508 
License  (see  §  749) 

Implied  §  509 

By  Licensee  §  510 

Patentee  §  511 

Territorial  §  512 

Miscellaneous  §  513 
Machine  §  514  (see  §  768) 
Machine  and  Manufacture  §  515 


402 


THE    FIXED   LAW   OF    PATENTS 


§§  445-447 


Notice  §  516  (see  §  776) 
Prior  Patent  §  517 
Process  (see  §  813) 

Additions  §  518 

Tests  §  519 

Miscellaneous  §  520 
Product  §  521  (see  §  823) 
Reissue  §  522  (see  §  869) 
Repairs 

Rebuilding  §  523 

What  Constitute  §  524 
Tests 

Anticipation  Test  §  525  (see  §  58) 

Device  and  Claims  §  526 


Function  §  527  (see  §  426) 

Interchangeability  §  528 

Means  and  Result  §  529 

Utility  and  Use  §  530 

Miscellaneous  §  531 
Miscellaneous    Infringement     Rules 
§532 

See  —  Abandonment  §  16;  Anticipa- 
tion §  58;  Damages  §  278;  Defenses 
§  312;  Designs  §  331;  Evidence 
§  399;  Government  §  428;  Improvement 
§  436;  Jurisdiction  §  721;  License 
§  749;  Pleading  and  Practice  §  792; 
Unfair  Trade  §  929 


§  445.     The  Statute. 

The  circuit  court  shall  have  original  jurisdiction  as  follows: 


Ninth.  Of  all  suits  at  law  or  in  equity  arising  under  the  patent  or  copy- 
right laws  of  the  United  States.  —  R.  S.  629. 

Damages  for  the  infringement  of  any  patent  may  be  recovered  by  action 
on  the  case,  in  the  name  of  the  party  interested  either  as  patentee,  assignee, 
or  grantee.  *  *  *  —  R.  S.  4919. 

The  several  courts  vested  with  jurisdiction  of  cases  arising  under  the 
patent  laws  shall  have  power  to  grant  injunctions  according  to  the 
course  and  principles  of  courts  of  equity,  to  prevent  the  violation  of  any 
right  secured  by  patent  *  *  *  —  R.  S.  4921. 

Special  provisions  relating  to  actions  for  infringement  will  be  found  in 
sections  973,  4897,  4899,  4917,  4920,  4922  and  4923,  R.  S. 

§  446.     General  Statement. 

The  subject  of  infringement  is  so  interrelated  with  almost  every  other 
subject  in  the  law  of  patents  that  any  division  must  necessarily  be  arbitrary. 
Especially  is  this  true  with  reference  to  such  subjects  as  Claims,  Combina- 
tions, and  Invention,  and  to  a  certain  extent  with  such  subjects  as  Abandon- 
ment, Anticipation,  Defenses,  Equivalents,  Machine,  Process,  Product,  and 
Specifications. 

There  is  no  definition  of  the  term  infringement.  The  term  relates  to  a 
condition  which  arises  out  of  the  combination  of  events,  the  creation  of  the 
monopoly  by  the  Government  and  the  invasion  of  that  monopoly  by  a 
natural  or  artificial  person.  Notwithstanding  a  few  stray  expressions  (see 
§§  403,  406)  the  question  of  infringement,  per  se,  is  a  question  of  fact;  but 
since  the  marshalling  of  facts  upon  which  the  act  of  infringement  may  or 
may  not  be  predicated  is  a  matter  of  law  in  construing  the  specification 
and  claims  of  the  patent,  and  a  matter  of  law  in  segregating  the  acts  of  the 
alleged  infringer  which  may  constitute  infringement  from  those  which  may 
not,  the  actual  problem,  the  difficult  problem,  is  always  one  of  law,  or, 
at  the  least,  one  of  mixed  law  and  fact. 


§  447.     Additions.  —  Elements. 

The  defendant's  device,  therefore,  though  it  involves  additional  elements, 
involves  every  element  present  in  the  Morrison  coupling.  —  Kisinger-Ison 
v.  Bradford,  97  Fed.  502;  38  C.  C.  A.  300. 


§§  448-450  INFRINGEMENT  403 

The  whole  testimony  impresses  us  with  the  belief  that  the  introduction  of 
the  soda  ash  was  intended,  not  to  bring  about  a  product  essentially  different 
from  the  patented  product,  but  to  interpose  a  process  so  colorably  different 
that  it  might  be  used  as  a  shelter  against  the  charge  of  infringement;  and 
in  this  respect  we  are  constrained  to  look  upon  the  defense  of  infringement 
differently  from  the  view  taken  by  the  Circuit  Court.  —  National  v.  Elkhart, 
123  Fed.  431;  59  C.  C.  A.  471. 

If  it  be  conceded  that  improvements  are  added,  it  is  nevertheless  an 
infringement.  —  American  v.  American,  128  Fed.  709;  63  C.  C.  A.  307. 

Cantrell  v.  Wallick,  117  U.  S.  689;  Simmons  v.  Standard,  62  Fed.  928;  Rohbins 
v.  Dueber,  71  Fed.  186;   Pennington  v.  King,  7  Fed.  462. 

The  defendant  certainly  has  the  patented  lining;  what  else  he  has  is  not 
important.  Of  course,  the  addition  of  the  inner  brick  wall  does  not  avoid 
infringement.  —  American  v.  DeGrasse,  157  Fed.  660;  87  C.  C.  A.  260. 

§  448.     Additions  —  Functions. 

Infringement  is  not  avoided  by  the  fact  that  at  the  same  time  a  revolu- 
tionary movement  is  imparted  to  the  mechanism,  which  carries  both  the  cap 
and  the  can  during  the  operation.  —  Litson  v.  Alaska,  130  Fed.  129;  64 
C.  C.  A.  463. 

Ives  v.  Hamilton.  92  U.  S.  426;  Machine  Co.  v.  Murphy,  97  U  S.  120;  Brush  v. 
Condit,  132  U.  S.  39;  Hoyt  v.  Home,  145  U.  S.  302. 

If  the  infringing  device  performs  the  same  function  as  the  patented 
device,  it  is  immaterial  that  it  also  performs  some  other  function.  It  is  still 
none  the  less  an  equivalent  of  the  patented  device,  and  an  appropriation  of 
the  patented  invention.  —  Comptograph  v.  Mechanical,  145  Fed.  331;  76 
C.  C.  A.  205. 

Walker  on  Pat.  (4th  Ed.)  308,  309;  Norton  v.  Jensen,  49  Fed.  859;  Norton  v. 
California,  45  Fed.  637;  Sarven  v.  Hall,  21  Fed.  Cas.  512;  Masseth  v.  Palm,  51 
Fed.  824;  Wheeler  v.  Clipper,  29  Fed.  Cas.  881;  Kendrick  v.  Emmons,  14  Fed. 
Cas.  305. 

§  449.     Assignor  and  Assignee  —  By  Assignee. 

The  title  to  a  patent  conveyed  by  a  written  assignment  cannot  be  revested 
in  the  assignor  by  a  breach  of  contract  on  the  part  of  the  assignee,  so  as  to 
enable  the  former  to  maintain  a  suit  upon  the  patent.  —  Atkins  v.  Parke, 
61  Fed.  953;   IOC.  C.  A.  189. 

Hartell  v.  Tilghman,  99  U.  S.  547. 

§  450.     Assignor  and  Assignee  —  By  Assignor. 

An  assignor  of  a  territorial  right  to  make  and  sell,  may  make  and  sell 
articles  to  be  sold  out  of  his  territory,  and  a  purchaser  may  buy  with  the 
understanding  and  purpose  of  selling  the  same  out  of  the  territory.  —  Keeler 
v.  Standard,  157  U.  S.  659;  39  L.  Ed.  848;   15  S.  Ct.  738. 

Dissented  to  by  Brown,  Fuller  and  Field. 

Goodyear  v.  Beverly,  1  Cliff.  348;  Wilson  v.  Rousseau,  45  U.  S.  688;  Bloomer 
v.  McQueewan,  55  U.  S.  539;  Mitchell  v.  Hawley,  83  U.  S.  547;  Adams  v.  Burks, 
84  U.  S.  453;   Boesch  v.  Graff,  133  U.  S.  698;   Hobbie  v.  Jennison,  149  U.  S.  355. 

The  grantor  conveyed  to  the  grantee  rights  held  to  be  an  assignment  under 
the  patent.  Upon  alleged  failure  of  assignee  to  comply  with  the  terms  of 
the  agreement  the  assignor  began  manufacturing  under  alleged  right  under 
the  patent.    Assignee  brought  suit  for  infringement,  and  on  leave,  assignor 


404  THE   FIXED   LAW   OF   PATENTS  §  451 

filed  a  cross  bill.  The  proofs  showed  that  there  was  no  default  in  the  payment 
of  royalty  at  the  time  the  assignor  attempted  to  cancel  the  contract.  Held: 
that  the  cross  bill  cannot  be  maintained.  —  Atkins  v.  Parke,  61  Fed.  953; 
10  C.  C.  A.  189. 

§451.     Assignor  and  Assignee  —  By  Inventor- Assignor. 

The  defendant  is  not  at  liberty  to  urge  the  defense  of  invalidity  in  a  suit 
upon  his  own  patent  against  a  party  who  derives  title  to  that  patent  through 
him.  It  is  clearly  inequitable  for  a  patentee  to  sell  or  assign  his  patent,  and 
then,  in  a  suit  against  him  for  infringement  by  his  assignee,  to  set  up  that 
the  patent  is  void  for  want  of  invention.  The  assignor  of  a  patentable  inven- 
tion is  estopped  from  denying  the  validity  of  the  patent  or  his  own  title  to 
the  interest  transferred.  He  cannot  practise  the  invention  contrary  to  the 
provisions  of  his  assignment;  and,  when  sued  for  infringement,  he  is  not  per- 
mitted to  set  up  in  his  defense  the  invalidity  of  the  patent  or  his  own  inability 
to  convey  it.  —  Woodward  v.  Boston,  60  Fed.  283;  8  C.  C.  A.  622. 

2  Rob.  Pat.  555;  Walk.  Pat.  469;  Underwood  v.  Warren,  21  Fed.  573; 
Telegraph  v.  Carey,  22  Blatchf.  34,  19  Fed.  322;  Parker  v.  McKee,  24  Fed.  808; 
Morey  v.  Jagger,  1  Blatchf.  372;  Curran  v.  Burdsall,  20  Fed.  835;  Burdsall  v. 
Curran,  31  Fed.  918;    Rumsey  v.  Buck,  20  Fed.  697. 

The  fact  that  the  infringing  machines  were  designed  by  the  inventor  of  the 
patent  in  suit,  and  constructed  according  to  his  designs,  and  that  they  were 
made,  used  experimentally,  and  offered  for  sale  by  a  co-defendant,  in  the 
absence  of  any  further  evidence  creates  such  a  presumption  of  privity 
between  the  parties  that  all  are  estopped  from  disputing  the  validity  of  the 
patent.  —  Woodward  v.  Boston,  60  Fed.  283;  8  C.  C.  A.  622. 

Telegraph  Co.  v.  Carey,  19  Fed.  322. 

We  find,  therefore,  that  during  the  existence  of  the  contract  of  1889, 
Headley  made  banks  precisely  like  those  now  complained  of,  marked  them 
"  Patented  March  13th,  1888,"  and  sold  them  to  complainant's  predecessor 
at  a  price  per  bank  which  included,  not  only  the  cost  of  production,  but  also 
a  considerable  royalty;  that,  upon  application  of  this  contract,  he  sold  the 
same  party  a  considerable  number  of  the  same  banks,  stamped  in  the  same 
way,  and  received  a  price ;  that  he  gave  to  the  same  party  a  license  to  go  on 
and  manufacture  the  same  bank  which  had  been  theretofore  made  by  his 
firm,  and  received  royalty  on  banks  manufactured  under  that  license.  We 
are  satisfied  that  now,  when  complainant  has  obtained  title  to  this  patent 
of  March  13th,  1888,  it  does  not  lie  in  the  mouth  of  Headley  to  assert,  as 
against  complainant,  that  the  banks  he  used  to  stamp  and  sell  as  being 
within  said  patent  are  not  infringement.  —  Piaget  v.  Headley,  108  Fed. 
870;  48  C.  C.  A.  116. 

Granting,  they  say,  that  Duncan  is  estopped  from  asserting  that  the 
claims  are  void  for  lack  of  invention  or  lack  of  novelty,  he  may  nevertheless 
bring  in  the  prior  art  to  limit  the  claims  and  thus  defeat  the  suit.  Why  one 
defense  and  not  the  other?  They  are  of  as  like  blood  as  brothers.  One  is 
somewhat  larger  than  the  other,  is  all.  Lack  of  novelty  defeats  the  com- 
plainant's title  to  the  whole  of  the  property  within  the  metes  and  bounds  of 
the  claims.  Limitation  destroys  his  title,  in  part.  If  a  stranger  were  occupy- 
ing part,  but  not  all,  of  the  property  described  in  the  deed,  he  could  answer, 
"  I  am  not  concerned  with  your  title  to  the  residue,  but  what  I  am  occupying 
is  not  yours."  The  contention  that  Duncan  can  do  likewise  brings  the 
estoppel  to  nothingness.  Duncan's  assignment,  in  fact  and  likewise  by  its 
very  terms,  was  a  conveyance  not  only  of  the  franchise  to  exclude  strangers, 


§§  452-453  INFRINGEMENT  405 

but  was  also  a  conveyance  of  the  inventions  described  in  the  claims.  — 
Siemens-Halske  v.  Duncan,  142  Fed.  157;  73  C.  C.  A.  375. 

§  452.     Avoidance  —  Adding  Elements  or  Functions. 

If  appellees  are  using  Fisk's  invention  as  it  is  defined  in  the  patent,  it 
is  immaterial  how  much  of  the  prior  art  they  also  employ.  —  Western  v. 
American,  131  Fed.  75;  65  C.  C.  A.  313. 

That  the  fact  that  a  device  performs  another  function  in  addition  to  the 
function  of  the  patent  infringed  does  not  avoid  infringement,  see  American 
v.  Wyeth,  139  Fed.  389;  71  C.  C.  A.  485. 

It  is,  of  course,  immaterial  that  the  defendant's  device  is  operated  through 
intermediate  mechanism.  Under  these  circumstances,  to  hold  that  the 
defendant's  device  does  not  infringe,  we  must  limit  the  Felt  device  to  mere 
details  of  construction.  If  the  Felt  invention  were  for  a  mere  improvement, 
such  a  narrow  construction  might  be  warranted.  —  Comptograph  v.  Me- 
chanical, 145  Fed.  331 ;  76  C.  C.  A.  205. 

§  453.     Avoidance  —  Concealment  and  Subterfuge. 

Ingenuity  displayed  in  evading  the  salient  feature  of  a  patent  and  ingenuity 
displayed  in  covering  up  such  salient  point  in  an  alleged  improvement  will 
be  considered  favorably  in  determining  novelty.  —  Hoyt  v.  Home,  145 
U.  S.  302;  36  L.  Ed.  713;  12  S.  Ct.  922. 

Winans  v.  Denmead,  56  U.  S.  330. 

Infringement  is  not  averted  merely  because  the  machine  alleged  to  infringe 
may  be  differentiated  from  the  patented  machine,  even  though  the  invention 
embodied  in  the  latter  be  not  primary.  —  Continental  v.  Eastern,  210  U. 
S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748. 

The  fact  that  a  defendant  uses  a  particular  device  to  avoid  infringement 
does  not  of  itself  constitute  grounds  of  complaint.  —  Rose  v.  Hirsh,  77  Fed. 
469;  23  C.  C.  A.  246. 

A  mere  subterfuge  resorted  to  to  avoid  infringement  does  not  avail  as  a 
defense.  —  Rose  v.  Hirsh,  77  Fed.  469;  23  C.  C.  A.  246. 

The  court  will  look  through  the  disguises,  however  ingenious,  to  see 
whether  the  inventive  idea  of  the  original  patentee  has  been  appropriated, 
and  whether  the  defendant's  device  contains  the  material  features  of  the 
patent  in  suit,  and  will  declare  infringement  even  when  those  features  have 
been  supplemented  and  modified  to  such  an  extent  that  the  defendant  may 
be  entitled  to  a  patent  for  the  improvement.  —  Crown  v.  Aluminum,  108 
Fed.  845;  48  CCA.  72. 

Clough  v.  Mfg.  Co.  106  U.  S.  166:  and  106  U.  S.  178;  Consolidated  v.  Crosby, 
113  U.  S.  157. 

When  the  court  is  convinced  that  a  meritorious  invention  has  been  made, 
it  should  not  permit  infringers  to  evade  the  patent  on  narrow  and  technical 
grounds.  —  Cmiotti  v.  American,  115  Fed.  498;  53  C  C  A.  230. 

Proctor  v.  Bennis,  36  Ch.  Div.  740;  Machine  Co.  v.  Murphv,  97  U.  S.  120; 
Cantrellv.  Wallick,  117  U.  S.  689;  Reece  v.  Globe,  61  Fed.  959;  Blanchard  v. 
Reeves,  Fed.  Cas.  1,515. 

One  may  not  escape  infringement  by  adding  to  or  subtracting  from  a 
patented  device,  by  changing  its  form,  or  making  it  more  or  less  efficient, 


406  THE   FIXED   LAW   OF   PATENTS  §  454 

while  he  retains  its  principle  and  mode  of  operation,  and  attains  its  result 
by  the  use  of  the  same  or  equivalent  mechanical  means.  —  Lourie  v.  Len- 
hart,  130  Fed.  122;  64  C.  C.  A.  456. 

Sewall  v.  Jones,  91  U.  S.  171;  Coupe  v.  Weatherhead,  16  Fed.  673. 

All  the  elements  of  the  patent  combination  are  employed  with  substantial 
identity  in  their  use,  and  departure  appears  from  the  letter  <of  the  claims 
only,  in  the  arrangement  of  these  elements,  without  substantial  difference 
in  the  principle  of  operation.  The  policy  and  rules  of  the  patent  law  require 
that  the  patentee  be  protected  against  such  evasions  of  the  wording  of  a 
claim  in  form  of  nonessential  details,  when  the  substance  of  the  invention 
is  thus  used  and  is  unmistakably  shown  in  the  specification  and  claims.  — 
Columbia  v.  Kokomo,  143  Fed.  116;   74  C.  C.  A.  310. 

Winans  v.  Denmead,  15  How.  330;  Ives  v.  Hamilton,  92  U.  S.  426;  Machine  v. 
Murphy,  97  U.  S.  120;  Elizabeth  v.  Paving,  97  U.  S.  126;  Hoyt  v.  Home,  145 
U.  S.  302;  Westinghouse  v.  Boyden,  170  U.  S.  537;  International  v.  Brammer,  138 
Fed.  396. 

There  is  a  constant  tendency  by  those  who  seek  to  evade  the  claims  of  a 
patent  to  dwell  too  much  on  verbal  refinements,  and  not  enough  on  the  reality 
and  substance  of  the  things  to  which  the  language  of  the  claim  refers.  This 
tendency  must  be  avoided  in  order  to  do  justice  to  inventors,  and  it  sometimes 
must  be  avoided  in  order  to  protect  the  public  from  too  great  scope  of  the 
monopoly  claimed  by  the  patentee.  It  is  true  that  the  law  requires  that 
precise  invention  of  the  patent  should  be  described  adequately  in  the  claims, 
and,  if  the  patentee  has  claimed  less  than  he  is  obviously  entitled  to,  as 
manifested  in  the  specifications  and  drawings,  he  must  suffer  the  conse- 
quences. But  this  requirement  of  the  law  only  makes  the  caution  above 
expressed  the  more  necessary,  and  mere  verbal  refinement  must  not  be 
allowed  to  obscure  the  real  nature  of  the  patented  invention,  if  it  can  be 
fairly  gathered  from  the  language  of  the  claims.  —  Robins  v.  American, 
145  Fed.  923;  76  C.  C.  A.  461. 

§  454.     Avoidance  —  Impairing  Efficiency. 

While  the  appellant  has  avoided  a  mere  servile  copy  of  form,  he  has  appro- 
priated the  substance  of  the  Dodge  invention.  That  in  doing  so  he  has 
rendered  inoperative  the  function  of  one  groove  will  not  suffice  to  relieve  him 
from  the  charge  of  infringement.  —  Mitchell  v.  Ewart,  81  Fed.  390;  26 
C.  C.  A.  443. 

The  fact  that  the  set  of  several  pulleys  differs,  in  that  it  is  more  cumber- 
some, and  involves  delays,  is  only  an  ordinary  feature  of  colorable  infringe- 
ments, which  are  characterized  by  a  mere  imitative  capacity  without  the 
spirit  of  invention.  —  Heap  v.  Tremont,  82  Fed.  449;   27  C.  C.  A.  316. 

An  infringer  cannot  evade  liability  for  his  invention  by  deliberately 
diminishing  its  utility  without  changing  materially  its  form,  its  chief  function, 
or  its  manner  of  operation.  —  Penfield  v.  Chambers,  92  Fed.  630;  34  C.  C. 
A.  579. 

Sewing  Machine  v.  Frame,  24  Fed.  596. 

This  is  an  instance,  not  infrequent  in  patent  litigation,  where  the  infringer 
has  sought  to  evade  the  claims  of  a  patent,  the  substance  of  which  he  is 
appropriating,  by  deliberately  impairing  the  function  of  one  element,  without 
destroying  the  substantial  identity  of  structure,  operation  and  result.  — 
King  v.  Hubbard,  97  Fed.  795;  38  C.  C.  A.  423. 


§§  455-456  INFRINGEMENT  407 

Sewall  v.  Jones,  91  U.  S.  171;  Coupe  v.  Weatherhead,  16  Fed.  673;  Machine  Co. 
v.  Binney,  24  Fed.  Cas.  653. 

§  455.     Avoidance  —  Improving  Efficiency. 

Superiority  of  quality  or  operation  is  not  an  avoidance  of  infringement.  — 
Marsh  v.  Seymour,  97  U.  S.  348;  24  L.  Ed.  963. 

§  456.     Avoidance  —  Omitting  Element. 

The  law  is  well  settled  that  there  is  no  infringement  of  a  patent  which 
claims  mechanical  powers  in  combination,  unless  all  the  parts  have  been 
substantially  used.    The  use  of  a  part  less  than  the  whole  is  no  infringement. 

—  Eames  v.  Godfrey,  68  U.  S.  78;  17  L.  Ed.  547. 
Prouty  v.  Ruggles,  16  Pet.  341. 

Where  the  patent  in  suit  covered,  and  the  reissue  limited  it  to,  a  specific 
process;  and  the  alleged  infringing  process  omitted  the  essential  feature  and 
element  of  said  process,  there  is  no  infringement.  —  California  v.  Schalicke, 
119  U.  S.  401;  30  L.  Ed.  471;  7  S.  Ct.  391. 

The  fact  that  the  defendant  was  able,  by  a  skilful  contrivance,  to  dispense 
with  one  of  the  elements  of  plaintiff's  claim,  the  plaintiff's  patent  not  being 
generic,  does  not  make  the  device  an  infringement.  —  Derby  v.  Thompson, 
146  U.  S.  476;  36  L.  Ed.  1051;   13  S.  Ct.  181. 

The  stationary  card  shown  at  "  E  "  in  the  drawing,  is  made  in  the  eighth 
claim  an  essential  part  of  the  mechanism  described.  It  may  be  that  this  card 
is  unnecessary,  but  as  Judge  Wallace  in  his  dissenting  opinion  in  Cimiotti 
v.  Nearseal,  115  Fed.  507  said:  "  the  patent  industriously  makes  the  station- 
ary cards,  substantially  as  described,  an  element  of  the  claim."  —  Cimiotti 
v.  American,  198  U.  S.  399;  49  L.  Ed.  1100;   25  S.  Ct.  697. 

Unless  the  defendant's  device  contains  the  elements  claimed  or  their 
mechanical  equivalents,  it  is  clear  that  the  charge  of  infringement  is  not 
made  out.  —  Wheaton  v.  Norton,  70  Fed.  833;   17  C.  C.  A.  447. 

Modfg.  Norton  v.  Jensen,  49  Fed.  859. 

McCormick  v.  Talcott,  20  How.  402;  Vance  v.  Campbell,  1  Black,  427;  Schu- 
macher v.  Cornell,  96  U.  S.  554. 

That  omitting  to  use  parts  of  a  structure,  but  using  the  combination,  does 
not  avoid  infringement,  see  Clinton  v.  Hendrick,  86  Fed.  137;  29  C.  C.  A.  612. 

This  principle,  however,  is  qualified  by  another  principle,  which  is  that 
the  absent  element  must  be  an  essential  one,  and  that  the  substitute  for  it 
must  not  be  a  mechanical  equivalent  for  it.  —  Dowagiac  v.  Minnesota,  118 
Fed.  136;  55  C.  C.  A.  86. 

McSherry  v.  Dowagiac,  101  Fed.  716. 

The  defendant  used  the  combination  of  the  patent,  but  claimed  that  one  of 
the  elements  necessary  to  the  combination  of  the  patent  did  not  contribute 
to  the  function  of  the  machine,  and  thus  no  infringement  existed  in  fact. 
Held:  Unnecessary  to  consider  whether  its  idler  wheel  can  be  taken  out  and 
leave  the  machine  operative  minus  the  function  of  the  idler.  If  infringement 
thus  appears,  the  owner  of  the  patent  cannot  be  denied  relief,  though  pro- 
tection may  be  limited  by  the  terms  of  the  claims  to  such  three-wheel  form. 

—  Columbia  v.  Kokomo,  143  Fed.  116;  74  C.  C.  A.  310. 
Du  Bois  v.  Kirk,  158  U.  S.  58. 


408  THE   FIXED   LAW   OF   PATENTS  §  457 

It  was  urged  that,  as  the  infringing  machine  did  not  embody  certain 
functional  advantages  recited  in  the  specifications  and  urged  in  the  Patent 
Office,  infringement  could  not  be  established.  Held:  No  doubt  this  func- 
tional advantage  was  claimed  in  argument  in  the  Patent  Office,  and  not  a 
little  made  of  it  there.  And  it  was  also  put  into  the  specifications,  where  it 
now  appears,  before  the  patent  was  allowed.  But  at  the  most  it  is  merely- 
descriptive  of  the  supposed  action  of  the  machine,  and  not  a  limitation  upon 
it,  to  which  the  inventor  committed  himself;  there  being  no  amendment  or 
restatement  of  the  claims  by  which  the  invention  was  defined.  It  is  the 
mechanical  combination  there  specified  which  is  patented,  and  not  the  par- 
ticular functions  or  advantages  claimed  for  the  different  parts;  and  infringe- 
ment is  not  escaped  where  there  is  a  substantial  appropriation  of  the  mechani- 
cal construction,  even  though,  by  slight  variations,  unimportant  changes  in 
the  mode  of  operation  may  be  made.  —  American  v.  Mills,  149  Fed.  743; 
79  C.  C.  A.  449. 

If  for  any  reason  the  defendants  are  enabled  to  dispense  with  one  of  the 
elements  of  the  claim,  or,  to  speak  more  accurately,  with  one  step  of  the 
process,  they  cannot  be  held  as  infringers.  —  Universal  v.  Sonn,  154  Fed. 
665;  83  C.  C.  A.  422. 

As  we  have  seen,  this  restraining  shoulder  of  the  annular  plate  is  of  the 
very  gist  of  the  device.  Discard  it  or  its  function  in  substantial  form,  and 
we  do  not  obtain  the  result  that  makes  Nolan's  device  useful  and  patentable. 
—  Westinghouse  v.  Prudential,  158  Fed.  987;  86  C.  C.  A.  434. 

But  while  the  requirement  of  an  additional  passage-way  may  have  been 
necessary,  the  patentee  does  not  make  it  an  element  of  his  claims.  The 
defendant's  device  does  not  possess  it,  or  its  equivalent.  Consequently, 
while  the  defendant's  construction  may  accomplish  the  same  purpose  as 
that  of  the  complainant's,  it  does  not  infringe.  —  Consolidated  v.  Landers, 
610  Fed.  79;  87  C.  C.  A.  235. 

Wright  v.  Yuengling,  155  U.  S.  52. 

A  combination  is  not  infringed  unless  all  of  its  elements  as  they  are  claimed 
are  used,  whether  they  are  essential  or  not.  —  Portland  v.  Hermann,  160  Fed. 
91;   87  C.  C.  A.  247. 

Royer  v.  Schultz,  28  Fed.  850;    Snow  v.  Lake  Shore,  18  Fed.  602. 

No  device  can  be  held  to  infringe  a  combination  claim  unless  it  employs 
all  the  elements  of  it.  —  Union  v.  Diamond,  162  Fed.  148;  89  C.  C.  A.  172. 
Cimiotti  v.  American,  198  U.  S.  399;   Brammer  v.  Witte,  159  Fed.  726;   Port- 
land v.  Hermann,  160  Fed.  91. 

§  457.     Avoidance  —  Transposition  of  Parts. 

The  appellants  have  transposed  the  position  of  the  parts.  Do  they  escape 
infringement  thereby?  We  think  not.  The  appellants  have  appropriated 
the  gist  of  the  invention.  The  changes  found  in  their  device  do  not  at  all 
affect  either  the  principle  of  operation  or  the  result.  —  Devlin  v.  Paynter, 
64  Fed.  398;   12  C.  C.  A.  188. 

Winans  v.  Denmead,  15  How.  330;  Machine  v.  Murphy,  97  U.  S.  120;  Hoyt  v. 
Home,  145  U.  S.  302. 

The  transposition  of  resiliency  between  stud  and  socket  would  surely 
suggest  itself  to  a  mind  of  ordinary  intelligence.  Such  a  trivial  alteration,  the 
fundamental    structure  of  the  socket  member  remaining  unchanged,  would 


§§  458-459  INFRINGEMENT  409 

not   avoid    infringement.  —  Consolidated    v.    Hays,    100    Fed.    984;    41 
C.  C.  A.  142. 

A  transposition  of  parts  or  of  motion  will  not  negative  infringement  when 
the  same  result  is  obtained  in  substantially  the  same  way.  —  International 
v.  Bundy,  159  Fed.  464;  86  C.  C.  A.  494. 

Consolidated  v.  Hays,  100  Fed.  984. 


§  458.     Avoidance  —  Miscellaneous  Conditions. 

Therefore  it  follows  that,  while  the  complainant  has  a  title  to  old  elements 
as  combined  in  his  particular  device,  to  accomplish  certain  results,  the 
respondents  have  an  equal  right  to  avail  themselves  of  all  the  same  elements 
in  their  particular  device  to  accomplish  other  special  results,  so  long  as  it  is 
apparent,  as  is  the  fact  in  the  case  at  bar,  that  what  they  did  could  not 
justly  be  held  to  be  an  intended  piracy  under  the  color  of  apparent  differ- 
ences. —  Davey  v.  Prouty  Co.  107  Fed.  505;  46  C.  C.  A.  439. 

That  the  fact  that  an  infringer  uses  an  inferior  form  of  construction,  so 
long  as  the  combination  of  the  patent  is  employed,  does  not  avoid  the  act, 
see  Cazier  v.  Mackie-Lovejoy,  138  Fed.  654;   71  C.  C.  A.  104. 

§  459.     Change  of  Form  —  Colorable. 

It  is  a  well  settled  principle  of  law,  that  the  mere  change  in  the  form 
of  the  machinery  (unless  a  particular  form  is  specified  as  the  means  by  which 
the  effect  described  is  produced)  or  an  alteration  in  some  of  its  essential 
parts,  or  in  the  use  of  known  equivalent  powers,  not  varying  essentially  the 
machine,  or  its  mode  of  operation  or  organization,  will  not  make  the  new 
machine  a  new  invention.  It  may  be  an  improvement  upon  the  former; 
but  that  will  not  justify  its  use  without  the  consent  of  the  first  patentee.  — 
O'Reilly  v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

The  patentee  having  described  his  invention  and  shown  its  principles, 
and  claimed  it  in  that  form  which  most  perfectly  embodies  it,  is  deemed  to 
claim  every  form  in  which  his  invention  may  be  copied.  —  Winans  v.  Den- 
mead,  15  How.  330;  14  L.  Ed.  717. 

The  property  of  inventors  would  be  valueless  if  it  were  enough  for  the 
defendant  to  say,  your  improvement  consisted  in  a  change  of  form ;  I  have 
not  taken  that,  and  so  do  not  infringe.  —  Winans  v.  Denmead,  15  How. 
330;  14  L.  Ed.  717. 

Upon  well  established  principles  of  patent  law,  a  change  of  form  and  not  of 
substance  constitutes  no  defense  to  a  bill  for  an  infringement.  —  Morey  v. 
Lockwood,  75  U.  S.  230;   19  L.  Ed.  339. 

Curt.  Pat.  260,  261,  264. 

If  he  has  taken  the  same  plan  and  applied  it  to  the  same  purpose,  not- 
withstanding he  may  have  varied  the  process  of  application,  his  manufacture 
will  be  substantially  identical  with  that  of  the  patentee.  —  Sewall  v.  Jones, 
91  U.  S.  171;  23  L.  Ed.  275. 

Curtis,  sec.  312  ;  Walton  v.  Potter,  Web.  P.  C.  385,  607. 

It  is  difficult  to  read  the  schedules  of  the  parties  in  the  presence  of  the 
models,  and  resist  the  conviction  that  the  appellant  has  carefully  studied  the 
invention  of  the  appellees  as  described  in  their  reissue,  not  with  any  view 


410  THE   FIXED   LAW   OF   PATENTS  §  459 

to  its  improvement,  but  solely  for  the  purpose  of  evasion.  —  Hyndman  v. 
Roots,  97  U.  S.  224;  24  L.  Ed.  975. 

No  one  can  avoid  infringement  simply  by  means  of  ingenious  diversities 
of  form  and  proportion,  presenting  simply  the  appearance  of  something 
unlike  the  patented  machine.  It  is  well  settled  that  a  copy  of  the  principle 
or  mode  of  operation  described  in  the  prior  patent  is  an  infringement  of  it. 
If  the  patentee's  ideas  are  found  in  the  construction  and  arrangement  of  the 
subsequent  device,  no  matter  what  may  be  its  form,  shape  or  appearance, 
the  parties  making  or  using  it  are  deemed  appropriators  of  the  patented 
invention,  and  are  infringers.  An  infringement  takes  place  whenever  a 
party  avails  himself  of  the  invention  of  the  patentee  without  such  a  variation 
as  constitutes  a  new  discovery.  —  Norton  v.  Jensen,  49  Fed.  859 ;  ICC. 
A.  452. 

Blanchard  v.  Beers,  2  Blatchf.  416;  Tatham  v.  LeRoy,  2  Blatchf.  486;  Winans 
v.  Denmead,  15  How.  343;   Potter  v.  Schenck,  1  Biss.  518. 

Yet,  notwithstanding  these  changes  and  some  others,  the  defendant 
really  has  copied  the  substance  of  the  inventions  in  different  forms.  In  prin- 
ciple the  two  machines  are  alike,  and  they  accomplish  the  same  result.  — 
Rogers  v.  Mergenthaler,  64  Fed.  799;  12  C.  C.  A.  422. 

The  owner  of  a  patent,  though  the  claim  be  limited,  is  to  be  protected 
from  mere  colorable  changes  in  matter  of  pure  form.  —  McDowell  v.  Kurtz, 
77  Fed.  204;  23  C.  C.A.I  19. 

The  substitution  of  one  for  the  other  in  this  combination,  works  no  new 
or  different  result  whatever.  The  first  claim  of  the  patent  does  not  name 
"  fixed  "  switch-tracks.  The  change  in  the  mere  form  of  the  switching 
device  which  the  defendants  have  adopted  is  altogether  immaterial.  The 
changed  form  embodies  the  invention  described  and  claimed.  There  is  sub- 
stantial identity  between  these  two  coasting  structures.  In  this  class  of 
cases,  we  have  repeatedly  held  that  such  mere  formal  changes  are  unavailing 
to  avoid  infringement.  —  Thompson  v.  Second  Avenue,  93  Fed.  824;  35 
C.  C.  A.  620. 

Winans  v.  Denmead,  15  How.  330;  Devlin  v.  Paynter,  64  Fed.  398;  Hillborn  v. 
Mfg.  Co.  69  Fed.  958;  McDowell  v.  Kurtz,  77  Fed.  206. 

Bundy  prints  by  pressing  his  record  strip  against  the  type,  while  defendant 
prints  by  pressing  the  type  down  upon  the  recording  strip.  That  the  printing 
is  done  by  a  blow  delivered  by  Bundy 's  "  hammer,"  and  by  pressure  only  in 
the  device  of  the  defendant,  is  not  material.  Both  methods  of  printing  were 
well  known  and  one  is  the  full  equivalent  of  the  other.  —  Bundy  v.  Detroit, 
94  Fed.  524;  36  C.  C.  A.  375. 

Neither  was  it  invention  to  cause  the  printing  to  be  done  by  pressing  the 
type  down  upon  the  paper  strip  instead  of  pressing  the  paper  strip  against  the 
type.  The  one  was  the  plain  equivalent  of  the  other.  That  defendant's 
impression  mechanism  is  not  in  the  form  or  shape  of  a  hammer,  is  of  no  con- 
sequence unless  the  form  itself  is  of  the  essence  of  the  invention.  —  Bundy 
v.  Detroit,  94  Fed.  524;  36  C.  C.  A.  375. 

Winans  v.  Denmead,  15  How.  330;   Machine  Co.  v.  Murphy,  97  U.  S.  120. 

The  mere  change  of  the  location  of  the  parts  of  a  combination,  if  the  parts 
still  perform  the  same  duty,  and  by  the  same  mode  of  operation,  will  not  take 
the  structure  out  of  the  bounds  of  the  patent.  —  Union  v.  Battle  Creek, 
104  Fed.  337;  43  C.  C.  A.  560. 


§459  INFRINGEMENT  411 

Northwestern  v.  New  Haven,  28  Fed.  234;  Roller  Mill  v.  Coombs,  39  Fed.  25; 
Knox  v.  Mining  Co.  6  Sawy.  430;   Devlin  v.  Paynter,  64  Fed.  398. 

If,  however,  such  change  of  size,  form  or  location  effect  a  change  in  the 
principle  or  mode  of  operation,  such  as  breaks  up  the  relation  and  coopera- 
tion of  the  parts,  this  results  in  certain  change  in  the  means  as  displaces  the 
conception,  and  takes  the  new  structure  outside  of  the  patent.  —  Union  v. 
Battle  Creek,  104  Fed.  337;  43  C.  C.  A.  560. 

Brooks  v.  Fisk,  15  How.  212;  Mfg.  Co.  v.  Brill,  54  Fed.  380;  Gould  v.  Rees, 
15  Wall.  187. 

The  fact  that  the  two  machines  differ  slightly  as  to  the  distance  from  each 
other  of  the  intermeshing  teeth  cannot,  we  think,  be  very  material.  — 
Krajewski  v.  Pharr,  105  Fed.  514;  44  C.  C.  A.  572. 

Potts  v.  Creager,  155  U.  S.  597;  Roller-Mill  Co.  v.  Coombs,  39  Fed.  25;  Schroe- 
der  v.  Brammer,  98  Fed.  880;  Beach  v.  Box-Machine  Co.,  63  Fed.  597;  Mfg.  Co. 
v.  Beach,  18  C.  C.  A.  165;    Westinghouse  v.  Power-brake  Co.,  170  U.  S.  537. 

Mere  changes  of  the  form  of  a  device  or  of  some  of  the  mechanical  elements 
of  a  combination  secured  by  patent  will  not  avoid  infringement,  where  the 
principle  or  mode  of  operation  is  adopted,  unless  the  form  of  the  machine 
or  of  the  elements  changed  is  the  distinguishing  characteristic  of  the  inven- 
tion. —  National  v.  Interchangeable,  106  Fed.  693;  45  C.  C.  A.  544. 

Watch  Co.  v.  Robbins,  64  Fed.  384;   New  v.  Bevin,  64  Fed.  859. 

Mere  changes  in  the  form  of  a  device  or  of  some  of  the  mechanical  elements 
of  a  combination  secured  by  a  patent  will  not  avoid  infringement,  where  the 
principle  or  mode  of  operation  is  adopted,  unless  the  form  of  the  machine  or 
of  the  elements  changed  is  the  distinguishing  characteristic  of  the  invention. 
—  Kinloch  v.  Western,  113  Fed.  652;  51  C.  C.  A.  369. 

National  v.  Interchangeable,  106  Fed.  693;  Watch  Co.  v.  Robbins,  64  Fed. 
384;   New  Departure  v.  Bevin,  64  Fed.  859. 

It  is  a  rule  of  law  that  one  does  not  escape  liability  for  infringement  by 
changing  the  form  or  dimensions  of  the  parts  of  a  patented  combination, 
where  such  change  does  not  break  up  or  essentially  vary  the  principle  or 
mode  of  operation  pervading  the  original  invention.  —  Dowagiac  v.  Superior, 
115  Fed.  886;  53  C.  C.  A.  36. 

Cochrane  v.  Deener,  94  U.  S.  787;  Morev  v.  Lockwood,  8  Wall.  230;  Elizabeth 
v.  Pavement,  97  U.  S.  126;  Loom  Co.  v.  Higgins,  105  U.  S.  585;  Penfield  v.  Cham- 
bers, 92  Fed.  630;  Bundy  v.  Detroit,  94  Fed.  524;  King  v.  Hubbard,  97  Fed.  795; 
McSherry  v.  Dowagiac,  101  Fed.  716;  Taylor  v.  Spindle  Co.  75  Fed.  301;  Na- 
tional v.  Interchangeable,  106  Fed.  693. 

Mere  change  in  the  form  of  a  device,  or  of  some  of  the  mechanical  elements 
of  a  combination,  will  not  avoid  infringement,  where  the  principle  or  mode  of 
operation  is  adopted,  except  in  those  rare  cases  where  the  form  of  the  im- 
provement or  of  the  element  changed  is  the  distinguishing  characteristic  of 
the  invention.  —  Ide  v.  Trorlicht,  115  Fed.  137;  53  C.  C.  A.  341. 

National  v.  Interchangeable,  106  Fed.  693;  Watch  Co.  v.  Robbins,  64  Fed. 
384;   New  Departure  v.  Bevin,  64  Fed.  859. 

Note:  This  is  a  loose  statement.  If  the  changed  element  were  a  non- 
equivalent  the  infringement  would  be  avoided. 

By  changing  the  form  of  the  parts  of  complainant's  combination,  and  not 
essentially  varying  the  principle  or  mode  of  operation  pervading  the  original 
invention,  defendant  cannot  escape  infringement.  —  Dowagiac  v.  Minnesota, 
118  Fed.  136;  55  C.  C.  A.  86. 


412  THE   FIXED   LAW   OF   PATENTS  §  460 

Dowagiac  v.  Superior,  115  Fed.  886;  Cochrane  v.  Deener,  94  U.  S.  787;  Morey 
v.  Lockwood,  8  Wall.  230;  Elizabeth  v.  Pavement,  97  U.  S.  126;  Loom  Co.  v. 
Higgins,  105  U.  S.  585;  Penfield  v.  Chambers,  92  Fed.  630;  Bimdy  v.  Detroit, 
94  Fed.  524;  Ax  v.  Hubbard,  97  Fed.  795;  McSherry  v.  Dowagiac,  101  Fed.  716; 
Taylor  v.  Spindle,  75  Fed.  301;   National  v.  Interchangeable,  106  Fed.  693. 

Form,  location  or  sequence  of  elements  are  all  immaterial,  unless  form 
or  location  or  sequence  is  essential  to  the  result,  or  indispensable,  by  reason 
of  the  state  of  the  art,  to  the  novelty  of  the  claim.  —  Adam  v.  Folger,  120 
Fed.  260;  56  C.  C.  A.  540. 

Winans  v.  Denmead,  15  How.  330;  Reece  v.  Globe,  61  Fed.  958;  Bundy  v. 
Detroit,  94  Fed.  524;  Extraction  Co.  v.  Brown,  104  Fed.  345;  Norton  v.  Jensen, 
49  Fed.  859;  Consolidated  v.  Crosby,  113  U.  S.  157;  Hoyt  v.  Home,  145  U.  S.  302. 

A  valid  patent  monopoly  cannot  be  evaded  by  such  substitution  or  change 
of  form,  except  through  the  terms  of  the  grant,  express  or  implied,  limiting 
the  invention  to  the  special  means  and  form  shown  in  the  patent.  —  Austin 
v.  American,  121  Fed.  76;  57  C.  C.  A.  330. 

Mere  changes  in  the  form  of  a  patented  device,  where  the  principle  or  mode 
of  operation  is  adopted,  will  not  avoid  infringement,  unless  the  form  of  the 
machine  is  the  distinguishing  characteristic  of  the  invention.  —  Lourie  v. 
Lenhart,  130  Fed.  122;  64  C.  C.  A.  456. 

National  v.  Interchangeable,  106  Fed.  693;  Kinloch  v.  Western,  113  Fed.  659. 

The  making  of  the  arm  in  a  more  bulging  shape  and  less  useful  does  not 
avoid  infringement.  —  Milner  v.  Yesbera,  133  Fed.  916;  67  C.  C.  A.  210. 

Penfield  v.  Chambers,  92  Fed.  630;  Chicago  v.  Bush,  2  Biss.  472;  Roberts  v. 
Harnden,  2  Cliff.  506. 

That  a  mere  change  of  form  does  not  avoid  infringement  even  if  the  change 
of  form  is  a  distinct  improvement,  see  American  v.  Sexton,  139  Fed.  564; 
71  C.  C.  A.  548. 

This  shaping  of  the  packing  is  done  deliberately  by  the  seller,  and  by  so 
doing  he  secures  all  the  advantages  of  the  Bradley  packing,  or,  at  least,  all 
the  advantages  which  can  be  secured  by  apparently  inferior  material.  If  the 
same  result  was  produced  by  forming  the  packing  in  a  press  constructed  on 
the  same  lines  as  the  coupling,  removing  the  packing  therefrom  and  riveting 
it  to  the  jaw  of  the  coupling,  it  is  manifest  that  infringement  would  be  estab- 
lished. And  yet,  in  effect,  this  is  precisely  what  is  done;  the  necessity  of  a 
separate  press  being  avoided  by  using  the  coupling  for  that  purpose.  — 
Eccles  v.  Bradley,  158  Fed.  98;  85  C.  C.  A.  566. 

It  matters  not  that  the  devices  may  differ  in  form,  in  appearance  and  in  the 
manner  of  operation;  if  they  combine  to  do  the  same  work  in  substantially 
the  same  way  it  is  enough.  —  Hillard  v.  Fisher,  159  Fed.  439;  86  C.  C.  A. 
469. 

This  court  has  repeatedly  held  that  mere  formal  changes  where  there  is 
substantial  identity  are  unavailing  to  escape  infringement.  —  Delaware  v. 
Shelby,  160  Fed.  928;  88  C.  C.  A.  110. 

Mitchell  v.  Ewart,  81  Fed.  390;  Thompson  v.  Second  Ave.,  93  Fed.  824;  Smeeth 
v.  Perkins,  125  Fed.  285;  Ives  v.  Hamilton,  92  U.  S.  431;  Elizabeth  v.  Pavement, 
97  U.  S.  137;  Hoyt  v.  Home,  145  U.  S.  302. 

§  460.     Change  of  Form  —  Location. 

A  segment  has  been  omitted.  That  which  remains  performs  the  function  of 
the  complete  ring,  perhaps  not  so  well  as  if  the  ring  had  been  completed. 


§§461-463  INFRINGEMENT  413 

But  the  impairment  of  the  function  of  this  hollow  ring  by  omitting  a  short 
segment  will  not  escape  infringement.  —  Nathan  v.  Howard,  143  Fed.  889; 
75  C.  C.  A.  97. 

King  v.  Hubbard,  97  Fed.  795;   Winans  v.  Denmead,  15  How.  330.      ^ 

A  person  making,  using,  or  selling  the  patented  device  (a  hose  supporter) 
would  infringe,  and  he  would  not  be  permitted  to  escape  on  the  plea  that  it 
was  intended  for  use  on  an  underwaist  or  a  belt.  It  follows,  as  a  necessary 
corollary,  that  such  a  structure  in  the  prior  art  will  anticipate  irrespective 
of  its  connection,  use  or  lack  of  use.  —  Parramore  v.  Siegel-Cooper,  143  Fed. 
516;  74  C.  C.  A.  386. 

§  461.     Change  of  Form  —  Modification. 

Infringement  cannot  ordinarily  be  escaped  by  merely  cutting  in  two  a 
device  made  in  one  piece,  or  by  making  integral  an  article  formerly  made  in 
two.  —  Standard  v.  Caster,  113  Fed.  162;  51  C.  C.  A.  109. 

Bundy  v.  Detroit,  94  Fed.  524. 

The  Peckham  invention  is  not  obscured  by  the  change,  which  does  not 
affect  its  distinguishing  feature  or  the  leading  purpose  thereof,  —  that  of 
keeping  the  furrow  clear,  —  though  it  modifies  to  some  extent  the  manner  of 
effecting  the  distribution  of  the  seed  in  the  furrow.  —  Dowagiac  v.  Superior, 
115  Fed.  886;  53  C.  C.  A.  36. 

Electric  v.  LaRue,  139  U.  S.  601;  Cochrane  v.  Deener,  94  U.  S.  780. 

§  462.     Change  of  Form  —  Number  of  Parts. 

The  device  goes  further  than  to  make  mere  formal  changes  in  the  com- 
plainants' patent.  Its  deviations  therefrom  do  not  consist  in  the  mere 
transposition  of  parts,  but  it  introduces  such  change  in  the  construction  of 
parts  as  to  avoid  the  elements  of  complainants'  invention,  limited  as  we  have 
found  the  same  to  be  by  the  pre-existing  devices.  These  differences,  slight 
as  they  may  be,  are,  in  our  judgment,  as  great  as  the  changes,  which  the 
complainant  made  in  adopting  the  former  devices,  and  are  sufficient  to  relieve 
the  defendant  of  the  charge  of  infringement.  —  Vulcan  v.  Smith,  62  Fed. 
444;   10  C.  C.  A.  493. 

But  the  rule  that  changes  of  form  do  not  avoid  infringement  has  at  least 
two  exceptions  —  when  the  form  of  the  mechanical  element  is  the  distin- 
guishing characteristic  of  the  invention,  and  when  the  change  in  the  form  of 
the  element  changes  the  principle  or  mode  of  operation  of  the  combination. 
—  Jewell  v.  Jackson,  140  Fed.  340;  72  C.  C.  A.  304. 

§463.     Change  of  Material. 

Where  applicant  claimed  use  of  soft  metal  pin  specifically,  the  use  of  safety 
pins  being  old,  not  infringement  to  employ  a  hard  cast  iron  safety  pin  to 
perform  same  function.  —  Gates  v.  Fraser,  153  U.  S.  332;  38  L.  Ed.  734; 
14  S.  Ct.  883. 

Now,  the  fibrous  asbestos  wool  which  the  defendant  employed  in  making 
his  sealing  compound  may  not  be  produced  by  grinding  mechanism;  but  it  is 
a  finely  divided  fibrous  material,  not  differing  in  appearance  or  otherwise  from 
the  fibrous  material  of  the  Coddington  invention.  To  all  intents  and  pur- 
poses, it  is  the  "  finely-ground  fibrous  material  "  of  the  patent.  —  Propfe  v. 
Coddington,  108  Fed.  86;  47  C.  C.  A.  218. 


414  THE    FIXED    LAW    OF    PATENTS  §§464-466 

§  464.     Combinations  —  Adding  Elements. 

When  several  elements,  no  one  of  which  is  novel,  are  united  in  a  com- 
bination which  is  the  subject  of  a  patent,  and  these  several  elements  are 
thereafter  united  with  another  element  into  a  new  combination,  and  this 
new  combination  performs  a  work  which  the  patented  combination  could  not, 
there  is  no  infringement.  —  U.  S.  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530; 
15  S.  Ct.  420. 

One  who  appropriates  a  new  and  valuable  patented  combination  cannot 
escape  infringement  by  uniting  or  operating  those  elements  by  means  of 
appropriate  mechanical  devices  which  differ  from  those  which  are  pointed  out 
for  that  purpose,  but  which  are  not  claimed  in  the  patent.  —  Brammer  v. 
Schroeder,  106  Fed.  918;  46  C.  C.  A.  41. 

Deering  v.  Harvester  Works,  155  U.  S.  286;  City  of  Boston  v.  Allen,  91  Fed. 
248. 

§  465.     Combinations  —  Concealment  or  Subterfuge. 

The  purpose,  principle  and  operation  of  the  machines  are  the  same,  and  the 
defendant  escapes  exact  similitude  of  construction  to  the  plaintiff's  only  by 
a  few  alterations.  It  is  not  a  case  of  using  the  elements  of  a  combination 
less  than  all.  It  is  a  case  of  using  the  same  number  of  elements,  and  altering 
the  form  of  one  and  not  materially  altering  the  relation  of  any  of  the  others. 
—  Consolidated  v.  Pacific,  53  Fed.  385 ;  3  C.  C.  A.  570. 

§  466.     Combinations  —  Construction  of. 

While  under  sec.  9,  ch.  45,  act  1837  (see  amended  law  sec.  4922  R.  S.  Act 
1870)  excessive  claims  do  not  defeat  a  suit,  this  provision  cannot  be  applied 
to  the  present  case,  for,  unless  the  combination  is  maintained,  the  whole  of 
the  invention  fails.  The  combination  is  an  entirety;  if  one  of  the  elements 
is  given  up,  the  thing  claimed  disappears.  —  Vance  v.  Campbell,  66  U.  S. 
427;   17  L.  Ed.  168. 

A  combination  of  elements,  not  the  equivalents  of  his,  would  be  a  different 
machine,  and  consequently  not  an  infringement.  By  his  patent  he  appro- 
priated to  himself  only  as  much  of  the  field  of  invention  which  his  idea 
embraced,  as  the  machine  he  described  in  his  specification  and  claimed  in  his 
application  covered.  —  Wicke  v.  Ostrum,  103  U.  S.  461;  23  L.  Ed.  409. 

A  claim  must  be  limited  to  the  elements  claimed,  or  their  equivalents.  — 
Gage  v.  Herring,  107  U.  S.  640;  27  L.  Ed.  601;  2  S.  Ct.  819. 

Water  v.  Desper,  101  U.  S.  332;  Eames  v.  Godfrey,  1  Wall.  78;  Murray  v. 
Clayton,  L.  R.  10  Ch.  675;  Clark  v.  Adie,  L.  R.  10  Ch.  667. 

The  claims  of  the  patents  sued  on  in  this  case  are  claims  for  combinations. 
In  such  a  claim  if  the  patentee  specifies  any  element  as  entering  into  the 
combination,  either  directly  by  the  language  of  the  claim  or  by  such  a 
reference  to  the  descriptive  part  of  the  specification  as  carries  such  elements 
into  the  claim,  he  makes  such  element  material  to  the  combination,  and  the 
court  cannot  declare  it  to  be  immaterial.  It  is  his  province  to  make  his  own 
claim  and  his  privilege  to  restrict  it.  If  it  be  a  claim  to  a  combination  and  be 
restricted  to  specified  elements,  all  must  be  regarded  as  material,  leaving 
open  only  the  question,  whether  an  omitted  part  is  supplied  by  an  equivalent 
device  or  instrumentality.  —  Fay  v.  Cordesman,  109  U.  S.  408 ;  27  L.  Ed. 
979 ;  3  S.  Ct.  236. 

Water  v.   Desper,  101  U.  S.  332;  Gage  v.  Herring,  107  U.  S.  640. 


§§  467-468  INFRINGEMENT  415 

§  467.     Combinations  —  Different   Combination,   Same   Result. 

Combinations  effecting  similar  results  by  similar  means,  but  employing 
different  precedent  conditions,  are  not  necessarily  identical  or  equivalent. 
—  National  v.  Wheeler,  79  Fed.  432;  24  C.  C.  A.  663. 

If  the  combination  of  a  defendant  shows  a  mode  of  operation  substantially 
different  from  that  of  the  complainant,  infringement  is  avoided  even  though 
the  result  of  the  operation  of  each  is  the  same.  —  Brammer  v.  Witte,  159 
Fed.  726;  86  C.  C.  A.  207. 

Cimiotti  v.  American,  198  U.  S.  399;  Brooks  v.  Fiske,  15  How.  211;  Union  v. 
Battle  Creek,  104  Fed.  337. 

§  468.     Combinations  —  Equivalents. 

Mere  formal  alterations  of  a  combination  in  letters  patent  do  not  con- 
stitute any  defense  to  the  charge  of  infringement,  as  the  inventor  of  a  com- 
bination is  as  much  entitled  to  suppress  every  other  combination  of  the  same 
ingredients  to  produce  the  same  result,  not  substantially  different  from  what 
he  had  invented  and  caused  to  be  patented,  as  the  inventor  of  any  other 
patented  improvement.  Such  inventors  may  claim  equivalents  as  well  as 
any  other  class  of  inventors.  —  Rees  v.  Gould,  82  U.  S.  187;  21  L.  Ed.  39. 

Seymour  v.  Osborne,  11  Wall.  555. 

Whether  one  device  is  or  is  not  an  equivalent  for  another,  is  usually  a 
question  of  fact,  and  often  becomes  a  difficult  issue  to  decide.  Grave  doubts 
were  at  one  time  entertained  whether  the  patentee  of  an  invention  consisting 
of  a  combination  of  old  ingredients  was  entitled  to  equivalents,  but  it  is  now 
well  settled  that  he  is  just  as  much  as  the  patentee  of  any  other  class  of 
inventions;  but  it  is  very  important  to  understand  what  is  meant  by  an 
equivalent  of  an  ingredient  in  such  a  combination.  Questions  of  this  kind 
usually  arise  in  comparing  the  machine  of  the  defendant,  in  a  suit  for  infringe- 
ment, with  that  of  the  plaintiff,  and  the  rule  is  that  if  the  defendant  omits 
entirely  one  of  the  ingredients  of  the  plaintiff's  combination,  without  sub- 
stituting any  other,  he  does  not  infringe,  and  if  he  substitutes  another  in  the 
place  of  the  one  omitted,  which  is  new  or  which  performs  a  substantially 
different  function,  or  even  if  it  was  old  but  was  not  known  at  the  date  of  the 
plaintiff's  patent  as  a  proper  substitute  for  the  omitted  ingredient,  it  does  not 
infringe.  —  Gill  v.  Wells,  89  U.  S.  1 ;  22  L.  Ed.  699. 

Carver  v.  Hyde,  16  Pet.  514;  Brooks  v.  Fiske,  15  How.  212;  Stimpson,  v.  R.  R. 
10  How.  329;    Prouty  v.  Ruggles,  16  Pet.  341. 

Alterations  in  a  combination  which  are  merely  formal  do  not  constitute  a 
defense  to  the  charge  of  infringement,  as  the  inventor  of  a  new  and  useful 
combination  of  old  ingredients  is  as  much  entitled  to  claim  equivalents  as 
any  other  class  of  inventors,  but  they  cannot  suppress  subsequent  improve- 
ments which  are  substantially  different  from  their  combinations,  whether 
the  new  improvement  consists  in  a  new  combination  of  the  same  ingredients 
or  of  some  newly  discovered  ingredient,  or  even  of  some  old  ingredient  per- 
forming some  new  function  not  known  at  the  date  of  the  letters  patent  as  a 
proper  substitute  for  the  ingredient  withdrawn.  —  Gill  v.  Wells,  89  U.  S. 
1 ;  22  L.  Ed.  699. 

Taken  by  themselves,  as  separate  pieces  of  machinery,  they  are  not  the 
same,  and  the  one  is  not  an  infringement  of  a  patent  for  the  other.  —  Coch- 
rane v.  Deener,  94  U.  S.  780;  24  L.  Ed.  139. 

Curtis,  sec.  332;   Foster  v.  Moore,  1  Curt.  C.  C.  279. 


416  THE    FIXED   LAW   OF   PATENTS  §  468 

Alterations  or  modifications  of  combinations  by  substitution  of  equivalents 
does  not  avoid  infringement.  —  Fuller  v.  Yentzer,  94  U.  S.  299;  24  L.  Ed. 
107. 

A  party  who  merely  substitutes  an  old  ingredient  for  one  of  the  ingredients 
of  the  patent  is  an  infringer  if  the  substitute  performs  the  same  function 
as  the  ingredient  for  which  it  was  substituted,  and  it  appears  that  it  was 
well  known  at  the  date  of  the  patent  that  it  was  applicable  to  that  use.  — 
Imhauser  v.  Buerk,  101  U.  S.  647;  25  L.  Ed.  945. 

Gill  v.  Wells,  22  Wall.  1,  28. 

An  inventor  is  entitled  to  the  benefit  of  all  the  mechanical  equivalents  of 
his  several  elements,  known  at  the  time  of  his  invention,  if  used  in  the  same 
combination.  —  Wicke  v.  Ostrum,  103  U.  S.  461 ;  26  L.  Ed.  409. 

Clough  was  the  first  person  who  applied  a  valve  regulation  of  any  kind  to 
the  combination  to  which  he  applied  it;  and  the  first  person  who  made  such 
combination ;  and  he  is  entitled  under  the  decisions  heretofore  made  by  this 
court  to  hold  as  infringements  all  valve  regulations  applied  to  such  a  com- 
bination, which  performs  the  same  office  in  substantially  the  same  way  as, 
and  were  known  equivalents  for,  his  form  of  valve  regulation.  —  Clough 
v.  Gilbert,  106  U.  S.  166;  27  L.  Ed.  138;  1  S.  Ct.  198. 

A  combination  may  be  infringed  when  some  of  the  elements  are  employed 
and  for  the  others  mechanical  equivalents  are  used  which  were  known  to  be 
such  at  the  time  when  the  patent  was  granted.  —  Rowell  v.  Lindsey,  113 
U.  S.  97;  28  L.  Ed.  906;  5  S.  Ct.  507. 

Seymour  v.  Osborne,  11  Wall.  516;  Gould  v.  Rees,  15  Wall.  187;  Imhauser  v. 
Buerk,  101  U.  S.  647. 

When  complainant's  claim  covers  a  specific  construction  and  claims  as 
an  element  of  a  combination  a  groove,  and  defendant  employs  an  artificial 
ridge  to  perform  the  same  function,  the  narrowness  of  complainant's  invention 
precludes  equivalency.  —  Forncrook  v.  Root,  127  U.  S.  176;  32  L.  Ed.  97; 
8  S.  Ct.  1247. 

Gage  v.  Herring,  107  U.  S.  640. 

The  claim  is  in  terms,  for  mechanism  "  combined  with  "  other  mechanisms. 
It  is  true  that  certain  particular  mechanism  is  mentioned,  but  it  does  not 
necessarily  result  that  the  patentee  intended  to  limit  the  claim  to  any  special 
devices,  or  that  the  law  will  so  restrict  it.  —  National  v.  American,  53  Fed. 
367;  3C.  C.  A.  559. 

It  is  a  combination  of  five  elements.  The  infringing  device  is  also  a  com- 
bination of  five  elements,  and  four  of  them,  it  is  conceded,  resemble  four 
elements  of  the  plaintiff's  combination.  In  the  fifth  element,  the  bell  crank 
lever  acting  as  a  toggle  joint  was  the  equivalent  of  the  friction  rollers.  — 
Consolidated  v.  Pacific,  53  Fed.  385;  3  C.  C.  A.  570. 

It  is  urged  that  a  combination  claim  composed  of  old  elements  is  not  in- 
fringed by  using  one  of  its  elements  less  than  all.  But  the  qualification  must 
be  added  that  no  equivalent  be  substituted  for  the  omitted  element.  — 
Consolidated  v.  Pacific,  53  Fed.  385;  3  C.  C.  A.  570. 

A  charge  of  infringement  cannot  be  overcome  by  the  substitution  of  a 
well-known  equivalent  for  one  element  in  a  patented  combination,  although 
the  result  of  the  working  of  the  combination  as  a  whole  may  be  slightly  dif- 


§468  INFRINGEMENT  417 

ferent,  especially  when  no  new  or  useful  result  is  obtained,  and  the  only  effect 
is  the  production  of  an  inferior  device.  —  Standard  v.  Osgood,  58  Fed.  583 ; 
7  C.  C.  A.  382. 

The  rule,  prima  facie,  is  that,  while  the  use  of  equivalents  for  an  element 
in  a  combination  is  not  lawful,  yet  a  combination  which  does  not  include  all 
the  elements  does  not  infringe.  There  may  be  exceptions  where  the  nature 
of  the  invention  is  of  such  a  primary  or  broad  character  that  it  is  plain  some 
of  the  elements  named  are  unessential;  in  other  words,  where  the  invention 
is  so  broad  that  the  range  of  equivalents  will  be  correspondingly  broad, 
under  the  liberal  construction  which  the  courts  give  to  such  inventions.  — 
DeLoriea  v.  Whitney,  63  Fed.  611 ;  11  C.  C.  A.  355. 

Miller  v.  Mfg.  Co.  151  U.  S.  207;  Meter  Co.  v.  Desper,  101  U.  S.  332;  Fay  v. 
Cordesman,  109  U.  S.  408;  Knapp  v.  Morss,  150  U.  S.  221;  Dunham  v.  Mfg.  Co. 
154  U.  S.  103. 

This  is  not  a  case  of  an  integral  thing  made  in  parts,  and  then  combined  so 
as  to  constitute  but  one  integer,  operating  in  the  same  way  as  if  constructed 
as  a  unit.  In  this  connection  it  is  necessary  to  observe  the  wide  distinction 
which  prevails  between  inventions  of  specific  devices  and  inventions  of  com- 
binations. In  the  former  a  much  wider  range  of  equivalents  is  recognized. 
In  the  latter  the  range  is  limited,  and  an  element  is  not  an  equivalent  unless 
it  is  substantially  the  same  thing  as  the  patentee  has  described,  operating 
in  the  same  way.  We  do  not  say  what  the  result  might  be  if  the  patentee 
makes  his  description  of  the  elements  of  his  combination  broad  enough  to 
include  in  each  or  any  of  them  any  kind  of  mechanism  adapted  to  produce 
the  same  results  as  a  step  in  the  operation.  —  Wells  v.  Curtis,  66  Fed.  318; 
13  C.  C.  A.  494. 

Rob.  Pat.  sec.  254;  Caster  Co.  v.  Spiegel,  133  U.  S.  360. 

In  combinations,  the  doctrine  of  equivalents  is  construed  most  strongly 
against  him  who  alleges  infringement,  and  each  party  is  held  to  his  own  ele- 
ment or  device,  or  a  positive  and  exact  equivalent  which  performs  the  same 
function  in  the  same  manner;  the  burden  being  upon  the  complainant  to 
show  this.  —  Erie  v.  American,  70  Fed.  58;    16  C.  C.  A.  632. 

To  support  the  charge  of  infringement  of  a  combination  it  must  show  use 
substantially  of  the  same  combination,  including  every  one  of  the  elements,  or 
a  mechanical  equivalent  for  every  one  that  is  omitted.  —  Erie  v.  American, 
70  Fed.  58;  16  C.  C.  A.  632. 

One  who  appropriates  a  new  and  valuable  patented  combination  cannot 
escape  infringement  by  uniting  or  operating  its  elements  by  means  of  mere 
mechanical  devices  which  differ  from  those  which  are  pointed  out  for  that 
purpose,  but  which  are  not  claimed  in  the  patent.  —  National  v.  Inter- 
changeable, 106  Fed.  693;  45  C.  C.  A.  544. 

Deering  v.  Harvester  Works.  155  U.  S.  286;  City  of  Boston  v.  Allen,  91  Fed. 
248;   Schroeder  v.  Brammer,  98  Fed.  880. 

One  who  merely  makes  and  secures  a  patent  for  a  slight  improvement  on  an 
old  device  or  combination,  which  performs  the  same  function  before  as  after  the 
improvement,  is  protected  against  those  only  who  use  the  very  device  or 
improvement  he  describes  and  claims  or  mere  colorable  evasions  of  it.  In 
other  words,  the  term  "  mechanical  equivalent  "  when  applied  to  the  inter- 
pretation of  a  pioneer  patent,  has  a  broad  and  generous  signification;  but 
where  it  is  applied  to  a  slight  and  almost  immaterial  improvement,  in  the 


418  THE    FIXED    LAW   OF    PATENTS  §  468 

progress  of  an  art,  it  has  a  very  narrow  and  limited  meaning.  —  Brammerv. 
Schroeder,  106  Fed.  918;  46  C.  C.  A.  41. 

Adams  v.  Lindell,  77  Fed.  432;  Stirrat  v.  Mfg.  Co.,  61  Fed.  980;  McCormick  v. 
Talcott,  20  How.  402;  Railway  Co.  v.  Sayles,  97  U.  S.  554. 

One  who  claims  and  secures  a  patent  for  a  new  machine  or  combination, 
thereby  necessarily  claims  and  secures  a  patent  for  every  mechanical  equiva- 
lent for  that  device  or  combination,  because,  within  the  meaning  of  the  patent 
law,  every  mechanical  equivalent  of  a  device  is  the  same  thing  as  the  device 
itself.  Moreover,  in  determining  what  is  a  mechanical  equivalent  of  a  given 
device,  where,  as  in  the  case  at  bar,  form  is  not  the  essence  of  the  invention, 
forms  and  names  are  of  little  significance.  The  similarities  and  differences  of 
machines  and  combinations  are  to  be  determined  by  the  offices  or  functions 
which  they  perform,  by  the  principles  on  which  they  are  constructed,  and  by 
the  modes  which  are  used  in  their  operation.  A  device  which  is  constructed 
on  the  same  principle,  which  has  the  same  mode  of  operation,  and  which 
accomplishes  the  same  result  as  another  by  the  same  or  by  equivalent  me- 
chanical means,  is  the  same  device,  and  a  claim  in  a  patent  of  one  such  device 
claims  and  secures  the  other.  —  Kinloch  v.  Western,  113  Fed.  652;  51  C. 
C.  A.  362. 

Machine  Co.  v.  Murphy,  97  U.  S.  120. 

The  patents  are  not  for  methods,  but  for  particular  mechanisms.  As  such, 
like  all  machine  patents,  they  are  entitled  to  a  fair  construction,  and  to  one 
that  will  fully  secure  to  the  inventor  the  monopoly  of  his  real  invention, 
any  device  or  combination  which  accomplishes  the  same  result,  by  sub- 
stantially the  same  means,  will  be  held  an  invasion  of  that  monopoly.  Care 
must  be  taken,  however,  in  all  cases,  that  we  do  not  by  an  uncalled  for  appli- 
cation of  the  doctrine  of  equivalents,  practically  give  to  the  patentee  a 
monopoly  of  the  function  of  the  mechanism.  This,  of  course,  we  are  not 
permitted  to  do,  directly  or  indirectly.  —  Bryce  v.  National,  116  Fed.  186; 
53  C.  C.  A.  611. 

The  use  of  a  different,  but  mechanically  equivalent,  method  or  material 
to  construct  some  of  the  elements  of  a  patented  combination  will  not  avoid 
infringement  where  the  principle  or  mode  of  operation  is  adopted,  and  the 
elements,  when  completed,  perform  the  functions  by  the  same  means  as,  or 
by  mechanically  equivalent  means  to,  those  described  in  the  patent.  — 
Anderson  v.  Collins,  122  Fed.  451 ;  58  C.  C.  A.  669. 

Ide  v.  Trorlicht,  115  Fed.  137;  National  v.  Interchangeable,  106  Fed.  693; 
Watch  v.  Robbins,  64  Fed.  384;   New  Departure  v.  Bevin,  64  Fed.  859. 

The  patent  is  granted  for  the  combination,  as  "  the  particular  means  devised 
by  the  inventor  by  which  that  result  is  attained,"  and  the  patentee  is  en- 
titled to  protection  against  any  use  of  the  same  combination  of  elements, 
combined  in  the  same  way,  so  that  each  element  performs  the  same  function, 
or  against  substantially  the  same  use  with  deviations  which  are  merely 
colorable.  But  each  of  these  well-known  elements  remains  open  to  the  use 
of  subsequent  inventors  for  a  different  combination  for  like  results. — 
Milwaukee  v.  Brunswick-Balke,  126  Fed.  171;   61  C.  C.  A.  175. 

Electric  v.  Hall,  114  U.  S.  87. 

He  has  devised  an  organism  by  which  the  desired  result  can  be  attained 
without  the  employment  of  this  essential  constituent  of  the  patented  con- 
struction; and  to  deny  him  the  right  to  make,  use,  or  vend  that  organism 
would  be  to  accord  to  the  appellees  a  monopoly,  not  only  of  the  means  which 
they  described  and  claimed,  but  also  of  the  end  which  they  effected,  even 


§  469  INFRINGEMENT  419 

when  achieved  by  means  materially  different.  Such  a  monopoly,  of  course, 
is  not  obtainable  under  the  patent  laws.  —  Mahoney  v.  Jenkins,  138  Fed. 
404;  70  C.  C.  A.  662. 

If  no  one  can  be  held  to  infringe  a  patent  for  a  combination  unless  he  uses 
all  the  parts  of  the  combination  and  the  same  identical  machinery  as  that  of 
the  patentee,  then  will  no  patent  for  a  combination  ever  be  infringed;  for 
certainly  no  one  capable  of  operating  a  machine  could  be  incapable  of  adopt- 
ing some  formal  alteration  in  the  machine  or  of  substituting  mechanical 
equivalents.  It  is  true  no  one  infringes  a  patent  for  a  combination  who  does 
not  employ  all  the  ingredients  of  the  combination ;  but  if  he  employs  all  the 
ingredients,  or  adopts  mere  formal  alterations,  or  substitutes  for  one  in- 
gredient another  which  performs  substantially  the  same  function  as  the  one 
withdrawn,  he  does  infringe.  —  International  v.  Brammer,  138  Fed.  396; 
71  C.  C.  A.  633. 

We  have  had  frequent  occasion  in  this  court  to  pass  upon  the  equivalency 
of  mechanical  devices,  and  we  have  never  held  that  so  slight  a  change  (a  mere 
change  of  form)  as  that  indicated  above  in  one  of  the  parts  of  the  machine 
would  deprive  the  owner  of  the  benefit  of  his  patent.  —  American  v.  Sexton, 
139  Fed.  564;  71  C.  C.  A.  548. 

Columbus  v.  Robbins,  64  Fed.  384;  McSherry  v.  Dowagiac,  101  Fed.  716; 
McCormick  v.  Aultman,  69  Fed.  371;  Bundv  v.  Detroit,  94  Fed.  524;  Dowagiac  v. 
Superior,  115  Fed.  886;  Eames  v.  Worcester,  123  Fed.  67. 

§  469.     Combinations  —  Identity. 

In  order  to  constitute  an  infringement,  the  whole  combination  must  be 
used,  because  he  claims  not  the  various  parts,  but  the  whole  combination 
together.  —  Case  v.  Brown,  69  U.  S.  320;    17  L.  Ed.  817. 

Where  the  device  of  the  patent  in  suit  showed  a  duplication  of  parts,  viz. 
a  double  time  movement  to  control  the  lever  which  controls  the  dog,  and  the 
infringing  device  uses  the  single  combination,  such  omission  does  not  avoid 
infringement.  —  Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;   10  S.  Ct. 

884. 

Every  element  of  the  combination  must  be  used  as  patented,  or  the  entire 
result  is  changed,  and  the  machine  sought  to  be  held  as  infringing  is  a  different 
one.  —  Jones'  v.  Munger,  49  Fed.  61 ;   1  C.  C.  A.  158. 

Vance  v.  Campbell,  1  Black,  427. 

We  find  the  patent  to  be  for  a  combination  of  well-known  devices,  but 
producing  a  new  and  useful  result,  and  entitled  to  letters  patent.  But  while 
the  law  recognizes  the  patentability  of  such  combination  of  known  devices, 
it  patents  the  entire  combination  of  the  elements  and  not  any  single  element 
of  it,  or  any  combination  containing  any  other  or  different  elements.  The 
patent  must  be  considered  to  be  for  the  entire  apparatus,  and  in  order  to 
claim  damage  for  infringement,  it  is  necessary  to  show  that  each  and  every 
element,  or  its  equivalent,  entered  into  respondents'  machine.  —  Jones  v. 
Munger,  49  Fed.  61 ;  1  C.  C.  A.  158. 

Loom  Co.  v.  Higgins,  105  U.  S.  591;  Gill  v.  Wells,  22  Wall.  1;  Collar  Co.  v. 
Van  Deusen,  23  Wall.  538;  Fuller  v.  Yentzer.  94  U.  S.  297. 

The  appellers'  expert  in  effect  testified,  and  we  think  with  accuracy,  that  there 
had  not  previously  existed  any  combination  including  each  of  the  elements 
of  either  claim,  and,  accepting  this  statement,  it  follows  that,  if  the  con- 
struction of  the  appellees  does  embody  those  elements  in  the  same  com- 


420  THE    FIXED   LAW   OF   PATENTS  §§  470-472 

bination,  it  is  an  infringement.  —  McMichael  v.  Ruth,  128  Fed.  706;    63 
C.  C.  A.  304. 

National  v.  American,  53  Fed.  367. 

Where  it  appears  from  the  proceedings  in  the  Patent  Office  and  a  considera- 
tion of  the  state  of  the  art  that  a  patent  is  not  a  pioneer  patent,  its  claims 
must  be  limited  in  their  scope  to  the  actual  combination  of  essential  parts 
as  shown,  and  cannot  be  construed  to  cover  other  combinations  of  elements, 
of  different  construction  and  arrangements.  In  such  cases  there  should  be 
identity  of  means  and  identity  of  operation  combined  with  identity  of  result, 
in  order  to  constitute  infringement.  —  Greene  v.  Buckley,  135  Fed.  520; 
68  C.  C.  A.  70. 

Kokomo  v.  Kitselman,  189  U.  S.  19. 

Note:  Taken  alone  and  by  itself,  this  statement  is  too  broad.  Between  a 
pioneer  patent  and  mere  servile  improvements  there  is  a  field  of  legitimate 
invention  which  requires  the  highest  inventive  genius  and  which  is  entitled 
to  equivalency  in  proportion  to  the  quality  of  invention  disclosed. 

§  470.    Combinations  —  Impairing  Efficiency. 

The  tubular  coupler  of  the  appellant  is  employed  strictly  as  a  coupler 
and  wholly  fails  to  perform  the  unitary  construction  of  the  appellee,  what- 
ever other  advantage  the  appellant  may  derive  from  its  use.  —  Peerless  v. 
White,  118  Fed.  827;  55  C.  C.  A.  502. 

Sewall  v.  Jones,  91  U.  S.  171. 

Note:  Clearly  this  is  a  dangerous  pronouncement ;  and  it  will  be  noted  that 
Judge  Acheson  vigorously  dissents. 

§  471.     Combinations  —  Improvements. 

The  plaintiff's  patent  being  a  patent  for  a  combination  of  old  devices,  the 
question  of  the  infringement  depended  upon  whether  or  not  the  changes  from 
that  combination  adopted  in  defendant's  device,  were  merely  changes  in 
form,  or  such  as  arose  from  the  substitution  of  equivalents.  The  defendant 
had  the  right  to  make  improvements  upon  the  plaintiff's  combination,  and 
defendant's  patent  cannot  be  held  to  be  an  infringement  if  it  presents  a 
new  combination  of  the  elements  that  are  found  in  plaintiff's  patent,  or 
substitutes  for  one  or  more  of  the  same  a  new  ingredient,  performing  a  new 
function.  —  Singer  Mfg.  Co.  v.  Brill,  54  Fed.  380;  4  C.  C.  A.  374. 

§  472,     Combinations  —  Old  Elements,  New  Functions. 

Actual  inventors  of  a  combination  of  two  or  more  ingredients,  are  entitled 
though  the  ingredients  are  old,  if  they  produce  a  new  and  useful  result,  to 
restrain  others  from  using  the  same.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

Pitts  v.  Whiteman,  2  Story.  619;   Ames  v.  Howard,  1  Sumn.  487. 

Valid  letters  patent  undoubtedly  may  be  granted  for  an  invention  which 
consists  entirely  in  a  new  combination  of  old  elements  or  ingredients,  provided 
it  appears  that  the  new  combination  of  the  ingredients  produces  a  new  and 
useful  result,  but  the  rule  is  equally  well  settled  that  the  invention  in  such  a 
case  consists  merely  in  the  new  combination,  and  that  a  suit  for  infringement 
cannot  be  maintained  against  a  party  who  constructs  or  uses  a  substantially 
different  combination,  even  though  it  includes  the  exact  same  elements  or 
ingredients,  if  the  combination  is,  in  fact,  new  and  useful  and  substantially 


§  473  INFRINGEMENT  421 

different  from  the  one  which  preceded  it.  —  Fuller  v.  Yentzer,  94  U.  S.  288; 
24  L.  Ed.  103. 

Gill  v.  Wells,  22  Wall.  14. 

Dissenting:    Strong,  Waite,  Miller  and  Bradley. 

If,  however,  one  invents  and  secures  a  patent  for  a  new  combination  of  old 
mechanical  elements  which  first  performs  a  useful  function,  he  is  protected 
against  all  machines  and  combinations  which  perform  the  same  function  by 
equivalent  mechanical  devices  to  the  same  extent  and  in  the  same  way  as 
one  who  invents  and  patents  a  machine  or  composition  of  matter  of  like 
primary  character.  —  Brammer  v.  Schroeder,  106  Fed.  918;  46  C.  C.  A.  41. 

§  473.     Combinations  —  Omitting  Element. 

The  patent  is  for  a  combination  and  consists  in  arranging  the  different 
portions  and  combining  them  in  the  manner  stated  in  the  specification  for 
the  purpose  of  producing  a  certain  effect.  None  of  the  parts  referred  to  are 
new,  and  none  are  claimed  as  new,  nor  is  any  portion  of  the  combination 
less  than  the  whole  claimed  as  new,  or  stated  to  produce  any  given  result. 
The  end  in  view  is  proposed  to  be  accomplished  by  the  union  of  all,  arranged 
and  combined  together  in  the  manner  described.  The  use  of  any  two  of 
these  parts  only,  or  of  two  combined  with  a  third,  which  is  substantially 
different,  in  form  or  in  the  manner  of  its  arrangement  or  construction  with 
others,  is  therefore  not  the  thing  patented.  It  is  not  the  same  combination 
if  it  substantially  differs  from  it  in  any  of  its  parts.  —  Prouty  v.  Ruggles, 
16  Pet.  336;   10  L.  Ed.  985. 

The  patent  is  for  a  combination.  None  of  the  parts  are  new  or  claimed  as 
new.  The  use  of  any  two  of  these  parts  only,  or  of  two  combined  with  a 
third,  which  is  substantially  different  in  form  or  in  the  manner  of  its  arrange- 
ment and  connection  with  the  others,  is  therefore  not  the  thing  patented. 
It  is  not  the  same  combination,  if  it  substantially  differs  from  it  in  any  of 
its  parts.  —  Stimpson  v.  Railroad,  10  How.  329;  13  L.  Ed.  441. 

Prouty  v.  Ruggles,  16  Pet.  341;  Carver  v.  Hyde,  16  Pet.  513. 

The  rule  is,  that  if  a  combination  has,  as  here,  three  different  known  parts, 
and  the  result  is  proposed  to  be  accomplished  by  the  union  of  all  three  parts, 
arranged  with  reference  to  each  other,  the  use  of  two  of  these  parts  only, 
combined  with  a  third,  which  is  substantially  different  in  the  manner 
of  its  arrangement  and  connection  with  the  others,  is  not  the  same  com- 
bination, and  not  infringement.  —  Brooks  v.  Fiske,  15  How.  212;  14  L. 
Ed.  665. 

A  claim  for  a  combination  of  mechanical  devices  or  parts,  is  not  infringed 
by  one  who  uses  a  part  of  the  combination.  —  McCormick  v.  Talcott,  61 
U.  S.  402;   15  L.  Ed.  930. 

The  omission  of  a  material  element  of  a  combination  avoids  it.  —  Vance 
v.  Campbell,  66  U.  S.  427 ;  17  L.  Ed.  168. 

The  law  is  well  settled  that  there  is  no  infringement  of  a  patent  which 
claims  mechanical  powers  in  combination,  unless  all  of  the  parts  have  been 
substantially  used.  The  use  of  the  part  less  than  the  whole  is  no  infringement. 
—  Eames  v.  Godfrey,  68  U.  S.  78;   17  L.  Ed.  547. 

Prouty  v.  Ruggles,  16  Pet.  341. 

Where  the  defendant  in  constructing  his  machine  omits  entirely  one  of  the 
ingredients  of  the  plaintiff's  combination  without  substituting  any  other,  he 


422  THE    FIXED   LAW   OF   PATENTS  §  473 

does  not  infringe,  and  if  he  substitutes  another  in  the  place  of  the  one  omitted, 
which  is  new  or  performs  a  substantially  different  function,  or  if  it  is  old, 
but  was  not  known  at  the  date  of  plaintiff's  invention  as  a  proper  substitute 
for  the  omitted  ingredient,  then  he  does  not  infringe.  —  Rees  v.  Gould,  82 
U.S.  187;  21  L.  Ed.  39. 

Carver  v.  Hyde,  16  Pet.  514;  Vance  v.  Campbell,  1  Black,  427;  Roberts  v. 
Herndon,  2  Cliff.  504;  Mabie  v.  Haskell,  2  Cliff.  511;  Brooks  v.  Fiske,  15  How 
219;  Stimpson  v.  R.  R.  10  How.  329;  Prouty  v.  Ruggles,  16  Pet.  341;  Barrett  v. 
Hall,  1  Mas.  477;  Howe  v.  Abbott,  2  Story,  194. 

It  is  undoubtedly  the  law,  that  if  the  subject  of  a  patent  is  a  combination 
of  several  processes,  parts  or  devices,  the  use  of  any  portion  of  the  com- 
bination less  than  the  whole  cannot  be  infringement.  There  may  indeed 
be  a  patent  for  a  combination  of  many  parts,  and  at  the  same  time  for  an 
arrangement  of  some  of  the  parts  constituting  another  combination,  but 
still  a  part  of  the  larger.  Yet  if  there  be  no  patent  for  the  constituents, 
they  are  open  to  the  public  for  use  in  combination,  provided  all  the  elements 
of  the  patented  combination  be  not  employed.  —  Garratt  v.  Siebert,  131 
U.  S.  cxxvi,  app. ;  21  L.  Ed.  956. 

It  is  substantially  for  a  combination  of  the  material  parts  of  the  entire 
machine,  and  no  one  can  be  said  to  infringe  it  who  does  not  use  the  entire 
combination.  —  Brown  v.  Guild,  90  U.  S.  181;  23  L.  Ed.  161. 

The  rights  of  a  patentee  for  a  mere  combination  of  old  ingredients  are  not 
infringed  unless  it  appears  that  the  alleged  infringer  made,  used  or  sold  the 
entire  combination.  —  Fuller  v.  Yentzer,  94  U.  S.  288;  24  L.  Ed.  103. 

Gould  v.  Rees,  15  Wall.  194;  Prouty  v.  Ruggles,  16  Pet.  341;  Vance  v.  Camp- 
bell, 1  Black,  427. 

Dissenting:    Strong,  Waite,  Miller,  Bradley. 

Omission  of  an  essential  element  avoids  infringement.  —  Dunbar  v, 
Meyers,  94  U.  S.  187;  24  L.  Ed.  34. 

Gould  v.  Rees,  15  Wall.  194;  Prouty  v.  Ruggles,  16  Pet.  341;  Vance  v.  Camp- 
bell, 1  Black,  427;  Gill  v.  Wells,  22  Wall.  28. 

If  more  or  less  than  the  whole  of  his  ingredients  are  used  by  another,  such 
party  is  not  liable  as  an  infringer,  because  he  has  not  used  the  invention  or 
discovery  patented.  With  the  change  of  elements  the  identity  of  the  product 
disappears.  —  Schumacher  v.  Cornell,  96  U.  S.  549 ;   24  L.  Ed.  676. 

Vance  v.  Campbell,  1  Black,  427. 

It  is  a  well  known  doctrine  of  patent  law,  that  the  claim  of  a  combination 
is  not  infringed  if  any  of  the  material  parts  of  the  combination  are  omitted. 
It  is  equally  well  known  that  if  any  one  of  the  parts  is  only  formally  omitted, 
and  is  supplied  by  a  mechanical  equivalent,  performing  the  same  office  and 
producing  the  same  result,  the  patent  is  infringed.  —  Union  v.  Desper, 
101  U.  S.  332;   25  L.  Ed.  1024. 

It  is  not  the  same  combination  if  it  differs  from  it  in  any  of  its  parts.  — 
McMurray  v.  Mallory,  111  U.  S.  97;  28  L.  Ed.  365;  4  S.  Ct.  375. 
Prouty  v.  Ruggles,  16  Pet.  336. 

The  omission  of  an  essential  element  in  a  specific  claim,  without  equiva- 
lency avoids  infringement.  —  Blake  v.  San  Francisco,  1 13  U.  S.  679 ;  28 
L.  Ed.  1070;  5  S.  Ct.  692. 


§  473  INFRINGEMENT  423 

It  is  clear  that  if  the  patent  is  to  be  construed  as  a  combination,  the  appel- 
lant does  not  infringe,  because  he  does  not  use  one  of  the  elements  of  the 
combination.  —  Voss  v.  Fisher,  113  U.  S.  213;  28  L.  Ed.  975;  5  S.  Ct.  511. 

Prouty  v.  Ruggles,  16  Pet.  336;  Gould  v.  Rees,  15  Wall.  187;  Rowell  v.  Lindsay, 
113  U.  S.  97. 

The  patent  being  for  a  combination,  there  can  be  no  infringement  unless  the 
combination  is  infringed.  —  Rowell  v.  Lindsay,  113  U.  S.  97;  28  L.  Ed.  906; 
5  S.  Ct.  507. 

Prouty  v.  Ruggles,  16  Pet.  336;  Stimpson  v.  R.  E.  10  How.  329;  Eames  v. 
Godfrey,  1  Wall.  78;  Seymour  v.  Osborne,  11  Wall.  516;  Dunbar  v.  Meyers,  94 
U.  S.  187;   Fuller  v.  Yentzer,  94  U.  S.  288. 

The  defendant  does  not  use  the  same  combination,  and  employs  no  device 
as  an  equivalent  and  substitute  for  the  omitted  element.  It  is  not  therefore 
liable  as  an  infringer.  —  Yale  v.  Sargent,  117  U.  S.  373;  29  L.  Ed.  950;  6 
S.  Ct.  931. 

Meter  v.  Desper,  101  U.  S.  332;  Gage  v.  Herring,  107  U.  S.  640. 

When  the  device  of  the  patent  in  suit  shows  duplicate  parts,  viz.  a  double 
time  movement  to  control  the  lever  which  controls  the  dog,  and  the  infringing 
device  uses  the  single  combination,  such  omission  does  not  avoid  infringe- 
ment. —  Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;   10  S.  Ct.  884. 

In  conformity  with  the  ruling  of  the  Supreme  Court  in  the  case  of  Corn 
Planter  Patent,  23  Wall.  181,  it  was  right,  we  think,  to  construe  the  claims  of 
the  patent  in  question  as  embracing  the  devices  shown  in  the  specifications, 
each  claim  being  regarded  as  including  such  devices  and  combination  as  a 
necessary  element  to  meet  the  requirements  of  the  general  terms  in  which  it 
is  expressed.  When  the  claims  are  so  construed,  it  may  be  said  of  each  of 
them,  in  the  language  of  that  case:  "  The  claim  thus  limited  is  considerably 
narrowed  in  its  operation.  It  is  substantially  for  a  combination  of  the 
material  parts  of  the  entire  machine,  and  no  one  can  be  said  to  infringe 
it  who  does  not  use  the  entire  combination."  This,  of  course,  does  not  exclude, 
the  doctrine  of  equivalents.  —  Illinois  v.  Robbins,  52  Fed.  215;  3  C.  C.  A.  42. 

It  is  well  settled  that  the  omission  in  the  alleged  infringing  device,  of 
an  element  named  in  a  combination  claim  of  a  patent  said  to  be  infringed  is  a 
complete  defense  to  the  charge  of  infringement.  —  Brown  v.  Stilwell,  57 
Fed.  731 ;  6  C.  C.  A.  528. 

Rowell  v.  Lindsay,  113  U.  S.  97. 

It  is  well  settled  that,  in  order  to  constitute  the  infringement  of  a  combina- 
tion, it  must  appear  that  the  alleged  infringing  device  included  every  element 
of  the  combination  as  claimed.  It  is  immaterial  that  the  elements  claimed 
in  the  patent  of  plaintiff  and  omitted  in  the  defendant's  device  are  not  of  the 
essence  of  the  real  invention.  —  Kinzel  v.  Luttrell,  67  Fed.  926;  15  C.  C.  A. 
82. 

Electric  v.  Hall,  114  U.  S.  87;  Voss  v.  Fisher.  113  U.  S.  213;  Gage  v.  Herring, 
107  U.  S.  640;  Water  v.  Desper,  101  U.  S.  332;  Dunbar  v.  Meyers,  94  U.  S.  187; 
Reedy  v.  Scott,  23  Wall.  352. 

But  the  appellant  is  met  here  by  the  unquestioned  rule  that  the  absence 
from  a  device  or  construction,  that  is  alleged  to  infringe,  of  a  single  essential 
element  of  a  patentable  combination  of  old  elements,  is  fatal  to  the  claim  of 
infringement.  —  Murphy  v.  Excelsior,  76  Fed.  965 ;   22  C.  C.  A.  658. 

Building  Co.  v.  Eustis,  65  Fed.  804;  Hailes  v.  VanWormer,  20  Wall.  353; 
Bragg  v.  Fitch,  121  U.  S.  478. 


424  THE    FIXED    LAW    OF    PATENTS  §  473 

The  absence,  from  a  device  that  is  alleged  to  infringe  a  patented  combina- 
tion of  old  elements,  of  a  single  essential  element  of  that  combination,  is 
fatal  to  the  claim  of  infringement.  —  Adams  Elec.  Ry.  v.  Linden,  77  Fed. 
432;  23  C.  C.  A.  223. 

Hailes  v.  VanWormer,  20  Wall.  353;  Bragg  v.  Fitch,  121  IL  S.  478;  Building 
Co.  v.  Eustis,  65  Fed.  804;  Murphy  v.  Excelsior,  70  Fed.  491. 

"  There  is  no  infringement  of  a  patent  which  claims  mechanical  powers  in 
combination,  unless  all  the  parts  have  been  substantially  used."  Eames  v. 
Godfrey,  1  Wall.  78.  A  combination  of  the  mechanical  parts  of  an  entire 
machine  is  not  infringement,  except  by  the  use  of  the  entire  combination. 
Brown  v.  Guild,  23  Wall.  181.  —  Carter  v.  Hanes,  78  Fed.  346;  24  C.  C.  A. 
128. 

The  defendant  ought  not  to  escape  because  it  does  not  use  subordinate  or 
unimportant  elements  of  the  combinations  described  in  other  claims,  which 
were  undoubtedly  omitted  from  this  claim  that  the  inventor  might  more 
perfectly  secure  the  essential  elements  of  his  invention.  —  Mast  v.  Dempster, 
82  Fed.  327;  27  C.  C.  A.  191. 

Mfg.  Co.  v.  Wharton,  28  Fed.  189;  Tondeur  v.  Stewart,  28  Fed.  561;  Coupler  v. 
Pratt,  70  Fed.  622. 

While  it  is  true  that  the  machine  used  by  the  appellant  brings  together 
several  of  the  old  devices  which  formed  part  of  the  Streat  combination,  still 
it  is  also  true  that  it  omits  other  important  parts  thereof,  and  consequently 
there  is  no  infringement.  —  American  v.  Streat,  83  Fed.  700;  28  C.  C.  A.  18. 

Schumacher  v.  Cornell,  96  U.  S.  549;  Palmer  v.  Corning,  156  U.  S.  342. 

The  combination  is  not  infringed  unless  all  of  the  elements  of  the  combina- 
tion are  found  in  the  infringing  device.  —  St.  Louis  v.  National,  87  Fed.  885; 
31  C.  C.  A.  265. 

The  new  Jensen  machine  manifestly  does  not  infringe,  as  it  does  not  con- 
tain all  the  elements  of  the  combination  patent  of  Norton,  or  their  mechanical 
equivalents.  —  Norton  v.  Jensen,  90  Fed.  415;  33  C.  C.  A.  141. 

Prouty  v.  Ruggles,  16  Pet.  337;  Stimpson  v.  Railroad,  10  How.  329;  Eames  v. 
Godfrey,  1  Wall.  78;  Seymour  v.  Osborne,  11  Wall.  516;  Dunbar  v.  Meyers,  94 
U.  S.  187:  Fuller  v.  Yentzer,  94  U.  S.  298;  Merrill  v.  Yeomans,  94  Fed.  568;  Meter 
Co.  v.  Desper,  101  U.  S.  332;  Miller  v.  Brass  Co.  104  U.  S.  350;  Rowell  v.  Lindsay, 
113  U.  S.  97. 

Plaintiff's  patent  being  for  a  combination,  it  necessarily  follows  that  there 
cannot  be  any  infringement  unless  the  defendant's  elevator  contains  all  of 
the  elements  of  the  combination  in  plaintiff's  patent,  or  their  mechanical 
equivalent.  —  Overweight  v.  Improved,  94  Fed.  155;  36  C.  C.  A.  125. 

Norton  v.  Jensen,  90  Fed.  415;   DeLoriea  v.  Whitney,  63  Fed.  611. 

The  absence  from  a  device  that  is  alleged  to  infringe  a  patented  combina- 
tion of  a  single  element  of  that  combination  is  fatal  to  the  claim  of  infringe- 
ment. —  National  v.  Interchangeable,  106  Fed.  693;  45  C.  C.  A.  544. 

Adams  v.  Lindell,  77  Fed.  432. 

Nothing  in  the  law  of  patents  is  better  settled  than  the  rule  that  a  claim 
for  a  combination  is  not  infringed  if  any  one  of  the  described  and  specified 
elements  is  omitted,  without  the  substitution  of  anything  equivalent  thereto. 
—  Pittsburg  v.  Pittsburg,  109  Fed.  644 ;  48  C.  C.  A.  580. 

Water-Meter  v.  Desper,  101  U.  S.  332;  Weatherhead  v.  Coupe,  147  U.  S.  322; 
Wright  v.  Yuengling,  155  U.  S.  47. 


§  474  INFRINGEMENT  425 

It  is  well  settled  that  there  is  no  infringement  if  any  one  of  the  material 
parts  of  the  combination  is  omitted,  and  that  a  patentee  will  not  be  heard 
to  deny  the  materiality  of  any  element  included  in  his  combination  claim. 

—  Adam  v.  Folger,  120  Fed.  260;  56  C.  C.  A.  540. 

Vance  v.  Campbell,  1  Black,  427;  Meter  v.  Desper,  101  U.  S.  337;  McClain  v. 
Ortmayer,  141  U.  S.  423. 

The  nonuse  of  any  specific  element  of  a  combination  claim  or  its  equiva- 
lent avoids  infringement.  —  American  v.  Cimiotti,  123  Fed.  869;  59  C.  C. 
A.  357. 

Water-Meter  v.  Desper,  101  U.  S.  332;  Weatherhead  v.  Coupe,  147  U.  S.  322; 
Wright  v.  Yuengling,  155  U.  S.  47. 

While  the  parts  of  the  last  are  separable,  the  invention  is  unitary,  and 
incapable  of  being  divided  into  patentable  parts;  and  therefore  the  use  of 
the  heel  part  or  of  the  fore  part  cannot  be  said  to  be  a  use  of  a  part  of  the 
Clark  invention  within  the  reasonable  meaning  of  the  license.  —  Wright  v. 
Fitz,  133  Fed.  394;  66  C.  C.  A.  456. 

As  one  element  of  appellees'  combination  has  thus  been  replaced  by  a 
device  that  is  materially  different,  the  appellant's  lantern  does  not  infringe. 

—  Keystone  v.  Spear,  136  Fed.  595;  69  C.  C.  A.  369. 

Since  at  least  one  element  of  each  of  the  combinations  secured  by  the  claims 
is  wanting,  they  cannot  be  held  to  infringe.  The  absence  from  a  device  that 
is  alleged  to  infringe  a  patented  combination  of  a  single  mechanical  element  of 
that  combination  is  fatal  to  the  claim  of  infringement.  —  Mallon  v.  Gregg, 
137  Fed.  68;  69  C.  C.  A.  48. 

Adams  v.  Lindell,  77  Fed.  432;    National  v.  Interchangeable,  106  Fed.  693. 

The  combination  is  an  entirety.  If  one  of  its  elements  is  omitted,  it  ceases 
to  exist.  It  is  well  settled,  therefore,  that  the  omission  of  any  one  ingredient 
of  the  combination  covered  by  the  claim  averts  any  charge  of  infringement. 

—  Central  v.  Coughlin,  141  Fed.  91 ;  72  C.  C.  A.  93. 

Prouty  v.  Draper,  16  Pet.  336;   Black  Diamond  v.  Excelsior,  156  U.  S.  611. 

The  absence  from  a  combination  that  is  alleged  to  infringe  of  a  single 
essential  element  is  fatal  to  the  claim  for  infringement.  —  Brammer  v. 
Witte,  159  U.  S.  726;  86  C.  C.  A.  207. 

Cimiotti  v.  American,  198  U.  S.  399;  Adams  v.  Lindell,  77  Fed.  432;  National 
v.  Interchangeable,  106  Fed.  693. 


§  474.     Contributory  —  Furnishing  Material. 

That  the  complainants  were  entirely  within  the  boundary  of  their  patent 
rights  in  permitting  the  use  of  their  invention  only  in  connection  with 
wire  sold  bv  themselves  is  not  an  open  question  in  this  court.  —  Rupp  v. 
Elliott,  131  Fed.  730;  65  C.  C.  A.  544. 

Heaton-Peninsular  v.  Eureka.  77  Fed.  288;  Bement  v.  National.  186  U.  S.  70; 
Cortelyou  v.  Lowe,  111  Fed.  1005;  Victor  v.  The  Fair,  123  Fed.  424;  Tubular  v. 
O'Brien,  93  Fed.  200;    Edison  v.  Pike,  116  Fed.  863. 

It  is,  therefore,  the  use  of  such  powder  which  constitutes  infringement 
and  when  a  manufacturer  of  acid  phosphates  sells  a  manufacturer  of  baking 
powder  a  barrel  of  granular  acid  phosphate  the  presumption  is  not  unfair  that 
he  expects  it  to  be  used  for  baking  powder.  —  Rumford  v.  Hygienic,  159 
Fed.  436 ;  86  C.  C.  A.  416. 


426  THE    FIXED    LAW    OF    PATENTS  §§  475-476 

§  475.    Contributory  —  Intent. 

The  intention  to  assist  in  infringement  must  be  shown  affirmatively  and 
cannot  be  inferred  from  the  mere  fact  that  the  articles  are  in  fact  used  in  the 
patented  combinations  or  may  be  so  used.  But  where  the  article  can  only  be 
used  in  the  patented  combination,  the  inference  and  intent  of  the  maker  and 
seller  is  certain,  and  the  right  of  the  patentee  to  injunction  ought,  we  think, 
to  be  equally  certain.  —  Thomson-Houston  v.  Ohio,  80  Fed.  712;  26  C.  C. 
A.  107. 

Thomson-Houston  v.  Kelsey,  75  Fed.  1005. 

Of  course,  if  it  made  or  sold  scales  having  peculiar  provision  for  the  in- 
tended incorporation  therein  of  a  valid  patented  device  of  the  appellee,  it 
would  be  liable  as  a  contributor,  if  the  expected  incorporation  should  there- 
after be  made  by  another.  But  if  it  makes  and  sells  scales  having  simply 
adaptations  for  a  proper  adjustment,  such  as  was  known  in  the  art,  it  would 
not  be  liable  if  another  person  should  of  his  own  volition  put  into  the  scales 
a  form  of  adjustment  patented  by  the  appellee.  —  Standard  v.  Computing, 
126  Fed.  639;  61  C.  C.  A.  541. 

§  476.     Contributory  —  Making  Elements. 

What  contributory  infringement  is,  and  why  it  should  be  enjoined,  was 
clearly  shown  in  Wallace  v.  Holmes,  9  Blatchf.  65,  the  earliest  case  in  this 
country  upon  the  subject,  and  upon  which  the  subsequent  cases  of  contrib- 
utory infringement  rest.  The  willingness  of  the  defendant  in  this  case 
to  aid  other  persons  in  any  attempts  which  they  may  be  disposed  to  make 
towards  infringement  is  also  apparent.  It  sufficiently  appears  from  the  de- 
fendant's advertisements  and  affidavits  that  it  was  ready  to  sell  to  any  and 
all  purchasers,  irrespective  of  their  character  as  infringers.  A  proposed 
concert  of  action  with  infringers,  if  they  present  themselves,  is  fairly  to  be 
inferred  from  the  obvious  facts  of  the  case;  and  an  injunction  order  is  the 
proper  remedy  against  wrongful  acts  which  are  proposed,  or  are  justly  to  be 
anticipated.  —  Thomson-Houston  v.  Kelsey,  75  Fed.  1005;  22  C.  C.  A.  1. 

We  would  not  be  understood  as  deciding  that  the  defendant  company  has 
the  right  to  manufacture  the  knuckles  which  form  a  part  of  the  complainant's 
device,  and  to  sell  them  indiscriminately  to  all  persons  who  see  fit  to  buy 
them ;  for,  clearly,  such  is  not  the  law.  We  have  no  doubt  that  the  defendant 
would  be  liable  as  an  infringer  if  it  so  happened  that  the  knuckles  by  it  made 
and  sold  should  be  used  by  the  purchasers  in  the  construction  of  complete 
couplers  such  as  are  described  in  the  complainant's  patents.  Wallace  v. 
Holmes,  Fed.  Cas.  No.  17,100.  Therefore,  if  the  defendant  continues  to 
manufacture  the  coupling  head  or  knuckles,  and  keeps  them  in  stock,  it  must 
see  to  it  that  they  are  sold,  for  the  purpose  of  repairing  the  patent  coupling 
device,  to  persons  or  corporations  who  have  acquired  the  right  to  make  and 
use  them  for  that  purpose.  —  Shickle  v.  St.  Louis,  77  Fed.  739 ;  23  C.  C. 
A.  433. 

The  principle  governing  infringement  of  combination  patents  by  furnishing 
a  necessary  element  in  the  combination  is  applicable  to  the  case  at  bar.  To 
make  or  sell  a  single  element  may  be  quite  an  innocent  act,  for  a  combination 
is  not  infringed  except  by  uniting  all  of  the  necessary  elements.  But  "  to 
make  or  sell  a  single  element  with  the  intent  that  it  shall  be  united  to  the 
other  elements,  and  so  complete  the  combination  is  infringement."  Rob. 
Pat.  sec.  924,  and  cases  cited.  Judge  Shepley  stated  the  rule  quite  clearly 
in  Saxe  v.  Hammond,  Fed.  Cas.  No.  12,411,  when  he  said: 

"  Different  parties  may  all  infringe  by  respectively  making  or  selling,  each 
of  them,  one  of  the  elements  of  a  patented  combination,  provided  these 


§  476  INFRINGEMENT  427 

separate  elements  are  made  for  the  purpose  and  with  the  intent  of  their 
being  combined  by  a  party  having  no  right  to  combine  them.  But  the  mere 
manufacture  of  a  separate  element  of  a  patented  combination,  unless  such 
manufacture  be  proved  to  have  been  conducted  for  the  purpose  and  with  the 
intent  of  aiding  infringement,  is  not  in  and  of  itself  infringement."  —  Heaton 
v.  Eureka,  77  Fed.  288;  25  C.  C.  A.  267. 

Wallace  v.  Holmes,  9  Blatchf.  65;  Holly  v.  Machine  Co.  18  Blatchf.  327,  4  Fed. 
74;  Traverse  v.  Beyer,  26  Fed.  450;  Willis  v.  McCullen,  29  Fed.  641;  Alabastine  v. 
Payne,  27  Fed.  559;  Celluloid  v.  American,  30  Fed.  437;  Boyd  v.  Cherry,  50  Fed. 
279;  Supply  Co.  v.  McCready,  4  B.  &  A.  588;  Morgan  v.  Albany,  152  U.  S.  425; 
Wilson  v.  Simpson,  9  How.  109. 

It  is  well  settled  that  where  one  makes  and  sells  one  element  of  a  com- 
bination covered  by  a  patent  with  the  intention  and  for  the  purpose  of  bring- 
ing about  its  use  in  such  a  combination,  he  is  guilty  of  contributory  infringe- 
ment and  is  equally  liable  to  the  patentee  with  him  who  in  fact  organizes 
the  complete  combination. — Thomson-Houston  v.  Ohio,  80  Fed.  712;  26 
C.  C.  A.  107. 

Wallace  v.  Holmes,  Fed.  Cas.  79;  Tie  Co.  v.  Simmons,  106  U.  S.  89;  Heaton  v. 
Eureka,  77  Fed.  288;  Bowker  v.  Daws,  3  Fed.  Cas.  1070;  Richardson  v.  Noyes, 
20  Fed.  Cas.  723;  Traverse  v.  Beyer,  26  Fed.  450;  Willis  v.  McCullen,  29  Fed.  641; 
Alabastine  v.  Payne,  27  Fed.  559;  Celluloid  v.  American,  30  Fed.  437;  Morgan  v. 
Albany,  152  U.  S.  425. 

They  make  and  sell  pumps  in  all  the  essential  respects  like  that  of  the 
patent.  They  do  not,  indeed,  make  the  lower  cylinder  but  they  manufacture 
pumps  to  be  used  in  tubular  wells,  the  tube  and  valve  placed  therein  supply- 
ing the  lower  cylinder  and  valve  of  the  patent.  Their  pumps  are  inoperative 
and  useless  unless  so  constructed,  the  case  presented  is  therefore  one  of 
contributory  infringement.  —  Red  Jacket  v.  Davis,  82  Fed.  432 ;  27  C.  C. 
A.  204. 

Wallace  v.  Holmes  Fed.  Cas.  17,100;  Renwick  v.  Pond,  Fed.  Case,  11,702. 

It  would  seem  clear  enough  that  the  judge  who  granted  this  injunction 
made  no  mistake  in  holding  that  the  making  and  selling  these  filters,  adapted 
to  and  intended  as  they  were,  for  no  other  use  than  filtering  beer  or  similar 
fluids,  should  be  held  as  contributing  to  such  use  by  brewers,  and  as  standing 
on  the  same  liability  as  the  parties  actually  using  them.  —  Loew  v.  German 
American,  107  Fed.  949;  47  C.  C.  A.  94. 

Heaton-Peninsular  v.  Eureka,  77  Fed.  288;  Edison  v.  Peninsular,  101  Fed. 
831;  Thomson-Houston  v.  Kelsey,  75  Fed.  1005. 

If  the  defendant  constructed  and  sold  an  essential  part  of  the  infringing 
structure  for  the  purpose  of  enabling  another  person  to  infringe  the  patent 
by  adding  something  else  to  make  the  entire  infringing  article,  it  made  itself 
a  contributory  infringer  to,  and  liable  for,  the  infringement.  And  we  have  no 
doubt  that  this  was  the  fact.  The  casings  without  bottoms  which  the  de- 
fendant made  and  sold  were  good  for  nothing  else.  Their  form  and  charac- 
teristics plainly  indicated  their  purpose.  The  case  is  not  like  one  where  the 
thing  made  is  also  adapted  to  use  in  other  ways.  It  would  be  wholly  inad- 
missible to  shut  out  the  manufacture  or  sale  of  things  adapted  to  a  proper 
and  lawful  use.  That  would  interfere  with  the  rights  and  privileges  of  the 
public.  But  it  has  been  held  that,  even  in  that  case  if  it  were  proven  that  the 
thing,  although  adapted  to  other  uses,  was  nevertheless  intended  by  the 
seller  to  go  into,  and  contribute  to,  the  infringement  by  another,  the  furnisher 
could  not  escape  the  consequences  of  the  infringement.  —  Canda  v.  Michi- 
gan, 124  Fed.  486;  61  C.  C.  A.  194. 

Heaton  v.  Eureka,  77  Fed.  288;   Edison  v.  Peninsular,  95  Fed.  669. 


428  THE    FIXED   LAW   OF   PATENTS  §476 

He  who  makes  and  sells  one  or  more  elements  of  a  patented  combination, 
with  the  intention  and  for  the  purpose  of  bringing  about  its  or  their  use 
in  an  infringing  combination,  is  guilty  of  contributory  infringement,  and  is 
equally  liable  with  him  who  in  fact  organizes  and  uses  the  complete  com- 
bination. —  Heekin  v.  Baker,  138  Fed.  63;  70  C.  C.  A.  559. 

Wallace  v.  Holmes,  Fed.  Cas.  17,100;  Heaton  v.  Eureka,  77  Fed.  288; 
Thomson-Houston  v.  Ohio,  80  Fed.  712;  Red  Jacket  v.  Davis,  82  Fed.  432;  Loew 
v.  German,  107  Fed.  949. 

They  have  infringed  the  process  of  Johnson  because  they  supplied  the 
apparatus  adapted  to  employ  Johnson's  process  with  intent  that  the  plant 
should  be  or  would  be  operated  with  that  process.  It  was  therefore  guilty 
of  contributing  to  the  infringement.  —  Johnson  v.  Foos,  141  Fed.  72;  72 
C.  C.  A.  105. 

Heaton  v.  Eureka,  77  Fed.  288;  Thomson-Houston  v.  Ohio,  80  Fed.  712. 

The  arrangement  of  the  different  parts  was  therefore  of  the  essence  of 
the  invention,  and  the  Foos  Company  had  a  legal  right  to  continue  to  make 
and  sell  attrition  mills  and  other  parts  of  the  mechanism  which  were  old, 
provided  only  that  they  did  so  with  no  purpose  to  contribute  to  the  plans 
of  one  intending  an  infringement  by  combining  the  parts.  —  Johnson  v. 
Foos,  141  Fed.  73;  72  C.  C.  A.  105. 

Heaton  v.  Eureka,  77  Fed.  288;  Thomson-Houston  v.  Ohio,  80  Fed.  712; 
German  v.  Loew,  103  Fed.  303;  Loew  v.  German,  107  Fed.  949. 

On  ample  evidence,  the  court  below  found  that  most  of  the  sales  of  Leeds 
&  Catlin  records  were  knowingly  made  by  the  plaintiff  in  error  to  enable 
the  owners  of  Victor  Talking  Machines  to  reproduce  such  musical  pieces  as 
they  wished  by  the  combination  of  Leeds  &  Catlin  records  with  said  machines. 
Upon  these  facts  it  is  clear  that  the  Leeds  &  Catlin  Company  have  made  and 
sold  a  single  element  of  the  claims  of  the  Berliner  patent  with  the  intent  that 
it  should  be  united  to  the  other  element  and  complete  the  combination ;  and 
this  is  infringement.  —  Leeds  v.  Victor,  154  Fed.  58;  83  C.  C.  A.  170. 

Heaton  v.  Eureka,  77  Fed.  297;  Cortelyou  v.  Lowe,  111  Fed.  1005. 

Plaintiff  in  error  seeks  to  avoid  that  result  by  asserting  that  the  records 
under  consideration  are  but  temporary,  perishable,  and  unpatented  parts  of 
the  patented  combination,  and  therefore  under  Morgan  v.  Albany,  152  U.  S. 
425,  free  to  be  manufactured  and  sold  by  anyone.  This  contention  is  not 
supported  by  the  evidence.  Disk  records  are  fragile  (i.  e.  brittle  and  easily 
broken)  but  they  are  not  perishable,  (i.  e.  subject  to  decay  by  their  inherent 
qualities,  or  consumed  by  a  few  uses  or  a  single  one).  Neither  are  they 
temporary,  i.e.,  not  intended  to  endure;  on  the  contrary  we  find  them 
capable  of  remaining  useful  for  an  indefinite  period.  —  Leeds  v.  Victor,  154 
Fed.  58;  83  C.  C.  A.  170. 

The  doctrine  of  contributory  infringement  has  never  been  applied  to  a 
case  where  the  thing  contributed  is  one  of  general  use,  or  suitable  to  a  variety 
of  other  uses,  especially  where  there  is  no  definite  purpose  that  the  thing 
sold  shall  be  employed  with  others  to  infringe  a  patent  right.  Rumford  v. 
Hygienic,  148  Fed.  866.  But  this  plaintiff  in  error  is  shown  to  have  manu- 
factured and  sold  records  for  the  express  purpose  of  supplying  users  of 
Victor  machines;  nor  are  such  records  staple  articles  of  commerce.  Cortel- 
you v.  Johnson,  145  Fed.  935.  —  Leeds  v.  Victor,  154  Fed.  58 ;  83  C.  C.  A.  170. 


§  477  INFRINGEMENT  429 

§  477.     Contributory  —  Rules. 

General  rule  by  Taft,  J. 

It  being  established  that  defendant  is  offering  for  sale  articles,  intending 
them  to  be  used  in  combinations  which,  if  unlicensed  by  complainant, 
would  be  infringements  of  complainant's  patents,  we  think  that  it  is  the  duty 
of  the  defendant  to  see  to  it  that  such  combinations  which  it  is  intentionally 
inducing  and  promoting  shall  be  confined  to  those  which  may  be  lawfully 
organized.  We  are  unable  to  see  why  any  different  rule  should  be  applied 
in  such  a  case  from  that  applicable  to  a  case  in  which  a  defendant  makes  a 
patented  machine  to  order.  He  may  make  such  a  machine  upon  the  order 
of  the  patentee  or  a  licensee,  but  not  otherwise.  Upon  him  is  the  peril  of  a 
mistake  as  to  the  lawful  authority  of  him  who  gives  the  order.  So,  he  may 
knowingly  assist  in  assembling,  repairing,  and  renewing  a  patented  combina- 
tion by  furnishing  some  of  the  needed  parts ;  but,  when  he  does  so,  he  must 
ascertain,  if  he  would  escape  liability  for  infringement,  that  the  one  buying 
and  using  them  for  this  purpose  has  a  license,  express  or  implied,  to  do  so. 
What  we  have  said  has  application  only  to  cases  in  which  it  affirmatively 
appears  that  the  alleged  infringer  is  offering  the  parts  with  the  purpose  that 
they  shall  be  used  in  the  patented  combination.  —  Thomson-Houston  v- 
Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Underlying  principles  stated  by  Judge  Taft. 

From  the  earliest  times,  all  who  take  part  in  a  trespass,  either  by  actual 
participation  therein  or  by  aiding  and  abetting  it,  have  been  held  to  be 
jointly  and  severally  liable  for  the  injury  inflicted.  There  must  be  some 
concert  of  action  between  him  who  does  the  injury  and  him  who  is  charged 
with  aiding  and  abetting,  before  the  latter  can  be  held  liable.  When  that 
is  present,  however,  the  joint  liability  of  both  the  principal  and  the  accom- 
plice has  been  invariably  enforced.  If  this  healthful  rule  is  not  to  apply  to 
trespass  upon  patent  property,  then,  indeed,  the  protection  which  is  prom- 
ised by  the  constitution  and  laws  of  the  United  States  to  inventors  is  a  poor 
sham.  Many  of  the  most  valuable  patents  are  combinations  of  non-pat- 
entable elements,  and  the  only  effective  mode  of  preventing  infringement 
is  by  suits  against  those  who,  by  furnishing  the  parts  which  distinguish  the 
combination,  make  it  possible  for  others  to  assemble  and  use  the  combination, 
and  who,  by  advertisement  of  the  sale  of  such  parts  and  otherwise,  inten- 
tionally solicit  and  promote  such  invasions  of  the  patentee's  rights.  —  Thom- 
son-Houston v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Morgan  v.  Envelope  Co.  152  U.  S.  425  explained  and  distinguished  (Taft). 

The  Morgan-Envelope  Co.  case,  so  far  from  departing  from  the  doctrine 
of  contributory  infringement,  expressly  recognizes  it  and  the  authorities 
in  which  it  is  announced  and  enforced.  The  court  held,  however,  that  the 
doctrine  of  contributory  infringement  could  not  apply  in  a  case  in  which 
the  claim  of  the  patent  embraces  a  machine  and  something  to  be  treated 
thereby,  which  is  perishable  in  its  nature,  and  the  alleged  infringer  furnishes 
the  latter  element  to  be  used  with  the  machine  and  consumed.  Whether 
this  holding  is  really  a  limitation  upon  the  doctrine  of  contributory  infringe- 
ment, or  is  to  be  regarded  only  as  in  effect  deciding  that  such  combinations 
are  impossible  in  a  patent,  may  admit  of  question.  —  Thomson-Houston  v. 
Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Heaton  v.  Eureka,  77  Fed.  288. 

It  does  appear  that  defendant  is  offering  for  sale  articles  that  can  be  used 
only  in  combinations  covered  by  complainant's  claims.  This  is  an  effort 
to  secure  a  concert  of  action  by  which  the  combinations  of  complainant's 


430  THE   FIXED   LAW   OF   PATENTS  §  477 

patents  may  be  assembled.  If  successful,  infringement  will  follow;  hence 
the  preliminary  steps  which  are  intentionally  taken  to  bring  about  the 
injury  may  be  enjoined.  —  Thomson-Houston  v.  Ohio,  80  Fed.  712;  26 
C.  C.  A.  107. 

Wallace  v.  Holmes,  29  Fed.  Cas.  79. 

Infringement  is  the  unlawful  making  or  selling  or  using  of  a  patented  in- 
vention. Contributory  infringement  is  "  the  intentional  aiding  of  one  person 
by  another  in  the  unlawful  making  or  selling  or  using  of  the  patented  in- 
vention; "  and  this  is  usually  done  by  making  or  selling  a  part  of  the  pat- 
ented invention  with  the  intent  and  purpose  of  so  aiding.  The  essence  of 
contributory  infringement  lies  in  concerting  or  planning  with  others  in  an 
unlawful  invasion  of  the  patentee's  rights.  —  Goodyear  v.  Jackson,  112  Fed. 
146;  50  C.  C.  A.  159. 

Howson,  Contrib.  Inf.  Pat.  1;  Thomson-Houston  v.  Kelsey,  72  Fed.  1016; 
Thomson-Houston  v.  Ohio,  78  Fed.  139;  Wallace  v.  Holmes,  9  Blatchf.  65;  Ren- 
wick  v.  Pond,  10  Blatchf.  39;  Saxe  v.  Hammond,  IB.  &  A.  629;  Richardson  v. 
Noyes,  2  B.  &  A.  398;  Schneider  v.  Pountney,  21  Fed.  399;  Traverse  v.  Beyer,  26 
Fed.  450;  Snyder  v.  Bunnell,  29  Fed.  47;  Celluloid  v.  American,  30  Fed.  437; 
Singer  v.  Springfield,  34  Fed.  393;  Schneider  v.  Missouri,  36  Fed.  582;  Heaton  v. 
Eureka,  77  Fed.  288. 

The  intent  and  purpose  that  the  element  made  and  sold  shall  be  used  in 
a  way  that  shall  infringe  the  combination  in  which  it  is  an  element  consti- 
tutes the  necessary  concert  of  action  between  him  who  furnished  the  single 
part  and  he  who  actually  does  the  injury  by  the  assembling  and  using  of  all 
the  parts  in  such  a  way  as  to  be  an  infringement.  This  principle  runs  through 
all  the  cases  upon  contributory  infringement.  —  Bullock  v.  Westinghouse, 
129  Fed.  105;  63  C.  C.  A.  607. 

Heaton  v.  Eureka,  77  Fed.  288;  Saxe  v.  Hammond,  Fed.  Cas.  12,411;  Wallace 
v.  Holmes,  9  Blatchf.  65;  Thomson-Houston  v.  Kelsey,  75  Fed.  1005;  German- 
American  v.  Loew,  103  Fed.  303,  affd.  107  Fed.  949;  Snyder  v.  Bunnell,  29  Fed. 
47;    Thomson-Houston  v.  Ohio,  80  Fed.  712. 

It  is  the  sale  of  material  adapted  to  the  infringing  use,  with  the  intent  and 
purpose  that  it  shall  be  so  used,  which  constitutes  contributory  infringement. 
It  is  the  intent  and  purpose  to  aid  and  assist  in  bringing  about  an  infringe- 
ment which  is  the  essence  of  the  tort.  —  Rupp  v.  Elliott,  131  Fed.  730; 
65  C.  C.  A.  544. 

Loew  v.  German- American,  107  Fed.  949;  Thomson-Houston  v.  Ohio,  80  Fed. 
712. 

The  majority  of  the  court  (Coxe  and  Townsend  JJ.)  is  of  the  opinion  that 
the  decree  at  bar  pushes  the  doctrine  of  contributory  infringement  to  its 
extreme  limits.  The  doctrine  originated  in  a  desire  to  secure  to  a  patentee 
complete  protection  in  all  the  rights  granted  to  him  by  the  patent,  but  it 
was  confined  to  those  rights ;  it  went  no  farther.  One  who  sold  an  element  of 
a  patented  combination,  which  could  not  be  used  except  in  an  infringing 
combination  or  device,  was  not  permitted  to  reap  the  benefits  of  such  sale. 
He  did  not  directly  infringe,  but  he  promoted  the  infringement  of  others  by 
putting  in  their  hands  a  device  which  could  only  be  used  in  violation  of  the 
patent.  When  confined  to  articles,  whether  covered  by  the  patent  or  not, 
which  are  made  for  the  express  purpose  of  inducing  infringement  and  are 
not  intended  for  any  legitimate  use,  the  doctrine  of  contributory  infringe- 
ment is  logical,  just  and  salutary.  But  we  doubt  the  wisdom  of  extending 
it  to  the  ordinary  commodities  of  life,  used  in  connection  with  a  patented 
machine,  because  the  patentee  sells  or  licenses  the  machine  upon  the  condi- 
tion that  he  alone  is  to  furnish  these  commodities.    Care  should  be  taken 


§  478  INFRINGEMENT  431 

that  the  courts,  in  their  effort  to  protect  the  rights  of  patentees,  do  not 
invade  the  just  rights  of  others,  engaged  in  legitimate  occupations,  by 
creating  new  monopolies  not  covered  by  patents  and  by  placing  unwarrant- 
able restrictions  upon  trade.  We  incline  to  the  opinion  that  the  line  should 
be  drawn  to  include  those  articles  which  are  either  parts  of  a  patented  com- 
bination or  device  or  which  are  produced  for  the  sole  purpose  of  being  so 
used  and  to  exclude  the  staple  articles  of  commerce.  —  Cortelyou  v.  Johnson, 
145  Fed.  933;  76  C.  C.  A.  455. 

The  true  inquiry  is  whether  the  owner  of  a  patented  combination,  the 
elements  of  which  are  durable,  unbroken,  and  in  good  repair,  may  buy  from 
the  patentee  one  specimen  of  a  single  element,  from  an  outsider  an  indefinite 
number  of  identical  specimens  of  the  same  element,  and  keep  and  use  them 
all,  under  cover  of  the  word  "  substitution;  "  it  further  appearing  that  the 
element  so  procured  and  used  is  useful  and  commercially  known  only  in 
respect  of  said  combination.  —  Leeds  v.  Victor,  154  Fed.  58;  83  C.  C.  A.  170. 

Thomson-Houston  v.  Kelsey,  75  Fed.  58;    Chaffee  v.  Belting  Co.  22  How.  223. 


§  478.     Contributory  —  Miscellaneous  Rules. 

When  it  is  or  is  not  infringement  to  supply  or  to  use  fully  discussed  with 
cases.  —  Morgan  v.  Albany,  152  U.  S.  425;  38  L.  Ed.  500;  14  S.  Ct.  627. 

That  a  manufacturer  who  sold  ink  to  be  used  in  a  patented  device,  the 
device  being  sold  with  restrictions  that  it  be  used  only  with  ink  made  by 
the  owner  of  the  patent  and  notice  of  such  restriction  being  printed  on  the 
bottom  of  such  device;  that  such  ink  manufacturer  having  no  other  notice 
than  that  communicated  to  a  selling  agent  who  took  the  ink  order  and  who 
did  not  communicate  such  notice  to  his  principals;  and  that  filling  such 
order,  and  not  entering  into  the  manufacture  and  sale  of  ink  to  be  so  used 
with  the  patented  device,  is  not  contributory  infringement,  see  Cortelyou  v. 
Johnson,  207  U.  S.  196;  52  L.  Ed.  167;  28  S.  Ct.  105. 

The  decree  dismissing  the  bill  against  the  Lowell  Light  &  Power  Company 
was  clearly  right.  It  sold  the  current  which  it  generated  to  the  Peninsular 
Company.  That  current  was  as  well  adapted  for  use  in  one  mode  of  distribu- 
tion as  in  another  and  was  adapted  equally  well  for  furnishing  power  as  for 
illuminating  purposes.  —  Edison  v.  Peninsular,  101  Fed.  831 ;  43  C.  C.  A.  479. 

That  one  who  designs  and  constructs  an  infringing  machine  for  others, 
under  contract  and  pay  for  his  services,  is  a  contributory  infringer,  see  Trent 
v.  Risdon,  102  Fed.  635;  42  C.  C.  A.  529. 

That  where  a  sale  constituting  contributory  infringement  is  solicited  by 
the  complainant,  said  complainant  is  not  in  a  position  to  charge  defendant 
with  injury,  see  Cortelyou  v.  Johnson,  145  Fed.  933;  76  C.  C.  A.  455. 

But  the  purchaser  of  the  No.  78  machine  acquired  no  right  to  infringe  the 
patentee's  right  to  manufacture  said  combination  known  as  No.  79.  When 
these  defendants  therefore,  supplied  said  attachment  and  added  it  to  said 
No.  78  machine,  and  therefore  converted  it  into  a  No.  79  machine  by  uniting 
it  to  the  patented  attachment  which  made  up  the  complete  combination 
of  No.  79,  they  infringed  said  right  of  manufacture  of  the  patented  combina- 
tion, with  which  complainant  had  not  parted  by  the  sale  of  a  No.  78  machine. 

The  well  settled  rule  is  that  the  purchase  of  a  patented  article  from  the 
patentee  acquires  the  absolute  right  to  the  unrestricted  use  of  said  article; 
that  by  the  sale  it  passes  beyond  the  limit  of  the  monopoly.    But  it  would 


432  THE    FIXED    LAW    OF    PATENTS  §§  479-481 

be  perversion  of  this  rule  to  say  that  such  a  purchaser  may  use  a  portion 
of  said  article  for  the  purpose  of  enabling  the  owner  of  a  machine  sold  by 
the  patentee,  without  said  portion  to  construct  a  patented  combination  which 
he  is  not  licensed  to  manufacture  or  use.  —  National  v.  Grobet,  153  Fed.  905; 
82  C.  C.  A.  651. 

The  evidence  warrants  the  finding  that  in  at  least  one  instance  defendants 
sold  rolls  to  be  used  in  one  of  complainant's  Pianolas  after  it  had  been  in- 
formed by  the  purchaser  that  his  instrument  contained  the  notice  (pro- 
hibiting such  purchase)  .  .  .  injunction  was  properly  issued.  —  iEolian  Co. 
v.  Juelg  Co.  155  Fed.  119;  86  C.  C.  A.  205. 

§  479.     Corporations  —  Common  Carriers. 

When  one  engages  in  such  public  business  it  is  of  no  consequence  whether 
the  means  or  instruments  whereby  it  is  conducted  are  patented  or  not.  It 
is  the  Jmsiness  that  is  regulated.  A  patent  secures  title  to  the  thing  patented 
and  its  use,  just  as  the  law  secures  title  to  other  description  of  property. 
The  owner  need  not  apply  his  property  of  either  description  to  such  public 
employment,  but  if  he  does,  the  employment  itself  will  be  subject  to  the 
rules  which  the  law  has  prescribed  for  its  government,  without  respect  to 
the  means  or  instrument  by  which  it  is  conducted.  —  Delaware  &  A.  Tel.  v. 
Delaware,  50  Fed.  677;  2  C.  C.  A.  1. 

Defendant  was  sued  as  infringer  and  set  up  its  duty  as  a  common  carrier 
and  disclosed  the  ownership  of  the  alleged  infringing  cars.  On  petition  by 
the  owners,  they  were  allowed  to  intervene  and  defend.  —  Standard  Oil  Co. 
v.  Southern,  54  Fed.  521 ;  4  C.  C.  A.  491. 

§  480.     Corporations  —  Joint  Stock. 

It  does  not  appear  that  the  statutes  of  New  York  require  that  the  president 
and  treasurer  of  a  joint-stock  association  should  be  a  shareholder  therein, 
and  there  is  no  proof  in  the  record  that  defendant  is,  or  ever  was,  a  share- 
holder or  associate  in  such  association.  Held:  that  suit  could  not  be  main- 
tained against  such  officer  for  infringement  on  authority  of  Tyler  v.  Gallo- 
way, 13  Fed.  477.  —  National  v.  Stolts,  135  Fed.  534;  68  C.  C.  A.  84. 

§  481.     Corporations  —  Officers  of. 

It  is  well  settled  that  a  mere  workman  or  servant  who  makes,  uses  or 
vends  for  another,  and  under  his  immediate  supervision,  a  patented  article, 
is  not  liable  in  an  action  at  law  for  damages.  This  rule  is  an  apparent  excep- 
tion to  the  general  principle  of  law  which  makes  all  who  participate  in  a  tort 
of  misfeasance  principals,  and  liable  for  damages  therefor;  and  we  do  not 
think  it  should  be  so  extended  as  to  exempt  from  liability  the  general  man- 
ager of  a  business  which  infringes  upon  the  exclusive  right  of  a  patentee.  — 
Graham  v.  Earl,  92  Fed.  155;  34  C.  C.  A.  267. 

Creamer  v.  Fry,  68  Fed.  201;  Lightner  v.  Brooks,  Fed.  Cas.  8,344. 

It  is  sufficient  to  say  that  a  director's  liability  to  an  injunction  does  not 
conclusively  establish  his  liability  in  an  action  at  law  for  damages,  and, 
conversely,  that  his  liability  in  an  action  at  law  does  not  conclusively  es- 
tablish that  he  may  properly  be  enjoined  or  ordered  to  account  for  profits. 
We  are  of  opinion,  that  by  the  general  principles  of  law,  and  by  analogy  with 
other  courts,  a  director  of  a  corporation,  who,  as  director,  by  vote  or  other- 
wise, specifically  commands  the  subordinate  agents  of  the  corporation  to 
engage  in  the  manufacture  and  sale  of  an  infringing  article,  is  liable  individ- 
ually in  action  at  law  for  damages  brought  by  the  owner  of  the  patent  so 


§  481  INFRINGEMENT  433 

infringed.  As  with  other  infringers,  it  is  immaterial  whether  the  director 
knew  or  was  ignorant  that  the  article  manufactured  and  sold,  did  infringe 
a  patent.  We  think  that  the  request  was  sufficiently  explicit  to  require  the 
judge  to  charge  the  jury  that  a  defendant  who  directed  the  infringing  ma- 
chines should  be  manufactured  and  put  upon  the  market,  and  that  their 
sale  should  be  pushed,  was  not  relieved  from  liability  by  reason  of  the  fact 
that  he  was  acting  as  a  director  of  a  corporation,  or  in  its  behalf.  —  National 
v.  Leland,  94  Fed.  502;  37  C.  C.  A.  372. 

Mitchell  v.  Harmony,  13  How.  115;  Pol.  Tort.  5  ed.  190;  Weir  v.  Bell,  3  Exch. 
Div.  238;  Brown  v.  Lent,  20  Vt.  529;  Wilson  v.  Peto,  6  Moore  47;  Power  Co.  v. 
Allen,  120  Mass.  252;  Peck  v.  Cooper,  112  111.  192;  Weir  v.  Barnett,  3  Exch.  Div. 
32;  Amy  v.  Supervisors,  11  Wall.  136;  Ferguson  v.  Earl,  9  Clark.  &  F.  251; 
Belknap  v.  Schild,  161  U.  S.  10;  National  v.  Boston,  156  U.  S.  502;  (reversing) 
Nickel  v.  Worthington,  13  Fed.  392. 

Note:  On  the  question  of  liability  of  the  directors  and  officers  of  a  cor- 
poration, Brown,  D.  J.,  dissents.  This  rule  of  the  first  circuit  is  contrary  to 
the  rule  well  established  in  the  second  circuit,  and  also  in  a  number  of  the 
other  circuits.  It  is  doubtful  whether  an  officer  of  a  corporation  per  se  is 
personally  liable  unless  the  conduct  of  such  corporation  or  such  officer  is 
such  as  to  constitute  an  open,  personal  and  flagrant  invasion  of  an  established 
and  known  right. 

We  have  no  doubt,  if  there  is  infringement,  that  Lamb  (an  officer  of  the 
defendant,  the  inventor  and  assignor  of  the  patent  in  suit,  and  formerly 
with  complainant)  should  be  held  to  be  a  contributor  to  it.  —  Lamb  v.  Lamb, 
120  Fed.  267;  56  C.  C.  A.  247. 

With  respect  to  the  matter  of  infringement,  the  defendants  North  and 
Steele  are  not  shown  to  have  been  individually  guilty  of  any  infringing  act. 
There  is  therefore  no  excuse  for  joining  them  as  parties,  unless  it  be  that 
they  were  offending  officers  of  the  corporation,  and  this  is  no  excuse.  It 
may  be,  however,  that  the  complainant  mistakenly  supposed  the  officers  were 
active  participants  in  the  infringement,  and  has  been  disappointed  in  the 
proofs.  However  this  may  be,  the  bill  was  properly  dismissed  as  to  them, 
and  so  far  the  decree  of  the  circuit  court  will  be  affirmed,  with  costs  of  both 
courts  to  those  defendants.  —  Western  v.  North,  135  Fed.  79;  67  C.  C.  A. 
553. 

The  appellee  company,  a  corporation,  can  act  only  through  its  officers  and 
agents.  We  find  nothing  in  the  record  to  show  that  the  appellee  Deknatel 
acted  beyond  the  ordinary  scope  of  his  office.  No  cause  of  action  against 
him  is  made  out.  —  Cazier  v.  Mackie-Lovejoy,  138  Fed.  654;  71  C.  C.  A.  104. 

Inasmuch  as  it  does  not  appear  that  the  defendant  Kerman  has  any  con- 
nection with  the  infringement,  except  as  an  officer  of  said  corporation,  the 
bill  should  be  dismissed  as  to  him  with  costs.  —  Scott  v.  Fisher,  145  Fed.  915; 
76  C.  C.  A.  447. 

Hutter  v.  De  Q.  Bottle,  128  Fed.  283. 

That  officers  of  a  corporation  are  not  personally  liable  as  tort  feasors  in 
damages  and  profits  when  the  corporation  received  the  benefit  of  their  acts, 
wholly  regardless  of  the  inequitable  conduct  of  such  officers,  see  McSherry  v. 
Dowagiac,  160  Fed.  948;   89  C.  C.  A.  26. 

The  bill  prays,  as  usual,  an  injunction  and  account  against  both  the  Ameri- 
can Loom  Co.  and  the  officer  referred  to.  The  circuit  court  dismissed  the  bill, 
and  the  complainant  has  appealed  to  us.     So  far  as  the  officer  of  the  re- 


434  THE    FIXED    LAW    OF    PATENTS  §§  482-484 

spondent  corporation  is  concerned,  the  case  is  not  brought  within  the  rule 
of  National  v.  Leland,  94  Fed.  502.  Therefore,  as  to  him,  the  final  decree 
will  provide  that  the  bill  be  dismissed;  and,  as  he  has  been  brought  in  as  one 
against  whom  substantial  relief  is  asked,  he  will  recover  his  costs  in  the 
circuit  court.  —  Draper  v.  American,  161  Fed.  728;  88  C.  C.  A.  588. 

§  482.     Corporations  —  Miscellaneous  Holdings. 

As  a  corporation  cannot  absolve  itself  from  liability  without  the  consent 
of  the  legislature,  its  liability  is  fixed  by  the  acts  of  persons  using  the  cor- 
porate name  with  the  assent  of  the  corporate  authorities.  —  Railroad  v. 
Winans,  58  U.  S.  31 ;  15  L.  Ed.  27. 

Beman  v.  Rufford,  1  Simon  N.  S.  550;  Winch  v  Ry.  13  L.  &  E.  506. 

§  483.     Defenses  —  Anticipation. 

For  further  treatment  of  this  subject  the  titles  Abandonment,  Anticipation, 
Defenses  and  Invention  should  be  examined.  It  is  not  possible,  without  undua 
repetition,  to  assemble  all  of  the  rulings  under  this  title. 

Letters  patent,  though  not  set  up  in  the  answer,  may  be  received  in  evi- 
dence to  show  the  state  of  the  art  and  to  aid  in  the  construction  of  the  plain- 
tiff's claim,  though  not  to  invalidate  the  claim  on  the  ground  of  want  of 
novelty  when  properly  construed.  —  Grier  v.  Wilt,  120  U.  S.  412;  30  L.  Ed. 
712;  7  S.  Ct.  718. 

Vance  v.  Campbell,  66  U.  S.  427;  Railroad  v.  Dubois,  79  U.  S.  47;  Brown  v. 
Piper,  91  U.  S.  37;  Eachus  v.  Broomall,  115  U.  S.  429. 

Where  defendant  obtained  his  idea  from  the  patent  in  suit  he  is  none  the 
less  entitled  to  claim  anticipation  by  setting  up  a  prior  patent,  especially 
when  such  prior  device  appears  to  show  full  anticipation  of  his  own.  — 
Hoff  v.  Iron  Clad,  139  U.  S.  326;  35  L.  Ed.  179;  11  S.  Ct.  580. 

Defendant  may  show  that  the  invention  claimed  was  patented  or  described 
in  some  printed  publication  (not  before  the  American  Patent  was  granted 
—  nor  before  the  application  for  it  was  filed)  but  before  the  patentee's  sup- 
posed invention  or  discovery  thereof.  —  Clark  v.  Willimantic,  140  U.  S.  481 ; 
35  L.  Ed.  521;  11  S.  Ct.  846. 

U.  S.  R.  S.  4920. 

§  484.     Defenses  —  Miscellaneous. 

It  is  not  easy  to  perceive  why  the  defendant  who  uses  a  patented  machine 
should  not  have  the  benefit  of  a  like  presumption  in  his  favor,  arising  from 
a  like  investigation  of  the  originality  of  his  invention,  and  the  judgement 
of  the  public  officers,  that  his  machine  is  new  and  not  an  infringement  of 
the  patent  previously  granted  to  the  plaintiff.  It  shows  at  least  that  the 
defendant  has  acted  in  good  faith,  and  is  not  a  wanton  infringer.  —  Corning 
v.  Burden,  15  How.  252;  14  L.  Ed.  683. 

Reversed  in  Blanchard  v.  Putnam,  8  Wall.  420;  Reaffirmed  in  Ransome  v. 
Hyatt,  69  Fed.  148. 

We  are  not  at  all  satisfied  that,  in  equity,  the  defendant  can  be  permitted 
to  set  up  the  defense  of  non-infringement;  while  it  makes  no  attempt  by 
cross  bill  or  even  in  the  answer  to  show  that  the  agreements  were  obtained 
by  fraud,  surprise  or  imposition.  —  Eureka  v.  Bailey,  78  U.  S.  488;  20  L.  Ed. 
209. 

Defendants  were  innocent  infringers.  When  they  discovered  the  fact  they 
purchased  a  legal  title  to  the  patent  for  their  territory.    Held:   that  such 


§  484  INFRINGEMENT  435 

purchase  converted  their  act  into  a  legal  right  and  was  equivalent  to  an 
original  lawful  purchase  or  manufacture  of  the  machine.  —  Eunson  v.  Dodge, 
85  U.  S.  414;  21  L.  Ed.  766. 

When  the  thing  patented  is  an  entirety,  consisting  of  a  separate  device 
or  of  a  single  combination  of  old  elements  incapable  of  division  or  separate 
use,  the  respondent  cannot  make  good  the  defense  in  question  by  proving 
that  a  part  of  the  entire  invention  is  found  in  one  prior  patent,  printed  pub- 
lication or  machine  and  another  part  in  another,  and  so  on  indefinitely, 
and  from  the  whole  or  any  given  number  expect  the  court  to  determine  the 
issue  of  novelty  adversely  to  the  complainant. 

Common  justice  forbids  such  a  defense,  as  it  would  work  a  virtual  repeal 
of  so  much  of  the  Patent  Act  as  gives  to  inventors  the  right  to  a  patent 
consisting  of  old  elements,  when  the  combination  itself  is  new  and  produces 
a  new  and  useful  result.  New  elements  in  such  a  patent  are  not  required, 
and  if  such  a  defense  were  allowed,  not  one  patent  of  the  kind  in  a  thousand 
of  modern  date  could  be  held  valid.  Nor  is  such  a  defense  consistent  with 
the  regulations  enacted  by  Congress  in  respect  to  the  procedure  in  litigations 
in  respect  to  patent  rights.  —  Parks  v.  Booth   102  U.  S.  96;  26  L.  Ed.  54. 

Imhauser  v.  Buerk,  101  U.  S.  647. 

The  contention  that  the  device  of  the  patent  sued  on  was  not  successful, 
where  the  failure  appears  to  have  been  due  to  other  defects  in  the  machine 
will  not  be  regarded  as  important.  —  Gordon  v.  Warder,  150  U.  S.  47;  37 
L.  Ed.  992;   14  S.  Ct.  32. 

Although  the  original  machine  was  wanting  in  accuracy  of  operation  and 
could  not  always  be  depended  on,  the  machine  did  practical  work.  It  was 
an  operative  machine,  and  demonstrated  to  the  world  the  practicability 
and  utility  of  the  invention.  It  matters  little  that  there  was  a  lack  of  mathe- 
matical accuracy,  and  certainly  the  defect  affords  no  defense  here.  —  Rogers 
v.  Mergenthaler,  64  Fed.  799;  12  C.  C.  A.  422. 

The  patent  in  suit  specified  "  chamotte  "  as  a  specific,  required  element  to 
the  compound.  The  defendant  contended  that  "  chamotte  "  was  merely 
one  form  of  fire-clay,  and  as  the  use  of  fire-clay  for  the  process  of  the  patent 
was  old  the  claim  was  bad.  Held:  Inasmuch  as  the  term  "  fire-brick  "  if 
used  in  the  patent  would  not  have  sufficiently  identified  the  peculiar  product 
to  enable  one  skilled  in  the  art  to  produce  the  patented  product,  but  would 
have  obliged  him  to  experiment  with  the  various  materials  known  under 
said  name,  we  think  the  patentee  was  justified  in  the  use  of  said  word;  that 
it  may  even  have  been  necessary  to  a  full  disclosure  of  his  alleged  invention ; 
and  that,  in  view  of  the  evidence,  the  court  correctly  found  that  fire-brick 
was  not  necessarily  the  equivalent  of  chamotte.  —  Panzl  v.  Battle  Island, 
138  Fed.  48;  70  C.  C.  A.  474. 

It  is  urged  on  us  that  the  complainant  made  no  commercial  use  of  the 
patented  device;  but,  utility  and  patentability  being  otherwise  established, 
we  are  not  required  to  investigate  the  excuse  given  by  complainant  for  non- 
user.  —  Draper  v.  American,  161  Fed.  728;   88  C.  C.  A.  588. 

It  is  objected  that  no  machine,  conforming  to  the  specification  of  the 
first  patent,  was  ever  used  or  put  upon  the  market.  During  the  life  of  his 
monopoly,  a  patentee  is  under  no  obligation  to  use  or  place  upon  the  market 
a  device  or  machine  embodying  his  invention.  —  Lewis  v.  Premium,  163  Fed. 
950;  C.  C.  A. 

Continental  v.  Eastern,  210  U.  S.  405. 


436  THE    FIXED   LAW   OF   PATENTS  §§  485-486 

§  485.     Division  or  Union  of  Parts  or  Elements. 

It  does  not  void  infringement  to  make  an  element  of  the  patent  infringed 
integral  with  another  part.  —  Capital  v.  National,  70  Fed.  709;  17  C.  C.  A. 
355. 

Approving,  53  Fed.  367. 

One  may  not  escape  infringement  by  the  mere  joinder  of  two  elements  into 
one  integral  part.  If  the  united  parts  affect  the  same  result,  in  substantially 
the  same  way  as  the  separate  parts  before  the  union,  the  change  is  colorable. 
—  Bundy  v.  Detroit,  94  Fed.  524;  36  C.  C.  A.  375. 

McDonald  v.  Whitney,  24  Fed.  600;  Ballard  v.  McCluskey,  58  Fed.  880;  Dish 
Co.  v.  Sandy,  60  Fed.  285. 

That  subdividing  a  part  or  combining  two  parts  in  one  without  change  of 
function  is  not  ordinarily  invention,  see  Kalamazoo  v.  Duff,  113  Fed.  264; 
51  C.  C.  A.  221. 

Bundy  v.  Detroit,  94  Fed.  524;   Sessions  v.  Gould,  49  Fed.  855. 

That  forming  an  article  in  two  parts  which,  under  the  patent  was  made  in 
one  piece,  does  not  avoid  the  infringement,  see  Kahn  v.  Starrels,  135  Fed. 
532;  68  C.  C.  A.  82. 

Lepper  v.  Randall,  113  Fed.  627. 

Neither  the  joinder  of  two  elements  into  one  integral  part  accomplish- 
ing the  purpose  of  both  and  no  more,  nor  the  separation  of  one  integral 
part  into  two,  together  doing  precisely  or  substantially  what  was  done  by 
the  single  element,  will  evade  a  charge  of  infringement.  This  principle  is 
even  more  applicable  when  the  change  made  relates  to  mere  matter  of  form 
not  of  the  essence  of  the  invention.  —  Nathan  v.  Howard,  143  Fed.  889 ; 
75  C.  C.  A.  97. 

Bundy  v.  Detroit,  94  Fed.  524;  Dowagiac  v.  Brennen,  127  Fed.  150;  Winans  v. 
Denmead,  15  How.  330. 

The  mere  joinder  of  two  elements  into  one  integral  part  or  the  separation 
of  one  part  into  two  may  be  an  infringement  if  the  change  in  the  structure 
accomplishes  the  same  results  in  substantially  the  same  way.  —  Dunlap  v. 
Willbrandt,  151  Fed.  223;  80  C.  C.  A.  575. 

Of  course  there  are  cases  in  which,  in  determining  whether  a  subsequent 
device  infringes,  it  is  unimportant  whether  it  is  made  in  two  pieces  instead 
of  three,  or  whether  a  member  is  mechanically  attached  to  the  remainder 
of  the  structure  or  made  integral  with  it.  They  are,  however,  inapplicable 
to  a  case  in  which  the  very  divisibility  into  parts  or  in  which  the  particular 
method  of  attachment  constitutes  the  law  of  the  structure  or  is  declared 
or  appears  to  be  of  the  essence  of  the  supposed  invention.  —  Dunlap  v. 
Willbrandt,  151  Fed.  223;  80  C.  C.  A.  575. 

Clough  v.  Barker,  106  U.  S.  166;  Standard  v.  Caster,  113  Fed.  162;  Mabie  v. 
HaskaU,  2  Cliff.  507. 

§  486.     Duplication. 

If  the  inventor  has  sufficiently  described  and  pointed  out  his  improvement 
to  meet  the  requirement  of  the  patent  law,  then  he  is  not  to  be  deprived 
of  the  benefit  of  this  feature  because,  by  a  duplication  of  his  wheels,  this 
advantage  can  be  obtained  to  a  greater  degree.  Appellant  cannot  escape 
liability  as  an  infringer  by  a  mere  duplication  of  the  combination.    That  is  a 


§  487  INFRINGEMENT  437 

mere  carrying  forward  of  his  idea,  duplicating  the  parts,  doing  the  thing  in 
identically  the  same  way,  with  better  results.  —  Goshen  v.  Bissell,  72  Fed. 
67;  19  C.  C.  A.  13. 

Roberts  v.  Ryer,  91  U.  S.  150;   Belding  v.  Challenge,  152  U.  S.  107. 

It  seems  clear  to  us  that  Anderson  took  the  principle  of  Bonnette's  in- 
vention, and  merely  doubled  the  parts.  It  is  well  settled  that  the  mere 
doubling  of  parts  to  produce  the  same  result  does  not  prevent  infringement, 
even  though  it  may  involve  tributary  invention.  —  Bonnette  v.  Koehler,  82 
Fed.  428;  27  C.  C.  A.  200. 

The  defendant's  spike  point  embodies  all  that  was  of  value  in  the  Goldie 
device,  and  the  mere  duplication  of  the  point  does  not  enable  the  defendants 
to  evade  the  charge  of  infringement.  —  Diamond  v.  Goldie,  84  Fed.  972; 
28  C.  C.  A.  589. 

Hoyt  v.  Home,  145  U.  S.  302. 

There  is,  moreover,  a  class  of  cases  to  which  we  cannot  broadly  apply  the 
rule  that  results  which  may  be  gained  by  a  device  are  protected  although 
not  foreseen  by  the  patentee;  in  other  words,  cases  in  which  the  rule  of 
"  double  use,"  as  it  is  often  called,  does  not  apply  in  behalf  of  the  inventor. 
They  all  turn  on  the  fact  that,  under  peculiar  circumstances,  the  application 
to  some  particular  purpose  of  an  element  used  generally  throughout  the  arts 
or  an  improvement  in  various  details  as  in  the  present  case,  amounts  to 
invention,  on  account  of  the  particular  end  accomplished,  although  the  pat- 
ent issues  for  the  device,  and  not  for  the  process,  product,  or  result.  Or- 
dinarily, such  inventions  are  of  a  limited  or  low  order,  and  must  be  restricted 
to  the  express  purposes  pointed  out  by  the  inventor,  or  they  obstruct  the 
advance  of  the  beneficial  arts,  rather  than  assist  it.  —  Davey  v.  Prouty  Co. 
107  Fed.  505;  46  C.  C.  A.  439. 

Electric  v.  LaRue,  139  U.  S.  601;  Watson  v.  Stevens,  15  Fed.  757;  Consoli- 
dated v.  West  End,  85  Fed.  664;    Electric  v.  Fuller,  59  Fed.  1005. 

§  487.     Evidence  of  —  Acts  of  Defendant. 

The  conduct  of  defendant,  by  way  of  evasive  pleading  and  testimony 
and  unsatisfactory  answer  to  interrogatories,  evidences  infringement.  — 
Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed.  177. 

Infringement  by  defendant  is  evidence  as  against  him  of  the  utility  of  the 
thing  patented.  —  Gandy  v.  Main,  143  U.  S.  582;  36  L.  Ed.  272;  12  S.  Ct. 
598. 

Ingenuity  displayed  in  the  evasion  of  the  salient  feature  of  an  invention 
and  in  concealing  the  same  as  an  element  in  a  subsequent  application  will 
be  considered  favorably  in  determining  novelty.  —  Hoyt  v.  Home,  145  U.  S. 
302;  36  L.  Ed.  713;  12  S.  Ct.  922. 

Winans  v.  Denmead,  56  U.  S.  330. 

Actions  often  speak  louder,  and  frequently  more  truthfully  than  words. 
It  is  not  impossible  that  the  reason  why  the  appellees  are  not  using  the  old 
devices  they  plead  is  that  the  improvements  described  in  this  patent  have 
made  them  useless  and  unmerchantable.  If  this  is  not  so,  they  can 
abandon  the  improvements  of  these  patentees,  and  go  back  to  the  devices 
they  plead.  —  Griswold  v.  Harker,  62  Fed.  389;   10  C.  C.  A.  435. 

Apparently  defendants  used  the  patented  device,  denied  infringement, 
and  refused  to  disclose  the  exact  use  and  workings  of  the  device.     Held: 


438  THE    FIXED    LAW    OF    PATENTS  §§  488-490 

The  course  of  defendants  naturally  subjects  them  to  unfavorable  comment, 
and  throws  a  certain  suspicion  on  the  device,  which  it  is  impossible  to  en- 
tirely cast  aside.  But  this  circumstance  cannot  influence  the  judgment  of 
the  court.  Its  duty  still  remains  to  decide  these  cases  simply  upon  the 
evidence  presented.  —  Goodyear  v.  Spaulding,  110  Fed.  393;  49  C.  C.  A.  88. 
Note:  True,  in  this  case,  the  court  did  so  decide;  but  I  think  that  if  the 
question  had  been  a  very  close  one,  the  conduct  of  the  defendant  would  have 
unconsciously  led  the  court  against  him. 

The  persistency  with  which  the  defendant  clings  to  the  vertical  rotatable 
plug  (the  device  of  the  patent  in  suit)  furnishes  one  of  the  principal  reasons 
which  leads  us  to  reject  the  defense  of  non-patentability.  —  Empire  v.  Sears, 
160  Fed.  668;  87  C.  C.  A.  556. 

§  488.     Evidence  of  —  Burden. 

The  burden  is  upon  plaintiff  to  establish  both  the  allegation  of  invention 
and  that  of  infringement.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed. 
125. 

Seymour  v.  Osborne,  11  Wall.  538. 

The  burden  of  proof  of  infringement  is  upon  the  complainant.  —  Price  v. 
Kelly,  154  U.  S.  669;  26  L.  Ed.  634;  14  S.  Ct.  1208. 

§  489.     Evidence  of  —  Expert. 

Expert  witnesses  on  both  sides  have  been  examined  also  upon  the  issue 
of  infringement,  but  they  differ  so  widely  in  opinion  that  their  testimony 
affords  the  court  but  little  aid  in  determining  the  question,  which,  after  all, 
must  depend  chiefly  upon  the  comparison  of  the  descriptive  portions  of  the 
two  specifications.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

Hill  v.  Thompson,  1  Web.  P.  C.  232;  Turner  v.  Winter,  1  Web.  P.  C.  77. 

§  490.     Evidence  of  —  Function. 

On  a  legal  construction  of  this  claim,  anything  which  does  not  possess  this 
function  and  this  action,  no  matter  to  what  extent  in  other  particulars  it 
may  answer  its  cause,  does  not  infringe  it.  —  Eppler  v.  Campbell,  86  Fed.  141 ; 
29  C.  C.  A.  616. 

That  the  defendant's  meter  and  the  meter  of  the  Youngs  patent  may 
effect  the  same  result  is  not  determinative  of  the  question  of  infringement. 
—  Pittsburg  v.  Pittsburg,  109  Fed.  644;  48  C.  C.  A.  580. 

Water-Meter  v.  Desper,  101  U.  S.  332;  Westinghouse  v.  Brake  Co.  170  U.  S. 
537. 

That  their  apparatus  has  the  capacity  of  readjusting  the  position  of  the 
packer  in  the  well,  and  resetting  it  above  or  below  its  original  position,  is 
not  conclusive  of  the  question  of  infringement.  —  Masseth  v.  Larkin,  119 
Fed.  171;  56  C.  C.  A.  167. 

O'Reilly  v.  Morse,  15  How.  62;   Westinghouse  v.  Brake  Co.  170  U.  S.  537. 

The  element  of  "  a  wrapping  mechanism  "  in  appellee's  machine  cannot 
also  be  the  element  of  a  "  twisting  mechanism  "  in  the  sense  of  appellant's 
claims  merely  because  the  wrapping  mechanism  inevitably  tends  to  give 
a  slight  twist  to  the  pliable  strands.  —  American  v.  Choate,  159  Fed.  429; 
86  C.  C.  A.  409. 

Ajax  v.  Pettibone.  125  Fed.  748. 


§§  491-494  INFRINGEMENT  439 

§  491.     Evidence  of  —  Identity. 

If  the  patent  in  suit  is  limited  by  the  state  of  the  art  to  a  specific  con- 
struction, a  claim,  to  be  valid,  cannot  be  construed  to  cover  a  device  employ- 
ing a  mechanism  not  the  equivalent  thereof.  —  Grier  v.  Wilt,  120  U.  S.  412; 
30  L.  Ed.  712;  7  S.  Ct.  718. 

The  jury  will  not  consider  any  former  device  to  be  an  anticipation  unless 
they  believe  such  former  device  developed  the  same  mode  of  operation  as 
the  device  described  in  the  plaintiff's  patent.  —  Haines  v.  McLaughlin,  135 
U.  S.  584;  22  L.  Ed.  241 ;  10  S.  Ct.  876. 

§  492.     Evidence  of  —  Law  Actions. 

The  claim  in  the  specification  was  for  a  combination  of  such  parts  of  the 
described  mechanism  as  were  necessary  to  the  operation  of  the  device.  The 
defendants  had  not  infringed  the  patent  unless  they  had  used  all  the  parts 
embraced  in  the  plaintiff's  combination.  It  was  a  question  for  the  jury 
to  find  what  those  parts  were,  and  whether  the  defendants  had  used  them . 
—  Silsby  v.  Foote,  14  How.  218;  14  L.  Ed.  394. 

The  question  of  anticipation  is  purely  a  question  of  fact,  and  is  exclusively 
for  the  jury  to  determine.  —  Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed. 
241 ;  10  S.  Ct.  876. 

We  think  the  circuit  court  erred  in  not  submitting  to  the  jury  the  question 
of  infringement,  under  proper  instructions.  If  the  patented  invention  was 
within  the  rule  in  Morley  v.  Lancaster,  129  U.  S.  263,  "  one  of  a  primary 
character,"  and  the  patent  was  "  a  pioneer  patent,"  which  were  questions 
of  fact  to  be  passed  upon  by  the  jury,  then  the  question,  on  a  proper  con- 
struction of  the  patent,  whether  the  defendant's  machine  infringed  its  claims, 
was  a  question  of  fact  for  the  jury  to  determine,  on  all  the  evidence  which 
the  case  might  present.  —  Royer  v.  Schultz,  135  U.  S.  319;  34  L.  Ed.  214; 
10  S.  Ct.  833. 

Tucker  v.  Spalding,  80  U.  S..  453. 

It  was  not  a  matter  of  mere  judicial  knowledge  that  the  mechanical  differ- 
ences between  the  two  machines  were  material,  in  view  of  the  character 
of  the  patented  invention  and  of  the  claims  of  the  patent ;  and  we  are  unable 
to  concur  with  the  view  of  the  circuit  court  (29  Fed.  281)  that  this  is  a  case 
where,  if  the  jury  had  found  a  verdict  for  the  plaintiff,  on  the  evidence  put 
in  by  him  on  the  question  of  infringement,  all  of  which  evidence  the  bill  of 
exceptions  states  is  set  forth  therein,  it  would  have  been  proper  for  the  court 
to  set  aside  such  verdict.  —  Royer  v.  Schultz,  135  U.  S.  319;  34  L.  Ed.  214; 
10  S.  Ct.  833. 

Keyes  v.  Grant,  118  U.  S.  25. 

§  493.     Evidence  of  —  Parol. 

Oral  testimony,  unsupported  by  patents  or  exhibits,  tending  to  show  prior 
use  of  a  device  regularly  patented  is,  in  the  nature  of  the  case,  open  to  grave 
suspicion.  —  Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

Washburn  v.  Beat  Em  All,  143  U.  S.  275. 

§  494.     Evidence  of  —  Sufficiency. 

The  proper  evidence  from  which  to  determine  the  infringement  is  the 
patent  in  suit  and  the  device  made  by  the  defendant.  —  Blanchard  v .  Put- 
nam, 75  U.  S.  420;   19  L.  Ed.  433. 


440  THE   FIXED    LAW   OF   PATENTS  §  495 

Persons  seeking  redress  for  the  unlawful  use  of  letters  patent,  in  which 
they  have  an  interest,  are  obliged  to  allege  and  prove  that  they,  or  those 
under  whom  they  claim,  are  the  original  and  first  inventors  of  the  improve- 
ment embodied  in  the  letters  patent  on  which  the  suit  is  founded,  and  that 
the  same  has  been  infringed  by  the  party  against  whom  the  suit  is  brought. 
The  burden  of  proof  is  upon  the  party  instituting  the  suit.  The  letters  patent, 
if  in  due  form,  and  introduced  in  evidence  are  prima  facie  proof  of  the  first 
allegation,  and  in  the  absence  of  proof  to  the  contrary  afford  a  presumption 
sufficient  for  a  recovery.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Infringement  must  not  only  be  alleged  but  must  be  specifically  proved  by 
the  complainant.  —  Imhauser  v.  Buerk,  101  U.  S.  647;  25  L.  Ed.  945. 

Where  denial  of  infringement  is  made  in  the  answer  under  oath,  infringe- 
ment must  be  shown  by  satisfactory  proof.  —  Lehigh  v.  Mellon,  104  U.  S. 
112;   26  L.  Ed.  639. 

To  establish  infringement  there  must  be  a  preponderance  of  evidence  in 
complainant's  favor.  —  Bene  v.  Jeantet,  129  U.  S.  683;  32  L.  Ed.  803;  9 
S.  Ct.  428. 

As  this  is  not  the  only  way  in  which  the  parts  may  be  attached,  it  was 
incumbent  on  the  plaintiff  to  show  that  the  defendant  used  castings  and 
bottom  plates  of  that  fashion ;  otherwise  infringement  is  not  proved.  — 
Canda  v.  Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 

A  single  sale  made  in  circumstances  which  indicate  a  readiness  to  make 
other  similar  sales  upon  application  is  sufficient  to  make  out  a  prima  facie 
case.  —  Hutter  v.  De  Q.  Bottle,  128  Fed.  283;  62  C.  C.  A.  652. 

That  the  proof  of  infringement  must  be  positive,  and  that  testimony  of 
infringing  articles  "  substantially  identical  "  and  "  good  representations  " 
is  insufficient,  see  Gray  v.  Grinberg,  159  Fed.  138;  86  C.  C.  A.  328. 

The  burden  of  proof  rested  upon  the  complainant  to  show  a  completed  act 
of  infringement.  The  defendant's  alleged  threatened  infringement  was  in- 
sufficient. —  Gray  v.  Grinberg,  159  Fed.  138;  86  C.  C.  A.  328. 

Westinghouse  v.  Stanley,  116  Fed.  641. 

§  495.     Evidence  of  —  Utility  —  Use  by  Defendant. 

It  does  not  lie  in  the  mouth  of  an  infringer  to  deny  the  utility  of  the  device 
of  the  patent  in  suit.  The  presumptions  at  least  are  against  him.  —  DuBois  v. 
Kirk,  158  U.  S.  58;  39  L.  Ed.  895;  15  S.  Ct,  729. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Western  v.  LaRue,  139  U.  S.  601;  Gandy 
v.  Main,  143  U.  S.  577. 

The  facts  that  its  usefulness  is  not  denied,  and  that  the  appellant  has 
seen  fit  to  depart  from  the  many  devices  open  to  his  use,  and  to  adopt  that 
of  the  appellee,  strongly  indicate  that  it  marks  a  distinct  and  useful  advance 
in  the  progress  of  this  art.  —  Brammer  v.  Schroeder,  106  Fed.  918;  46 
C.  C.  A.  41. 

We  may  add  that  the  evidence  warrants  the  conclusion  that  complainant's 
lantern  never  went  into  practical  use,  whereas  the  defendant's  lantern  has 
gone  into  extensive  public  use.  Of  course,  these  facts  as  to  use  are  by  no 
means  decisive,  but  they  tend  to  negative  the  charge  of  infringement.  — 
Raymond  v.  Keystone,  134  Fed.  866;  67  CCA.  492. 


§  496  INFRINGEMENT  441 

§  496.     Evidence  of  —  Miscellaneous  Holdings. 

The  question  of  infringement  is  a  mixed  question  of  fact  and  of  law.  — 
California  v.  Molitor,  113  U.  S.  609;  28  L.  Ed.  1106;  5  S.  Ct.  618. 

Where  there  is  evidence  contradictory  of  the  infringement,  we  cannot, 
in  the  absence  of  ocular  inspection,  take  it  upon  ourselves  to  say  that  the 
circuit  court  erred  in  finding  infringement.  —  Dobson  v.  Dornan,  118  U.  S. 
10;  30  L.  Ed.  603;  6  S.  Ct.  946. 

If  the  method  pursued  by  the  patentee  for  the  performance  of  the  function 
discovered  by  him  would  naturally  have  suggested  the  device  adopted  by 
the  defendant,  that  is  in  itself  evidence  of  an  intended  infringement;  but 
although  Mr.  Boyden  may  have  intended  to  accomplish  the  same  results, 
the  Westinghouse  patent  if  he  had  had  it  before  him,  would  scarcely  have 
suggested  the  method  he  adopted  to  accomplish  these  results.  Under  such 
circumstances,  the  law  entitles  him  to  the  rights  of  an  independent  inventor. 
—  Westinghouse  v.  Boyden,  170  U.  S.  537;  42  L.  Ed.  1136;  18  S.  Ct.  707. 

The  question  of  infringement  or  no  infringement  is  one  of  law,  and  sus- 
ceptible of  determination  on  this  writ  of  error.  —  Singer  v.  Cramer,  192  U.  S. 
265;  48  L.  Ed.  437;  24  S.  Ct.  291. 

Heald  v.  Rice,  104  U.  S.  737;  Market  v.  Rowley,  155  U.  S.  621. 

The  action  was  upon  a  patent  for  a  current  regulator.  Anticipation  was  set 
up  under  a  former  patent  to  the  same  parties  upon  a  sparking  regulator.  Ex- 
pert proof  determined  that  a  device  made  according  to  either  patent  could 
be  determined  to  perform  the  function  of  the  other  only  by  experimental 
tests.  Held:  This  alone  ought  to  be  conclusive  of  the  dispute.  When  such 
tests  are  necessary  to  distinguish  one  device  from  another,  it  is  a  manifestly 
impracticable,  not  to  say  dangerous,  proposition  that  the  making  or  using 
of  either  under  a  given  patent  may  be  declared  to  be  an  infringement  of  a 
different  patent  upon  the  other.  —  Thomson-Houston  v.  Western,  70  Fed. 
69;  16  C.  C.  A.  642. 

It  is  manifest  on  the  face  of  the  patent  that  the  specification  was  prepared 
by  one  perfectly  familiar  with  the  Shuman  invention,  and  that  there  is 
a  studied  effort  throughout  the  patent  to  differentiate  the  alleged  invention 
thereof  from  his.  —  Streator  v.  Wire-Glass  Co.  97  Fed.  950;  38  C.  C.  A.  573. 

The  applications  for  both  patents  were  pending  in  the  Patent  Office  at  the 
same  time,  and  the  decision  of  that  office  that  no  interference  was  found  in 
the  claims  on  the  part  of  the  appellee,  and  the  subsequent  draft  of  both 
patents,  with  the  modifications  in  the  Leslie  claims  as  shown  in  the  record, 
are  strongly  corroborative  of  this  view  of  non-infringement.  —  Mann  v. 
Hoffmann,  104  Fed.  245;  43  C.  C.  A.  514. 

The  evidence  was  not  admitted  for  the  purpose  of  showing  what  was  the 
intention  of  the  corporation.  It  was  admitted  for  the  purpose  of  explaining 
the  language  of  the  articles.  The  articles  referred  to  the  manufacture  of 
directory  machines,  without  describing  or  specifying  them.  It  is  evident  that 
the  incorporators  had  some  particular  machine  in  view.  Such  being  the 
case,  any  witness  who  knew  what  was  referred  to  was  competent  to  testify 
as  to  that  fact.  —  National  v.  Polk,  121  Fed.  742;  58  C.  C.  A.  24. 

When  the  question  of  infringement  depends  entirely  upon  the  construction 
of  a  patent,  either  upon  its  face  or  in  connection  with  facts  of  such  a  nature 


442  THE    FIXED   LAW   OF   PATENTS  §  496 

and  effect  as  not  to  be  reasonably  disputed,  the  question  is  one  of  law  for 
the  court.  —  Western  v.  Robertson,  142  Fed.  471 ;  73  C.  C.  A.  587. 

De  Loriea  v.  Whitney,  63  Fed.  611;  Black  Diamond  v.  Excelsior,  156  U.  S. 
611;   Singer  v.  Cramer,  192  U.  S.  265. 

There  is  no  dispute  of  fact  in  regard  to  the  features  of  the  cans  manu- 
factured by  the  defendant,  and  the  opinions  of  the  experts  upon  the  question 
whether  or  not  they  embody  all  the  essential  parts  of  the  claim  are  of  no 
assistance  to  the  court,  because  their  value  depends  altogether  upon  the 
construction  to  be  given  to  the  claim,  and  this  is  a  matter  wholly  for  the 
court.  —  Ironclad  v.  Dairyman's,  143  Fed.  512;  74  C.  C.  A.  372. 

The  defendant  filed  application  for  patent  on  the  device  here  in  infringe- 
ment and  the  claims  were  rejected  on  the  patent  here  sued  on.  Held:  This 
acquiescence  is  persuasive  evidence  of  an  admission  on  the  part  of  the  pat- 
entee of  the  defendant's  car  that  the  O'Leary  device  was  an  anticipation, 
or  at  least  a  disclosure,  of  certain  of  the  elements  of  defendant's  construction, 
and  therefore  is  persuasive  evidence  of  an  admission  that  if  the  means 
covered  by  said  claims  were  later  than  those  covered  by  the  patent  in  suit, 
they  would  be  an  infringement  thereof.  —  O'Leary  v.  Utica,  144  Fed.  399; 
75  C.  C.  A.  377. 

The  issuance  of  a  patent  to  the  appellee  creates  a  prima  facie  presumption 
of  a  patentable  difference  from  the  invention  of  the  patent  sued  on.  — 
Hardison  v.  Brinkman,  156  Fed.  962;  87  C.  C.  A.  8. 

Miller  v.  Eagle,  151  U.  S.  186. 

It  is  not  disputed  that  there  is  no  proof  in  the  record  that  such  cables 
were  made,  sold,  or  used  by  defendant  before  Feb.  1900,  a  year  and  a  half 
after  the  bill  was  filed.  This  alleged  sample,  therefore,  cannot  be  considered 
in  determining  the  question  of  infringement.  —  National  v.  Roebling's,  158 
Fed.  99;  85  C.  C.  A.  567. 

The  complainant  introduced  "  Complainant's  Exhibit  Scott  Bustle," 
the  counsel  for  the  respective  parties  having  previously  agreed  "  that  the 
same  is  a  fair  specimen  of  the  device  of  the  patent  in  suit."  This  is,  in  effect, 
an  admission  that  the  bustle  purchased  of  the  defendant  is  substantially 
identical  with  the  one  made  under  the  patent,  or,  in  other  words,  it  is  an 
admission  of  infringement.  However,  as  counsel  for  the  defendants  insist 
that  the  stipulation  was  made  inadvertently  and  under  a  misapprehension 
of  the  facts,  we  think  the  defendants  should  not  be  foreclosed  thereby.  — 
Scott  v.  Lazell,  160  Fed.  472  ;  87  C.  C.  A.  456. 

That  the  grant  of  a  subsequent  patent  to  the  same  inventor  is  presumptive 
evidence  that  the  first  patent  is  not  infringed  by  manufacture  under  the 
second  patent,  see  D'Arcy  v.  Staples,  16J  Fed.  733;  88  C.  C.  A.  606. 

Miller  v.  Eagle,  151  U.  S.  186. 

It  is  urged  upon  us  that  inasmuch  as  the  bill  of  complaint  was  brought 
in  a  district  in  which  the  defendants  are  not  inhabitants,  the  burden  of 
proof  was  upon  the  complainant  to  show  a  complete  act  of  infringement  in 
such  district  —  otherwise  the  Circuit  Court  for  that  district  would  be  without 
jurisdiction  to  hear  the  cause;  and  the  case  of  Gray  v.  Grinberg,  159  Fed. 
138,  along  with  other  cases  is  cited.  The  usual  rule  is  that  whether  a  de- 
fendant shall  be  required  to  defend  in  a  court  other  than  the  Circuit  Court 
for  the  district  of  which  he  is  an  inhabitant  is  a  question  of  privilege  that  he 
may  insist  upon  or  waive,  at  pleasure.    Gray  v.  Grinberg  is  not  opposed 


§  497  INFRINGEMENT  443 

to  this  rule.  The  question  in  that  case  was,  whether  as  a  matter  of  procedure, 
the  defendant  had  waived  that  privilege  —  whether  by  the  bill  alleging  that 
infringing  acts  had  been  committed  within  the  district,  an  issue  of  fact 
involving  the  question  of  privilege  was  not  thereby  tendered  —  an  averment 
of  fact  that  the  defendant,  wishing  not  to  waive,  but  to  exercise  his  privilege, 
had  not  the  right  to  traverse  by  answer.  We  need  not  enter,  however,  into 
this  question  of  procedure,  for  the  proof  before  us  satisfies  us  —  all  the 
circumstances  being  taken  into  consideration  —  that  acts  of  infringement 
were  actually  committed  within  the  district  where  the  suit  was  brought, 
and  before  the  suit  was  brought.  —  American  Mattress  v.  Springfield,  165  Fed. 
191;   C.  C.  A. 

§  497.     Generic  Patent. 

Those  claims  are  not  for  a  result  or  effect,  irrespective  of  the  means  by 
which  the  effect  is  accomplished.  It  is  open  to  a  subsequent  inventor  to 
accomplish  the  same  result,  if  he  can,  by  substantially  different  means. 
The  effect  of  the  rule  before  laid  down  is  merely  to  require  that,  in  deter- 
mining whether  the  means  employed  in  the  defendant's  machine,  are  sub- 
stantially the  same  means  as  those  employed  in  complainant's  machine,  the 
complainant's  patent  is  to  receive  a  liberal  construction,  in  view  of  the  fact 
that  he  was  a  pioneer  in  the  construction  of  an  automatic  button-sewing 
machine,  and  that  his  patent,  especially  in  view  of  the  character  and  terms 
of  the  four  claims  in  question,  is  not  to  be  limited  to  the  particular  devices 
or  instrumentalities  described  by  him,  used  in  the  three  main  elements 
of  his  machine,  which,  combined  together  make  it  up.  This  is  the  principle 
applied  by  this  court  in  Consolidated  v.  Crosby,  113  U.  S.  157.  —  Morley  v. 
Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 


Where  an  invention  is  one  of  a  primary  character,  and  the  mechanical 
functions  performed  by  the  machine  are,  as  a  whole,  entirely  new,  all  sub- 
sequent machines  which  employ  substantially  the  same  means  to  accomplish 
the  same  result  are  infringements,  although  the  subsequent  machine  may 
contain  improvements  in  the  separate  mechanisms  which  go  to  make  up 
the  machine.  —  Morley  v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct. 
299. 

McCormick  v.  Talcott,  61  U.  S.  402;  Chicago  v.  Sayles,  97  U.  S.  554;  Clough  v. 
Barker,  106  U.  S.  166;  Duff  v.  Sterling,  107  U.  S.  636;  Consolidated  v.  Crosby, 
113  U.  S.  157;  Tilghman  v.  Proctor,  102  U.  S.  707;  Nelson  v.  Hartford,  1  Web. 
P.  C  295. 

If  the  plaintiff  had  invented  an  entirely  new  process,  which  had  revolu- 
tionized the  art,  it  might  be  that  the  court  ought  to  give  that  broad  con- 
struction to  the  patent  which  was  justified  in  the  case  of  a  foundation  patent; 
but  when,  as  in  this  case,  all  the  substantial  steps  in  the  process  were  old, 
the  utmost  that  the  plaintiff  was  entitled  to  was  protection  against  those 
who  used,  in  substance,  his  precise  forms.  —  Royer  v.  Coupe,  146  U.  S.  524; 
36  L.  Ed.  1073;   13  S.  Ct.  166. 

Norton  being  the  original  inventor,  he,  and  those  claiming  under  him, 
would  have  the  right  to  treat  as  infringers  all  persons  who  make  devices  or 
machines  operating  on  the  same  principle  and  performing  the  same  func- 
tions by  analogous  means  or  equivalent  combinations,  even  though  the 
infringing  machine  may  be  an  improvement  of  the  original,  and  patentable 
as  such.  —  Norton  v.  Jensen,  49  Fed.  859;   1  C.  C.  A.  452. 

McCormick  v.  Talcott,  20  How.  405;  Wells  v.  Gill,  1  Ban.  &  A.  77;  Kendrick  v. 
Emmons,  2  Ban.  &  A.  208;  Turrell  v.  Spaeth,  3  Ban.  &  A.  458;  Colt  v.  Arms  Co. 


444  THE   FIXED   LAW   OF   PATENTS  §  497 

1  Fish.  P.  C.  108;    Winans  v.  Railroad,  4  Fish.  P.  C.  2;    Whipple  v.  Mfg.  Co.  4 
Fish.  P.  C.  29;  Fruit  Co.  v.  Curran,  8  Fed.  150. 

With  respect  to  such  a  patent  (a  pioneer)  the  well-settled  rule  is  that  the 
patentee  v.  ho  has,  by  the  success  of  his  patent,  pointed  out  the  combination 
of  functions  needed  to  reach  the  new  result,  and  has  claimed  the  combination 
of  mechanical  parts  performing  those  functions,  may  enjoin  the  use  of  an- 
other machine  producing  the  same  result  where  the  second  machine  differs 
from  the  first  only  in  a  substitution,  for  parts  or  elements  in  the  patented  de- 
vice, of  parts  or  elements  which  though  different  in  form  and  kind,  perform 
the  same  functions  in  substantially  the  same  way.  It  may  be  that  the  sub- 
stituted parts  are  well  known  equivalents  of  those  shown  in  the  patent  for  the 
performance  of  the  functions  to  which  they  are  respectively  applied,  in  which 
case  there  is  manifestly  no  inventive  faculty  shown  in  the  change;  or  it  may 
be  that,  being  shown  by  the  successful  operation  of  the  patent  the  exact 
nature  of  the  functions  to  be  performed  by  a  part  of  the  patented  device, 
the  infringer,  by  the  use  of  his  inventive  faculty,  hits  upon  something  as  a 
substitute  which  will  perform  the  same  functions  more  completely  and  sat- 
isfactorily. In  the  latter  case  he  is  a  tributary  inventor;  but  he  is  none  the 
less  an  infringer  if  he  uses  the  whole  machine,  with  his  substituted  parts  to 
accomplish  the  same  new  result.  The  rule  as  to  infringement  of  pioneer 
inventions  which  point  the  way  to  new  products  or  results  is  analogous  to 
that  applied  in  cases  of  infringements  of  process  patents  in  which  the  dis- 
coverer is  only  required  to  point  out  one  practical  method  of  using  his  proc- 
ess, and  is  permitted  to  claim  tribute  from  all  who  thereafter  use  the  process, 
whether  with  his  apparatus  or  with  a  different  or  improved  means.  In 
Machine  Co.  v.  Lancaster,  129  U.  S.  263,  the  Supreme  Court  said: 

Where  an  invention  is  of  a  primary  character  and  the  mechanical 
functions  performed  by  the  machine  as  a  whole  are  entirely  new,  all  sub- 
sequent machines  which  employ  substantially  the  same  means  to  accom- 
plish the  same  result  are  infringements,  although  the  subsequent  machine 
may  contain  improvements  in  the  separate  mechanisms  which  go  to  make 
up  the  machine.  —  McCormick  v.  Aultman,  69  Fed.  371 ;   16  C.  C.  A.  259. 

Consolidated  v.  Crosby,  113  U.  S.  157;  Royer  v.  Belting  Co.  135  U.  S.  319; 
Machine  Co.  v.  Murphy,  97  U.  S.  120;  Sessions  v.  Romadka,  145  U.  S.  29;  Clough 
v.  Barker,  106  U.  S.  160;  Winans  v.  Denmead,  15  How.  330;  McCormick  v.  Tal- 
cott,  20  How.  402;  Railway  v.  Sayles,  97  U.  S.  554. 

All  subsequent  machines  which  employ  substantially  the  same  means  to 
accomplish  the  same  results  are  infringements,  notwithstanding  the  subse- 
quent machine  may  contain  improvements  in  separate  mechanism  which 
go  to  make  up  the  machine.  —  VonSchmidt  v.  Bowers,  80  Fed.  121 ;  25 
C.  C.  A.  323. 

McCormick  v.  Talcott,  20  How.  402;  Railway  v.  Sayles,  97  U.  S.  554;  Clough  v. 
Barker,  106  U.  S.  166;  Consolidated  v.  Crosby,  113  U.  S.  517. 

Where  a  patent  represents  a  marked  advance  in  the  art,  such  a  patent  is 
called  a  "  pioneer;  "  and  the  courts  in  its  construction,  have  adopted  a  lib- 
eral rule  with  respect  to  equivalents.  While  the  Morris  patent  describes 
a  machine  of  the  "  pioneer  "  type,  it  did  not  solve  the  problem.  No  prac- 
tical machine  embodying  the  invention  has  ever  been  constructed.  The 
successful  solution  of  the  problem  was  subsequently  attained  in  a 
patented  machine  constructed  on  a  different  principle.  The  Morris  ma- 
chine having  proved  a  practical  failure,  it  is  manifest  that  the  de- 
fendant's machine  cannot  be  held  to  infringe.  —  Ford  v.  Bancroft,  98 
Fed.  309;  39  C.  C.  A.  91. 

Machine  v.  Lancaster,  129  U.  S.  263;   Reece  v.  Globe,  61  Fed.  958. 


§  498  INFRINGEMENT  445 

§  498.     By  Government. 

If  an  officer  in  the  military  service,  not  especially  employed  to  make 
experiments  with  a  view  to  suggest  improvements,  devises  a  new  and  useful 
improvement  in  arms,  tents,  or  any  other  kind  of  war  material,  he  is  entitled 
to  the  benefit  of  it  and  to  letters  patent  for  the  improvement,  equally  with 
any  other  citizen  not  engaged  in  such  service;  and  the  Government  cannot, 
after  the  patent  is  issued,  make  use  of  the  improvement  any  more  than  a 
private  individual,  without  license  of  the  inventor  or  making  compensation 
to  him.  —  United  States  v.  Burns,  79  U.  S.  246;  20  L.  Ed.  388. 

Unlawful  use  by  a  government  employee  is  infringement.  —  Cammeyer?;. 
Newton,  94  U.  S.  225;  24  L.  Ed.  72. 

Mitchell  v.  Harmony,  13  How.  115;  U.  S.  v.  Russell,  13  Wall.  623;  U.  S.  v. 
Burns,  12  Wall.  246. 

The  exemption  of  the  United  States  from  judicial  process  does  not  protect 
their  officers  and  agents,  civil  or  military,  in  time  of  peace  from  being  per- 
sonally liable  to  an  action  of  tort  by  a  private  person  whose  rights  of  prop- 
erty they  have  wrongfully  invaded  or  injured,  even  by  authority  of  the 
United  States.  —  Belknap  v.  Schild,  161  U.  S.  10;  16  L.  Ed.  599;  16  S.  Ct. 
443. 

Little  v.  Barreme,  6  U.  S.  170;  Bates  v.  Clark,  95  U.  S.  204;  Cammeyer  v. 
Newton,  94  U.  S.  225;  Feather  v.  Queen,  6  Best  &  S.  257;  Vavasseur  v.  Krupp, 
L.  R.  9  Ch.  Div.  351. 

"  The  United  States  have  not  consented  to  be  liable  to  suits  founded  in 
tort,  for  wrongs  done  by  their  officers,  though  in  the  discharge  of  their 
official  duties.  The  United  States,  therefore,  are  not  liable  to  a  suit  for  an 
infringement  of  a  patent,  that  being  an  action  sounding  in  tort.  —  Belknap 
v.  Schild,  161  U.  S.  10;  16  L.  Ed.  599;  16  S.  Ct.  443. 

Gibbons  v.  U.  S.  75  U.  S.  269;  Morgan  v.  U.  S.  81  U.  S.  531;  Langford  v.  U.  S. 
101  U.  S.  341;  U.  S.  v.  Jones,  131  U.  S.  1;  German  v.  V.  S.  148  U.  S.  573;  Hill  v. 
U.  S.  149  U.  S.  593;  Schillinger  v.  U.S.  155  U.  S.  163;  U.S.v.Berdan,  156 U.  S.552. 

This  court  has  repeatedly  and  uniformly  held  that  the  United  States 
have  no  more  right  than  any  private  person  to  use  a  patented  invention 
without  license  of  the  patentee  or  making  compensation  to  him.  —  Belknap 
v.  Schild,  161  U.  S.  10;  16  L.  Ed.  599;  16  S.  Ct,  443. 

U.  S.  v.  Burns,  79  U.  S.  246;  Cammeyer  v.  Newton,  94  U.  S.  225;  James  v. 
Campbell,  104  U.  S.  356;  Hollister  v.  Benedict,  113  U.  S.  59;  U.  S.  v.  Palmer,  128 
U.  S.  262. 

The  United  States  cannot  be  sued  in  their  courts  without  their  consent, 
and  they  cannot  be  sued  for  tort,  as  for  the  infringement  of  a  patent.  — 
Schillinger  v.  U.  S.  155  U.  S.  163;  39  L.  Ed.  108;  15  S.  Ct.  85. 

Gibbons  v.  Wilson,  75  U.  S.  269;  Morgan  v.  U.  S.  81  U.  S-  531;  Hill  v.  U.  S.  149 
U.  S.  593;  U.  S-  v.  Palmer,  128  U.  S-  262;  U.  S.  v.  Russell,  80  U.  S.  623;  U.  S.  v. 
Great  Falls,  112  U.  S.  645- 

The  United  States  may  appropriate  and  use  the  invention  of  an  indi- 
vidual for  its  necessary  uses,  the  fifth  amendment  to  the  constitution  re- 
quiring only  that  due  compensation  shall  be  made.  But  this  provision  does 
not  prescribe  that  the  usual  method  of  condemnation  of  property  is  es- 
sential. (In  this  case  the  Chief  of  Ordnances  wanted  to  use  a  certain  breech- 
loading  mechanism,  which  was  patented  to  complainant's  assignor,  and  he 
proceeded  to  use  it  without  license  or  right.)  It  does  not  appear,  and  it 
was  not  the  fact  that  this  was  the  only  mechanism  available.  —  Dashiell  v. 
Grosvenor,  66  Fed.  334;   13  C.  C.  A.  593. 


446  THE    FIXED    LAW    OF    PATENTS  §§  499-500 

Kohl  v.  U.  S.  91  U.  S.  367;  James  v-  Campbell,  104  U.  S.  356;  U.  S-  v.  Great 
Falls  112  U.  S.  645;  Hollister  v.  Benedict,  113  U.  S.  59:  U.  S.  v.  Palmer,  128 
U.  S.'262;  Schillinger's  Case,  24  Ct.  CI.  278;  Gill's  Case,  25  Ct.  CI.  415;  Berdan's 
Case,  26  Ct.  CI.  48- 

§  499.     Identity  —  Equivalents. 

He  is  entitled  to  protect  himself  from  all  other  modes  of  making  the  same 
application;  and  every  question  of  infringement  will  present  the  question 
whether  the  different  mode,  be  it  better  or  worse,  is  in  substance  an  applica- 
tion of  the  same  principle.  —  Sewall  v.  Jones,  91  U.  S.  171 ;  23  L.  Ed.  275. 

Curtis,  sec.  320. 

A  construction  employing  substantial  equivalents  of  mechanism  and  per- 
forming the  same  function  is  an  infringement.  —  Gage  v.  Herring,  107  U.  S. 
640;  27  L.  Ed.  601;  2  S.  Ct.  819. 

Gould  v.  Rees,  15  Wall.  187;  Ives  v.  Hamilton,  92  U.  S.  426;  Machine  v. 
Murphy,  97  U.  S.  120. 

The  bolt  and  the  clevis  perform  the  same  office  in  the  two  structures, 
and  the  mechanical  differences  are  merely  formal  and  not  substantial. 
The  combination  consists  of  the  same  four  parts,  differing  only  in  form.  — 
Lake  Shore  v.  National,  110  U.  S.  229;  28  L.  Ed.  129;  4  S.  Ct.  33. 

Where  a  defendant  employs  substantially  the  same  devices  as  the  plain- 
tiff, but  seems  to  have  adopted  prior  and  known  means  rather  than  to  have 
purloined  the  device  of  plaintiff  it  will  be  considered  in  determining  infringe* 
ment.  —  Pope  v.  Gormully,  144  U.  S.  254;  36  L.  Ed.  420;   12  S.  Ct.  637. 

The  specification  was  coextensive  with  the  actual  invention,  and  described 
three  methods  of  construction.  The  defendant  took  one  of  the  methods 
of  construction  described  in  the  specification  and  included  in  the  claim. 
It  is  not  of  importance  that  it  did  not  take  the  best  method  which  was 
so  described.  —  Judd  Co.  v.  Fowler,  61  Fed.  821 ;   10  C.  C.  A.  100. 

Two  devices  doing  the  same  thing  in  substantially  the  same  way  with 
substantially  the  same  result  are  the  same  in  the  patent  sense.  —  Thomson- 
Houston  v.  National,  65  Fed.  427;  12  C.  C.  A.  671. 

Machine  v.  Murphy,  97  U.  S.  120. 

It  is  no  less  true  that  a  copy  of  the  thing  described  and  claimed  in  a  patent 
either  without  variation,  or  with  such  variations  as  are  consistent  with  its 
being  in  substance  the  same  thing,  is,  for  all  the  purposes  of  the  patent  law, 
the  same  device  or  combination  as  that  described  in  the  patent.  —  Kinloch 
v.  Western,  113  Fed.  652;  51  C.  C.  A.  362. 

Burr  v.  Duryee,  1  Wall.  531. 

§  500.     Identity  —  Means  Employed. 

An  infringement  involves  substantial  identity,  whether  that  identity  be 
described  by  the  terms  "  same  principle,"  same  "  modus  operandi  "  or  any 
other.  —  Burr  v.  Duryee,  68  U.  S.  531 ;  17  L.  Ed.  750. 

Two  things  are  not  the  same  under  the  patent  law,  when  one  is,  in  prac- 
tice, substantially  better  than  the  other  in  a  case  where  the  second  improve- 
ment is  not  gained  by  the  use  of  the  same  means  or  known  mechanical 
equivalents.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

Curt.  Pat.  sec.  330. 


§§  501-502  INFRINGEMENT  447 

Identity  of  detail  in  a  combination  like  the  one  under  consideration,  is 
not  necessary  in  order  to  constitute  infringement.  The  patentee  took  pains 
to  point  out  that  "  the  specific  construction  of  the  mechanism  shown  .  .  . 
is  not  essential."  This  was  unnecessary  precaution;  the  law  gave  him  ample 
protection  in  this  regard.  —  International  v.  Dey,  142  Fed.  736;  74  C.  C.  A. 
68. 

Machine  v.  Murphy,  97  U.  S.  120. 

§  501.     Identity  —  Non-Essentials. 

Slight  differences  in  degree  cannot  be  regarded  as  of  weight  in  determining 
the  question  of  substantial  similarity  or  substantial  difference,  but  in  all 
cases  the  question  whether  the  difference  in  degree  is  insufficient  to  prove 
the  alleged  infringement  is  a  question  of  fact  to  be  determined  by  the  jury 
in  an  action  at  law,  or  by  the  court  in  a  suit  in  equity.  —  Mitchell  v.  Tilgh- 
man,  86  U.  S.  287;  22  L.  Ed.  125. 

Cahoon  v.  Ring,  1  Cliff.  621. 

But  it  is  no  less  an  infringement  if  it  performs  its  primary  function  in 
practically  the  same  way.  We  are  not  concerned  with  the  subordinate  differ- 
ences in  the  mechanism,  least  of  all  with  the  different  names  given  by  Horton 
to  parts  of  his  machine  similar  to  the  corresponding  parts  in  the  Beach  patent. 
As  the  two  machines  are  alike  in  their  functions,  combination  and  elements, 
it  is  unnecessary  to  go  farther  and  inquire  whether  they  are  alike  or  unlike 
in  their  detail.  —  Hobbs  v.  Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct. 
409. 

The  substantial  identity  of  the  Walker  and  Birkenhead  rests  is  not  affected 
by  the  circumstance  that  in  that  of  the  former  it  is  composed  of  one  part, 
while  that  of  the  latter  is  composed  of  two.  —  Eames  v.  Worcester,  123 
Fed.  67;    60  C.  C.  A.  37. 

Rob.  Pat.  sec.  252;  Stearns  v.  Russell,  85  Fed.  218;  Brown  v.  King,  107  Fed. 
498. 

The  rule  is  well  settled  that  if  two  machines  be  substantially  the  same, 
and  operate  in  the  same  manner,  though  they  may  differ  in  form,  proportion 
and  utility,  they  are  the  same  in  principle.  —  Los  Angeles  v.  Aeolian,  143 
Fed.  880;  75  C.  C.  A.  88. 

Converse  v.  Cannon,  2  Woods,  7;  Machine  v.  Murphy,  97  U.  S.  120;  Cantrell  v. 
Wallick,  117  U.  S.  689;  Blandy  v.  Griffith,  3  Fish.  P.  C.  609;  Walker  on  Pat.  sec. 
376;  Rob.  on  Pat.  sec.  30;  Curtis  on  Pat.  sec.  320. 

§  502.     Identity  —  Result  or  Function. 

The  fact  that  by  careful  workmanship  the  products  are  indistinguishable 
by  mere  inspection  does  not  establish  the  identity  of  the  processes;  and  as 
the  patent  for  the  product  must  be  limited  to  an  article  made  by  the  particu- 
lar process,  the  inquiry  must  be  determined  by  a  comparison  between  the 
methods  actually  employed.  —  Plummer  v.  Sargent,  120  U.  S.  442;  30  L.  Ed. 
737;  7  S.  Ct.  640. 

This  result  being  different  from  that  in  the  plaintiff's  device,  the  mechanism 
is  different  and  is  not  an  equivalent  of  that  of  the  plaintiff.  —  Grier  v.  Wilt, 
120  U.  S.  412;  30  L.  Ed.  712;  7  S.  Ct.  718. 

Looking  at  the  improvement  in  issue  in  view  of  the  cases  cited,  it  consists 
of  mechanical  details  accomplishing  a  useful  result,  but  of  a  low  order ;  and 
the  mechanical  details  of  respondent's   devices  are  different,  in  the  sense 


448  THE    FIXED    LAW    OF    PATENTS  §  503 

of  the  patent  law,  and  accomplish  a  result  also  in  a  large  part  different,  and 
cannot  be  held  to  infringe.  —  Electric  v.  Fuller,  59  Fed.  1003;  8  C.  C.  A.  442. 
Knapp  v.  Morss,  150  U.  S.  221;  Gordon  v.  Warder,  150  U.  S.  47. 

If  it  be  conceded  that  it  will  do  that  work  in  substantially  the  same 
way,  infringement  is  not  thereby  established.  Substantial  identity  between 
the  combinations  must  be  found  in  their  capacity  to  do  the  same  work 
in  substantially  the  same  way,  and  it  does  not  suffice  to  show  that  they  will 
do  one  part  of  their  work.  The  argument  for  complainant  seems  to  proceed 
upon  the  theory  that  the  combinations  are  substantially  the  same  because  each 
will  perform  the  several  operations  of  the  system,  and  each  is  composed  of 
essentially  the  same  devices.  The  answer  is  that  the  differences  in  organi- 
zation introduce  different  modes  of  operation  except  in  a  single  instance, 
and  the  identity  is  incomplete,  being  partial,  instead  of  general.  —  Westing- 
house  v.  N.  Y.  119  Fed.  874;  56  C.  C.  A.  404. 

That  the  two  machines  of  respondents  and  complainants  both  accom- 
plish the  same  result  may  be  conceded,  but  identity  of  result  is  not  the  test 
of  infringement.  There  must  in  the  ordinary  patent  be  identity  of  means 
and  identity  of  operation  as  well.  —  American  v.  Cimiotti,  123  Fed.  869,  59 
C.  C.  A.  357. 

Kokomo  v.  Kitselman,  189  U.  S.  8. 

§  503.     Identity  —  Tests  of. 

Proofs  of  infringement  consist  in  a  comparison  of  the  machine  made  by 
respondents  with  the  mechanism  described  in  the  patent,  and  in  the  testi- 
mony of  scientific  experts.  —  Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed. 
177. 

To  infringe  a  patent  it  is  not  necessary  that  the  thing  patented  should  be 
adopted  in  every  particular.  If  the  patent  is  adopted  substantially  by  the 
defendants  they  are  guilty  of  infringement.  —  Sewall  v.  Jones,  91  U.  S.  171 ; 
23  L.  Ed.  275. 

Root  v.  Ball,  4  McLean,  177;  Alden  v.  Dewey,  1  Story,  336;  Howe  v.  Abbott,  2 
Story,  190;  Parker  v.  Haworth,  4  McLean,  370. 

It  is  not  only  necessary  to  an  infringement  that  the  arrangement  which 
infringes  should  perform  the  same  service  or  produce  the  same  effect  but  it 
must  be  done  in  substantially  the  same  way.  —  Werner  v.  King,  96  U.  S. 
218;    24  L.  Ed.  613. 

Burr  v.  Duryee,  1  Wall.  531. 

To  constitute  identity  of  invention,  and  therefore,  infringement,  not  only 
must  the  result  attained  be  the  same,  but  in  case  the  means  used  for  its  at- 
tainment is  a  combination  of  known  elements,  the  elements  combined  in 
both  cases  must  be  the  same,  and  combined  in  the  same  way,  so  that  each 
element  shall  perform  the  same  function,  provided  however,  that  the 
differences  alleged  are  not  merely  colorable,  according  to  the  rule  for- 
bidding the  use  of  known  equivalents.  —  Electric  v.  Hall,  114  U.  S.  87; 
29  L.  Ed.  96;  5  S.  Ct.  1069. 

The  jury  will  not  consider  any  former  device  to  be  an  anticipation  unless 
they  believe  such  former  device  developed  the  same  mode  of  operation, 
as  the  device  described  in  plaintiff's  patent.  —  Haines  v.  McLaughlin,  135 
U.  S.  584;  22  L.  Ed.  241 ;  10  S.  Ct.  876. 


§  503  INFRINGEMENT  449 

The  identity  or  diversity  in  inherent  quality  of  two  devices  or  manu- 
factures will  be  considered  in  determining  identity  or  diversity  of  invention. 

—  Dobson  v.  Cubley,  149  U.  S.  117;  37  L.  Ed.  671 ;  13  S.  Ct.  796. 

We  have  repeatedly  held  that  a  charge  of  infringement  is  sometimes 
made  out  though  the  letter  of  the  claims  be  avoided.  The  converse  is  equally 
true.  The  patentee  may  bring  the  defendant  within  the  letter  of  his  claims, 
but  if  the  Tatter  has  so  far  changed  the  principle  of  the  device  that  the 
claims  of  the  patent,  literally  construed,  have  ceased  to  represent  his  actual 
invention,  he  is  as  little  subject  to  be  adjudged  an  infringer  as  one  who  has 
violated  the  letter  of  a  statute  has  to  be  convicted,  when  he  has  done  noth- 
ing to  conflict  with  its  spirit  and  intent.  —  Westinghouse  v.  Boyden,  170 
U.  S.  537;  42  L.  Ed.  1136;   18  S.  Ct.  707. 

Machine  Co.  v.  Murphy,  97  TJ.  S.  120;  Ives  v.  Hamilton,  92  U.  S.  431;  Morey  v. 
Lockwood,  8  Wall.  230;  Elizabeth  v.  Pavement  Co.  97  U.  S.  137;  Sessions  v. 
Romadka,  145  U.  S.  29;  Hoyt  v.  Home.  145  U.  S.  302;  Burr  v.  Duryee,  1  Wall. 
531. 

The  plaintiff's  cutting  edge  and  the  defendant's  cutting  edge  perform  the 
same  function  in  substantially  the  same  way  and  accomplishes  the  same 
result.    Therefore,  in  the  sense  of  the  patent  law,  they  are  the  same  thing. 

—  Sayre  v.  Scott,  55  Fed.  971 ;  5  C.  C.  A.  366. 
Machine  Co.  v.  Murphy,  97  TJ.  S-  120. 

The  appellant's  machine  is  not,  it  is  true,  in  every  detail  identical  with  that 
of  the  patent,  but  in  all  material  respects  it  is  the  same.  In  substantially 
the  same  way,  and  by  substantially  the  same  means,  it  accomplished  the 
same  end.  That  it  constitutes  infringement  we  have  no  doubt.  —  Scott  v. 
Hoe,  70  Fed.  781 ;  17  C.  C.  A.  410. 

It  is  more  important  to  observe  what  are  the  features  of  essential  identity 
between  devices  than  to  descant  upon  those  which  are  merely  accidental, 
and  might  be  substituted  one  for  another,  or  entirely  removed  without  dis- 
turbing the  relation  of  parts  or  the  principle  of  construction  or  operation. 

—  Ferguson  v.  Roos,  71  Fed.  416 ;  18  C.  C.  A.  162. 

Temple  v.  Goss,  58  Fed.  196;   De  La  Vergne  v.  Brewing  Co.  66  Fed.  765. 

Section  4888  requires  that  an  application  for  a  patent  (not  the  claim) 
shall  contain  a  written  description  of  the  supposed  invention,  and  of  the 
manner  of  constructing  and  using  it,  "in  such  full,  clear,  concise  and  exact 
terms  as  to  enable  any  person  skilled  in  the  art  ...  to  make  and  use  the 
same ;  "  and  it  follows  that,  in  determining  whether  the  invention  described 
in  one  patent  differs  from  that  described  in  another,  evidence  may  be  heard, 

—  and,  in  a  difficult  case,  manifestly  ought  to  be  heard  —  concerning  the 
construction  and  actual  operation  of  each.  —  Thomson-Houston  v.  Western, 
72  Fed.  530;  19  C.  C.  A.  1. 

It  may  be  conceded,  as  asserted  that  the  differences  of  operation  could  be 
brought  about  by  mechanical  changes  so  minute  that  the  most  expert  tele- 
phonist in  the  world,  taking  an  instrument  at  random  out  of  the  line  could 
not  tell  by  mere  inspection  whether  it  would  be  a  Reis  or  a  Blake  in  operation 
or  result ;  but  a  mere  hearing  would  be  enough.  By  way  of  further  illustra- 
tion, it  is  said  that "  there  is  a  cabinet  in  the  Agassiz  Museum  at  Cambridge, 
containing  a  row  of  mounted  skeletons,  beginning  at  one  end  with  a  monkey 
and  ending  at  the  other  with  a  Caucasian.  The  difference  between  the 
extremes  is  wide  enough,  but  the  two  half-way  chaps  look  like  brothers." 
But  they  are  not  brothers.    By  neither  man  nor  monkey  has  a  live  one  of 


450  THE    FIXED    LAW    OF    PATENTS  §§  504-505 

either  kind  ever  been  mistaken  for  the  other,  and  in  skeleton,  with  all  the 
zeal  of  the  Darwinians  to  find  the  missing  link,  they  remain,  to  the  experts, 
easily  distinguishable,  and  can  only  be  said  to  resemble.  In  the  light  of  pres- 
ent knowledge,  the  Caucasian,  as  an  invention,  is  not  anticipated  by  the 
Simian.  — Thomson-Houston  v.  Western,  72  Fed.  530;  19  C.  C.  A.  1. 

Each  element  being  one  of  the  operative  means,  identity  depends  not 
merely  upon  the  function  performed,  but  upon  the  manner  in  which  it  is 
performed.  —  Imperial  v.  Crown,  139  Fed.  312;  71  C.  C.  A.  442. 

§  504.     Identity  —  Miscellaneous  Rules. 

It  must  be  remembered  it  is  an  absolutely  essential  ingredient  of  a  double 
use  that  the  alleged  infringing  device  or  mechanism  must  be  identical  with 
the  patented  invention.  —  Duff.  Mfg.  Co.  v.  Forgie,  59  Fed:  772;  8  C.  C.  A. 
261. 

It  is  clear  that  the  patent  as  granted  is  for  a  mechanism  only,  and  while, 
under  a  liberal  application  of  the  doctrine  of  equivalents,  "  if  the  device  is 
appropriated  in  its  essential  features  it  will  be  an  infringement,  notwith- 
standing some  change  in  the  location  and  relation  of  parts,"  even  though 
a  doubtful  function  of  little  comparative  worth  be  eliminated  (Western 
Elec.  v.  Sperry,  58  Fed.  186)  yet  the  proposition  enunciated  in  Temple  v. 
Goss,  58  Fed.  196,  is  not  inapplicable,  namely: 

"  That  when  a  device  designed  merely  for  the  improvement  of  a  well 
advanced  art  is  described  as  having  particular  features  of  construction, 
which  are  adapted  to  accomplish  specific  results  or  modes  of  operation, 
and  the  claim  of  the  patent  is  for  that  device,  the  features  so  described  are 
covered  by  the  claim,  and  may  not  be  rejected,  or  treated  as  of  secondary 
importance,  in  order  to  extend  the  patent  over  other  forms  or  features 
not  described."  —  Brush  v.  Western,  76  Fed.  761 ;  22  C.  C.  A.  543. 

§  505.     Importation  and  Exportation. 

A  person  residing  in  the  U.  S.  cannot  purchase  in  another  country  articles 
patented  there,  from  a  person  authorized  to  sell  them,  and  import  them 
to  and  sell  them  in  the  U.  S.  without  the  license  or  consent  of  the  owners 
of  the  U.  S.  patent.  —  Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787;  10 
S.  Ct.  378. 

Wilson  v.  Rousseau,  45  U.  S.  646;  Bloomer  v.  McQueewan,  55  U.  S.  539; 
Adams  v.  Burks,  84  U.  S.  453. 

A  purchaser  in  a  foreign  country  of  an  article  patented  in  that  country 
and  also  in  the  United  States,  from  the  owner  of  each  patent,  or  from  a  li- 
censee under  each  patent,  who  purchases  without  any  restrictions  upon 
the  extent  of  his  use  or  power  of  sale,  acquires  an  unrestricted  ownership 
in  the  article,  and  can  use  or  sell  it  in  this  country.  —  Dickerson  v.  Matheson, 
57  Fed.  524;  6  C.  C.  A.  466. 

Bloomer  v.  Millinger,  1  Wall.  340;  Mitchell  v.  Hawley,  16  Wall.  544;  Paper 
Bag  cases,  105  U.  S.  770;  Holliday  v.  Mattheson,  24  Fed.  185. 

A  purchaser  in  a  foreign  country  of  an  article  patented  in  that  country 
and  also  in  the  United  States,  from  a  licensee  under  the  foreign  patent  only, 
does  not  give  the  purchaser  the  right  to  import  the  article  into,  and  sell 
it  in,  the  United  States,  without  the  consent  or  license  of  the  owner  of  the 
United  States  patent.  —  Dickerson  v.  Matheson,  57  Fed.  524;  6  C.  C.  A. 
466. 

Boesch  v.  Graff,  133  U.  S.  697. 


§  505  INFRINGEMENT  451 

The  cases  of  Adams  v.  Burke,  17  Wall.  453;  Hobbie  v.  Jennison,  149  U.  S. 
355;  and  Keeler  v.  Folding  Bed  Co.,  157  U.  S.  in  which  it  was  held  that  one 
who  purchases  patented  articles  of  a  territorial  assignee  within  the  district 
of  the  United  States  assigned  to  him,  may  sell  them  again  in  the  territory 
owned  by  another,  do  not  rule  the  case  in  hand.  They  rest  upon  the  principle 
that  one  who  buys  the  patented  article  of  a  party  who  is  legally  empowered 
to  sell  it  under  the  patent  has  once  paid  tribute  to  the  monopoly,  and 
has  thereby  acquired  the  right  to  use  and  sell  the  article  he  buys  elsewhere 
within  the  United  States.  But  one  who  purchases  in  a  foreign  country, 
of  others  than  the  owners  of  the  United  States  patent  or  their  vendees  pays 
nothing,  either  directly  or  indirectly  to  the  owners  of  the  patent,  and  there- 
fore he  acquires  no  right  to  make,  use,  or  vend  the  article  which  he  buys 
within  the  territorial  limits  of  their  monopoly.  —  Dickerson  v.  Tinling,  84 
Fed.  192;  28  C.  C.  A.  139. 

The  right  to  sell  the  patented  article  in  the  United  States  is  not  governed 
by  the  laws  of  Germany  or  of  England,  but  by  the  laws  of  this  nation ;  and 
under  those  laws  and  the  patent  before  us  Bayer  &  Co.  has  the  "  exclusive 
right  to  make,  use  and  vend  "  phenacetine  in  the  United  States.  Thus,  in 
Boesch  v.  Graff,  133  U.  S.  697,  a  case  in  which  the  defendant  had  purchased 
in  Germany,  from  one  Hecht,  who  had  the  legal  right  to  sell  them  there,  cer- 
tain burners,  which  had  been  patented  in  both  Germany  and  the  United 
States,  Chief  Justice  Fuller  said: 

"  The  right  which  Hecht  had  to  make  and  sell  the  burners  in  Germany 
was  allowed  him  under  the  laws  of  that  country,  and  purchasers  from  him 
could  not  be  thereby  authorized  to  sell  the  articles  in  the  United  States,  in 
defiance  of  the  rights  of  the  patentees  under  a  United  States  patent." 

Nor  does  one  who  buys  of  the  owner  of  the  patent  in  a  foreign  country 
under  restriction  free  the  article  from  the  rule.  —  Dickerson  v.  Tinling,  84 
U.  S.  192;   28  C.  C.  A.  139. 

Holliday  v.  Mattheson,  24  Fed.  185;  Dickerson  v.  Matheson,  57  Fed.  524;  Dick- 
erson v.  Matheson,  50  Fed.  73;   Dickerson  v.  Matheson,  47  Fed.  319. 

The  complainant  was  the  owner  of  the  patent  on  phenacetine.  A  quantity 
of  the  drug  was  smuggled,  confiscated  by  the  government,  and  sold  to  de- 
fendant who  undertook  to  sell  the  same.  Complainant  sued  for  infringe- 
ment. Held:  the  defendant's  main  contention  appears  to  be  that,  by  passing 
through  the  hands  of  the  federal  government,  the  infringing  phenacetine 
has  been  in  some  way  freed  from  the  operation  of  the  latter 's  patent;  that 
the  rights  of  the  patentee,  so  far  as  they  relate-  to  this  particular  phenacetine, 
have  been  abrogated  by  the  action  of  the  acting  officers.  This  proposition 
is  wholly  without  support  in  any  case  cited  in  the  brief.  —  Dickerson  v. 
Sheldon,  98  Fed.  621 ;  39  C.  C.  A.  191. 

Belknap  v.  Schild,  161  U.  S.  15;   James  v.  Campbell,  104  U.  S.  358. 

The  defendant  bought  a  patented  article  smuggled  in  and  condemned  by 
the  government.  On  suit  for  infringement,  Held:  The  defendant  contends 
that,  by  the  condemnation  proceedings,  the  statutory  notice  having  been 
given,  the  absolute  title  to  the  property  sold  passed  to  the  purchaser, 
freed  from  any  lien,  interest,  incumbrance,  or  reservation.  This  is  correct 
as  to  property  sold.  All  persons  having  title  to  it,  or  lien  upon  it,  or  interest 
in  it,  are  cut  off.  But  the  owner  of  the  patent  is  in  none  of  these  categories. 
He  has  no  title  to,  or  lien  on,  or  legal  or  equitable  interest  in,  the  infrin- 
ging property.  "  The  right  of  property  in  the  physical  substance,  which  is 
the  fruit  of  the  discovery,  is  altogether  distinct  from  the  right  in  the  dis- 
covery itself."  "  Title  in  the  thing  manufactured  does  not  give  the  right 
to  use  the  patented  invention.    No  more  does  the  patent  right  in  the  inven- 


452  THE    FIXED    LAW    OF    PATENTS  §  506 

tion  give  title  in  the  thing  made  in  violation  of  the  patent."  —  Dickerson  v. 
Sheldon,  98  Fed.  621 ;  39  C.  C.  A.  191. 

Paterson  v.  Kentucky,  97  U.  S.  506;   Belknap  v.  Schild,  161  U.  S.  24. 

While  it  is  true  that  the  monopoly  of  the  plaintiff's  patents  did  not  extend 
beyond  the  limits  of  the  United  States,  yet  it  would  be  no  defense  to  say  that 
the  patented  article  had  been  made  in  the  United  States  only  for  the  purpose 
of  being  sold  and  used  in  a  country  to  which  the  protection  of  the  laws  of 
the  United  States  did  not  extend.  The  patentee  is  entitled  to  monopolize 
the  making  of  his  device  in  the  United  States  as  well  as  a  monopoly  of  there 
selling  or  using  it.  —  Bullock  v.  Westinghouse,  129  Fed.  105;  63  C.  C.  A.  607. 

Dorsey  v.  Bradley,  12  Blatchf.  202;  Ketchum  v.  Johnson,  8  Fed.  586;  Adriance 
v.  McCormick,  55  Fed.  288;   Gould  v.  Sessions,  67  Fed.  163. 

The  burden  of  proof  was  upon  the  complainant  to  show  that  the  products 
imported  by  defendants  were  derived  from  the  sources  named  in  the  patent 
after  disclaimer.  The  testimony  of  the  experts  for  complainant  fails  to 
establish  this  fact,  and  it  is  therefore  insufficient.  —  Societe  v.  Lueders,  142 
Fed.  753;  74  C.  C.  A.  15. 

§  506.     Improvement  —  By  an  Improvement. 

The  patentee  of  an  original  invention  cannot  use  a  patented  improvement, 
nor  can  the  patentee  of  an  improvement  use  the  original  patented  machine, 
the  one  without  the  consent  of  the  other.  —  Evans  v.  Eaton,  7  Wheat.  356; 
5  L.  Ed.  472. 

The  prior  patentee  cannot  use  an  improvement  without  the  consent  of  the 
improver,  and  the  latter  cannot  use  the  original  invention  without  the  con- 
sent of  the  former.  —  Smith  v.  Nichols,  88  U.  S.  112;  22  L.  Ed.  566. 

Where  an  original  machine  and  an  improvement  upon  it  are  both  patented, 
neither  patentee  can  use  what  does  not  belong  to  him.  —  Robertson  v.  Blake, 
94  U.  S.  728;  24  L.  Ed.  245. 

An  improvement,  although  it  may  be  a  proper  subject  for  a  patent,  in 
use  may  include  the  prior  invention  and  therefore  infringe  it.  —  Morley  v. 
Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 

A  machine  operating  on  the  same  principle  and  performing  the  same  func- 
tions by  analogous  means  or  equivalent  combinations,  even  though  the 
infringing  machine  may  be  an  improvement  of  the  original,  and  patentable 
as  such,  is  an  infringement.  —  Norton  v.  Jensen,  49  Fed.  859;  1  C.  C.  A.  452. 

McCormick  v.  Talcott,  20  How.  405;  Wells  v.  Gill,  1  Ban.  &  A.  77;  Kendrick  v. 
Emmons,  2  Ban.  &  A.  208;  Turrell  v.  Spaeth,  3  Ban.  &  A.  458;  Colt  v.  Arms  Co. 
1  Fish.  P.  C  108;  Winans  v.  Railroad,  4  Fish.  P.  C  2;  Whipple  v.  Mfg.  Co.  4  Fish. 
P.  C  29;   Fruit  Co.  v.  Curran,  8  Fed.  150. 

It  may  be  that  these  alleged  infringing  machines  are  an  improvement  upon 
the  invention  covered  by  the  patent  in  suit,  but  they  still  have  all  the  essen- 
tial elements  of  the  best  form  of  that  invention,  and  therefore  must  be  held 
to  infringe  it,  —  Woodward  v.  Boston,  60  Fed.  283;  8  C.  C.  A.  622. 

Since  the  case  of  O'Reilly  v.  Morse,  15  How.  61,  it  has  been  well  settled  that 
a  patent  may  issue  for  an  improvement  on  an  earlier  invention  either  to  the 
original  inventor  or  to  a  stranger.  Of  course,  no  one  can  use  the  improve- 
ment without  right  or  license  to  use  the  fundamental  invention;  but,  on  the 
other  hand,  the  right  to  use  the  original  invention  does  not  confer  the  right 


§  506  INFRINGEMENT  453 

to  use  the  improvement  without  license  from  the  tributary  inventor  — 
Thomson-Houston  v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Even  if  it  required  the  inventive  faculty  to  make  the  change,  it  would 
nevertheless  be  an  invention  tributary  to  the  first,  and  therefore  an  in- 
fringement. —  Penfield  v.  Chambers,  92  Fed.  630;  34  C.  C.  A.  579. 

It  is  true,  ordinarily,  that  the  mere  fact  that  a  machine  effects  better 
results  than  the  patented  device,  or  that  a  patented  device  is  applied  to 
purposes  not  foreseen  by  the  patentee,  does  not  relieve  against  the  charge 
of  infringement.  —  Davey  v.  Prouty  Co.  107  Fed.  505;  46  C.  C.  A.  439. 

U.  S.  v.  Berdan,  156  U.  S.  552. 

In  view  of  the  facts  that  the  respondents'  device  thus  accomplishes  a  sub- 
stantially different  result  from  the  complainant's,  and  has  a  substantial 
function  which  the  latter  does  not  possess,  and  for  which  it  was  not  intended, 
and  that,  also,  the  latter  can  do  the  fine  work  for  which  the  former  was  not 
adapted,  the  remark  made  in  the  opinion  of  Judge  Hawley,  given  in  behalf 
of  the  Circuit  Court  of  Appeals  for  the  Ninth  Circuit,  in  Norton  v.  Jensen, 
49  Fed.  859,  seems  pertinent:  "  It  would  be  a  perversion  of  the  law  to  hold 
a  machine  which  can  do  certain  kinds  of  work  to  be  an  infringement  on  a 
patent  for  a  different  machine,  which  cannot  do  the  same  work."  —  Davey  v 
Prouty  Co.  107  Fed.  505;  46  C.  C.  A.  439. 

There  are  changes  here  and  there  —  oftentimes  for  its  betterment  —  of  the 
details,  but  they  do  not  make  the  appellee's  machine,  any  the  less,  the  direct 
offspring  of  Kitselman's  thought,  and  its  mechanical  embodiment.  —  Kit- 
selman  v.  Kokomo,  108  Fed.  632;   47  C.  C.  A.  538. 

The  fact  that  defendants'  new  structure  is  patented  does  not  relieve  them 
from  infringement.  —  Dowagiac  v.  Minnesota,  118  Fed.  136;  55  C.  C.  A.  86. 
Clough  v.  Barker,  106  U.  S.  166;   Consolidated  v.  Crosby,  113  U.  S.  157. 

Conceding  the  validity  of  his  patent  for  present  purposes,  it  raises  no 
presumption  against  the  earlier  patent,  and  cannot  furnish  the  defendant  a 
license  to  use  with  impunity  any  combination  described  in  the  prior  patent. 
—  Ryder  v.  Schlichter,  126  Fed.  487;  61  C.  C.  A.  469. 

It  would  be  none  the  less  an  infringement,  if  the  defendant,  by  additional 
efforts,  had  produced  a  better  barrel,  provided  that  in  the  process  of  making 
the  improved  barrel  the  defendant  used  any  part  of  that  device  or  method 
for  which  East's  patent  was  granted.  —  Farmers'  v.  Spruks,  127  Fed.  691 ; 
62  C.  C.  A.  447. 

Where  a  complainant  patentee  has  accomplished  a  new  result  by  a  new 
means,  a  defendant  cannot  escape  the  charge  of  infringement  merely  by 
showing  a  later  patent.  The  field  covered  by  the  primary  patent  is  not  free 
for  defendant's  plowing  without  the  owner's  consent.  True,  the  defendant 
may  have  devised  an  independent  method  of  arriving  at  the  same  result; 
but  it  is  also  true  that  he  may  merely  have  added  supplementary  devices, 
or  improved  some  details  of  the  primary  patent.  There  is  no  presumption 
either  way.  The  facts  are  to  be  taken  from  the  proofs.  —  Ries  v.  Barth,  136 
Fed.  850;  69  C.  C.  A.  528. 

Consolidated  v.  Crosby,  113  U.  S.  157;  Morley  v.  Lancaster,  129  U.  S.  263; 
National  v.  Interchangeable,  106  Fed.  693;  Crown  v.  Aluminum,  108  Fed.  845; 
Lamson  v.  Hillman,  123  Fed.  416;   Western  v.  American,  131  Fed.  78. 


454  THE   FIXED   LAW   OF   PATENTS  §  507 

This  is  a  mere  addition  to  the  patented  machine,  supplementing  the  func- 
tion of  one  element,  without  changing  the  co-operative  function  of  the  wheels 
in  their  combination.  So,  assuming  that  it  is  an  important  improvement,  and 
patentable  as  an  improvement,  its  association  with  the  means  of  the  prior 
patent  is  unauthorized  without  license  from  such  patentee.  —  Columbia  v. 
Kokomo,  143  Fed.  116;  74  C.  C.  A.  310. 

Cochrane  v.  Deener,  94  U.  S.  780;  Cantrell  v.  Wallick,  117  U.  S.  689;  Hoyt  v. 
Home,  145  U.  S.  302;  Walker  on  Pat.  sec.  347. 

That  an  infringer  may  not  justify  himself  on  the  ground  that  his  act  is 
in  accordance  with  the  claims  of  a  subsequent  patent,  especially  where 
such  patent  was  declared,  in  the  Patent  Office  proceedings,  to  be  an  improve- 
ment upon  the  patent  in  suit,  see  Columbia  v.  Kokomo,  143  Fed.  116;  74 
C.  C.  A.  310. 

Possibly  the  improvement  may  be  patentable,  but  that  circumstance  will 
not  relieve  it  from  infringement,  if  it  contains  the  specific  device  which  Benja- 
min made  and  patented.  —  Benjamin  v.  Dale,  158  Fed.  617;  85  C.  C.  A.  439. 

Thomson-Houston  v.  Ohio,  130  Fed.  549;    Perkins  v.  Buchanan,  129  Fed.  135. 

These  modifications  and  additions  may  be  improvements,  meritorious 
enough  to  secure  a  patent  for  them,  but  they  will  not  negative  infringement 
if  a  defendant  uses  the  broad  invention  which  a  prior  patentee  has  described 
and  covered  in  his  claims.  —  International  v.  Bundy,  159  Fed.  464;  86 
C.  C.  A.  494. 

Electric  v.  Pittsburgh,  124  Fed.  933. 

§  507.     Improvement  —  Of  an  Improvement. 

We  think  with  the  court  below,  that  the  patentee,  if  entitled  to  anything, 
is  only  entitled  to  the  precise  device  which  he  has  described  and  claimed  in  his 
patent;  and  as  the  defendants  use  a  different  device,  they  are  not  guilty 
of  infringement.  —  Bridge  v.  Excelsior,  105  U.  S.  618;   26  L.  Ed.  1190. 

The  defendant  adopts  another  form.  Under  such  circumstances  the  Todd 
patent  cannot  be  extended  so  as  to  embrace  the  defendant's  form.  The 
latter  is  not  a  mere  colorable  departure  from  the  form  of  Todd,  but  is  a  sub- 
stantial departure.  —  Duff  v.  Sterling,  107  U.  S.  636;  27  L.  Ed.  517;  2  S.  Ct. 
487. 

Merrill  v.  Yeomans,  94  U.  S.  568. 

As  the  claim  comes  down  to  the  merest  mechanical  details,  a  change  in 
such  details  is  not  a  colorable  departure,  but  a  substantial  one,  so  far  as  this 
patent  is  concerned.  —  B.  &  S.  Fastener  v.  B.  G.  Fastener,  58  Fed.  818; 
7  C.  C.  A.  498. 

Duff  v.  Pump  Co.  107  U.  S.  636. 

One  who  invents  and  secures  a  patent  for  a  machine  or  combination  which 
first  performs  a  useful  function  is  protected  thereby  against  all  machines 
and  combinations  which  perform  the  same  function  by  equivalent  mechanical 
devices;  but  one  who  merely  makes  and  secures  a  patent  for  a  slight  im- 
provement on  a  device  or  combination,  is  protected  against  those  only  who 
use  the  very  improvement  that  he  describes  and  claims,  or  mere  colorable 
evasions  of  it.  "  If  one  inventor  precedes  all  the  rest,  and  strikes  out  some- 
thing which  includes  and  underlies  all  that  they  produce,  he  acquires  a 
monopoly,  and  subjects  them  to  tribute.  But  if  the  advance  toward  the 
thing  desired  is  gradual,  and  proceeds  step  by  step,  so  that  no  one  can  claim 


§  507  INFRINGEMENT  455 

the  complete  whole,  then  each  is  entitled  only  to  the  specific  form  of  device 
which  he  produces,  and  every  other  inventor  is  entitled  to  his  own  specific 
form,  so  long  as  it  differs  from  those  of  his  competitors,  and  does  not  include 
theirs."  —  Adams  Elec.  Ry.  v.  Lindell,  77  Fed.  432;  23  C.  C.  A.  223. 

Railway  v.  Sayles,  97  U.  S.  554;  McCormick  v.  Talcott,  20  How.  402;  Stirrat  v. 
Mfg.  Co.  61  Fed.  980;  Griswold  v.  Harker,  62  Fed.  389. 

If  the  inventor  had  been  the  first  to  perform  the  function  which  his  ma- 
chine did  perform,  he  would  be  entitled  to  a  liberal  construction  and  a 
reasonable  range  of  equivalents;  but  the  improvement  being  narrow  and 
specific  infringement,  to  be  established,  must  lie  within  his  narrow  and  specific 
field,  see  —  MacColl  v.  Crompton,  95  Fed.  987;  37  C.  C.  A.  351. 

Where  the  advance  towards  the  desideratum  is  gradual,  and  several  in- 
ventors form  different  combinations  which  accomplish  the  desired  result  with 
varying  degrees  of  operative  success,  each  is  entitled  to  his  own  combination 
so  long  as  it  differs  from  those  of  his  competitors  and  does  not  include  theirs. 
—  National  v.  Interchangeable,  106  Fed.  693;   15  C.  C.  A.  544. 

Railway  Co.  v.  Sayles,  97  U.  S.  554;  McCormick  v.  Talcott,  20  How.  402; 
Stirrat  v.  Mfg.  Co.,  61  Fed.  980;  Griswold  v.  Harker,  62  Fed.  389;  Adams  v. 
Lindell,  77  Fed.  432. 

Comparing  the  two  devices,  not  with  respect  to  the  point  of  exit,  but  in 
respect  to  the  means  by  which  the  exit  is  secured,  it  is  clear  that  the  de- 
fendant's organization  involves  an  original  conception,  is  meritorious  and 
ingenious,  and  not  an  infringement.  —  U.  J3.  Envelope  v.  Sherman,  122  Fed. 
464;  58  C.  C.  A.  624. 

In  order  to  establish  the  infringement  of  a  mere  improvement  in  a  machine 
of  former  devices  already  in  use  for  accomplishing  a  similar  purpose,  the 
means  must  be  substantially  the  same,  operating  in  the  same  way,  and  ac- 
complishing the  same  result.  —  Rich  v.  Baldwin,  133  Fed.  920;  66  C.  C.  A. 
464. 

Ross-Moyer  v.  Randall,  104  Fed.  355. 

The  patentee  of  a  mere  improvement  cannot  treat  another  as  an  infringer, 
who  has  improved  the  original  machine  by  use  of  a  different  form  or  combina- 
tion performing  the  same  function.  Where  the  result  is  old,  and  the  novelty 
consists  only  of  improvements  in  a  known  machine  for  producing  a  known 
result,  the  patentee  must  be  tied  down  strictly  to  the  mode  which  he  has 
described  for  effecting  such  improvements.  —  Greene  v.  Buckley,  135  Fed. 
520;  68  C.  C.  A.  70. 

McCormick  v.  Talcott,  20  How.  402;  Proctor  v.  Bennis,  36  Ch.  Div.  740. 

Where  neither  a  new  result  nor  a  new  principle  of  operation  in  producing 
the  result  has  been  achieved,  and  the  patentee  has  merely  improved  upon 
the  old  way  of  accomplishing  the  old  result,  the  presumption  is  that  his 
patent  is  not  infringed  by  a  later  patent  for  improvements  upon  the  same  old 
way  of  accomplishing  the  same  old  result.  That  is,  presumably,  each  is  an 
independent  improver  in  a  field  that  was  as  open  to  one  as  the  other  — 
presumably  the  thought  of  the  one  has  not  overlapped  the  thought  of  the 
other.  But  the  presumption  is  not  conclusive,  and,  even  in  cases  of  the 
narrowest  patents,  it  is  always  open  for  the  complainant  to  show  that  the 
defendant  has  appropriated  his  property.  —  Ries  v.  Barth,  136  Fed.  850;  69 
C.  C.  A.  528. 

The  differences  between  the  complainant's  patent  and  the  prior  art,  we 
think,  are  no  greater  than  are  the  differences  between  the  patents  of  the 


456  THE    FIXED    LAW    OF    PATENTS  §§  508-510 

complainant  and  defendants.     To  these  two  patents  we  think  is  properly- 
applicable  under  the  proofs  the  rule  in  McCormick  v.  Talcott,  20  How.  402. 

—  Standard  v.  Ramsay,  143  Fed.  972;  75  C.  C.  A.  158. 

It  is  obvious  that  since  the  location  of  the  valve  in  a  distinct  recess  or 
chamber  alone  prevented  the  Low  patent  from  completely  anticipating 
complainant's,  that  any  device  in  which  the  valve  is  located  in  a  distinct 
recess  or  chamber,  as  in  Low,  cannot  infringe  the  complainant's  patent.  — 
Chicago  v.  Cleveland,  159  Fed.  143;  86  C.  C.  A.  51. 

§  508.     Intent. 

The  proposition  that  the  application  of  this  patent  depend  upon  the  in- 
dividual intent  of  the  operator,  overlooks  the  essential  nature  of  a  process 
patent.  The  directions  and  specifications  of  such  a  patent  are  addressed  to 
those  engaged  and  skilled  in  the  art.  It  professes  to  disclose  a  method  of 
procedure,  not  the  particular  instrumentality  employed.  —  Carnegie  v. 
Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

But  the  owner  of  a  patent  is  entitled  to  protection  against  the  repetition 
of  accidental  infringements.  —  Thompson  v.  Bushnell,  96  Fed.  238 ;  37 
C.  C.  A.  456. 

If  the  thing  done  is  wrongful,  the  lack  of  intention  will  not  excuse.  — 
Globe-Wernicke  v.  Macy,  119  Fed.  696;  56  C.  C.  A.  304. 

2  Greenl.  Ev.  270;  Chatfield  v.  Wilson,  28  Vt.  49;  Heath  v.  Unwin,  15  Sim.  552; 
Stead  v.  Anderson,  4  C.  B.  806;  Parker  v.  Hulme,  1  Fish.  P.  C-  44. 

The  position  of  both  the  defendant  and  his  expert  seems  to  be  that  though 
the  defendant  infringes,  the  infringement  is  unintentional.  This  is  enough; 
it  is  not  an  excuse  that  it  is  less  effective  than  complainant's  machine.  — 
Cimiotti  v.  Bowsky,  143  Fed.  508;  74  C.  C.  A.  617. 

§  509.     License  —  Implied. 

After  a  machine  has  been  constructed  by  any  person  with  the  inventor's 
knowledge  and  consent  before  the  application  for  a  patent,  every  other 
person  who  either  sells  or  uses  that  machine  is  within  the  protection  of  the 
section  (4899)  and  needs  no  new  consent  or  permission  of  the  inventor. 

—  Wade  v.  Metcalf,  129  U.  S.  202;  39  L.  Ed.  661;  9  S.  Ct.  271. 

§  510.     License  —  By  Licensee. 

The  defendants  first  took  a  license  from  the  patentee,  and  under  it  and 
under  his  directions  erected  substantially  the  same  apparatus  now  used. 
Receiving  what  they  regarded  as  additional  light,  they  refused  to  continue 
payment  of  royalty,  and  put  the  complainant  to  his  legal  remedy.  —  Tilgh- 
man  v.  Proctor,  102  U.  S.  707;  26  L.  Ed.  279. 

If  the  licensee's  rights  have  been  infringed  by  the  owner,  and  third  persons 
confederating  with  the  owner,  there  is  no  reason  why  all  the  infringers  should 
not  be  joined  as  defendants.  —  Waterman  v.  Shipman,  55  Fed.  982;  5 
C.  C.  A.  371. 

Perry  v.  Littlefield,  17  Blatchf.  272. 

The  defendant,  while  licensee,  made  a  large  quantity  of  electrical  fixtures 
within  and  under  the  terms  of  the  license.  He  terminated  the  license  of 
his  own  accord,  and  thereafter  installed  the  fixtures.  Held:  It  was  not  the 
intention  of  the  agreement  that  goods  could  be  accumulated  by  the  licensee 


§  511  INFRINGEMENT  457 

during  the  continuance  of  the  license  and,  although  not  ordered  before  its 
voluntary  cancellation,  could  be  subsequently  sold  in  competition  with  other 
licensees,  and  such  sales  made  after  cancellation  were  unauthorized.  — 
Pelzer  v.  Binghamton,  95  Fed.  823;  37  C.  C.  A.  288. 

The  contract  licensed  defendant  to  use  "  lead  presses  containing  any  one 
or  more  of  the  devices  described  and  claimed  in  said  letters  patent."  It  is 
argued  that  thereby  defendant  became  liable  for  the  use  of  any  part  of  the 
patented  press,  even  though  such  part  was  only  a  single  element  of  a  pat- 
ented combination.  This  contention  is  without  merit.  —  Western  v.  Rob- 
ertson, 142  Fed.  471 ;  73  C.  C.  A.  587. 

A  licensee  under  the  first  patent  who  uses  the  mechanism  therein  secured 
cannot  be  held  an  infringer  under  the  second  patent.  In  order  to  hold  him 
it  is  necessary  to  show  that  he  uses  the  devices  of  the  first  patent  plus  the 
improvements  of  the  second  patent;  not  any  and  all  improvements  calcu- 
lated to  produce  similar  results,  but  the  precise  improvements  described  and 
claimed.  —  Wagner  v.  Wycoff,  151  Fed.  585;  81  C.  C.  A.  129. 

(The  licensee  refused  to  pay  license  fees  and  threatened  to  reduce  price, 
and  refused  to  mark  articles  with  licensed  patent.) 

In  addition  to  an  accounting  an  injunction  is  prayed  to  restrain  appellee 
from  further  making,  using,  or  selling  stackers  in  violation  of  appellant's 
rights  as  stated,  or  except  in  strict  compliance  with  the  terms  of  the  license. 
This  is  not  a  bill  for  the  specific  performance  of  a  contract.  The  court  is 
not  asked  to  compel  appellee  to  make  and  sell  stackers  under  the  license, 
and  to  see  to  it  that  appellee  maintains  the  price,  puts  on  the  patent  marks, 
and  accurately  reports  its  sales.  So  far  as  this  bill  is  concerned,  appellee 
may  quit  the  stacker  business  any  minute  he  sees  fit.  What  is  sought  is  an 
injunction  against  appellee's  unlawful  invasion  of  appellant's  lawful  patent 
monopoly.  If  appellee  had  not  invaded,  or  if  the  monopoly  is  unlawful, 
appellant  fails.  If  appellant  had  chosen  to  accept  appellee's  repudiation 
of  the  license,  a  bill  to  exclude  appellee  utterly  from  the  domain  of  the  pat- 
ents would  have  lain.  By  declining  to  recognize  the  fact  or  the  right  of 
repudiation,  appellant  did  not  estop  itself  from  asking  to  exclude  appellee 
from  that  part  of  the  domain  which  had  not  been  granted,  namely,  the  con- 
trol of  prices  and  methods.  Stripped  of  all  averments  in  relation  to  appel- 
lant's business  built  up  on  licenses,  the  bill  states  a  good  cause  of  action 
for  infringement  of  the  patents.  These  averments,  as  appellant  rightly 
claims,  show  an  aggravation  of  the  injury  resulting  from  the  infringement, 
and  constitute,  therefore,  an  additional  appeal  for  injunctive  relief.  That 
the  bill  properly  invokes  the  aid  of  equity  we  have  no  doubt.  —  Indiana  v. 
Case,  154  Fed.  365;  83  C.  C.  A.  343. 

Eureka  v.  Bailey,  11  Wall.  488;  Kinsman  v.  Parkhurst,  18  How.  289;  Hardin  v. 
Boyd,  113  U.  S.  763;  West.  Un.  v.  Un.  Pacific,  3  Fed.  423;  McKay  v.  Smith,  29 
Fed.  295;  Hat  Co.  v.  Porter,  34  Fed.  745;  Ball  v.  Ball,  36  Fed.  309;  Am.  v. 
Grossman,  57  Fed.  1021;  Am.  v.  Crossman,  61  Fed.  888;  Heaton  v.  Eureka,  77 
Fed.  294;  Victor  v.  Fair,  123  Fed.  424;  Rupp  v.  Elliott,  131  Fed.  730. 

§  511.     License  —  Patentee. 

That  the  inventor  or  licensor  may  infringe  the  rights  of  his  grantee  and 
be  sued  therefor  in  infringement.  —  Littlefield  v.  Perry,  88  U.  S.  205;  22 
L.  Ed.  577. 

There  is  no  reason  or  authority  for  the  proposition  that  a  licensee  who  has 
the  exclusive  right  to  manufacture  and  sell  a  patented  article  cannot  maintain 
a  suit  in  equity  against  the  owner  of  a  patent;  if  the  latter  is  guilty  of  an 


458  THE   FIXED   LAW   OF   PATENTS  §§  512-514 

infringement  by  making  or  selling  himself,  to  redress  the  wrong  occasioned 
thereby,  or  that  such  a  suit  does  not  arise  under  the  patent  laws  of  the  United 
States.  —  Waterman  v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371. 
Littlefield  v   Perry,  21  Wall.  205. 

§  512.     License  —  Territorial. 

The  sale  of  a  patented  article  by  an  assignee  within  his  territory  carries 
the  right  to  use  it  everywhere,  notwithstanding  the  knowledge  of  both 
parties  that  a  use  outside  the  territory  is  intended.  —  Hobbie  v.  Jennison, 
149  U.  S.  355;  37  L.  Ed.  766;  13  S.  Ct.  879. 

Adams  v.  Burks,  84  U.  S.  453;  Birdsall  v.  Shaliol,  112  U.  S.  485;  Wade  v. 
Metcalf,  129  U.  S.  202;  Boesch  v.  Graff,  133  U.  S.  697. 

§  513.     License  —  Miscellaneous. 

The  purchase  of  a  device  and  the  license  to  use  it  does  not  extend  to  and 
operate  as  a  license  to  construct  thereon  another  and  infringing  device.  — 
Vermont  v.  Gibson,  56  Fed.  143;  5  C.  C.  A.  451. 

Infringement  by  the  defendant  was  not  denied,  and  the  validity  of  the 
patent  could  not  be  disputed  by  one  who  undertook  to  justify  his  use  of 
it  under  a  license.  —  Piatt  v.  Fire  Extinguisher,  59  Fed.  897;  8  C.  C.  A.  357. 

Kinsman  v.  Parkhurst,  18  How.  289;    Brown  v.  Lapham,  27  Fed.  77. 

An  unconditional  or  unrestricted  sale  by  the  patentee,  or  by  a  licensee 
authorized  to  make  such  sale,  of  an  article  embodying  the  patented  invention 
or  discovery,  passes  the  article  without  the  limits  of  the  monopoly,  and 
authorizes  the  buyer  to  use  or  sell  without  restriction;  but  to  the  extent 
that  the  sale  is  subject  to  any  restriction  upon  the  use  or  future  sale  the 
article  has  not  been  released  from  the  monopoly,  but  is  within  its  limits,  and, 
as  against  all  who  have  notice  of  the  restriction,  it  is  subject  to  the  control 
of  whoever  retains  the  monopoly.  This  results  from  the  fact  that  the  monop- 
oly is  a  substantial  property  right  conferred  by  law  as  an  inducement  or 
stimulus  to  useful  invention  or  discovery,  and  that  it  rests  with  the  owner 
to  say  what  part  of  the  property  he  will  reserve  to  himself  and  what  part 
he  will  transfer  to  others,  and  upon  what  terms  he  will  make  the  transfer. 
—  National  v.  Schlegel,  128  Fed.  733;  64  C.  C.  A.  594. 

Bement  v.  National,  186  U.  S.  70;  Victor  v.  The  Fair,  123  Fed.  424;  Dickerson 
v.  Tinling,  84  Fed.  192;  Heaton  v.  Eureka,  77  Fed.  288;  Cortelyou  v.  Lowe, 
111  Fed.  1005;  Edison  v.  Kaufman,  105  Fed.  960;  Edison  v.  Pike,  116  Fed.  863; 
Fowle  v.  Park,  131  U.  S.  88;  Garst  v.  Harris,  177  Mass.  72. 

Building  additional  machines  without  consent  of  licensor.  For  a  most 
remarkable  holding  in  the  Ninth  Circuit,  Ross,  J.,  see  —  Plottsv.  Central,  143 
Fed.  901;  75  C.  C.  A.  7. 

It  is  familiar  law  that  articles  manufactured  under  the  term  of  the  patent 
are  taken  out  of  the  limits  of  the  monopoly  and  become  part  of  the  common 
property  of  the  country.  When  they  are  sold  by  the  patentee  or  his  licensee, 
the  royalty  having  been  previously  paid  or  secured,  the  patentee,  having 
once  received  his  royalty,  cannot  treat  the  seller  or  user  as  an  infringer.  — 
Goshen  v.  Single  Tube,  166  Fed.  431 ;  C.  C.  A. 

Morgan  v.  Albany,  152  U.  S.  425;   National  v.  Schlegel,  128  Fed.  733. 

§  514.     Machine. 

A  machine  made  up  and  complete  before  application  for  patent  is  not  an 
infringement.    (Which  statement  is  to  be  qualified,  I  think  by  the  elements 


§§  515-517  INFRINGEMENT  459 

of  independent  invention  and  good  faith.)  —  Troy  v.  Odiorne,  58  U.  S.  73; 
15  L.  Ed.  37. 

§  515.     Machine  and  Manufacture. 

Right  to  use  machine  carries  with  it  the  right  to  manufacture.  —  Morgan 
v.  Albany,  152  U.  S.  425;  38  L.  Ed.  500;  14  S.  Ct.  627. 

Title  in  the  thing  manufactured  does  not  give  the  right  to  use  the  pat- 
ented invention;  no  more  does  the  patent  right  in  the  invention  give  title 
in  the  thing  made  in  violation  of  the  patent.  —  Belknap  v.  Schild,  161  U.  S. 
10;  16  L.  Ed.  599;  16  S.  Ct.  443. 

If  the  apparatus  used  by  the  appellant  is  so  far  different  from  that  of  the 
appellee  that  it  does  not  infringe,  the  process,  which,  in  mechanics,  is  merely 
the  exercise  of  the  functions  of  the  machine  or  apparatus,  cannot  be  an 
infringement  of  any  right  secured  by  the  patent.  —  American  v.  Cleveland, 
158  Fed.  978;  86  C.  C.  A.  182. 

§  516.     Notice. 

In  absence  of  marking  articles  "  patented,"  notice  is  necessary.  —  Dunlap 
v.  Schofield,  152  U.  S.  244;  38  L.  Ed.  426;  14  S.  Ct.  576. 

It  is  impossible  to  read  the  communications  warning  the  complainant's 
customers  against  selling  its  harrows,  with  which  the  defendant  seems  to 
have  flooded  the  country,  without  being  led  to  believe  that  they  were  in- 
spired by  a  purpose  to  intimidate  the  complainant's  customers,  and  coerce 
the  complainant,  by  injuring  its  business,  into  becoming  a  licensee  of  the 
defendant.  In  view  of  its  failure  to  bring  an  infringement  action,  under 
circumstances  which  made  an  action  practically  compulsory,  the  defendant 
cannot  shelter  itself  behind  the  theory  that  its  circulars  and  letters  were 
merely  legitimate  notices  of  its  rights.  We  are  satisfied  that  they  were  sent, 
not  for  the  purpose  of  self-protection,  but  in  execution  of  the  defendant's 
threat  to  stop  the  complainant  from  building  harrows  by  other  means  than 
legal  remedies.  —  Adriance  v.  National,  121  Fed.  827;  58  C.  C.  A.  163. 

Undoubtedly  the  owner  of  a  patent  is  acting  within  his  rights  in  notifying 
infringers  of  his  claims,  and  threatening  them  with  litigation  if  they  continue 
to  disregard  them ;  nor  does  he  transcend  his  rights  when,  the  infringer  being 
a  manufacturer,  he  sends  such  notices  to  the  manufacturer's  customers,  if 
he  does  so  in  good  faith,  believing  his  claims  to  be  valid,  and  in  an  honest 
effort  to  protect  them  from  invasion.  —  Adriance  v.  National,  121  Fed.  827 ; 
58  C.  C.  A.  163. 


§  517.     Prior  Patent. 

The  question  of  infringement  or  non-infringement  must  be  determined 
by  the  limitations  placed  upon  this  patent  by  the  state  of  the  art  when  it 
was  issued.  —  Griswold  v.  Harker,  62  Fed.  389;  10  C.  C.  A.  435. 

McCormick  v.  Talcott,  20  How.  402. 

The  question  of  infringement  or  non-infringement  in  this  case,  as  in  every 
case,  must  be  determined  under  this  rule  by  the  limitations  placed  upon  the 
patent  by  the  state  of  the  art  when  it  was  issued,  and  by  the  specifications 
and  claims  of  the  inventor.  —  Murphy  v.  Excelsior,  76  Fed.  965 ;  22  C.  C.  A. 
658. 


460  THE    FIXED   LAW    OF    PATENTS  §§  518-519 

§  518.     Process  —  Additions. 

The  defendant  does  not  use  the  process  any  the  less  because  he  uses  some- 
thing in  addition  to  the  process.  —  Clerk  v.  Tannage,  84  Fed.  643;  28  C. 
C. A.  501. 

Quotg.  Lelance  v.  Habermann,  53  Fed.  380. 

Tilghman  v.  Proctor,  102  U.  S.  730. 

The  addition  of  a  step  to  a  process  which  does  not  change  the  result  does 
not  avoid  infringement.  —  Ford  Co.  v.  Tannage,  84  Fed.  644;  28  C.  C.  A. 
503. 

§  519.     Process  —  Tests  of. 

The  patentee  does  not  claim  to  be  the  inventor  of  the  constituents.  The 
exclusive  use  of  them  singly  is  not  secured  to  him.  What  is  secured  is  their 
use  when  arranged  in  the  process.  Unless  one  of  them  is  employed  in  making 
up  the  process,  as  an  element  of  it,  the  patentee  cannot  prevent  others  from 
using  it.  As  well  might  the  patentee  of  a  machine,  every  part  of  which  is  an 
old  and  known  device,  appropriate  the  exclusive  use  of  each  device,  though 
employed  singly,  and  not  combined  with  others  as  a  machine.  —  Mowry  v. 
Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

Unless  it  was  shown  that  the  process  was  followed  to  produce  the  defend- 
ant's article,  or  unless  it  is  shown  that  the  article  could  not  be  produced  by 
any  other  process,  the  defendant's  article  cannot  be  identified  as  the  prod- 
uct of  the  process.  —  Cochrane  v.  Badische,  111  U.  S.  293;  28  L.  Ed.  433; 
4  S.  Ct.  455. 

It  must  be  borne  in  mind  that,  in  the  practical  determination  of  questions 
of  alleged  infringement,  the  problem  is  very  different  when  we  are  dealing 
with  a  chemical  compound  than  it  is  when  we  are  dealing  with  a  machine. 
;  uch  observation  as  the  eye  can  give  to  the  machine  at  rest  and  in  action, 
i.luminated  by  a  comparison  of  the  co-ordination  of  its  parts  with  that  of 
like  parts  in  other  machines,  will  be  ordinarily  sufficient  to  determine  its 
classification.  Far  different  is  it  with  a  chemical  compound.  No  mere  ob- 
s?rvation  by  the  eye,  supplemented  even  by  the  taste  and  touch,  can  go 
very  far  towards  a  solution  of  the  problem.  The  same  mysterious  forces 
through  whose  action  and  reaction  the  compound  was  produced  must  be 
availed  of  to  disintegrate  and  disrupt,  before  there  can  be  any  assurance 
of  what  it  is  we  have  before  us.  Hence  it  is  that  so-called  "  tests  "  are  de- 
vised by  those  skilled  in  the  art  and  science  of  chemistry,  which,  in  their 
opinion,  as  experts,  will  reveal  the  secrets  of  the  composition  sufficiently  to 
make  the  answer  to  the  question  positive  enough  to  support  the  judgement 
of  a  court. 

An  inventor  takes  certain  starting  materials,  and  subjects  them  to  a 
process  he  has  devised.  The  result  is  a  product.  If  he  sufficiently  describes 
the  starting  materials  and  the  process  in  his  patent,  he  may  claim  the  pro- 
duct, being  new;  but,  if  he  simply  defines  what  he  claims  as  the  "  product  of 
his  process,"  he  might  find  it  an  extremely  difficult  matter  to  prove  infringe- 
ment. "  Every  patent  for  a  product  or  composition  of  matter  must  identify 
it  so  that  it  can  be  recognized,  aside  from  the  description  of  the  process  for 
making  it,  or  else  nothing  can  be  held  to  infringe  the  patent  which  is  not 
made  by  that  process,"  Cochrane  v.  Badische,  111  U.  S.  293.  Now,  there  are 
many  tests  that  may  be  applied  to  two  bodies  which  are  being  compared  in 
order  to  determine  whether  they  are  or  are  not  identical.  The  number  of  these 
tests  may  be  multiplied  indefinitely,  for  the  skill,  the  experience,  the  scientific 
ingenuity  of  the  chemist,  will  ever  devise  new  ones  in  the  future,  as  they  have 


§  520  INFRINGEMENT  461 

the  old  ones  in  the  past.  Some  of  these  tests  will  be  of  great  significance ;  some, 
almost  crucial;  others  will  be  of  but  minor  importance.  Their  relative  value, 
no  doubt,  may  change  as  science  goes  sweeping  on  from  point  to  point; 
but  it  must  be  sound  law,  as  it  is  reasonable  common  sense,  to  hold  that  the 
tests  of  prime  importance  in  a  suit  for  infringement  are  those  which  the 
patent  itself  prescribes.  The  inventor  certainly  may  be  assumed  to  know 
what  it  is  that  he  has  invented.  If  any  one  is  able  to  describe  the  product 
of  his  inventive  skill,  it  is  himself.  He  surely  knows  the  earmarks  of  the 
thing  he  seeks  to  patent,  and  when,  out  of  the  multitudinous  qualities  which 
his  product  may  exhibit  under  varying  conditions  and  in  different  relations, 
he  has  selected  and  set  forth  in  his  patent  a  chosen  few,  surely  these  should 
be  accepted  as  the  distinguishing  earmarks,  —  the  characteristic  stigmata 
of  the  product  his  patent  is  to  cover.  It  may  be  that,  after  it  is  found  that 
the  body  under  investigation  responds  to  all  the  tests  of  a  patent,  science 
may  yet  be  able  to  demonstrate  by  other  tests  that,  nevertheless,  it  is  not 
the  new  product  therein  patented;  that  the  patentee  had  selected  identifying 
tests  broader  than  he  was  entitled  to,  and  which  would  cover  products  not 
within  the  range  of  his  discovery.  But  when  the  body  under  investigation 
fails  to  respond  to  the  specific  tests  the  patentee  has  himself  selected,  he 
certainly  cannot  fairly  insist  that  it  is  identical  with  his  product.  —  Matheson 
v.  Campbell,  78  Fed.  910;  24  C.  C.  A.  284. 

Complete  identity  is  not  necessary.  As  was  stated  by  Mr.  Justice  Curtis 
in  Winans  v.  Denmead,  15  How.  330: 

"  If  the  machine  complained  of  were  a  copy,  in  form,  of  the  machine  de- 
scribed in  the  specification,  of  course,  it  would  be  at  once  seen  to  be  an  in- 
fringement. It  could  be  nothing  else.  It  is  only  ingenious  diversities  of 
form  and  proportion,  presenting  the  appearance  of  something  unlike  the 
thing  patented,  which  give  rise  to  questions;  and  the  property  of  inventors 
would  be  valueless,  if  it  were  enough  for  the  defendant  to  say : '  Your  improve- 
ment consisted  in  a  change  of  form;  you  describe  and  claim  but  one  form; 
I  have  not  taken  that,  and  so  have  not  infringed.'  " 

This  was  said  in  a  case  where  the  original  patent  was  for  a  cylindrical 
ore  body  in  a  railroad  car,  where  the  structure  held  to  infringe  was  hexago- 
nal. But  it  is  equally  applicable  to  inventions  for  processes.  The  patentee 
is  entitled  to  claim,  not  only  that  which  he  precisely  claims,  but,  where  he 
claims  for  a  combination  or  process  embodying  the  use  of  certain  elements, 
his  claims  will  include  such  combinations  and  processes  as  adopt  substan- 
tially the  same  means;  where  the  variation  is  only  such  as  common  intelli- 
gence in  that  art  would  suggest.  Incidental  appliances  in  operating  the  sub- 
stantial means  invented  would  not  prevent  a  second  patented  invention  from 
infringing  upon  the  first.  The  language  of  some  of  the  Bradley  claims  is 
broad  enough  to  admit  the  admixture  of  carbon,  if  his  invention  was  a  primary 
one,  and  the  employment  of  carbon  was  a  mere  auxiliary  of  the  current 
in  effecting  the  reduction,  according  to  the  doctrine  of  Machine  Co.  v.  Lan- 
caster, 129  U.  S.  263;  Proctor  v.  Bennis,  36  Ch.  Div.  740;  McCormick  v. 
Aultman,  69  Fed.  371 ;  and  kindred  cases.  —  Cowles  v.  Lowrey,  79  Fed.  331 ; 
24  C.  C.  A.  616. 

Two  processes  cannot  be  said  to  be  substantially  alike  where  the  successive 
steps  which  they  involve  are  different,  and  where,  as  in  this  instance,  several 
of  the  steps  which  are  requisite  to  the  one  are  wholly  omitted  from  the  other, 
identity  of  method  cannot  exist.  —  U.  S.  Glass  v.  Atlas,  90  Fed.  724 ;  33 
C.  C.  A.  254. 

§  520.     Process  —  Miscellaneous. 

The  defendants  seeing  the  utility  of  the  process,  and  believing  that  they 
can  use  a  method  somewhat  similar  without  infringing,  put  a  little  lime  into 


462  THE    FIXED    LAW    OF    PATENTS  §§  521-522 

the  mixture,  and  find  that  it  helps  the  operation,  and  that  they  do  not  have 
to  use  so  high  a  degree  of  heat  as  would  otherwise  be  necessary.  Still,  the 
degree  of  heat  required  is  very  high,  at  least  a  hundred  degrees  above  the 
boiling  point;  and  a  strong  boiler  or  vessel  is  used  in  order  to  restrain  the 
water  from  rising  into  steam.  Can  a  bolder  case  be  conceived  of  an  attempted 
evasion  and  a  real  infringement  of  a  patent?  —  Tilghman  v.  Proctor,  102 
U.  S.  707;  26  L.  Ed.  279. 

A  process  is  not  infringed  by  the  use  of  any  number  of  its  stages  less  than 
all  of  them.  —  Goodyear  v.  Davis,  102  U.  S.  222;  26  L.  Ed.  149. 

Where  the  patent  is  for  specific  process,  not  being  generic,  it  must  be  shown 
that  the  defendants  used  all  the  different  steps  of  that  process,  or  there  could 
be  no  infringement.  —  Royer  v.  Coupe,  146  U.  S.  524;  36  L.  Ed.  1073;  13 
S.  Ct.  166. 

It  may  be,  as  suggested,  that  one  person  may,  and  in  ignorance  of  the 
patented  method,  make  use  of  a  reservoir  merely  as  such  (the  essential 
feature  of  the  process)  and  without  any  design  to  avail  himself  of  the  pat- 
ented process;  but  such  a  fact  would  not  deprive  the  discoverer  of  the 
process  of  the  protection  of  his  patent.  Such  a  supposed  case  might  present 
a  question  of  fact  for  a  court  or  jury,  and  if  it  were  made  to  appear  that  the 
party  charged  with  infringement  had,  as  in  this  case,  changed  the  instru- 
mentalities used  by  him  after  a  new  method  had  been  disclosed,  and  par- 
ticularly if  he  had  for  the  first  time  used  such  a  special  device  necessary  to 
that  process,  a  jury  might  well  refuse  to  believe  and  find  that  the  defendant 
was  only  following  the  old  methods  of  procedure,  and  not  seeking  to  avail 
himself  of  the  plaintiff's  invention.  —  Carnegie  v.  Cambria,  185  U.  S.  403; 
46  L.  Ed.  968;  22  S.  Ct.  698. 

§  521.     Product. 

A  had  a  patent  on  a  machine.  B  made  a  contract  with  C  for  a  certain 
number  of  articles  of  the  character  made  by  such  machine.  C  made  the 
articles  by  A's  machine.  Held:  that  unless  the  contracts  were  merely  colorable 
and  evasive,  B  was  not  liable  in  purchasing  the  articles  made  by  C  upon  a 
machine  which  infringed  A's  patent.  —  Keplinger  v.  De  Young,  10  Wheat. 
358;  6L.  Ed.  341. 

If  it  was  a  patent  for  a  process,  it  would  not  be  infringed  by  selling  the 
product,  and  no  conditions  should  have  been  annexed  to  the  exercise  of 
the  vendor's  rights.  The  broad  proposition  that  the  vendor  ef  a  product 
which  has  been  made  in  infringement  of  a  patented  process  is  an  infringer, 
or  liable  to  any  extent  through  the  patentee,  is  untenable  and  does  not 
require  discussion.  The  patentee's  remedy  is  against  the  manufacturer. 
Welsbach  v.  Union,  101  Fed.  131 ;  41  C.  C.  A.  255. 

Merrill  v.  Yeomans,  94  U.  S.  518. 

§  522.     Reissue. 

An  infringement  cannot  be  sued  for  which  took  place  prior  to  the  granting 
of  the  reissue.  —  Stimpson  v.  Railroad,  4  How.  380;   11  L.  Ed.  1020. 

Where  reissue  contains  claim  void  for  expansion  and  also  original  claim 
the  expanded  claim  does  not  invalidate  the  original  claim.  —  Leggett  v. 
Standard,  149  U.  S.  287;  37  L.  Ed.  737;  13  S.  Ct.  902. 

Gage  v.  Herring,  149  U.  S.  640. 


§  523  INFRINGEMENT  463 

§  523.     Repairs  —  Rebuilding. 

Complainant's  patent  covered  a  bale  tie,  consisting  of  a  buckle  and  band, 
which  they  sold  marked,  "  Licensed  to  use  once  only."  Defendants  bought 
as  scrap  iron  the  used  buckles  and  bands,  straightened  and  united  them 
where  the  band  had  been  cut,  and  sold  them  for  use.  Held:  Infringement. 
—  American  v.  Simmons,  106  U.  S.  89;  27  L.  Ed.  79;  IS.  Ct.  52. 

Distinguishing  Wilson  v.  Simpson,  9  How.  109. 

It  is  not  within  the  rule  of  right  to  make  repairs  to  reconstruct  the  old 
device  to  the  extent  of  making  one  substantially  new.  —  Davis  v.  Edison, 
60  Fed.  276;  8  C.  C.  A.  615. 

Citg.  and  explaining  Chaffee  v.  Belting  Co.  22  How.  217;  Adams  v.  Burks,  17 
Wall.  453;  Hobbie  v.  Jennison,  149  U.  S.  355;  Wilson  v.  Simpson,  9  How.  109; 
Cotton  Tie  v.  Simmons,  106  U.  S.  89. 

The  reconstruction  of  a  destroyed  or  wornout  combination  is  an  infringe- 
ment. —  Thomson-Houston  v.  Kelsey,  75  Fed.  1005;  22  C.  C.  A.  1. 
Disting.  Wilson  v.  Simpson,  9  How.  109. 
Cotton  v.  Simmons,  106  U.  S.  89;   Davis  v.  Edison  60  Fed.  276. 

The  machine  referred  to  in  the  bill  was  entirely  dismantled,  except  its 
legs,  and  a  new  machine  built  thereon.  —  Pacific  v.  Alaska,  100  Fed.  462; 
40  C.  C.  A.  494. 

When  the  patented  machine  has  passed  outside  the  monopoly  by  sale  and 
purchase,  the  patentee  has  no  right  to  impose  any  restrictions  on  its  use  for 
his  own  benefit.  He  cannot  forbid  the  further  use  of  the  machine  because 
it  is  out  of  repair  in  consequence  of  the  wearing  out  or  breaking  of  some 
of  its  parts,  and  so  oblige  the  purchaser  to  buy  a  new  machine.  The  pur- 
chased machine  has  become  the  individual  property  of  the  purchaser,  and 
is  like  any  other  piece  of  property  which  he  owns.  He  may  sell  it,  or  he  may 
use  it  so  long  as  its  usefulness  lasts,  and  then  throw  it  away,  or  dispose  of 
it  for  junk.  He  may  prolong  its  life  and  usefulness  by  repairs  more  or  less 
extensive,  so  long  as  its  original  identity  is  not  lost.  He  is  only  prohibited 
from  constructing  a  substantially  new  machine.  He  cannot,  under  pretext  of 
repairs,  build  another  machine.  —  Goodyear  v.  Jackson,  112  Fed.  146;  50 
C.  C.  A.  159. 

Wilson  v.  Simpson,  9  How.  13;  Adams  v.  Burks,  17  Wall.  453;  Chaffee  v. 
Belting,  22  How.  217;  Mitchell  v.  Hawley,  16  Wall.  544;  Hobbie  v.  Jennison,  149 
U.  S.  355;  Cotton-Tie  v.  Simmons,  106  U.  S.  89;  Aikin  v.  Print,  2  Cliff.  435; 
Morgan  v.  Albany,  152  U.  S.  425;  Gottfried  v.  Brewing,  5  B.  &  A.  5;  Davis  v. 
Edison,  60  Fed.  *276. 

In  approaching  the  question  of  infringement  by  the  purchaser  of  a  pat- 
ented machine  (infringement  by  repairing),  it  is  important  to  bear  in  mind 
what  the  patentee  sold  and  the  purchaser  bought.  The  patentee  has  parted 
with  his  machine  and  the  monopoly  that  goes  with  it,  and  the  purchaser 
has  bought  the  machine  with  the  right  to  use  the  invention  until  the  machine 
is  worn  out.  When  the  machine  is  worn  out  or  substantially  destroyed, 
his  right  to  use  the  patented  invention  ceases;  and  when  he  rebuilds  his 
machine,  and  thereby  makes  substantially  a  new  machine,  it  becomes  the 
subject  of  the  patentee's  monopoly,  the  same  as  in  the  case  of  any  other 
person  who  unlawfully  makes  the  patented  machine.  —  Goodyear  v.  Jackson, 
112  Fed.  146;   50  C.  C.  A.  159. 

It  was  not  seriously  contended  at  the  argument  that  the  repair  to  a  single 
tube  would  not  infringe  the  claim.    It  is  equally  clear  that  replacing  the  entire 


464  THE    FIXED    LAW    OF    PATENTS  §  524 

series  is  an  infringement.  Between  these  two  extremes  lies  a  debatable  ground, 
the  precise  limits  of  which  cannot  be  determined  in  advance.  Whether 
the  bounds  of  legitimate  repair  have  been  exceeded  must  be  determined 
upon  the  facts  of  each  case  as  it  is  presented.  The  mere  fact  that  the 
patentee  is  willing  to  replace  the  injured  part  and  make  the  repair  is 
not  alone  sufficient  to  vest  in  him  a  monopoly  of  this  work.  If  the  pur- 
chaser sees  fit  to  make  necessary  repairs  himself,  or  employs  others  for  that 
purpose,  he  has  a  right  to  do  so,  even  though  it  be  shown  that  he  has  there- 
tofore been  guilty  of  infringement.  The  commission  of  an  unlawful  act  in 
the  past  does  not  warrant  the  prohibition  of  lawful  acts  in  the  future.  — 
Morrin  v.  White,  143  Fed.  519 ;  74  C.  C.  A.  466. 

To  return  to  use  something  injured  or  lost,  or  to  substitute  for  something 
defaced  or  destroyed  another  thing  substantially  identical,  is  to  repair. 
The  right  of  general  repairing  has  not  been  questioned;  but  what  plaintiff 
in  error  has  done  is  not  to  mend  or  better  broken  or  other  records,  nor  even  to 
furnish  new  records  identical  with  those  originally  offered  by  the  Victor 
Company,  but  to  place  upon  new  disks  such  other  sound  records  as  are 
thought  to  command  a  market,  and  to  induce  users  of  the  patented  machine 
not  to  replace,  but  to  increase  their  stock  of  recorded  words  and  music. 
The  right  to  repair  is  measured  by  the  right  of  the  owner  of  the  patented 
article,  and  such  owner,  when  doing  what  is  above  outlined,  is  no  more 
repairing  his  machine  than  is  one  repairing  a  stereopticon  by  changing  the 
pictures  therein.  —  Leeds  v.  Victor,  154  Fed.  58;  85  C.  C.  A.  170. 

§  524.     Repairs  • —  What  Constitute. 

We  admit,  for  such  is  the  rule  in  Wilson  v.  Rousseau,  4  How.  that  when 
the  material  of  the  combination  ceases  to  exist,  in  whatever  way  that  may 
occur,  the  right  to  renew  it  depends  upon  the  right  to  make  the  invention. 
If  the  right  to  make  does  not  exist,  there  is  no  right  to  build  the  combination. 
But  it  does  not  follow  when  one  of  the  elements  of  the  combination  has 
become  so  much  worn  as  to  be  inoperative,  or  has  broken,  that  the  machine 
no  longer  exists  for  the  restoration  to  its  original  use  by  the  owner,  who 
has  bought  it  to  use.  When  the  wearing  or  injury  is  partial,  then  repair  is 
restoration,  and  not  reconstruction.  —  Wilson  v.  Simpson,  9  How.  109; 
13  L.  Ed.  66. 

Of  course,  when  we  speak  of  a  right  to  restore  a  part  of  a  deficient  combi- 
nation, we  mean  the  part  of  one  entirely  original,  and  not  of  any  other  pa- 
tented thing  which  has  been  introduced  into  it,  to  aid  its  intended  perform- 
ance. Nor  is  it  meant  that  the  right  to  replace  extends  to  everything  that 
may  be  patented.  Between  repairing  and  replacing  there  is  a  difference. 
—  Wilson  v.  Simpson,  9  How.  109;  13  L.  Ed.  66. 

If  the  patented  article  can  be  repaired  by  means  which  merely  keep  it 
up  to  the  performance  of  its  duty,  such  is  permissible ;  but  if  it  is  so  broken 
or  worn  out  as  to  require  replacement  it  cannot  be  effected  by  repair.  — 
Wilson  v.  Simpson,  9  How.  109;  13  L.  Ed.  66. 

Complainant's  patent  covered  a  bale  tie,  consisting  of  a  buckle  and  band, 
which  they  sold  marked,  "  Licensed  to  use  once  only."  Defendants  bought 
as  scrap  iron  the  used  buckles  and  bands,  straightened,  and  riveted  them 
together  where  the  band  had  been  cut,  and  sold  them  for  use.  Held:  Infringe- 
ment. —  American  v.  Simmons,  106  U.  S.  89;  27  L.  Ed.  79;  IS.  Ct.  52. 

Distinguishing  Wilson  v.  Simpson,  9  How.  109. 

Discussed  with  cases.  —  Morgan  v.  Albany,  152  U.  S.  425;  38  L.  Ed. 
500;  14  S.  Ct.  627. 


§  524  INFRINGEMENT  4G5 

The  right  to  repair  a  patented  device  is  a  right  which  goes  with  the  device 
when  it  is  sold;  but  that  right  does  not  include  a  right  to  rebuild  the  device 
in  the  sense  of  making  it  a  new  device.  —  Davis  v.  Edison,  60  Fed.  276 ;  8 
C.  C.  A.  615. 

Chaffee  v.  Belting  Co.  22  How.  217;  Adams  v.  Burks,  17  Wall.  453;  Hobbie  v. 
Jennison,  149  U.  S.  353;  Wilson  v.  Simpson,  9  How.  109;  Cotton  Tie  v.  Simmons, 
106  U.  S.  89. 

The  right  to  replace  a  broken  or  injured  part  by  a  new  one,  from  any  person 
who  can  supply  the  article,  should  be  conceded  by  the  owners  of  the  patent. 

—  Thomson-Houston  v.  Kelsey,  75  Fed.  1005;  22  C.  C.  A.  1. 

The  rule  is  well  established  that  one  who  purchases  a  machine  or  mechan- 
ical contrivance  consisting  of  several  distinct  parts,  which,  as  a  whole,  is 
covered  by  a  patent,  has  the  right,  by  virtue  of  his  purchase  from  the  pat- 
entee, to  repair  a  part  of  the  machine  or  device  which  happens  to  be  broken 
through  accident,  or  which  becomes  so  far  worn  as  to  render  the  machine 
inoperative,  provided  the  machine  as  a  whole,  still  retains  its  identity,  and 
what  is  done  in  the  way  of  rendering  it  operative  does  not  amount  to  recon- 
struction, and  provided,  further,  that  the  part  so  replaced  is  not  separately 
covered  by  a  patent.  The  sale  of  a  patented  article  by  the  patentee  frees 
it  from  the  grasp  of  the  monopoly,  and  the  purchaser  may  thereafter  exer- 
cise the  same  dominion  over  it  which  he  exercises  over  his  other  property. 
The  right  to  thus  repair  a  patented  device  is  incidental  to  ownership.  The 
fact  that  it  is  patented  does  not  lessen  the  owner's  right  to  put  it  in  order 
when  it  gets  out  of  repair,  unless,  considered  as  a  whole,  it  is  worn  out  and 
useless.  When  a  patented  machine  is  accidentally  destroyed,  or  when  it  is 
practically  worn  out,  the  owner  thereof,  under  the  guise  of  repairing  it, 
cannot  make  a  new  machine.  In  such  cases  he  must  cast  it  aside  and  buy 
a  new  one  from  the  patentee.  —  Shickle  v.  St.  Louis,  77  Fed.  739 ;  23  C.  C.  A. 
433. 

Wilson  v.  Simpson,  9  How.  109;  Chaffee  v.  Belting,  22  How.  217;  Tie  Co.  v. 
Simmons,  106  U.  S.  89;  Farrington  v.  Board,  Fed.  Cas.  4,687;  Gottfried  v. 
Brewing  Co.  8  Fed.  322;  Aikin  v.  Print,  1  Fed.  Cas.  113;  Singer  v.  Springfield,  34 
Fed.  393;  Wallace  v.  Holmes,  Fed.  Cas.  17,100. 

It  is  manifest  that  a  broken  or  worn-out  cam  effected  only  a  partial  de- 
struction of  the  patented  combination  composed  of  three  separate  groups 
of  mechanism,  and  that  the  replacement  of  the  old  cam  with  a  new  one  was 
not  a  substantial  rebuilding  of  the  combination.  If  the  patented  invention 
had  been  for  this  particular  form  of  cam,  or  had  been  simply  for  an  improved 
feed,  and  the  whole  invention  had  resided  substantially  in  the  cam,  the  case 
would  have  presented  a  different  aspect.  —  Goodyear  v.  Jackson,  112  Fed. 
146;  50  C.  C.  A.  159. 

When  the  patent  is  for  a  single  thing,  like  a  knitting  needle,  for  example, 
and  not  for  a  device  or  machine  composed  of  several  things  or  elements 
combined,  it  is  obvious  that  the  replacement  of  an  old  needle  by  a  new  one 
in  a  knitting  machine  is  not  repair,  but  a  reproduction  of  the  patented  thing. 

—  Goodyear  v.  Jackson,  112  Fed.  146;  50  C.  C.  A.  159. 

Aikin  v.  Manchester,  2  Cliff.  435;  Morgan  v.  Albany,  152  U.  S.  425;  Wilson  v. 
Simpson,  9  How.  109. 

A  practical  reconstruction  of  the  patented  machine,  and  not  necessarily 
a  literal  reconstruction  of  the  patented  combination,  is  all  that  is  required 
to  constitute  infringement  by  the  purchaser.  For  example,  where  the  patent 
is  for  an  improved  lamp,  and  the  whole  invention  resides  in  the  burner,  but 


466  THE   FIXED   LAW   OF   PATENTS  §  525 

the  claim  is  for  the  combination  of  the  burner  and  a  chimney,  in  an  ordinary 
suit  for  infringement  it  must  be  shown  that  the  defendant  made  or  used  or 
sold  the  patented  combination,  namely,  the  burner  and  the  chimney;  while 
in  a  suit  for  infringement  against  the  purchaser  of  the  lamp  it  would  only 
be  necessary  to  prove  that  he  replaced  the  old  burner  with  a  new  one,  be- 
cause, manifestly,  that  would  constitute  a  substantial  reconstruction  of 
the  patented  invention.  If  a  person  other  than  the  purchaser  should  make  or 
sell  the  burner  with  the  intent  and  purpose  of  its  use  by  another  in  com- 
bination with  the  chimney,  it  would  be  a  clear  case  of  contributory  infringe- 
ment. —  Goodyear  v.  Jackson,  112  Fed.  146;  50  C.  C.  A.  159. 
Wallace  v.  Holmes,  9  Blatchf.  65. 

To  show  infringement  in  the  case  of  an  ordinary  infringer,  where  the 
patented  invention  comprises  several  elements  in  combination,  it  is  neces- 
sary to  prove  that  the  alleged  infringing  machine  contains  all  the  elements 
(or  their  equivalents)  which  make  up  the  combination,  although  some  of 
the  elements  may  not  be  material,  or  of  the  essence  of  the  invention.  To 
show  infringement  by  the  purchaser  (by  repairing)  in  such  a  case,  the  same 
strictness  of  proof  is  not  required,  for  the  reason  that  it  may  not  be  necessary 
for  him  to  make  the  immaterial  or  unessential  elements  of  the  patented 
combination,  because  they  may  not  be  worn  out  or  destroyed  in  his  machine 
when  the  work  of  reconstruction  begins.  —  Goodyear  v.  Jackson,  112  Fed. 
146;  50  C.  C.  A.  159. 

The  purchaser  of  a  patented  machine,  in  order  to  infringe,  must  make 
or  reproduce,  in  substance,  the  whole  patented  invention.  To  prove  in- 
fringement, in  one  case,  it  is  only  necessary  to  show  a  partial  infringement 
in  aid  of  an  unlawful  complete  infringement,  while  in  the  other  case  a  sub- 
stantially full  and  complete  infringement  must  be  established.  The  rule 
that  a  person  may  be  guilty  of  contributory  infringement  by  making  or 
selling  a  material  element  of  the  patented  combination  has  no  application 
to  infringement  by  the  purchaser  of  a  machine  embodying  such  patented 
combination.  A  purchaser  stands  in  no  different  position  from  an  ordinary 
infringer,  except  in  the  circumstance  that  he  has  bought  a  patented  machine, 
and,  consequently,  his  infringement  does  not  consist  in  the  construction  of  a 
wholly  new  machine,  but  in  the  reconstruction  of  such  machine  after  it  is 
worn  out,  or  substantially  destroyed.  The  essence  of  infringement  is  the 
same  in  both  cases.  —  Goodyear  v.  Jackson,  112  Fed.  146;  50  C.  C.  A.  159. 

If  this  be  lawful  for  the  owner,  it  is  equally  so  for  the  mechanic  who  is 
employed  to  do  the  work;  the  latter  cannot  be  held  as  an  infringer  for 
making  repairs  which  the  former  has  an  undoubted  right  to  make.  —  Morrin 
v.  White,  143  Fed.  519;  74  C.  C.  A.  466. 

§  525-     Tests  —  Anticipation  Test. 

If  the  hoe  made  by  the  tool  Company  infringes  the  patent  of  the  appellant, 
it  was  an  anticipation  of  the  invention,  and  the  patent  is  void,  for  the  tes- 
timony leaves  no  doubt  whatever  in  our  minds  that  the  Company  made  and 
sold  its  hoes  long  before  the  date  of  the  invention  patented.  If  it  is  not  an 
anticipation,  it  is  not  an  infringement.  —  Cook  v.  Sandusky,  28  L.  Ed.  124; 
4  S.  Ct.  4. 

That  which  infringes  if  later  would  anticipate  if  earlier.  —  Knapp  v. 
Morss,  150  U.  S.  221;  37  L.  Ed.  1059;   14  S.  Ct.  81. 

Peters  v.  Active,  129  U.  S.  530;  Thatcher  v.  Burtis,  121  U.  S.  286;  Grant  v. 
Walter,  148  U.  S.  547;  Gordon  v.  Warder,  150  U.  S.  47. 


§  526  INFRINGEMENT  467 

"  That  which  infringes  if  later  anticipates  if  earlier."  —  Miller  v.  Eagle, 
151  U.  S.  186;  38  L.  Ed.  121;   14  S.  Ct.  310. 

Peters  v.  Active  Mfg.  Co.  129  U.  S.  530;  Thatcher  v.  Burtis,  121  U.  S.  286;  Grant 
v.  Walter,  148  U.  S.  547;  Gordon  v.  Warder,  150  U.  S.  47;  Knapp  v.  Morss,  150 
U.  S.  221. 

That  which  infringes  if  later,  anticipates  if  earlier.  —  Muller  v.  Lodge, 
77  Fed.  621;  23  C.  C.  A.  357. 

Peters  v.  Mfg.  Co.  21  Fed.  319;  Peters  v.  Mfg.  Co.  129  U.  S.  537;  Knapp  v.  Morss, 
150  U.  S.  221;   Miller  v.  Mfg.  Co.  151  U.  S.  186. 

The  device  used  by  the  appellant  cannot  be  held  to  be  an  infringement 
of  the  appellee's  patent  unless  it  would  have  been  held  —  if  used  earlier 
than  the  patent  —  to  have  been  an  anticipation  of  the  same ;  and  certainly 
it  is  clear,  if  it  had  been  set  up  as  in  prior  use  against  the  Streat  patent, 
as  it  did  not  contain  an  apron  used  in  the  manner  set  forth  in  said  patent, 
that  it  would  not  have  been  decreed  to  have  been  an  anticipation.  —  Ameri- 
can v.  Streat,  83  Fed.  700;  28  C.  C.  A.  18. 

Peters  v.  Mfg.  Co.  129  U.  S.  530;  Knapp  v.  Morss,  150  U.  S.  221;  Heating  Co. 
v.  Burtis,  121  U.  S.  286;  Grant  v.  Walter,  148  U.  S.  547;  Gordon  v.  Warder,  150 
U.  S.  47. 

It  is  a  well-established  rule  that  "  that  which  infringes,  if  later,  would 
anticipate  if  earlier;"  and,  conversely,  that  a  device  cannot  be  held  to  be 
an  infringement  unless  it  would  have  been  held,  if  earlier  than  the  patent, 
to  have  been  an  anticipation  thereof.  —  Peerless  v.  White,  118  Fed.  827;  55 
C.  C.  A.  502. 

Tobacco  v.  Streat,  83  Fed.  700. 

Note:  The  ill-considered  application  of  this  rule  may  well  result  in  a  wrong 
decision,  as  happened  in  this  case,  and  as  is  clearly  shown  in  the  dissenting 
opinion  of  Judge  Acheson. 

A  device  which,  if  existent  before  the  making  of  a  patented  invention, 
would  not  anticipate  it,  cannot,  if  made  after  the  issue  of  the  patent,  be 
said  to  infringe  it.  —  Cleveland  v.  Chicago,  135  Fed.  783;  68  C.  C.  A.  485. 

With  such  differences  his  would  not  constitute  an  infringement  of  theirs, 
and  of  necessity  theirs  do  not  constitute  anticipation  of  his.  —  St.  Louis  v. 
American,  156  Fed.  574;  84  C.  C.  A.  340. 

Kokomo  v.  Kitselman,  189  U.  S.  8;  Greene  v.  Buckley,  135  Fed.  520. 

It  must  be  admitted  that  the  Portland  structure  and  device  (the  device 
of  defendant)  could  not  be  patented.  The  necessary  corollary  is  that  the 
one  device  is  not  an  infringement  of  the  other.  —  Portland  v.  Hermann, 
160  Fed.  91 ;  87  C.  C.  A.  247. 

§  526.     Tests  —  Device  and  Claims. 

When  the  invention  or  inventions  are  embodied  in  a  machine,  the  ques- 
tion of  infringement  is  best  determined  by  a  comparison  of  the  machine 
made  by  the  respondent  with  the  mechanism  described  in  the  complainant's 
patent  or  patents,  where  more  than  one  is  embraced  in  the  same  suit.  — 
Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Blanchard  v.  Putnam,  8  Wall.  426. 

Except  when  form  is  the  essence  of  the  invention,  it  has  but  little  weight 
in  the  decision  of  such  an  issue,  the  correct  rule  being  that,  in  determining 


468  THE   FIXED   LAW   OF   PATENTS  §§  527-528 

the  question  of  infringement,  not  to  judge  about  similarities  or  differences 
in  the  names  of  things,  but  to  look  at  the  machines  or  their  several  devices 
or  their  elements  in  the  light  of  what  they  do  or  what  office  or  function  they 
perform,  and  how  they  perform  it,  and  to  find  that  one  thing  is  substantially 
the  same  as  another,  if  it  performs  substantially  the  same  function  in  sub- 
stantially the  same  way  to  obtain  the  same  result;  always  bearing  in  mind 
that  devices  in  a  patented  machine  are  different  in  the  sense  of  the  patent 
law  when  they  perform  different  functions  or  in  a  different  way,  or  produce 
a  substantially  different  result.  —  Union  v.  Murphy,  97  U.  S.  120;  24  L.  Ed. 
935. 

Cahoon  v.  Ring,  1  Cliff.  620. 

In  determining  infringement,  we  are  entitled  to  look  at  the  practical 
operation  of  the  machines.  If  the  device  of  respondents  shows  a  substantially 
different  mode  of  operation,  even  though  the  result  of  the  operation  of  the 
machine  remains  the  same,  infringement  is  avoided.  —  Cimiotti  v.  Ameri- 
can, 198  U.  S.  399;  49  L.  Ed.  1100;  25  S.  Ct.  697. 

Brooks  v.  Fiske,  15  How.  212;   Union  v.  Battle  Creek,  104  Fed.  337. 

Infringement  is  to  be  determined  by  a  consideration  of  the  claims,  and 
if  their  language  is  such  that,  upon  a  fair  consideration  of  them,  defendant's 
structure  does  not  fall  within  their  terms,  infringement  cannot  be  found. 
—  Hoe  v.  Miehle,  149  Fed.  213;  79  C.  C.  A.  171. 

§  527.     Tests  —  Function. 

An  alleged  infringing  combination,  which  has  no  adaptation  for  accom- 
plishing the  essential  functions  which  the  combination  patented  was,  on  the 
face  of  the  patent,  intended  to  accomplish,  cannot  ordinarily  be  held  to 
truly  infringe.  —  Boston  v.  Bemis,  80  Fed.  287;  25  C.  C.  A.  420. 

Long  v.  Mfg.  Co.  75  Fed.  835. 

A  function  not  being  patentable,  the  mere  fact  of  the  performance  of  this 
function  by  the  new  means  operating  in  a  new  way,  cannot  serve  construct- 
ively to  make  it  an  infringement  of  the  means  not  used,  where  the  invention 
is  of  the  limited  character  shown  in  this  patent.  —  Mann  v.  Hoffmann,  104 
Fed.  245;  43  C.  C.  A.  514. 

Where  infringement  would  naturally  or  necessarily  result  from  the  or- 
dinary use  of  a  device,  a  defendant  cannot  escape  liability  for  infringement 
by  merely  showing  the  possibility  of  a  different  use.  The  decisive  question 
is  whether  the  operation  of  the  alleged  infringing  device  when  in  use  is  the 
same,  and  produces  the  same  results.  —  Davis  v.  Perry,  120  Fed.  941 ;  57 
C.  C.  A.  231. 

Snyder  v.  Bunnell,  29  Fed.  47;  Westinghouse  v.  N.  Y.  59  Fed.  597;  Thomson- 
Houston  v.  Kelsey,  72  Fed.  1016. 

Identity  of  result  is,  however,  not  a  sufficient  test  of  infringement.  There 
must  also  be  substantial  identity  of  the  means  and  manner  of  accomplish- 
ment. —  Heekin  v.  Baker,  138  Fed.  63;  70  C.  C.  A.  559. 

§  528.     Tests  —  Interchangeability. 

Interchangeability  test  of. —Miller  v.   Eagle,  151  U.  S.  186;  38   L.  Ed. 
121;  14  S.  Ct.  310. 
Prouty  v.  Ruggles,  41  U.  S.  336;    Brooks  v.  Fiske,  56  U.  S.  212;    Eames  v. 

Godfrey,  68  U.  S.  78. 


§§  529-531  INFRINGEMENT  469 

Noninterchangeabilitv  of  parts  tends  strongly  to  negative  infringement. 

—  Pittsburg  v.  Pittsburg,  109  Fed.  644;  48  C.  C.  A.  580. 
Miller  v.  Mfg.  Co.  151  U.  S.  186. 

Interchangeability  is  referred  to  in  Miller  v.  Eagle,  151  U.  S.  186  and  other 
cases  cited  in  the  argument  on  behalf  of  the  appellee,  as  an  "  important  test  in 
determining  the  question  of  infringement,"  and  it  is  contended  that  inter- 
changeability of  parts  and  functions  thus  conceded  does  not  meet  the  re- 
quirements for  such  test,  upon  the  assumption  that  the  interchange  involves 
substantial  reorganization  of  one  and  the  other  structure.  This  contention 
is  without  force,  under  our  conclusion  that  these  deviations  are  plain  equiva- 
lents within  the  scope  of  the  patent,  and  do  not  depart  substantially  from 
the  invention.  —  Columbia  v.  Kokomo,  143  Fed.  116;  74  C.  C.  A.  310. 

§  529.    Tests  —  Means  and  Result. 

To  constitute  an  infringement,  the  thing  used  by  the  defendant  must  be 
such  as  to  substantially  embody  the  patentee's  mode  of  operation,  and  thereby 
to  attain  the  same  kind  of  result  as  was  reached  by  his  invention.  It  is  not 
necessary  that  the  defendant  should  employ  the  plaintiff's  invention  to  as 
good  an  advantage  as  he  employed  it  or  that  the  result  should  be  the  same 
in  degree:  but  it  must  be  the  same  in  kind.  —  Sewall  v.  Jones,  91  U.  S.  171; 
23  L.  Ed.  275. 

Winans  v.  Denmead,  15  How.  330. 

We  are  not  unaware  of  the  principle  that  the  mere  fact  that  two  machines 
produce  the  same  effect  does  not  establish  that  one  is  an  infringement  of  the 
other.  If  it  were  so,  it  would  operate  as  an  admission  that  an  inventor  is 
entitled  to  patent  his  function.  To  be  an  infringement  "  the  alleged  in- 
fringer must  have  done  something  more  than  reached  the  same  result.  He 
must  have  reached  it  by  substantially  the  same  or  similar  means  or  the  rule 
that  the  function  of  a  machine  cannot  be  patented,  is  of  no  practical  value." 

—  Bundy  v.  Detroit,  94  Fed.  524;  36  C.  C.  A.  375. 

Westinghouse  v.  Boyden,  170  U.  S.  569;  Machine  Co.  v.  Murphy,  97  U.  S.  120; 
Elizabeth  v.  Pavement  Co.  97  U.  S.  126;  Hoyt  v.  Home,  145  U.  S.  302. 

The  machines  of  complainant  and  defendants  "  lack  the  identity  of  means 
and  identity  of  operation  which  must  be  combined  with  identity  of  result 
to  constitute  infringement."  —  U.  S.  Envelope  v.  Sherman,  122  Fed.  465; 
58  C.  C.  A.  624. 

Kokomo  v.  Kitselman,  189  U.  S.  8. 

§  530.     Tests  —  Utility  and  Use. 

It  is  not  necessary  that  the  defendant's  cars  should  employ  the  plaintiff's 
invention  to  as  good  an  advantage  as  he  employed  it,  or  that  the  result 
should  be  precisely  the  same  in  degree.  —  Winans  v.  Denmead,  15  How.  330; 
14  L.  Ed.  717. 

The  diversity  of  inherent  quality  of  two  devices  or  manufactures  may  be 
considered  in  determining  identity  or  diversity  of  invention.  —  Dobson  v. 
Cubley,  149  U.  S.  117;  37  L.  Ed.  671 ;  13  S.  Ct.  796. 

§  531.     Tests  —  Miscellaneous. 

If  the  defendants  do  not  fix  or  fasten  their  device  to  the  machine  in  the 
manner  stated  in  the  specification,  either  at  all  or  substantially  in  the  same 
manner  as  the  patentee,  or  fix  or  fasten  it  only  in  a  manner  known  and  used 


470  THE    FIXED    LAW    OF    PATENTS  §  532 

before  the  plaintiff's  supposed  invention,  the  defendants  are  not  guilty  of 
any  violation  or  infringement  of  plaintiff's  patent.  —  Carver  v.  Hyde,  16 
Pet.  513;  10  L.  Ed.  1051. 

In  the  case  of  an  American  reissue  upon  an  original  also  patented  abroad, 
if  it  were  assumed  that  manufacture  were  begun  under  the  precise  terms  of 
the  foreign  patents  and  infringement  were  found,  that  would  be  conclusive 
that  the  reissue  was  for  the  same  invention  covered  by  the  foreign  patents 
which  were  founded  upon  the  original  American  patent.  —  Commercial  v. 
Fairbank,  135  U.  S.  176;  34  L.  Ed.  88;  10  S.  Ct.  972. 

The  fact  that  the  defendant  himself  subsequently  made  application  for 
the  patent,  which  upon  the  plaintiff's  interference,  was  awarded  to  the  latter, 
indicates  quite  clearly  that  the  defendant  did  not  consider  it  as  accomplish- 
ing the  purpose  sought  by  his  subsequent  application.  —  DuBois  v.  Kirk, 
158  U.  S.  58;  39  L.  Ed.  895;  15  S.  Ct.  729. 

If  Rose  had  taken  a  patent  for  his  umbrella  and  case  combined,  a  different 
question  would  be  presented.  He  did  not  do  this,  however,  but  took  a 
separate  patent  for  the  case,  because  he  desired  and  intended  to  obtain  a 
monopoly  in  cases,  not  simply  for  the  peculiar  umbrella  manufactured  under 
his  previous  patent,  but  for  all  others  to  which  it  could  be  applied.  The  effort 
now  made  to  read  the  patents  together  and  to  treat  them  substantially 
as  one,  covering  the  umbrella  and  case  combined,  is,  of  course,  unjustifiable. 
The  patent  for  the  case  must  stand  alone,  as  issued,  and  so  considered  it 
clearly  does  not  cover  any  case  from  which  either  of  its  essential  elements  is 
omitted.  —  Rose  v.  Hirsh,  77  Fed.  469;  23  C.  C.  A.  246. 

When  experimental  tests  are  necessary  to  distinguish  one  device  from 
another,  it  is  manifestly  an  impracticable,  not  to  say  dangerous,  proposition 
that  the  making  or  using  of  either  under  a  given  patent  may  be  declared  to 
be  an  infringement  of  a  different  patent  upon  the  other,  would  seem  to  apply 
with  equal  or  greater  force  here.  —  Western  Elec.  v.  Standard  Co.  84  Fed. 
654;   28  C.  C.  A.  512. 

Following  Thomson-Houston  v.  Western,  70  Fed.  69. 

Comparison  of  infringing  device  with  prior  devices  alleged  to  anticipate. 
—  Dowagiac  v.  Minnesota,  118  Fed.  136;  55  C.  C.  A.  86. 

A  copy  of  the  thing  described  in  a  patent,  either  without  variation,  or 
with  such  variations  as  are  consistent  with  its  being  in  substance  the  same 
thing,  is  for  all  the  purposes  of  the  patent  law  the  same  device  as  that  de- 
scribed in  the  patent.  —  Lourie  v.  Lenhart,  130  Fed.  122;  64  C.  C.  A.  456. 

Burr  v.  Duryee,  1  Wall.  531. 


§  532.     Miscellaneous  Infringement  Rules. 

The  rights  of  property  and  exclusive  use  granted  to  a  patentee  does  not 
extend  to  a  foreign  vessel  lawfully  entering  one  of  our  ports;  and  that  the 
use  of  such  improvement,  in  the  construction,  fitting  out  or  equipment  of 
such  vessel  while  she  is  coming  into  or  going  out  of  a  port  of  the  United  States, 
is  not  an  infringement  of  the  rights  of  an  American  patentee,  provided  it 
was  placed  upon  her  in  a  foreign  port,  and  authorized  by  the  laws  of  the 
country  to  which  she  belongs.  —  Brown  v.  Duchesne,  60  U.  S.  183;  15  L.  Ed. 
595. 


§  532  INFRINGEMENT  471 

When  infringement  is  admitted,  the  language  is  satisfied  by  assuming 
the  smallest  number  consistent  with  the  use  of  the  word  in  plural.  —  Jones  v. 
Morehead,  68  U.  S.  155;  17  L.  Ed.  662. 

If,  on  the  other  hand,  the  Cawood  machine  was  novel,  as  we  think  it  was, 
if  it  was  not  anticipated  by  the  Springfield,  the  conclusion  is  inevitable 
that  neither  the  Michigan  Southern  nor  the  Bayonet  vice  is  an  infringement. 
—  R.  R.  v.  Turrill,  94  U.  S.  695;  24  L.  Ed.  238. 

The  use  of  a  well  (driven  well)  so  constructed  is,  therefore,  a  continuing 
infringement,  as  every  time  water  is  drawn  from  it  the  patented  process  is 
necessarily  used.  —  Beedle  v.  Bennett,  122  U.  S.  71 ;  30  L.  Ed.  1074;  7  S.  Ct. 
1090. 

An  inventor  has  no  property  right  in  his  discovery  which  is  exclusive  except 
under  his  patent;  and  therefore  the  provisions  of  sec.  4899  U.  S.  R. S.  is  not 
unconstitutional  as  depriving  the  inventor  of  his  property  without  com- 
pensation. —  Dable  v.  Flint,  137  U.  S.  41 ;  34  L.  Ed.  618;  11  S.  Ct.  8. 

Gayler  v.  Wilder,  51  U.  S.  477;  Brown  v.  Duchesne,  60  U.  S.  183;  Marsh  v. 
Nichols,  128  U.  S.  605. 

Purchasers  from  an  assignee  in  bankruptcy  cannot  maintain  a  suit  in 
equity  against  third  persons  claiming  adverse  interests,  if  at  the  time  of  the 
purchase  from  the  assignee  his  right  of  action  was,  under  the  Bankruptcy 
Act,  barred  by  the  lapse  of  time.  —  Sessions  v.  Romadka,  145  U.  S.  29; 
36  L.  Ed.  609;   12  S.  Ct.  799. 

Gifford  v.  Helms,  98  U.  S.  248;  Wisner  v.  Brown,  122  U.  S.  214. 

When  the  essential  operation  of  the  two  devices  is  so  different  there  is 
no  equity  in  charging  infringement  upon  the  defendant  by  an  apparently 
accidental  adoption  of  an  immaterial  feature  of  the  plaintiff's  patent.  — 
B.  &  S.  Fastener  v.  Kraetzer,  150  U.  S.  Ill;  37  L.  Ed.  1019;  14  S.  Ct.  48. 

Where  complainant  declares  on  a  certain  claim  or  claims,  the  court  will 
not  consider  the  possible  infringement  of  other  claims.  —  Gordon  v.  Warder, 
150  U.  S.  47;  37  L.  Ed.  992;  14  S.  Ct.  32. 

When  a  patent  has  been  surrendered  and  reissued,  and  such  reissue  is 
held  void,  the  patentee  cannot  sue  upon  the  original.  —  Eby  v.  King,  158 
U.  S.  366;  39  L.  Ed.  1018;  15  S.  Ct.  972. 

Moffitt  v.  Garr,  66  U.  S.  273;  Reedy  v.  Scott,  90  U.  S.  352;  Peck  v.  Collins,  103 
U.  S.  660;   McMurray  v.  Mallory,  111  U.  S.  97;   Gage  v.  Herring,  107  U.  S.  640. 

If  a  patentee  could,  under  any  circumstances,  sue  to  recover  for  the  use  of 
a  patent  before  it  was  granted  (as  to  which  it  was  held  in  Gayler  v.  Wilder, 
10  How.  477;  Brown  v.  Duchesne,  19  How.  183;  Marsh  v.  Nichols,  128  U.  S. 
612 ;  Sargent  v.  Seagrave,  2  Curt,  553 ;  and  Rein  v.  Clayton,  37  Fed.  354  —  that 
an  inventor  has  no  exclusive  right  before  a  patent  has  been  issued)  it  cer- 
tainly could  not  apply  to  a  case  where  the  patentee  was  not  the  inventor  of 
the  thing  patented;  where  the  device  has  been  in  public  use  for  more  than 
two  years,  and  where  the  government  had  protested  against  any  patent 
being  issued  for  it.  —  Kirk  v.  U.  S.  163  U.  S.  49;  41  L.  Ed.  66;  16  S.  Ct.  911. 

It  is  insisted  that  the  court  had  no  right  to  consider  an  earlier  patent  of 
the  inventor  of  the  patent  in  suit  as  anticipating  the  one  in  suit;  and  refer- 
ence is  made  to  Cantrell  v.  Wallick,  117  U.  S.  689  for  the  proposition  that: 

"  The  defendant  cannot  excuse  or  defend  himself  against  the  charge  of 


472  THE   FIXED   LAW   OF   PATENTS  §  532 

infringement  of  the  letters  patent  in  suit,  by  saying  that  he  infringed  an 
earlier  patent  rather  than  the  patent  claimed  in  this  case." 

The  proposition  is  neither  to  be  found  nor  has  it  support  in  the  case  cited, 
and  the  contrary  is  well  settled.  —  Barnes  v.  Walworth,  60  Fed.  605 ;  9 
C.  C.  A.  154. 

In  the  machine  of  the  patent,  the  platen  is  operated  by  the  check  in  the 
hand  of  the  workman;  in  the  defendants'  machine  it  is  operated  by  the 
clock-work  previously  wound  up.  This  substantial  difference  seems  to  run 
through  the  whole  and  to  take  the  defendants'  machine  out  of  the  scope  of 
all  of  these  claims.  —  Bunday  v.  Columbian,  64  Fed.  851;   12  C.  C.  A.  442. 

If,  then,  a  patentee  has  the  exclusive  right  to  the  use  of  his  invention  or 
discovery,  during  the  term  of  his  patent,  it  would  seem  to  follow  that  any 
use  by  another,  unauthorized  by  the  patentee,  would  be  an  infringement  of 
his  monopoly.  If,  therefore,  he  can  find  a  purchaser  for  a  machine  subject 
only  to  certain  specified  uses,  any  violation  of  the  privileges  granted  would 
be  an  infringement,  for  which  the  remedies  granted  patentees  would  be  ap- 
propriate. —  Heaton  v.  Eureka,  77  Fed.  288;  25  C.  C.  A.  267. 

Rubber  Co.  v.  Goodyear,  9  Wall.  788;  Burr  v.  Duryee,  Fed.  Cas.  2190;  Mfg.  Co. 
v.  Owsly,  27  Fed.  100;  Steam  Cutter  v.  Sheldon,  5  Fish.  477;  Rob.  Pat.  sees.  812- 
815,  1250. 

A  final  decree  holding  a  machine  not  to  be  infringement  is  conclusive  with 
reference  to  the  identical  machine  in  the  hands  of  a  purchaser.  —  Norton 
v.  San  Jose,  79  Fed.  793;  25  C.  C.  A.  194. 

Johnson  v.  Wharton,  152  U.  S.  252;  Last  Chance  v.  Tyler,  157  U.  S.  683; 
Railroad  v.  National,  102  U.  S.  14;  Stout  v.  Lye,  103  U.  S.  66. 

The  adjustment  was  made  after  an  interlocutory  decree  for  an  injunction, 
and  for  an  accounting,  on  a  bill  in  equity  which  related  to  the  unauthorized 
use  of  a  patented  device  in  a  single  machine  by  the  respondents  below,  who 
were  not  manufacturers,  and  who  had  indicated  no  disposition  to  make  any 
use  of  the  device  except  in  that  machine.  It  included  a  license  covering  the 
machine,  and  a  release  of  all  damages,  profits  and  costs  in  the  suit.  Con- 
sequently, all  controversy  between  the  parties  had  ceased;  and,  if  the  ad- 
justment had  been  properly  pleaded,  it  is  clear  that  the  court  below  would 
have  had  no  occasion  to  consider  the  case  further,  and  a  final  decree  against 
the  respondents  below,  whether  for  an  injunction  or  otherwise,  would  have 
been  erroneous.  In  this  respect  the  case  would  have  been  essentially  differ- 
ent from  those  in  which  it  had  been  held  that  infringers  cannot  deprive  a 
patentee  of  the  just  fruits  of  his  litigation,  including  an  injunction,  by  ceasing 
to  infringe  of  their  own  motion  alone.  —  Marden  v.  Campbell,  79  Fed.  653 ; 
25  C.  C.  A.  142. 

See,  Gamewell  v.  Municipal,  77  Fed.  490. 

The  fact  that  the  owner  of  a  patent  has  offered  to  sell  licenses  does  not 
give  anyone  the  right  to  make  trial  tests  of  his  invention.  —  Clerk  v.  Tan- 
nage, 84  Fed.  643;  28  C.  C.  A.  501. 

The  fact  that  the  defendants  are  satisfied  to  use  the  machine  only  in  those 
operations  wherein  resides  its  chief  practical  value,  and  are  content  to  refrain 
from  employing  it  in  what  must  be  regarded  as  operations  of  an  unusual 
or  subordinate  character,  does  not  avail  as  a  defence.  —  Heap  v.  Green,  91 
Fed.  792;  34  C.  C.  A.  86. 

For  a  remarkable  holding  as  to  what  is  and  what  is  not  irreparable  injury 
to  complainant  or  defendant,  see  Pacific  v.  Alaska,  100  Fed.  462;  40  C.  C.  A. 
494. 


533 


INJUNCTION 


473 


How  easy  it  was  for  Hall,  who  commenced  work  under  him  as  an  appren- 
tice, and  for  years  was  engaged  in  the  same  shop  upon  Painters'  devices,  to 
absorb  the  inventive  idea,  and  to  produce  the  same  results  by  some  equiva- 
lent method.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

Machine  Co.  v.  Lancaster,  129  U.  S.  263;  Sessions  v.  Romadka,  145  U.  S.  29; 
McCormick  v.  Aultman,  69  Fed.  371. 

The  contract  provided  that  the  amount  to  be  paid  complainant  should  be 
determined  by  a  court  of  competent  jurisdiction.  The  action  was  for  in- 
fringement. The  court  was  asked  to  instruct  the  jury  that  there  was  no 
evidence  showing  infringement.  Held:  There  is  no  escape  from  the  conclu- 
sion that  this  instruction  should  have  been  given.  What  was  done  by  the 
defendants  was  done  under  the  agreement  and  with  the  full  consent  of  the 
plaintiffs.  —  Kilburn  v.  Holmes,  121  Fed.  750;  58  C.  C.  A.  116. 

That  the  fact  that  the  charged  infringement  took  place  during  the  pre- 
ceding six  years  need  not  be  specially  pleaded,  either  at  law  or  in  equity; 
and  that  the  burden  of  proof  is  on  the  defendant,  see  Peters  v.  Hanger,  134 
Fed.  586;  67  C.  C.  A.  386. 


INJUNCTION. 

Statutory  Provision  §  533 
General  Statement  §  534 
Appeals  (see  §  109) 

Comity  §  535 

Contempt,    General      §   536    (see 

§269) 

Contempt,    Rule    in    Debs    Case 

§537 

Contempt,  Reverse  of  Rule  in  Debs 

Case  §  538 

Decision  on  Merits  §  539 

Dismissing  Bill  §  540 

Prior  Adjudication  §  541 

Refusal  to  Grant  §  542 

Sound  Discretion  §  543 

What  Considered  on  §  544 

Miscellaneous  Rulings  §  545 
Bond  §  546 

Corporations  and  Corporation  Officers 
§  547  (see  §  271) 

Discontinuance  or  Non-Use  §  548 
Discretion  of  Court  §  549 
Expiration  of  Patent  §  550 
General  Rules  for  Granting  §  551 
General  Rules  for  Refusing  §  552 
Government  §  553  (see  §  428) 
Grounds  for  Granting 

Acquiescence  §  554 

Conduct  of  Defendant  §  555 

Damages    Insufficient    Remedy 

§  556 

Infringement  §  557 


Laches  Excusable  §  558  (see  §  726) 

Nature  of  Act  §  559 

Prima  Facie  Right  §  560 

Prior  Adjudication  §  561 

Sufficiency  —  General  §  562 
Grounds  for  Refusing 

Acquiescence    Not   Established 

§563 

Conflicting  Proofs  §  564 

Damages  Adequate  Relief  §  565 

Infringement  Not  Clear  §  566 

Insufficiency  —  General  §  567 

Laches  §  568  (see  §  726) 

License  §  569  (see  §  749) 

Prior  Adjudication  Insufficient 

§570 

Title  in  Doubt  §  571  (see  §  925) 

Validity  Contested  §  572 
Modification  §  573 
Non-User  §  574 
Patent  Office  Decisions  §  575 
Powers  and  Scope  §  576 
Violation  of 

Contempt  §  577 

Miscellaneous  Rules  §  578 
Miscellaneous    Injunction    Decisions 
§579 

See  — -  Adjudication  §  28;  Appeals 
§  109;  Comity  §  250;  Decrees  §  301; 
Equity  §  370;  Jurisdiction  §  713; 
Laches  §  730;  Pleading  §  788;  Res 
Judicata  §  893;    Title  §  925 


§  533-     Statutory  Provision. 

The  several  courts  vested  with  jurisdiction  of  cases  arising  under  the 
patent  laws  shall  have  power  to  grant  injunctions  according  to  the  course 
and  principles  of  courts  of  equity,  to  prevent  the  violation  of  any  right 


474  THE   FIXED   LAW   OF   PATENTS  §§  534-536 

secured  by  patent,  on  such  terms  as  the  court  may  deem  reasonable;  *  *  * 
—  R.  S.  4921. 

§  534-     General  Statement. 

One  approaching  for  the  first  time  the  multitude  of  holdings  upon  the 
subject  of  preliminary  injunctions  is  inclined  to  conclude  the  law  is  chaotic. 
Such,  however,  is  not  the  case.  If  it  is  borne  in  mind  that  it  is  at  this  point 
that  the  court  comes  into  the  thick  of  the  fight,  where,  more  often  perhaps 
than  anywhere  else,  greed  and  overreaching  is  all  too  common ;  if  it  is  borne 
in  mind  that  the  record  on  which  a  motion  for  a  preliminary  injunction  is 
made  and  the  record  in  opposition  thereto,  usually  consist,  not  of  sober 
proofs,  but  ex  parte  statements  made  when  the  blood  of  the  combatants  is 
over-heated;  if  it  is  borne  in  mind  that  each  case  presents  its  own  peculiar 
problems  —  if  these  considerations  are  before  one,  it  will  be  seen  that  the 
courts  have,  as  a  rule,  pursued  a  very  even  course  and  kept  the  parties  from 
each  other's  throats  with  much  composure.  The  author  would  be  presuming 
indeed  to  attempt,  at  this  point,  to  state  a  general  rule  or  to  sum  up  the 
law  on  the  subject.  It  is  not  the  place  for  fixed  rules;  it  is  the  place  for  the 
exercise  of  judicial  discretion,  unhampered  by  any  hard-and-fast  rules;  and 
it  is  only  by  the  exercise  of  that  discretion,  so  unhampered,  that  industrial 
competition  involving  patents  is  kept  from  descending  to  guerrilla  warfare. 

§  535-     Appeals  —  Comity. 

It  has  been  decided  in  this  court,  and  in  the  courts  of  appeals  of  the  Second 
and  Seventh  circuits,  that  an  adjudication  of  another  circuit  court  than  that 
whose  action  is  being  considered,  finding  the  validity  of  the  patent  and 
infringement,  is  a  sufficient  ground,  not  only  in  the  circuit  court  for  an  order 
granting  a  preliminary  injunction,  but  also  in  the  appellate  court  for  affirming 
such  an  order.  —  Duplex  v.  Campbell,  69  Fed.  250;   16  C.  C.  A.  220. 

Blount  v.  Societe,  53  Fed.  98;  American  v.  National,  51  Fed.  229;  Electric 
v.  Edison,  61  Fed.  834. 

Another  court  of  co-ordinate  jurisdiction  was  engaged  in  the  same  investi- 
gation and  examination,  and  had  issued  its  temporary  injunction.  Under 
these  circumstances  it  seemed  to  the  learned  judge  below  that  the  status  quo 
should  be  maintained.  Decree  affirmed.  —  U.  S.  Gramophone  v.  Seaman, 
113  Fed.  745;  51  C.  C.  A.  419. 

§  536.     Appeals  —  Contempt,  General. 

That  after  mandate  of  the  appellate  court  instituting  an  injunction  has 
been  filed  in  the  court  below,  jurisdiction  to  punish  contempt  thereafter 
arising  rests  with  the  circuit  court,  see — Dowagiac  v.  Minnesota,  124  Fed.  735 ; 
61  C.  C.  A.  57. 

Neither  is  the  result  to  turn  upon  any  question  of  conflicting  fact,  for 
it  is  not  the  province  of  a  reviewing  tribunal  to  weigh  the  facts  upon  a  writ 
of  error.  —  Bullock  v.  Westinghouse,  129  Fed.  105;  63  C.  C.  A.  607. 

A  contempt  proceeding  is  classified  as  a  misdemeanor  and  not  as  a  felony. 
In  re  Acker,  66  Fed.  291.  Misdemeanors  are  reviewable  by  this  court  upon 
writ  of  error  by  virtue  of  the  broad  appellate  powers  conferred  by  the  act  of 
Mar.  3,  1891,  c.  517,  26  Stat.  826,  establishing  Circuit  Courts  of  Appeal,  and 
defining  and  regulating  the  appellate  powers  of  United  States  courts.  If, 
therefore,  the  imposition  of  the  fine  complained  of  "  was  a  judgment  in  a 
criminal  case,"  as  it  is  defined  to  be  in  New  Orleans  v.  Steamship,  20  Wall. 
387,  it  was  a  judgment  in  a  misdemeanor  case;  for  contempts  are  universally 


§  537  INJUNCTION  475 

classified  as  misdemeanors,  and  not  felonies.  In  re  Acker,  66  Fed.  291.  If 
a  judgment  in  a  misdemeanor  case,  it  is  reviewable  upon  writ  of  error  to  this 
court.  This  conclusion  was  reached  in  the  Second  Circuit  in  Gould  v.  Ses- 
sions, 67  Fed.  163.  But  in  Nassau  v.  Sprague,  95  Fed.  415,  and  Christensen 
v.  Westinghouse,  129  Fed.  96,  writs  of  error  were  dismissed  upon  the  authority 
of  In  re  Debs,  158  U.  S.  564.  —  Bullock  v.  Westinghouse,  129  Fed.  105; 
63  C.  C.  A.  607. 


§  537-     Appeals  —  Contempt  —  Rule  of  Debs  Case. 

An  appeal  does  not  lie  from  an  order  of  contempt  for  violation  of  injunc- 
tion, because  if  it  be  treated  as  interlocutory  it  can  come  here  only  on  appeal 
from  final  decree;  and  if  it  be  treated  as  an  independent  proceeding,  it  is 
in  effect  a  judgment  in  a  criminal  case,  and  is  reviewable  only  on  a  writ  of 
error.  —  Sessions  v.  Gould,  63  Fed.  1001;   11  C.  C.  A.  550. 

Hayes  v.  Fischer,  102  U.  S.  121;  Worden  v.  Searles,  121  U.  S.  14;  New  Orleans 
v.  New  York,  20  Wall.  387;  Ex  parte  Kearney,  7  Wheat.  39;  Saltmarsh  v.  Tut- 
hill,  12  How.  387;  Kearney  v.  Denn,  15  Wall.  51;  Knapp  v.  R.  R.  20  Wall.  117; 
Kerr  v.  Clampitt,  95  U.  S.  188. 

An  order  in  contempt  for  violation  of  injunction  is  reviewable  on  a  writ  of 
error,  and  not  by  appeal.  —  Gould  v.  Sessions,  67  Fed.  163;   14  C.  C.  A.  366. 
New  Orleans  v.  Steamship,  20  Wall.  387;    Worden  v.  Searles,  121  U.  S.  14. 

An  order  imposing  punishment  for  violation  of  a  preliminary  injunction,  is 
not  appealable  until  after  final  decree,  see  —  Nassau?;.  Sprague, 95  Fed. 415; 
37  C.  C.  A.  146. 

Debs  Case,  158  U.  S.  564. 

Although  the  contempt  consist  in  the  violation  of  an  injunction  granted 
by  a  court  of  equity,  the  proceeding  for  its  punishment  "  is  a  new  and  dis- 
tinct proceeding,  and  is  quite  independent  of  the  equities  of  the  case  on  which 
the  decree  is  founded,"  and  "  an  appeal  is  not  an  appropriate  remedy  for 
obtaining  a  review."  —  Bullock  v.  Westinghouse,  129  Fed.  105;  63  C.  C. 
A.  607. 

City  of  Frankfort  v.  Deposit,  127  Fed.  812;  New  Orleans  v.  Steamship,  20 
Wall.  387;   In  re  Chetwood,  165  U.  S.  443. 

Upon  the  authority  of  the  Debs  Case,  we  are  constrained  to  hold 
that  the  order  cannot  be  reviewed,  except  upon  an  appeal  from  the  final  de- 
cree in  the  cause.  —  Christensen  v.  Westinghouse,  129  Fed.  96;  63  C.  C.  A. 
598. 

Following  In  re  Debs,  158  U.  S.  564. 

Gould  v.  Sessions,  67  Fed.  163;  Nassau  v.  Sprague,  95  Fed.  415;  Cary  v.  Acme, 
108  Fed.  873;  Ex  parte  Kearney,  7  Wheat.  38;  New  Orleans  v.  Steamship,  20 
Wall.  387;  Butler  v.  Fayerweather,  91  Fed.  458;  Worden  v.  Searles,  121  U.  S. 
14. 

In  deciding  that  the  defendant  had  violated  the  injunction,  the  court 
necessarily  passed  upon  the  question  whether  the  defendant  had  sold  the 
valves,  and  whether  the  valves  were  an  infringement  of  the  complainant's 
patent.  Upon  writ  of  error  the  court  cannot  review  the  questions  of  fact; 
its  review  is  confined  to  the  questions  of  law  only.  This  is  the  rule  when 
contempt  proceedings  are  under  review.  —  Christensen  v.  Westinghouse,  135 
Fed.  774;  68  C.  C.  A.  476. 

In  re  Debs,  158  U.  S.  564;  Besette  v.  Conkey,  194  U.  S.  334. 


476  THE    FIXED    LAW    OF    PATENTS  §§  538-539 


§  538.     Appeals  —  Contempt  —  Reverse  of  Rule  in  Debs  Case. 

These  authorities  show  that  when  an  order  imposing  a  fine  for  violation  of 
an  injunction  is  substantially  one  to  reimburse  the  party  injured  by  the 
disobedience,  although  called  on  in  contempt  proceeding,  is  to  be  regarded 
as  merely  an  interlocutory  order,  and  to  be  revised  only  on  appeal  from  the 
final  decree. 

In  the  present  case,  however,  the  fine  payable  to  the  United  States  was 
clearly  punitive  and  in  vindication  of  the  authority  of  the  court,  and,  we 
think,  as  such,  it  dominates  the  proceeding,  and  fixes  its  character.  Con- 
sidered in  that  aspect,  the  writ  of  error  was  justified  and  the  Circuit  Court  of 
Appeals  should  have  taken  jurisdiction.  —  In  re  Christensen,  194  U.  S.  458; 
48  L.  Ed.  1072;  24  S.  Ct.  729. 

Besette  v.  Conkey,  194  U.  S.  324;  New  Orleans  v.  N.  Y.  20  Wall.  387;  Hayes  v. 
Fisher,  102  U.  S.  121;  Ex  parte  Debs,  159  U.  S.  251;  O'Neal  v.  U.  S.  190  U.  S. 
36;   Worden  v.  Searles,  121  U.  S.  14. 

The  court  below  considered  the  law  and  the  facts,  and  determined  judicially 
whether  or  not  the  defendants  should  be  punished  for  contempt.  It  decided 
that  the  defendants  were  not  guilty.  The  question  whether  or  not  this 
decision  was  right  is  reviewable  on  appeal.  —  Minnesota  v.  Dowagiac,  126 
Fed.  746;  61  C.  C.  A.  352. 

Enoch  Morgans  v.  Gibson,  122  Fed.  420. 

The  claim  that  a  defendant  in  such  circumstances  must  await  the  final 
result  of  the  cause  in  which  the  injunction  was  granted  before  he  can  have 
the  judgment  inflicting  fine  or  imprisonment  reviewed  upon  the  theory  that 
the  judgment  is  not  final  is  absolutely  unsupportable.  If  it  be  an  independent 
and  distinct  proceeding  from  the  residue  of  the  case,  it  will  be  no  more  final 
after  that  case  has  reached  a  final  decree  than  when  the  fine  was  imposed. 
To  say  that  he  may  pay  his  fine  or  endure  his  imprisonment  and  review  the 
legality  of  the  matter  at  some  indefinite  time  in  the  future  is  to  deny,  in  effect, 
the  right  of  review  at  all.  —  Bullock  v.  Westinghouse,  129  Fed.  105;  63 
C.  C.  A.  607. 

§  539.     Appeals  —  Decision  on  Merits. 

Whether  upon  such  an  appeal  the  court  will  hear  and  determine  the  case  on 
its  merits  is  not  here  decided.  —  Davis  v.  Edison,  60  Fed.  276;  8  C.  C.  A.  615. 

Distinguished  in  Thomson  v.  Kelsey,  75  Fed.  1005. 

Blount  v.  Societe,  53  Fed.  98;  American  v.  National,  51  Fed.  229;  Consoli- 
dated v.  Accumulator,  55  Fed.  485;  Hart  v.  Buckner,  54  Fed.  925;  Working- 
men's  Council  ?>.  New  Orleans,  57  Fed.  85;  Daniell  Ch.  Pr.  1462  (4  ed.);  High  Inj. 
sec.  1696;    Curtis  v.  Wheel  Co.  58  Fed.  784. 

It  follows,  therefore,  that  if  the  court  finds  it  essential  to  pass  upon  the 
merits  of  the  case  in  order  to  determine  the  propriety  of  the  injunction,  and  in 
no  way  reserves  to  the  lower  court  a  right  to  review  or  re-examine  the  grounds 
upon  which  it  had  originally  proceeded,  the  decision  of  this  court  becomes  the 
law  of  the  case.  —  Bissell  v.  Goshen,  72  Fed.  545;  19  C.  C.  A.  25. 

Overruling,  Watch  Co.  v.  Robbins,  52  Fed.  337. 

Daniell  Ch.  2,  1492;  Newark  v.  Newark,  23  N.  J.  Eq.  515;  M.  &  W.  Code,  Tenn. 
3874;  Mathis  v.  Meek,  1  Heisk.  534;  Graham  v.  Merrill,  5  Cold.  631;  Shinkle  v. 
Covington,  83  Ky.  420;  Maxwell  v.  Schwartz,  57  N.  W.  141;  Schlender  v.  Corey, 
30  Minn.  501;  Ryerson  v.  Eldred,  18  Mich.  12;  Perrin  v.  Lepper,  72  Mich.  541; 
Richmond  v.  Atwood,  52  Fed.  10;  Marden  v.  Mfg.  Co.  67  Fed.  809;  Construction 
v.  Young,  59  Fed.  721;  Mfg.  Co.  v.  Griswold,  67  Fed.  1017;  Electric  v.  Edison, 
59  Fed.  501;  American  v.  National,  51  Fed.  229;  Curtis  v.  Wheel,  58  Fed.  784, 
Union  v.  Johnson,  61  Fed.  940;    Consolidated  v.  Accumulator,  55  Fed.  485; 


§§  540-541  INJUNCTION  477 

Green  v.  Mills,  69  Fed.  852;   Jones  v.  Munger,  50  Fed.  785;   Electric  v.  Edison,  61 
Fed.  834;    Andrews  v.  Pipe,  61  Fed.  782;    Piedmont  v.  Pacific,  58  Fed.  226. 

Every  application  to  a  circuit  court  for  an  injunction  or  temporary 
restraining  order  should  be  considered  on  its  merits,  and  the  ruling  or  opinion 
of  another  court  upon  any  question  involved  should  be  given  only  its  just  and 
reasonable  weight  according  to  the  circumstances.  The  statute  gives  the 
right  of  appeal;  the  Supreme  Court  has  determined  that  the  review,  so  far  as 
may  be,  shall  extend  to  the  merits;  and  it  is  not  consistent  to  say  that  the 
decision  of  an  inferior  court  must  be  pronounced  on  one  basis  and  reviewed 
on  another.  —  Stover  v.  Mast,  89  Fed.  333;  32  C.  C.  A.  231. 

Shortly  after  its  organization,  this  court  had  occasion  to  enunciate  the 
proposition  that  where  there  was  an  appeal  from  an  order  granting  a  pre- 
liminary injunction,  the  court  below  having  followed  an  adjudication  at 
circuit  sustaining  the  patent  after  contest  upon  pleading  and  proof,  such 
adjudication  is  to  have  the  same  weight  which  it  should  have  before  the 
circuit  court.  "  Appeals  from  orders,"  we  said  "  are  not  to  be  confounded 
with  appeals  from  final  decrees,  and  the  rule  which  we  have  thus  stated  will 
not  prevent  our  review  of  the  adjudication  itself,  whenever  it  and  the  record 
upon  which  it  was  made  shall  be  presented  upon  appeal.  The  tendency  of 
any  different  rule  would  be  to  produce  confusion,  and  convert  the  review  of 
the  interlocutory  order  into  a  review  of  the  final  adjudication  upon  which 
it  was  founded."  —  Consolidated  v.  Hays,  100  Fed.  984;  41  C.  C.  A.  142. 

American  v.  National,  51  Fed.  229. 

That  the  appellate  court  may,  in  a  proper  case,  consider  the  validity  of 
the  patent  in  suit  upon  an  appeal  from  a  preliminary  injunction  order,  see 
Stearns-Roger  v.  Brown,  114  Fed.  939;  52  C.  C.  A.  559. 

§  540.     Appeals  —  Dismissing  Bill. 

If  an  injunction  is  granted  by  an  interlocutory  order  and  the  order  is 
taken  on  appeal  to  the  circuit  court  of  appeals,  and  that  court  is  of  the 
opinion  that  the  patent  is,  on  its  face,  absolutely  void,  it  would  be  a  waste 
of  time  and  an  unnecessary  continuance  of  litigation  to  simply  enter  an  order 
setting  aside  the  injunction  and  remanding  the  case  for  further  proceedings. 
The  direct  and  obvious  way  is  to  order  a  dismissal  of  the  case,  and  thus  end 
the  litigation.  —  Ex  Parte  National,  201  U.  S.  156;   26  S.  Ct.  404. 

That  the  court  may  consider  the  entire  subject  matter  of  a  litigation  and 
make  final  disposition  on  an  appeal  from  an  injunction  order,  see  Rubens 
v.  Wheatfield,  93  Fed.  677;  35  C.  C.  A.  537. 

The  case  is  one  in  which  it  is  apparent  that  the  complainant  cannot 
ultimately  prevail,  and  following  the  practice  sanctioned  by  Mast  v.  Stover . 
177  U.  S.  485,  the  bill  should  be  dismissed.  —  Brill  v.  Peckham,  108  Fed.  267; 
47  C.  C.  A.  315. 

§  541.     Appeals  —  Prior  Adjudication. 

The  appellate  court  is  to  examine  the  interlocutory  decision  of  the  cir- 
cuit court  in  the  light  of  the  affidavits,  and  of  the  history  of  the 
patent,  and  the  adjudications  thereon,  which  were  presented  to  that  court. 
The  adjudication  upon  which  the  motion  for  preliminary  injunction  was 
based,  not  being  the  subject  of  the  appeal,  it  is  to  have  the  same  weight 
which  it  should  have  before  the  circuit  court.  —  American  v.  National, 
51  Fed.  229;  2  C.  C.  A.  165. 


478  THE    FIXED   LAW   OF    PATENTS  §  541 

While  the  circuit  court,  upon  a  motion  for  an  injunction,  might  deem 
itself  constrained,  contrary  to  its  own  judgment,  to  adopt  the  rulings  of 
another  circuit  court,  upon  questions  of  law  made  at  a  final  hearing,  this 
court  is  at  liberty  to  re-examine  such  rulings,  dispose  of  the  questions  of 
law  conformably  to  its  own  convictions  and  accord  to  the  former  adjudica- 
tions such  weight  as  in  its  own  judgment  it  was  entitled  to  upon  the  motion. 
In  the  absence  of  some  controlling  reason  for  disregarding  it,  the  former 
adjudication  should  have  the  same  weight  in  this  court  which  it  has  as  the 
foundation  for  a  preliminary  injunction  before  the  circuit  court.  —  Ameri- 
can v.  National,  51  Fed.  229;  2  C.  C.  A.  165. 

Purifier  Co.  v.  Christian,  3  Ban.  &  A.  42. 

The  vital  question  in  this  case  is  presented  with  approximate  accuracy 
upon  the  face  of  the  patent,  and  does  not  depend  upon  controverted  ques- 
tions of  fact.  This  court  has,  therefore,  been  at  liberty,  in  accordance  with 
its  statement  of  the  weight  to  be  given  to  a  prior  adjudication  upon  an  ap- 
pealed order  for  a  preliminary  injunction  (American  v.  National,  51  Fed. 
229)  to  re-examine  the  former  adjudication,  and  dispose  of  the  question  in 
accordance  with  its  own  convictions.  —  Curtis  v.  Overman  W.  Co.  58  Fed. 
784;  7  C.  C.  A.  493. 

In  Davis  v.  Edison,  60  Fed.  276,  this  court  suggested  that,  on  an  appeal  of 
this  class,  it  properly  would  not  cut  down  the  appellant  to  the  mere  question 
whether  the  court  below  had  acted  within  the  limits  of  its  discretion.  Never- 
theless, this  court,  in  the  determination  of  the  question  of  the  allowance  of 
a  temporary  injunction  in  favor  of  a  patentee,  is  governed  by  the  same 
general  rules  as  the  circuit  court,  and  must,  with  necessary  limitations,  put 
itself  in  the  place  of  that  court.  This  observation  applies  to  the  extent  of 
requiring  us  to  give  their  proper  effect  to  prior  adjudications  establishing  the 
validity  of  the  patent  in  suit,  or  determining  its  construction.  The  force  of 
such  adjudications  in  connection  with  applications  for  temporary  injunctions 
in  patent  causes  has  been  uniformly  stated  in  substantially  the  same  terms, 
but  nowhere  better  than  by  the  circuit  court  of  appeals  for  the  seventh 
circuit  in  Electric  v.  Edison,  61  Fed.  834.  "  It  may  be  difficult  to  formulate 
a  rule  that  will  comprehend  all  the  conditions  which  could  be  presented, 
but  we  think  it  safe  to  say  that  in  general,  when  the  validity  of  a  patent  has 
been  sustained  by  prior  adjudication  upon  final  hearing,  and  after  bona  fide 
and  strenuous  contest,  the  matter  of  its  validity  upon  motion  for  preliminary 
injunction  is  no  longer  at  issue,  all  defense,  except  that  of  infringement, 
being  reserved  to  the  final  hearing,  subject  however,  to  the  single  exception 
that,  where  a  new  defense  is  interposed,  the  evidence  to  support  it  must  be 
so  cogent  and  persuasive  as  to  impress  the  court  with  the  conviction  that, 
if  it  had  been  presented  and  considered  in  the  former  case,  it  would  probably 
have  availed  to  a  contrary  conclusion." — Bresnahan  v.  Tripp,  72  Fed. 
920;   19  C.  C.  A.  237. 

The  adjudication  upon  which  the  motion  for  preliminary  injunction  was 
based,  not  being  the  subject  of  appeal,  is  to  have  the  same  weight  which  it 
should  have  before  the  circuit  court,  in  the  absence  of  some  controlling  reason 
for  disregarding  it.  —  Consolidated  v.  Littauer,  84  Fed.  164 ;  28  C.  C.  A. 
133. 

American  v.  National,  51  Fed.  229. 

Upon  an  appeal  fron  an  order  granting  an  injunction,  the  Circuit  Court  of 
Appeals  is  at  liberty  to  re-examine  the  decision  of  another  circuit  court,  which 
ruling,  the  court  granting  the  injunction  felt  constrained  to  follow,   and 


U  342-543  INJUNCTION  479 

dispose  of  the  questions  of  law,  conformably  to  its  own  convictions.  —  Thom- 
son-Houston v.  Western,  158  Fed.  813  (2d  case);  86  C.  C.  A.  73. 


§  542.     Appeals  —  Refusal  to  Grant. 

It  is  to  be  noted  that  the  act  relative  to  appeals  has  been  twice  amended, 
and  that  since  the  last  amendment  (Act  June  6,  1900,  31  Stat.  660)  no 
appeal  lies  from  an  order  refusing  or  dissolving  an  injunction.  Many  deci- 
sions, rendered  while  the  law  distinctly  allowed  appeals  from  orders  refusing 
or  dissolving  injunctions,  are  now  without  force  or  effect. 

It  will  be  noted  that  after  this  second  amendment  (Chap.  803,  Act  June 
6,  1900)  the  section  remained  with  no  provision  authorizing  an  appeal  from 
an  order  refusing  or  dissolving  an  injunction.  —  Westinghouse  v.  Christen- 
sen,  104  Fed.  622;   44  C.  C.  A.  92. 

This  was  an  appeal  by  the  complainant  from  so  much  of  an  interlocutory 
decree  in  the  court  below,  entered  after  hearing  on  bill,  answer,  and  proofs, 
as  refused  an  injunction  asked  for  by  it.  The  circuit  courts  of  appeals  in 
two  circuits  have  decided  that  this  act  abrogated  the  provisions  of  law  giving 
us  jurisdiction  in  appeals  of  this  character.  —  National  v.  Automatic,  105 
Fed.  670;   44  C.  C.  A.  664. 

Wire  Co.  v.  Boyce,  104  Fed.  172;  Westinghouse  v.  Christensen,  104  Fed.  622. 

That  an  appeal  from  an  order  refusing  a  preliminary  injunction,  does 
not  lie  in  view  of  the  act  of  1900,  see  Western  v.  Williams-Abbott,  108  Fed. 
952;  48  C.  C.  A.  159. 

Wire  Co.  v.  Boyce,  104  Fed.  172;  Westinghouse  v.  Christensen,  104  Fed.  622. 

That  an  appeal  from  an  order  denying  a  motion  for  a  preliminary  injunc- 
tion does  not  lie,  see  American  v.  V  aught,  108  Fed.  571 ;  47  C.  C.  A.  496. 
Wire  Co.  v.  Boyce,  104  Fed.  172;  Westinghouse  v.  Christensen,  104  Fed.  622. 

Under  Act  Cong.  June  6,  1900  (31  Stat.  660)  this  court  no  longer  can  enter- 
tain an  appeal  from  an  interlocutory  decree  refusing  to  dissolve  an  injunction. 
—  Berliner  v.  Seaman,  113  Fed.  750;  51  C.  C.  A.  440. 

Westinghouse  v.  Christensen,  104  Fed.  622;  Wire  Co.  v.  Boyce,  104  Fed.  173; 
National  v.  Automatic,  105  Fed.  670;  Heinze  v.  Mining  Co.  107  Fed.  165;  Rowan 
v.  Ide,  107  Fed.  161. 

That  a  party  defendant  not  brought  within  the  terms  of  a  preliminary 
injunction  has  no  right  of  appeal,  see  Stearns-Roger  v.  Brown,  114  Fed.  939; 
52  C.  C.  A.  559. 


§  543.     Appeals  —  Sound  Discretion. 

By  no  action  of  the  court  below  could  it  enable  this  court  finally  to  deter- 
mine all  the  questions  between  the  parties  to  the  action,  because  it  is  not 
within  the  proper  province  of  this  court  to  do  so  on  an  appeal  from  an  order 
granting  a  preliminary  injunction.  We  are  to  consider  the  correctness  of  the 
order  from  the  same  standpoint  as  that  occupied  by  the  court  granting  it, 
and  if  we  find,  after  a  consideration  of  the  grounds  presented  to  that  court 
for  its  action,  that  its  legal  discretion  to  grant  or  withhold  the  order  was  not 
improvidently  exercised,  we  should  not  disturb  its  action.  —  Duplex  v. 
Campbell,  69  Fed.  250;   16  C.  C.  A.  220. 

Blount  v.  Societe,  53  Fed.  98. 


480 


THE    FIXED    LAW    OF    PATENTS 


§  544 


That  on  such  appeal  the  question  to  be  considered  is  whether  the  injunc- 
tion was  improvidently  granted,  see  U.  S.  Gramophone  v.  Seaman,  113  Fed. 
745;  51  C.  C.  A.  419. 

Welsbach  v.  Cosmopolitan,  104  Fed.  84;    Ritter  v.  Ulman,  78  Fed.  222. 

It  is  enough  to  say  that  appellants  failed  to  show  that  the  provisional 
order  was  improvidently  entered;  and,  inasmuch  as  the  case  will  probably 
be  before  us  again  on  its  final  hearing,  no  further  reasons  for  our  judgment 
need  be  given.  —  Bartholomew  v.  Union,  113  Fed.  289;  51  C.  C.  A.  250. 

The  law  has  placed  upon  these  courts  the  duty  to  exercise  this  discretion. 
It  has  imposed  upon  them  the  responsibility  of  its  exercise  wisely,  and  has  left 
them  much  latitude  for  action  within  the  rules  which  should  guide  them; 
and  if  there  has  been  no  violation  of  those  rules,  an  appellate  court  ought  not 
to  interfere  with  the  results  of  the  exercise  of  their  discretion.  —  Stearns- 
Roger  v.  Brown,  114  Fed.  939;  52  C.  C.  A.  559. 

The  case  is  now  in  the  hands  of  the  learned  judge  below,  who  heard  it 
upon  its  merits,  and  who  states  in  his  opinion  granting  the  preliminary 
injunction  that  his  purpose  is  to  look  into  the  subject  anew,  and  form  an 
individual  judgment  of  his  own.  We  are  entitled  to  the  benefit  of  his  views 
upon  the  serious  question  whether  or  not  the  defendants'  machines  infringe 
the  patent  in  suit,  and  upon  the  merits  of  the  case  generally  under  the  plenary 
proofs.  We  therefore  will  confine  ourselves  to  the  single  question  whether 
or  not  the  court  erred  in  granting  the  preliminary  injunction.  —  American 
v.  Cimiotti,  118  Fed.  838;  55  C.  C.  A.  513. 

We  can  see  no  abuse  of  discretion  in  the  action  of  the  court  below.  — 
Rahley  v.  Columbia,  122  Fed.  623;  58  C.  C.  A.  639. 
Southern  Pacific  v.  Earl,  82  Fed.  690. 

The  record  of  the  case  shows  that  the  Circuit  Court  proceeded  in  the  case 
with  much  deliberation  and  great  care.  While  a  preliminary  injunction  is  to 
be  cautiously  used  by  a  court  of  equity,  it  should  not  be  withheld  where,  in 
the  exercise  of  a  sound  judgement,  it  is  necessary  to  prevent  injustice.  — 
Continuous  v.  Schmertz,  153  Fed.  577;  82  C.  C.  A.  587. 


§  544.     Appeals  —  What  Considered  on. 

We  know  of  no  reason  why  to  save  a  protracted  litigation,  the  court  may 
not  order  the  bill  to  be  dismissed.  Ordinarily,  if  the  case  involve  a  question 
of  fact,  we  think  the  parties  are  entitled  to  be  put  to  their  evidence.  — 
Mast  v.  Stover,  177  U.  S.  485;  44  L.  Ed.  856;  20  S.  Ct.  708. 

Gardt  v.  Brown,  113  111.  475;  Green  v.  Mills,  69  Fed.  852;  Knoxville  v.  Africa, 
77  Fed.  501. 

It  will  be  noticed  that  the  appeal  is  allowed  from  an  interlocutory  order 
or  decree  granting  or  continuing  an  injunction,  that  it  must  be  taken  within 
30  days,  that  it  is  given  precedence  in  the  appellate  court,  that  the  other 
proceedings  in  the  lower  court  are  not  to  be  stayed,  and  that  the  lower  court 
may  require  an  additional  bond.  Obviously  that  which  is  contemplated  is 
a  review  of  the  interlocutory  order,  and  of  that  only.  It  was  not  intended  that 
the  cause  as  a  whole  should  be  transferred  to  the  appellate  court  prior  to 
the  final  decree.  The  case,  except  for  the  hearing  on  the  appeal  from  the 
interlocutory  order,  is  to  proceed  in  the  lower  court  as  though  no  such  appeal 
had  been  taken,  unless  otherwise  specially  ordered.  —  Ex  Parte  National, 
201  U.  S.  156;   26  S.  Ct.  404. 


§  544  INJUNCTION  481 

We  have  held  at  the  present  term  that  on  an  appeal  under  the  seventh 
section  of  the  Act  of  March,  1891,  from  an  interlocutory  order  granting  an 
injunction,  this  court,  even  with  the  consent  of  the  parties,  could  not  properly 
pronounce  any  final  judgment  or  decree  on  the  merits  of  the  controversy  in 
respect  to  the  validity  of  the  patent  involved,  and  its  infringement,  inasmuch 
as  these  questions  remained  in  the  lower  court  for  final  adjudication,  in  the 
exercise  of  its  original  jurisdiction.  But  while  this  court,  on  appeals  like  the 
present,  may  not  properly  pass  upon  the  merits  of  the  controversies  involved 
in  the  litigation,  it  may  incidentally  consider  the  questions  relating  to  the 
validity  and  infringement  of  the  patent,  as  well  as  all  other  facts  bearing 
upon  the  propriety  of  sustaining  or  dissolving  the  injunction  awarded.  — 
Blount  v.  Societe,  53  Fed.  98;  3  C.  C.  A.  455. 

Watch  Co.  v.  Robbins,  52  Fed.  337. 

It  is  only  when  the  determination  of  the  question  whether  the  injunction 
was  erroneous  so  requires  us  to  look  into  the  whole  case  on  its  merits  that 
we  shall  feel  disposed  to  follow  the  course  pursued  in  Richmond  v.  Atwood, 
52  Fed.  10.  —  Gamewell  v.  Municipal,  61  Fed.  208;  9  C.  C.  A.  450. 

There  would  seem  to  be  some  divergence  of  opinion  in  the  circuit  courts  of 
appeals  upon  the  question  of  the  extent  to  which  this  court  should  go  in 
review  of  an  exercise  of  discretion  in  the  court  below  in  granting  a  pre- 
liminary injunction.  Jones  v.  Munger,  50  Fed.  785;  Watch  Co.  v.  Robbins, 
52  Fed.  337;  Blount  v.  Societe,  53  Fed.  98;  Consolidated  v.  Accumulator, 
55  Fed.  485;  American  u  National,  51  Fed.  229;  Davis  v.  Edison,  60  Fed. 
276.  —  Electric  v.  Edison,  61  Fed.  834;   10  C.  C.  A.  106. 

Where  a  preliminary  injunction  is  granted  upon  a  prima  facie  showing  and 
without  the  determination  of  the  merits,  this  court  will  ordinarily,  on  an 
appeal,  consider  only  the  question  as  to  whether,  on  the  prima  facie  case 
made,  there  has  been  an  abuse  of  discretion.  Such  preliminary  injunctions 
are  ordinarily  intended  only  to  operate  pendente  lite,  or  until  a  hearing  on 
the  writs  can  be  had.  They  are  granted  upon  a  mere  summary  showing  upon 
affidavits.  Their  issuance  is  not  a  matter  of  right,  and  rests  in  the  sound 
discretion  of  the  judge.  —  Bissell  v.  Goshen,  72  Fed.  545;   19  C.  C.  A.  25. 

Blount  v.  Societe,  53  Fed.  98;  Duplex  v.  Campbell,  69  Fed.  250;  Thompson 
v.  Nelson,  71  Fed.  339. 

It  is  well  settled  that  on  appeals  like  this,  this  court  will  ordinarily  look 
into  the  case  merely  to  see  whether  the  discretion  of  the  court  below  in 
issuing  or  withholding  the  order  of  preliminary  injunction  has  been  abused; 
and  that  only  in  exceptional  cases,  in  which  a  controlling  question  of  law  may 
be  as  fully  and  fairly  considered  as  upon  a  final  hearing,  and  the  court  has  no 
doubt  upon  it,  will  it  finally  dispose  of  the  injunction  and  the  case  on  a 
hearing  like  this.  —  Thomson-Houston  v.  Ohio,  80  Fed.  712;  26  C.  C.  A.  107. 

Duplex  v.  Campbell,  69  Fed.  250;  Mayor  v.  Africa,  77  Fed.  501. 

The  preliminary  question  arises  whether  upon  this  appeal  the  court  should 
undertake  to  examine,  and  in  a  sense  review,  collaterally  the  consideration 
of  a  Connecticut  cause  or  should  confine  itself  to  the  enquiry  whether,  from 
the  standpoint  of  the  court  below,  the  order  was  properly  granted.  In  Ameri- 
can v.  National,  51  Fed.  229,  we  have  laid  down  the  rule  that  while  the  circuit 
court  might  deem  itself  constrained  to  adopt  the  rulings  of  another  circuit, 
this  court  is  at  liberty  to  reexamine  the  entire  question ;  and  we  adhere  to 
the  views  which  were  then  expressed.  —  Thomson-Houston  v.  Hoosick,  82 
Fed.  461;  27  C.  C.  A.  419. 


482  THE    FIXED    LAW    OF    PATENTS  §  544 

The  decision  of  the  judge  who  made  the  order  will  not  be  reversed  unless 
it  appears,  after  a  consideration  of  all  the  evidence  upon  which  this  action  is 
based,  that  his  legal  discretion  was  improvidently  exercised.  —  Southern  v. 
Earl,  82  Fed.  690;  27  C.  C.  A.  185. 

Duplex  v.  Campbell,  69  Fed.  253;  Bissell  v.  Goshen,  72  Fed.  570;  Blount  v. 
Societe,  53  Fed.  98. 

The  function  of  the  court  of  appeals,  in  hearings  like  this,  is  such  that 
it  may  properly  affirm  an  order  refusing  a  preliminary  injunction  in  one  case 
and  an  order  granting  it  in  another  on  substantially  the  same  evidence, 
because  it  is  easy  to  conceive  a  case  presented  upon  a  preliminary  hearing 
such  an  evenly  balanced  controversy,  that  the  court  above  would  affirm 
the  action  of  the  court  below,  whether  one  way  or  the  other,  when  that  action 
involves  the  exercise  not  of  exact  judicial  judgment  but  merely  judicial  dis- 
cretion. —  Societe  v.  Allen,  90  Fed.  815;  33  C.  C.  A.  282. 

The  law  is  well  settled  that  upon  such  an  appeal  the  decision  of  the  judge 
who  made  the  order  will  not  be  reversed  unless  it  appears,  after  a  considera- 
tion of  all  of  the  evidence  upon  which  the  action  was  based,  that  his  legal 
discretion  to  grant  or  withhold  the  order  was  improvidently  exercised.  — 
Pacific  v.  Alaska,  100  Fed.  462;  40  C.  C.  A.  494. 

Blount  v.  Societe,  53  Fed.  98;  Jensen  v.  Norton,  64  Fed.  662;  Southern  v. 
Earl,  82  Fed.  690;  Thompson  v.  Nelson,  71  Fed.  339;  Duplex  v.  Campbell,  69 
Fed.  252. 

Note:  It  is  evident  that  under  the  amendment  to  the  court  of  appeals  act, 
an  appellate  court  would  not  consider  the  question  of  improvidence  in  refusing 
an  injunction  as  above  stated. 

In  determining  whether  in  a  given  case,  the  circuit  court  errs  in  refusing 
an  injunction  pending  the  litigation,  it  is  to  be  remembered  that  such  an 
injunction  in  no  case  is  a  matter  of  strict  right.  The  application  for  it  is 
addressed  to  the  sound  discretion  of  the  Court.  It  may  be  granted  or  refused 
unconditionally  or  upon  terms;  and  upon  appeal  ordinarily  the  question  is 
simply  whether  the  court  acted  improvidently.  Only  when  clearly  erroneous 
will  the  order  be  reversed.  —  Welsbach  v.  Cosmopolitan,  104  Fed.  83 ;  43 
C.  C.  A.  418. 

Ritter  v.  Ulman,  78  Fed.  222. 

We  have  repeatedly  held  that  an  order  granting  an  injunction  will  not 
be  reversed  on  appeal  unless  it  clearly  appears  that  the  Court  below  has 
fallen  into  a  misapprehension  respecting  the  facts  or  law  of  the  case  in  a 
matter  vital  to  the  issue.  —  Leow  v.  German  American,  107  Fed.  949;  47 
C.  C.  A.  94. 

Duplex  v.  Campbell,  69  Fed.  250;  Thompson  v.  Nelson  71  Fed.  339;  Proctor 
v.  Globe,  92  Fed.  357. 

Counsel  invoke  the  conceded  rule  that,  where  it  is  not  clear  that  the 
defendant  is  guilty  of  infringement,  and  the  question  is  grave  and  difficult, 
a  temporary  injunction  should  not  be  granted  on  ex  parte  affidavits.  Sprague 
v.  Nassau,  95  Fed.  821 ;  Hatch  v.  Electric,  100  Fed.  975.  But  while  this  rule 
prevails  in  all  its  force  in  the  trial  court,  it  is  met  in  the  appellate  court  by 
another  of  great  cogency,  —  by  the  rule  that  where  the  court  below  has 
considered  a  question,  and  made  a  finding  on  conflicting  evidence,  its  con- 
clusion is  presumptively  correct,  and  it  ought  not  to  be  disturbed  unless  an 
obvious  error  has  intervened  in  the  application  of  the  law,  or  some  serious 
mistake  has  been  made  in  the  consideration  of  the  facts.  —  Stearns-Roger 
v.  Brown.  114  Fed.  939;  52  C.  C.  A.  559. 


§  544  INJUNCTION  483 

Kinlock  v.  Western,  113  Fed.  659;  National  v.  Interchangeable,  106  P'eJ.  C9J 
Mann  v.  Bank,  86  Fed.  51;  Tilghman  v.  Proctor,  125  U.  S.  136;  Kimberly  v 
Arms,  129  U.  S.  512;  Furrer  v.  Ferris,  145  U.  S.  132;  Warren  v.  Burt,  58  Fed.  101 
Plow  v.  Carson,  72  Fed.  387;  Trust  Co.  v.  McClure,  78  Fed.  209;  Exploration  v 
Adams,  104  Fed.  404. 

In  view  of  the  fact  that  the  question  of  infringement  cannot  be  authori- 
tatively determined  upon  this  appeal,  and  also  because  testimony  taken 
under  examination  and  cross-examination  is  much  more  satisfactory  and  far 
more  reliable  than  the  ex  parte  affidavits  which  this  record  contains,  and 
because  the  affidavits  might  lead  to  one  conclusion  and  the  testimony 
to  another,  this  court  declines  to  enter  upon  a  consideration  and  de- 
termination of  the  question  of  infringement  upon  this  appeal.  —  Steams- 
Roger  v.  Brown,  114  Fed.  939;  52  C.  C.  A.  559. 

The  correctness  of  the  order  must  be  considered  under  the  facts  and  cir- 
cumstances of  the  case  as  presented  below,  and  "  from  the  same  standpoint 
as  that  occupied  by  the  court  granting  it,"  and,  if  its  legal  discretion  "  was 
not  improvidently  exercised,  we  should  not  disturb  its  action."  —  Austin  v. 
American,  121  Fed.  76;  57  C.  C.  A.  330. 

Duplex  v.  Campbell,  69  Fed.  250;   Stearns-Roger  v.  Brown,  114  Fed.  939. 

The  order  will  be  reversed  only  when  clearly  erroneous.  The  fact  of 
infringement  must  be  clearly  established  beyond  reasonable  doubt.  — 
Austin  v.  American,  121  Fed.  76;  57  C.  C.  A.  330. 

Welsbach  v.  Cosmopolitan,  104  Fed.  83;  Standard  v.  Crane,  56  Fed.  718; 
Menasha  v.  Dodge,  85  Fed.  971;  McDowell  v.  Kurtz,  77  Fed.  206;  Blakey  v. 
National,  95  Fed.  136. 

The  only  question  for  review  on  this  appeal  is  whether  the  discretion  of 
the  trial  court  was  improvidently  exercised.  —  Austin  v.  American,  121 
Fed.  76;  57  C.  C.  A.  330. 

Welsbach  v.  Cosmopolitan,  104  Fed.  83;  U.  S.  Gramophone  v.  Seaman,  114 
Fed.  745;    Stearns-Roger  v.  Brown,  114  Fed.  939. 

The  motion  for  rehearing  having  been  argued  upon  new  proofs,  and  having 
been  denied,  two  new  orders  were  entered,  the  one  continuing  the  injunction, 
the  other  suspending  its  operation  pending  appeal.  In  these  circumstances, 
a  new  state  of  facts  having  been  presented  and  the  rights  of  the  parties 
having  been  determined  anew  thereunder,  the  practical  effect  was  the  same 
as  though  the  court  had  originally  vacated  the  order  instead  of  suspending 
it.  —  Armat  v.  Edison,  125  Fed.  939;  60  C.  C.  A.  380. 

We  do  not  feel  disposed  to  modify  such  order,  nor  to  discuss  the  issues 
presented  here  on  ex  parte  affidavits  in  an  opinion  which  might  constrain  the 
judge  to  whom  at  final  hearing  the  same  issues  may  be  differently  presented. 
—  United  v.  Silver,  128  Fed.  925;  63  C.  C.  A.  110. 

That  the  record  on  appeal  on  motion  for  a  preliminary  injunction  should 
contain  all  of  the  affidavits  and  papers  used  in  the  hearing  below,  see  Staples 
v.  Lord,  148  Fed.  15;  78  C.  C.  A.  106. 

There  are  many  questions  arising  on  a  motion  for  a  preliminary  injunction 
which  cannot  be  satisfactorily  determined  until  the  proofs  are  taken,  and  this 
court  has  consistently  refused  to  decide  doubtful  questions  depending  upon 
disputed  facts  upon  appeals  from  such  orders.  —  Thomson-Houston  v. 
Western,  158  Fed.  813;  86  C.  C.  A.  73. 


484  THE    FIXED    LAW    OF    PATENTS  §  545 

§  545.     Appeals  —  Miscellaneous  Rulings. 

Where  a  plaintiff  has  an  adjudication  that  he  is  entitled  to  an  injunction, 
he  has  rights  which  cannot  be  abridged  or  stayed  by  language  which  is  not 
more  clear  and  unambiguous  than  that  contained  in  sec.  7  of  the  Act  of  Mar. 
3,  1891,  Chap.  517,  and  the  applicant  therefore  has  not  an  absolute  right  to  a 
supersedeas  of  the  injunction.  —  Re  Haberman,  147  U.  S.  525;  37  L.  Ed. 
266;  13  S.  Ct.  527. 

We  think  the  term  "  interlocutory  order  or  decree,"  was  used  in  its  broadest 
sense,  and  that  the  purpose  of  Congress  was  to  confer  the  right  of  appeal  from 
any  decree  or  order  granting  an  injunction  at  any  stage  of  the  proceeding, 
whether  technically  preliminary,  interlocutory  or  final.  —  Richmond  v.  At- 
wood,  52  Fed.  10;  2  C.  C.  A.  596. 

Jones  v.  Munger,  50  Fed.  785. 

It  seems  to  us  evident  that  it  was  intended  to  remove  the  restriction  and 
extend  the  right  to  all  that  class  of  interlocutory  orders  or  decrees  which 
interfere  with  the  possession  of  property,  or  operate  in  restraint  of  a  party's 
business.  —  Richmond  v.  Atwood,  52  Fed.  10;  2  C.  C.  A.  596. 

The  appeal  given  by  the  seventh  section  of  the  act  of  Mar.  3,  1891,  is  a 
privilege  or  option  and  in  no  way  affects  or  diminishes  the  right  to  appeal  from 
the  final  decree.  —  Marden  v.  Campbell,  67  Fed.  809;    15  C.  C.  A.  26. 

As,  ordinarily,  questions  arising  under  the  statutes  relating  to  patents  for 
inventions  can  best  be  determined  on  a  final  hearing,  we  ought  not  to  en- 
courage delays  in  the  regular  progress  of  a  bill  in  equity  pending  proceedings 
of  the  character  we  are  now  considering.  —  Bresnahan  v.  Tripp.  72  Fed. 
920;  19  C.  C.  A.  237. 

If  an  appeal  is  allowed  from  an  interlocutory  order  or  decree  granting  an 
injunction,  the  injunction  will  continue  in  force  pending  the  appeal,  unless 
stayed  by  order  of  the  court  granting  the  appeal.  The  granting  of  a  super- 
sedeas rests  in  the  judicial  discretion  of  the  court,  and  its  discretion  to  grant 
or  refuse  a  supersedeas  will  not  be  controlled  by  mandamus.  —  Bissell  v. 
Goshen,  72  Fed.  545;   19  C.  C.  A.  25. 

In  re  Haberman,  147  U.  S.  525;    Overruling  Societe  v.  Blount,  51  Fed.  610. 

We  do  not  think,  in  the  present  status  of  this  suit,  no  final  decree  having 
yet  been  announced,  that  we  are  called  upon  to  determine  the  effect  of  this 
affirmance  should  the  case  be  again  appealed  after  the  account  of  profits  and 
damages  has  been  stated  and  confirmed.  The  mandate  will  simply  recite 
that  the  court  finds  no  error  in  the  decree  awarding  an  injunction.  —  Goshen 
v.  Bissell,  72  Fed.  67;  19  C.  C.  A.  13. 

Watch  Co.  v.  Robbins,  64  Fed.  384. 

Although  the  injunction  order  appealed  from  is  not  a  preliminary  injunc- 
tion intended  to  operate  only  until  a  hearing  upon  the  merits,  it  is  neverthe- 
less an  "  interlocutory  decree,"  inasmuch  as  the  decree  was  not  final  in  an 
appealable  sense.  This  appeal  was  taken  within  30  days.  The  cause  is 
therefore  one  which  is  entitled  to  take  "  precedence  "  upon  the  calendar  of 
this  court.  —  Star  v.  General,  129  Fed.  102;  63  C.  C.  A.  604. 

These  three  appeals  arose  out  of  the  bill  in  equity.  The  circuit  court  issued 
an  interlocutory  injunction,  and  number  738  is  an  appeal  therefrom.  In  the 
meantime  the  circuit  court  had  entered  judgment  for  complainant  on  final 


§§  546-547  INJUNCTION  485 

hearing.  In  view  of  our  conclusions  as  to  the  final  decree,  this  appeal  is  now 
a  moot  case,  and  should  be  disposed  of  with  a  judgment  declaring  that  the 
interlocutory  order  has  been  superseded.  —  Howard  v.  Gibbs,  157  Fed.  676; 
85  C.  C.  A.  348. 

§  546.     Bond. 

Where  the  complainant  is  not  manufacturing  under  the  patents  sued  on, 
and  its  injury  is  confined  to  its  naked  rights  with  no  consequential  injury  to 
its  business  and  where  an  injunction  against  defendant  would  break  up  its 
business  and  throw  several  hundred  men  out  of  employment,  its  loss  would 
be  out  of  proportion  to  complainant's  loss  from  infringement,  the  defendant 
should  be  permitted  to  give  adequate  bond.  —  Duplex  v.  Campbell,  69  Fed. 
250;   16  C.  C.  A.  220. 

It  would  seem  that  where  the  question  of  infringement  is  doubtful,  the 
court  may  require  a  bond  in  lieu  of  a  restraining  order.  —  Seiler  v.  Fuller, 
102  Fed.  344;  42  C.  C.  A.  386. 

That  the  Court  may  order  the  giving  of  a  bond  as  an  alternative  measure, 
see  Loew  v.  German-American,  107  Fed.  949;  47  C.  C.  A.  94. 

It  seems  that  the  preliminary  injunction  was  improvidently  granted  by  the 
circuit  court,  the  defendants  below  being  able  to  respond  in  damages,  there 
being  no  threatened  irreparable  injury,  no  estoppel,  no  sufficient  acquies- 
cence, and  no  unfair  competition  in  trade.  Defendants  should  have  been 
required  to  give  bond  for  an  accounting,  and  the  temporary  injunction 
refused.  —  American  v.  Phoenix,  113  Fed.  629;  51  C.  C.  A.  339. 

Note:  Why,  under  the  most  radical  construction  of  any  known  rule,  a  bond 
should  be  required  in  this  case  is  past  finding  out. 

The  condition  for  security  imposed  upon  the  complainants  and  the  privi- 
lege accorded  to  the  defendants  to  dissolve  the  injunction  by  giving  counter 
security  show  a  cautious  exercise  by  the  court  of  its  legal  discretion.  — 
American  v.  Cimiotti,  118  Fed.  838;  55  C.  C.  A.  513. 

That  when  the  question  on  appeal  shows  grave  doubt  of  novelty,  the  court 
may  order  a  bond  in  lieu  of  injunction,  see  Co-operating  v.  Hallock,  128 
Fed.  596;  64  C.  C.  A.  104. 

That  inequitable  conduct  on  the  part  of  a  defendant  will  deprive  him  of 
the  privilege  to  ask  that  a  bond  be  required  instead  of  an  injunction,  see 
Elite  v.  Dececo,  150  Fed.  581 ;  80  C.  C.  A.  567. 

§  547.     Corporations  and  Corporation  Officers. 

Some  of  the  defendants  further  contend  that,  even  if  the  defendant  cor- 
poration should  be  enjoined  in  this  case,  no  injunction  should  issue  against 
the  other  defendants,  its  officers.  Entirely  apart  from  the  question  of  the 
liability  of  an  officer  in  a  corporation,  for  damages  caused  by  infringement 
permitted  by  him,  on  behalf  of  the  corporation,  there  can  be  no  doubt 
that  in  a  case  like  this  the  officers  of  the  corporation  may  be  enjoined  from 
further  infringement.  —  Hart  v.  Anchor,  92  Fed.  657;  34  C.  C.  A.  606. 

That  a  public  corporation,  having  due  notice  of  the  prospective  infringe- 
ment, and  having  taken  a  bond  for  its  protection,  may  be  enjoined  pendente 
lite,  see,  Pelzer  v.  Binghamton,  95  Fed.  823;  37  C.  C.  A.  288. 


48G  THE    FIXED   LAW   OF   PATENTS  §  548 

§  548.     Discontinuance  or  Non-Use. 

The  fact  that  defendants  have  gone  out  of  business  or  are  not  infringing 
within  the  circuit  is  no  reason  why  an  injunction  should  not  be  made  per- 
manent. —  Braddock  v.  Macbeth,  64  Fed.  118;  12  C.  C.  A.  70. 

Appellees  claim  that,  pending  suit,  they  have  ceased  to  make  the  trans- 
mitter complained  of;  but  they  do  not  exhibit  what  further  changes  they  have 
made,  they  give  no  assurances  for  the  future,  and  throughout  this  litigation 
they  have  denied  appellant's  rights.  There  is  no  reason  why  an  injunction 
should  not  issue.  —  Stromberg-Carslon  v.  American,  127  Fed.  704;  62 
C.  C.  A.  460. 

The  pleas  do  not  state  a  complete  bar  to  the  suit.  Conceding  all  their 
averments  to  be  true,  the  court  may  retain  the  case  in  order  to  do  exact 
equity  between  the  parties.  If  the  case  were  at  final  hearing  upon  the  precise 
facts  now  developed,  the  court  might,  it  is  true,  feel  warranted  in  suspending 
the  injunction,  but  it  would  not  be  compelled  to  do  so.  The  probability  is. 
that  it  would  follow  the  practice,  so  frequently  adopted,  where  the  defendant 
admits  past  infringement  and  is  shown  to  be  in  a  position  where  he  can  at 
any  time  resume,  namely,  issue  the  injunction.  The  argument  in  such  cir- 
cumstances is  very  simple.  If  the  defendant  be  honest  in  his  protestations, 
an  injunction  will  do  him  no  harm;  if  he  be  dishonest,  the  court  should  place 
a  strong  hand  upon  him  in  limine.  —  General  v.  New  England,  128  Fed. 
738;  63  C.  C.  A.  448. 

Chemical  v.  Vice,  14  Blatchf.  179;  Wollensak  0.  Reiher,  28  Fed.  427;  Celluloid 
v.  Arlington,  34  Fed.  324;  Sawyer  v.  Turner,  55  Fed.  979;  Electric  v.  Henzel, 
48  Fed.  375. 

It  is  immaterial  that  pending  the  litigation  there  has  been  no  further 
infringement.  Whether  there  has  been  or  not  is  only  a  matter  for  considera- 
tion if  an  accounting  for  damages  shall  be  ordered.  They  have  never  put 
upon  the  record  their  purpose  not  to  duplicate  the  device  which  they  did 
make,  nor  contradicted  the  evidence  that  they  intended  to  make  and  sell 
such  devices.  The  assertion  of  a  right  to  make  devices  complained  of  as  an 
infringement,  in  the  absence  of  a  very  express  denial  of  a  purpose  to  exercise 
the  right  claimed,  justifies  the  presumption  that  further  infringement  is  to 
be  apprehended  if  that  device  shall  prove  to  be  an  infringement.  Cayuta 
v.  Kennedy,  127  Fed.  355;  Westinghouse  v.  Press,  127  Fed.  822;  Potter  v. 
Crowell,  Fed.  Cas.  11,323.  The  case  is  distinguishable  from  that  of  Globe- 
Wernicke  v.  Brown,  121  Fed.  97  in  the  fact  that  an  intention  to  continue  to 
make  and  sell  devices  complained  of  was  avowed  before  suit  was  brought, 
and  is  not  disavowed  upon  the  record.  —  Johnson  v.  Foos,  141  Fed.  73 ; 
72  C.  C.  A.  105. 

It  was  suggested  at  the  oral  argument  that  an  unused  patent  is  not  en- 
titled to  the  protection  given  by  the  extraordinary  remedy  of  an  injunction. 
This  contention  was  not  made  in  defendant's  brief.  While  this  question  has 
not  been  directly  passed  upon,  so  far  as  we  are  informed,  in  any  considered 
decision  of  the  Supreme  Court,  yet  the  weight  of  authority  is  in  favor  of 
complainant,  —  Continental  v.  Eastern,  150  Fed.  741 ;  80  C.  C.  A.  407. 

Fuller  v.  Berger,  120  Fed.  274;  Bement  v.  National,  186  TJ.  S.  70;  Heaton  v. 
Eureka,  77  Fed.  288;  Crown  v.  Aluminum,  108  Fed.  845;  Broodnax  v.  Central.  4 
Fed.  214;  Consolidated  v.  Coombs,  39  Fed.  803;  Campbell  v.  Manhattan,  49 
Fed.  930. 

Note:    Decision  affirmed,  Continental  v.  Eastern,  210  U.  S.  405.  See  §  574. 


§§  549-550  INJUNCTION  487 

Does  the  allegation  in  the  answer  that  defendant  does  not  intend  to  infringe 
any  more  prevent  the  granting  of  injunctive  relief?  When  after  some  in- 
fringement and  after  conduct  disclosing  danger  of  a  continued  or  renewed 
infringement  a  patentee  finds  it  necessary  to  incur  the  expense  of  bringing 
a  bill  to  protect  his  rights,  he  is  entitled  to  all  the  remedies  which  the  law 
affords  him,  and  among  them  is  final  adjudication  of  his  rights  and  a  per- 
manent and  effective  injunction  against  further  infringement,  and  he  should 
not  be  driven  from  the  court  to  which  he  has  rightfully  resorted  with  a  mere 
promise  by  the  offender  of  better  conduct  in  the  future.  —  Deere  v.  Dowagiac, 
153  Fed.  177;  82  C.  C.  A.  351. 

When  the  validity  of  complainant's  patent  is  denied,  the  right  to  infringe 
asserted,  the  possession  of  a  large  quantity  of  infringing  machines  admitted, 
and  no  satisfactory  evidence  adduced  of  cessation  to  infringe  for  any  con- 
siderable time  before  the  beginning  of  the  suit,  is  the  danger  as  threatening  as 
to  warrant  injunctive  relief?  Considering  the  likelihood  that  an  infringement 
once  practised  will  be  repeated  as  long  as  the  wrong  doer  believes  he  is  right 
(as  from  the  pleadings  in  this  case  the  defendant  appears  to  believe)  we  think 
the  patentee  is  entitled  to  a  more  effective  remedy  than  a  mere  promise  of 
this  kind.  —  Deere  v.  Dowagiac,  153  Fed.  177;  82  C.  C.  A.  351. 

Celluloid  v.  Arlington,  34  Fed.  324;  White  v.  Walbridge,  46  Fed.  979;  Mat- 
thews v.  National,  71  Fed.  518;  N.  Y.  v.  Chemical,  93  Fed.  827. 


§  549.     Discretion  of  Court. 

They  are  granted  upon  a  mere  summary  showing  upon  affidavits.  Their 
issuance  is  not  a  matter  of  right,  and  rests  in  the  sound  discretion  of  the 
judge.  —  Bissell  v.  Goshen,  72  Fed.  545;  19  C.  C.  A.  25. 

Shinkle  v.  Louisville,  62  Fed.  690;  Blount  v.  Societe,  53  Fed.  98;  Dest.  Fed. 
Prac.  233;   1  High  Inj.  7;  2  High  Inj.  938,  939,  1026. 

The  granting  of  a  provisional  injunction  rests  in  the  sound  discretion  of 
the  trial  court,  and  it  is  not  necessary  that  the  court  should,  before  granting 
it,  be  satisfied  from  the  evidence  before  it  that  the  plaintiff  will  certainly 
prevail  upon  the  final  hearing  of  the  cause.  —  Southern  v.  Earl,  82  Fed.  690 ; 
27  C.  C.  A.  185. 

Georgia  v.  Brailsford,  2  Dall.  402;  Blount  v.  Societe;  53  Fed.  98. 


§  550.    Expiration  of  Patent. 

Pending  the  appeal  and  before  argument  of  the  cause  in  this  court,  the 
letters  patent  in  suit  expired,  and  with  that  expiration  the  interlocutory 
injunction  appealed  from  terminated.  There  is,  therefore,  nothing  remaining 
for  a  judgment  of  this  court  to  act  upon.  In  this  condition  of  the  case,  the 
court  will  no  further  consider  whether  the  injunction  was  or  was  not  properly 
granted,  but  will  dismiss  the  appeal.  —  Gamewell  v.  Municipal,  61  Fed.  208; 
9  C.  C.  A.  450. 

An  appeal  from  an  interlocutory  order  granting  an  injunction  should  be 
dismissed  where,  during  the  pendency  of  the  appeal  the  patent  expired  and 
the  injunction  ceased  to  be  operative.  —  Lockwood  v.  Wicks,  75  Fed.  118; 
21  C.  C.  A.  257. 

Following,  Gamewell  v.  Municipal,  61  Fed.  208. 

Little  v.  Burrows,  134  U.  S.  547;  Mfg.  Co.  v.  Wright,  141  U.  S.  696;  Mills  v. 
Green,  159  U.  S.  651;   Gold  v.  Brown,  74  Fed.  120. 


488  THE    FIXED    LAW    OF    PATENTS  §  551 

That  the  expiration  of  a  patent  after  preliminary  injunction  was  granted 
and  pending  appeal  from  such  order,  dismisses  the  appeal,  see  National  v. 
Robertson,  104  Fed.  552;  44  C.  C.  A.  29. 

Gamewell  v.  Municipal,  61  Fed.  208. 
• 

The  patent  had  only  4  months  and  5  days  to  run.  The  circuit  court 
decided  in  favor  of  the  complainant,  and,  we  think  rightly.  The  bill  prayed 
that  a  "  provisional  or  preliminary  injunction  be  issued,"  and  upon  the  facts 
charged  such  relief  might  have  been  granted  within  the  life  of*the  patent.  — 
Chinnock  v.  Paterson,  112  Fed.  531;  50  C.  C.  A.  384. 

Ross  v.  City,  63  Fed.  466;  Lake  Shore  v.  National,  110  U.  S.  229;  Clark  v. 
Wooster,  119  U.  S.  322;  Beedle  v.  Bennett,  122  U.  S.  71. 

The  court  below  awarded  a  perpetual  injunction,  but,  the  complainant 
having  waived  any  right  it  might  have  had  to  an  account,  no  accounting  was 
ordered.  The  patent  expired  after  argument  on  appeal.  Thus  the  injunction 
became  inoperative,  and  nothing  was  left  for  a  judgment  of  this  court  to  act 
upon.  —  Chapin  v.  Friedberger,  158  Fed.  409;  85  C.  C.  A.  519. 

Hatch  v.  Reardon,  204  U.  S.  160;  Mills  v.  Green,  159  U.  S.  651;  Gamewell  v. 
Municipal,  61  Fed.  208;  Lockwood  v.  Wicks,  75  Fed.  118;  American  v.  Vail, 
Fed.  Cas.  308. 

This  patent  expires  June  23  (opinion  Apr.  8).  While,  probably  the  com- 
plainant cannot  materially  suffer  by  the  continuance  of  the  use  of  the  device 
for  the  few  months  remaining  until  the  expiration  of  the  patent,  for  us  to 
compel  the  respondent  corporation  to  reorganize  its  looms  in  any  essential 
particulars,  or  even  to  stop  them  for  the  minimum  period  of  time  in  which 
such  reorganization  could  be  effected,  might  impose  a  penalty  in  excess  of 
the  probable  value  of  the  invention  covered  by  the  claim  in  suit.  What 
we  have  already  said  is  sufficient  to  show  that  the  invention  carries  only  a 
minimum  of  what  is  patentable.  In  this  connection  we  refer  to  the  practical 
rules  applied  by  the  circuit  court  in  Westinghouse  v.  Burton,  70  Fed.  619, 
affd.  77  Fed.  301.  We  also  refer  to  the  authorities  relied  on  in  the  opinion 
of  the  circuit  court  in  that  litigation.  It  is  true  that  case  related  only  to  a 
preliminary  injunction,  as  well  as  did  the  cases  cited.  Nevertheless  the 
underlying  substantial  rule  applies  here  as  well  as  there.  Injustice  is 
not  to  be  accomplished  by  equity  either  on  an  interlocutory  proceeding 
or  a  final  one.  The  complainant  may,  perhaps,  be  fully  compensated  if  it 
is  made  sure  that  it  will  receive  whatever  damages  it  may  have  sustained, 
if  any,  or  a  reasonable  royalty,  or  the  equivalent  thereof,  representing  the 
value  of  the  patented  improvement.  Therefore  it  may  be  that  the  circuit 
court  should  make  an  alternative  provision,  so  that  the  respondent  corpora- 
tion might  at  its  option  be  relieved  from  an  injunction  if  it  compensates 
the  complainant  for  profits,  damages,  and  royalty,  or  the  equivalent  thereof, 
so  far  as  the  complainant  may  be  justly  entitled  to  all  or  any  of  them,  or  if 
it  satisfies  the  court  that  it  will  so  compensate  the  complainant  by  giving 
security  therefor  or  otherwise.  —  Draper  v.  American,  161  Fed.  728;  88 
C.  C.  A.  588. 

§  551.     General  Rules  for  Granting. 

In  Standard  v.  Crane,  56  Fed.  718,  this  court  declared  the  doctrine  which 
must  prevail  in  this  circuit  respecting  the  allowance  of  preliminary  injunc- 
tions in  patent  cases.  We  there  said  that  to  authorize  a  court,  in  advance  of 
a  decree  upon  the  merits,  to  allow  an  injunction,  not  only  must  the  infringe- 
ment be  without  reasonable  doubt,  but  the  rights  of  the  patentee  must  be 
clear;  and,  failing  prior  adjudication  in  favor  of  the  validity  of  the  patent, 
there  must  be  shown  such  continued  public  acquiescence  in  the  exclusive 


I  552  INJUNCTION  489 

right  asserted  as  raises  a  presumption  of  validity  not  arising  from  the  letters 
patent  alone;  and  that,  if  the  controversy  between  the  parties  be  substantial, 
and  not  colorable  merely,  courts  of  equity  are  not  disposed  to  adjudicate 
upon  the  rights  of  parties  otherwise  than  according  to  the  approved  usages 
of  chancery.  —  Williams  v.  Breitling,  77  Fed.  285;  23  C.  C.  A.  171. 
Ertel  v.  Stahl,  65  Fed.  519. 

The  principle  upon  which  all  injunctions  are  granted  in  patent  causes, 
preliminary  and  final,  is  that  an  action  at  law  does  not  give  a  complete 
remedy  to  the  complainant  whose  property  is  invaded.  The  infringement  of 
a  patent  is  a  constantly  recurring  grievance,  which  cannot  be  adequately 
prevented  but  by  an  injunction.  "  It  is  quite  plain  that,  if  no  other  remedy 
could  be  given  in  cases  of  patents  and  copyrights  than  an  action  at  law 
for  damages,  the  inventor  or  author  might  be  ruined  by  the  necessity  of 
perpetual  litigation  without  ever  being  able  to  have  a  final  establishment  of 
his  rights."  Story,  Eq.  Jur.  sec.  931.  A  decree  for  damages  and  profits 
in  an  equity  cause  would  fall  short  of  adequate  redress  to  the  patentee.  He 
is  entitled  to  an  injunction  as  well  as  to  an  accounting  of  damages  and  profits. 
Indeed,  the  accounting  is  but  incidental  to  the  relief  by  injunction  and  it  is 
the  right  to  this  relief  which  alone  gives  a  court  of  equity  jurisdiction.  "  A 
recovery  does  not  vest  the  infringer  with  the  right  to  continue  the  use,  as 
the  consequence  of  it  may  be  an  injunction  restraining  the  defendant  from 
the  further  use  of  it."  Suffolk  Co.  v.  Hayden,  3  Wall.  315.  In  Penna.  v. 
Libby,  L.  R.  3  Eq.  308,  a  suit  upon  a  patent  against  a  defendant  who  was 
merely  a  user,  the  vice  chancellor,  in  awarding  an  injunction  and  an  account, 
said:  "  I  cannot  in  the  decree  do  less  than  give  the  plaintiff  his  full  right,  and 
I  cannot  bargain  for  him  what  he  may  choose  or  may  not  choose  to  do."  — 
Arlington  v.  Booth,  78  Fed.  878;  24  C.  C.  A.  378. 

The  respondent,  while  under  the  injunction,  is  ordinarily  a  constant  loser, 
and  never  regains  his  losses  unless  the  complainant  has  given  a  bond.  There- 
fore in  this  class  of  cases  the  courts  usually  hold  that  unless  the  patent  is 
supported  by  public  acquiescence  or  prior  adjudication,  or  some  other  peculiar 
condition,  the  complainant's  rights  must  be  free  from  doubt,  to  entitle  him 
to  a  preliminary  injunction.  —  Wilson  v.  Consolidated,  88  Fed.  286;  31  C. 
C.  A.  533. 

Rob.  Pat.  sec.  1173;  North  v.  Kershaw,  Fed.  Cas.  10,311;  Standard  v.  Crane, 
56  Fed.  718;  Williams  v.  Mfg.  Co.  77  Fed.  285. 

A  continuing  trespass  is  always  good  ground  for  the  issue  of  an  injunction 
in  the  absence  of  countervailing  considerations,  because  a  multiplicity  of  suits 
for  damages  is  never  an  adequate  remedy  for  the  loss  which  constantly  re- 
peated trespasses  entail.  —  Stearns- Roger  v.  Brown,  114  Fed.  939;  52  C.  C. 
A.  559. 

Mfg.  Co.  v.  Booth,  78  Fed.  878. 

§  552.     General  Rules  for  Refusing. 

It  is  a  cardinal  principle  of  equity  jurisprudence  that  a  preliminary  in- 
junction shall  not  issue  in  a  doubtful  case.  Unless  the  court  be  convinced  with 
reasonable  certainty  that  the  complainant  must  succeed  at  final  hearing  the 
writ  should  be  denied.  —  Hall  v.  General,  153  Fed.  907;  82  C.  C.  A.  653. 

Union  v.  Philadelphia,  75  Fed.  1004. 

For  full  list  of  cases  covering  this  question,  see  dissenting  opinion  of 
Aldrich,  J.  in  Continental  v.  Eastern,  150  Fed.  741 ;  80  C.  C.  A.  407. 
Note:    See  Continental  v.  Eastern,  210  U.  S.  405,  §  574. 


490  THE    FIXED    LAW    OF    PATENTS  §§  553-554 

There  was  no  showing  that  the  patents  had  ever  been  admitted  to  be 
valid  by  the  defendant,  or  held  valid  by  any  court  of  competent  jurisdiction, 
or  that  their  validity  had  been  generally  acquiesced  in  by  the  public.  With- 
out a  showing  of  one  or  the  other  of  these  facts,  no  preliminary  injunction 
ought  to  be  granted  in  a  patent  case.  —  St.  Louis  v.  Sanitary,  161  Fed.  725; 
88  C.  C.  A.  585. 

§  553-     Government. 

But  no  injunction  can  be  issued  against  officers  of  a  state  to  restrain  or 
control  the  use  of  property  already  in  the  possession  of  the  state,  or  money 
in  its  treasury  when  the  suit  is  commenced,  or  to  compel  the  state  to  perform 
its  obligations,  or  where  the  state  has  otherwise  such  an  interest  in  the  object 
of  the  suit  as  to  be  a  necessary  party.  —  Belknap  v.  Schild,  161  U.  S.  10; 
16  L.  Ed.  599;  16  S.  Ct.  443. 

Louisiana  v.  Jurmel,  107  U.  S.  711;  Elliott  v.  Wiltz,  107  U.  S.  720;  Cunning- 
ham v.  Railroad,  109  U.  S.  446;  Hagood  v.  Southern,  117  U.  S.  52;  In  re  Ayers, 
123  U.  S.  443;  North  Carolina  v.  Temple,  134  U.  S.  22;  McGahey  v.  Va.  135  U.  S. 
662. 

In  a  suit  to  which  the  state  is  neither  formally  nor  really  a  party,  its  offi- 
cers, though  acting  by  its  order  and  for  its  benefit,  may  be  restrained  by 
injunction,  when  the  remedy  at  law  is  inadequate,  from  doing  positive  acts 
for  which  they  are  personally  and  individually  liable,  taking  or  injuring  the 
plaintiff's  property  contrary  to  a  plain  official  duty  requiring  no  exercise 
of  discretion  and  in  violation  of  the  Constitution  or  laws  of  the  United  States. 

But  no  injunction  can  be  issued  against  officers  of  a  state,  to  restrain  or 
control  the  use  of  property  already  in  the  possession  of  the  state.  —  Belknap 
v.  Schild,  161  U.  S.  10;  16  L.  Ed.  599;  16  S.  Ct.  443. 

Harlan  and  Field  dissenting. 

Osborn  v.  Bank,  22  U.  S.  738;  Louisiana  v.  McComb,  92  U.  S.  531;  Allen  v. 
Baltimore,  114  U.  S.  311;  Pennoyer  v.  McConnaughy,  140  U.  S.  1;  Elliott  v. 
Wiltz,  107  U.  S.  711;  Cunningham  v.  Mason,  109  U.  S.  446;  Hagood  v.  Southern, 
117  U.  S.  52;  Re  Ayers,  123  U.  S.  443;  N.  C  v.  Temple,  134  U.  S.  22;  McGahey 
v.  Va.  135  U.  S.  662. 

Unless  expressly  permitted  by  act  of  Congress,  no  injunction  can  be  granted 
against  the  United  States.  —  Belknap  v.  Schild,  161  U.  S.  10;  16  L.  Ed. 
599;  16  S.  Ct,  443. 

U.  S.  v.  McLemore,  45  U.  S.  286;  Hill  v.  U.  S.  50  U.  S.  386;  Case  v.  Terrell,  78 
U.  S.  199. 

The  courts  should  not  use  their  writs  of  injunction  so  as  to  retard  and 
embarrass  the  government  in  the  prosecution  of  work,  the  product  of  which  is 
absolutely  essential  to  the  public  welfare  and  the  national  defense.  —  Dashiell 
v.  Grosvenor,  66  Fed.  334;  13  C.  C.  A.  593. 

§  554.     Grounds  for  Granting  —  Acquiescence. 

It  is  well  settled  that,  for  the  purpose  of  laying  the  foundation  for  a  pre- 
liminary injunction,  it  may  be  shown  that  the  patentee,  or  those  succeeding 
to  his  rights,  have  made,  used,  and  sold  the  patented  article  or  device  for 
years,  during  which  no  other  person  or  persons  have  assumed  to  make  or 
sell  the  same.  When  all  persons,  other  than  the  owner  of  the  patent,  have  for 
several  years  refrained  from  making,  using  or  selling  the  patented  article 
for  the  reason  that  it  is  patented,  when  it  would  be  for  their  interest  to  adopt 
it,  such  acquiescence  raises  a  fair  presumption  of  its  validity,  sufficient  to 
warrant  the  issuance  of  a  preliminary  injunction  to  restrain  its  infringement. 
So,  too,  if  the  patentee  has  long  licensed  the  use  of  his  invention,  which  no 


§  555  INJUNCTION  491 

one  has,  for  periods  varying  from  two  to  eight  years,  assumed  to  use  or  sell 
without  such  license,  there  is  such  acquiescence  as  lays  the  foundation  for  a 
preliminary  injunction.  —  Blount  v.  Societe,  53  Fed.  98;  3  C.  C.  A.  455. 

Sargent  v.  Seagrave,  2  Curt.  557;  Dougherty  v.  West,  2  Fish.  P.  C  559;  Ma- 
chine Co.  v.  Williams,  2  Fish.  P.  C  138. 

While  acquiescence,  even  of  a  qualified  or  doubtful  nature,  may  give  aid 
to  a  patent  on  a  final  hearing,  yet  when  relied  on  to  support  a  temporary 
injunction,  it  must  be  clear  in  its  character  and  extent.  —  Wilson  v.  Con- 
solidated, 88  Fed.  286;  31  C.  C.  A.  533. 

Three  years  before  the  patent  issued,  Adam  took  a  license  to  make  heaters 
according  to  Folger's  specifications.  He  built  the  heaters  in  accordance  with 
the  specifications  furnished  by  Folger.  His  use  of  the  patent  imprint  ("  Vic- 
tor ")  and  his  present  contention  that,  after  the  withdrawal  of  the  license,  he 
altered  the  construction  so  as  to  avoid  the  claims,  are  strong  concessions  of 
the  patent's  validity.  So  far  as  Adam  is  concerned,  his  actions  evidence  a 
sufficient  acquiescence.  —  Adam  v.  Folger,  120  Fed.  260;  56  C.  C.  A.  540. 

Blount  v.  Societe,  53  Fed.  98;  White  v.  Surdam,  41  Fed.  790;  Steam  Gauge  v. 
Ham,  28  Fed.  618;  Burr  v.  Kimbark,  28  Fed.  574. 

Defendant  took  a  license  before  the  patent  issued  to  make  the  invention 
and  to  use  the  trademark  "  Victor."  He  changed  the  construction,  but 
continued  to  sell  the  device  under  the  trademark.  Held:  Without  deciding 
how  far,  if  at  all,  the  use  and  sale  of  the  Victor  heater  before  the  patent  was 
issued  should  be  taken  as  evidence  of  acquiescence  in  the  validity  of  the 
patent  (see  Sargent  v.  Seagrave,  2  Curt.  553;  Wilson  v.  Store  Service,  88 
Fed.  286;  McDowell  v.  Kurtz,  77  Fed.  206;  Corser  v.  Overall  Co.  59  Fed. 
781;  White  v.  Hunter,  47  Fed.  819)  we  are  of  opinion  on  this  branch  of  the 
case  that  the  temporary  injunction  was  not  improvidently  issued.  The  pur- 
pose of  showing  adjudication  against  others  or  acquiescence  by  the  public 
is  not  to  foreclose  the  question  of  validity,  but  to  aid  the  presumption  which 
the  patent  raises  to  a  point  where  the  court  is  satisfied  that  the  probabilities 
of  a  final  decree  in  the  complainant's  favor  are  so  strong  that  the  defendant 
should  be  excluded  at  once  from  practising  the  alleged  invention.  —  Adam 


v. 


Folger,  120  Fed.  260;   56  C.  C.  A.  540. 


§  555-     Grounds  for  Granting  —  Conduct  of  Defendant. 

The  defendant  was  formerly  largely  interested  under  the  patent,  as  pro- 
motor,  licensee  and  officer  of  the  licensed  company.  His  prior  relations  to  the 
patent  presented  a  strong  equity  in  favor  of  the  complainants,  if  it  did  not 
estop  him  from  denying  its  validity  under  the  authorities.  —  Blount  v. 
Societe,  53  Fed.  99;  53  C.  C.  A.  98. 

Faulks  v.  Kemp,  3  Fed.  898;  Onderdonk  v.  Fanning,  4  Fed.  148;  Purifier  Co. 
v.  Guilder,  9  Fed.  155;  Telegraph  Co.  v.  Himmer,  19  Fed.  322;  Parker  v.  McKee, 
24  Fed.  803;  Alabastine  Co.  v.  Payne,  27  Fed.  559;  Steam  Gauge  Co.  v.  Ham,  28 
Fed.  618;   Burr  v.  Kimbark,  28  Fed.  574. 

The  appellant  discloses  no  particular  equities  which  ought  to  induce  the 
withholding  the  injunction.  It  has  been  the  deliberate  user  of  a  large  number 
of  valves,  and  has  preferred  to  run  the  risk  of  an  injunction  rather  than  to 
displace  its  present  equipment.  —  Westinghouse  v.  Great  Northern,  88  Fed. 
258;  31  C.  C.  A.  525. 

We  are  not  prepared  to  say  that,  even  in  the  absence  of  any  direct  evi- 
dence at  all,  as  to  the  infringement,  a  court  might  not,  on  a  motion  for  a 
preliminary   injunction,   infer   infringement   from   the   disingenuousness   of 


492  THE    FIXED    LAW    OF    PATENTS  §§  556-557 

defendant's  witnesses  and  their  reluctance  to  disclose  all  the  facts.  The 
ordinary  rule  is  that  one  who  has  knowledge  peculiarly  within  his  own  con- 
trol, and  refuses  to  divulge  it,  cannot  complain  if  the  court  puts  the  most 
unfavorable  construction  upon  his  silence,  and  infers  that  a  disclosure 
would  have  shown  the  facts  to  be  as  claimed  by  the  opposite  party.  —  Societe 
v.  Allen,  90  Fed.  815;  33  C.  C.  A.  282. 

§  556.     Grounds  for  Granting  —  Damages  Insufficient  Remedy. 

The  rules  which  control  applications  for  preliminary  injunctions  in  patent 
causes  are  so  well  settled  and  familiar  that  it  would  seem  to  be  quite  useless 
to  recapitulate  them,  much  less  to  cite  from  text  writers  or  judicial  utterances 
in  exposition  of  them.  We  are  aware  of  none  which  disentitle  a  complainant 
to  the  remedy  of  a  preliminary  injunction  against  the  infringement  of  his 
patent  by  a  defendant  who  is  a  user  of  the  infringing  article  when  the  facts 
are  such  that  he  would  be  entitled  to  it  if  the  defendant  were  a  manufacturer 
or  a  seller.  —  Arlington  v.  Booth,  78  Fed.  878;  24  C.  C.  A.  378. 

It  does  not  lie  with  the  infringer  to  say  that  the  owner  of  the  patent  will 
be  fully  compensated  by  a  money  recovery,  and  ought  to  be  satisfied  thereby. 
It  is  for  the  latter  to  say  whether  he  prefers  an  injunction,  or  a  money  re- 
covery, or  both;  and,  at  his  option,  he  is  at  liberty,  at  final  hearing,  to  waive 
an  account,  and  insist  upon  his  injunction.  —  Arlington  v.  Booth,  78  Fed. 
878;  24  C.  C.  A.  378. 

The  places  of  business  of  complainant  and  defendant  were  in  California 
and  Alaska,  the  alleged  infringement  being  in  Alaska.  Held:  It  would 
obviously  be  a  matter  of  great  difficulty  for  the  complainant,  under  the  most 
favorable  circumstances,  to  show  the  damage  sustained  by  it  by  the  unlawful 
use  of  the  infringing  machine,  especially  where,  the  record  shows,  no  royalty 
had  been  established  by  the  complainant,  and  where  the  complainant  had 
always  refused  to  sell  any  machine  made  under  it  or  to  permit  the  use  thereof 
by  any  person.  —  Pacific  v.  Alaska,  100  Fed.  462;  40  C.  C.  A.  494. 

Note:  Exactly  how  this  rule  could  apply  to  this  case  is  something  of  a 
curiosity.  If  there  were  no  license  fee  and  no  previous  sales,  it  is  very  diffi- 
cult to  see  how  evidence  of  damages  or  profits  could  possibly  be  proved  else- 
where than  at  the  home  of  the  complainant  where  the  suit  is  brought. 

§  557-     Grounds  for  Granting  —  Infringement. 

The  case  presented  to  us  is  one  in  which  the  complainant  had  a  valid  title 
to  a  valid  patent,  which  the  defendants  to  the  suit  have  confessedly  infringed. 
Under  such  circumstances,  the  showing  must  be  a  very  strong  one  that  would 
justifjr  an  appellate  court  in  reversing  an  order  granting  a  temporary  in- 
junction. —  Pacific  v.  Alaska,  100  Fed.  462;  40  C.  C.  A.  494. 

To  authorize  a  writ,  the  right  must  be  clear,  and  the  fact  of  infringement 
reasonably  certain.  —  Seiler  v.  Fuller,  102  Fed.  344;  42  C.  C.  A.  386. 
Standard  v.  Crane,  56  Fed.  718;   Mast  v.  Stover,  177  U.  S.  485. 

It  will  not  do  to  say  that  no  harm  could  result  from  the  restraining  order 
because  the  injunction  merely  went  to  the  use  of  the  infringing  machines,  and 
that  the  defendants  could  not  be  harmed  if  their  machines  did  not  infringe. 
Courts  do  not  issue  their  writs  of  injunction  because  no  harm  can  result  from 
them.  They  issue  them  to  preserve  rights  which  are  shown  to  have  been 
invaded.  It  would  not  be  just  to  put  upon  the  defendants  the  hazard  of 
being  in  contempt  of  court  for  disobedience  to  its  orders,  if  they  honestly 
claimed  their  machine  did  not  infringe,  when  it  might  thereafter  be  deter- 


§§  558-561  INJUNCTION  493 

mined  that  it  did  infringe,  and  when  the  courts  had  not  considered  or  deter- 
mined the  question  of  infringement.  —  Seiler  v.  Fuller,  102  Fed.  344;  42 
CCA.  386. 

§  558.     Grounds  for  Granting  —  Laches  Excusable. 

It  is  no  defense  to  a  suit  for  an  injunction  and  an  accounting  on  account 
of  the  continuing  trespasses  of  an  infringer  that  the  latter  has  been  tres- 
passing on  the  rights  of  the  patentee  with  impunity  for  years.  —  Ide  v. 
Trorlicht,  115  Fed.  137;  53  C  C  A.  341. 

Menendez  v.  Holt,  128  U.  S.  514;  McLean  v.  Fleming,  96  U.  S.  245;  Price  v. 
Steel  Co.  46  Fed.  107;  New  York  v.  Buffalo,  18  Fed.  638;  Gilmore  v.  Anderson, 
38  Fed.  846;  Brush  v.  Electric,  45  Fed.  241;  Taylor  v.  Spindle  Co.  75  Fed.  301; 
Bragg  v.  Hartford,  56  Fed.  292. 

Note:  This  may  be  good  law  in  the  Eighth  Circuit,  but  it  requires  serious 
qualification  in  other  circuits. 

§  559-     Grounds  for   Granting  —  Nature  of  Act. 

It  is  not  essential  that  there  shall  have  been  any  actual  infringement,  in 
order  to  entitle  a  complainant  to  an  injunction.  The  selling  and  offering  for 
sale  with  the  intent  and  purpose  to  bring  about  an  infringement  are  enough 
to  entitle  complainant  to  an  injunction  to  prevent  the  threatened  injury. 

—  Rupp  v.  Elliott,  131  Fed.  730;  65  C.  C.  A.  544. 
Thomson-Houston  v.  Kelsey,  75  Fed.  1005;    Thomson-Houston  v.  Ohio,  80 

Fed.  712;   Wallace  v.  Holmes,  29  Fed.  Cas.  79. 

§  560.     Grounds  for  Granting  —  Prima  Facie  Right. 

There  is  the  general  "  prima  facie  "  presumption  of  the  novelty  and  utility 
of  the  invention  and  that  the  patentee  is  the  first  and  true  inventor,  which 
arises  from  the  letters  patent  granted  by  the  government.  —  Blount  v. 
Societe,  53  Fed.  98;  3  C  C  A.  455. 

Railroad  v.  Stimpson,  14  Pet.  448;  Seymour  v.  Osborne,  11  Wall.  516;  Smith  v. 
Dental  Co.  93  U.  S.  486;  Lehnbenter  v.  Holthaus,  105  U.  S.  94. 

§  561.     Grounds  for  Granting  —  Prior  Adjudication. 

An  interlocutory  decree  granting  an  injunction  in  another  case  is  a  good 
foundation  on  which  to  base  an  application  for  a  preliminary  injunction  in 
any  other  court.  —  Blount  v.  Societe,  53  Fed.  98 ;  3  C.  C  A.  455. 

Potter  v.  Fuller,  2  Fish.  P.  C  251. 

The  patent  had  been  sustained  in  a  prior  suit,  and  in  a  prior  suit  against  the 
corporation  of  which  this  defendant  was  the  actual  successor,  an  injunction 
had  been  granted.  Although  a  new  defense  (the  expiration  of  a  foreign 
patent)  had  been  interposed  on  leave  and  the  case  reopened,  it  was  still  in 
the  discretion  of  the  trial  court  whether  such  new  defense  should  be  ground 
for  discontinuing  the  injunction  until  the  case  could  be  heard  on  the  merits. 

—  Consolidated  v.  Accumulator,  55  Fed.  485 ;   5  C  C.  A.  202. 

Of  course  such  prior  adjudication  does  not  conclude  the  question  of  right, 
even  as  to  the  defenses  passed  upon,  except  as  between  the  parties  and 
privies.  Such  a  judgment  is  not  within  the  principle  of  res  adjudicata.  — 
Electric  v.  Edison.  61  Fed.  834;  10  C  C  A.  106. 

When  the  patent  has  been  strenuously  contested,  and  its  validity  deter- 
mined by  a  competent  tribunal,  we  think  a  strong  presumption  arises  in  favor 


494  THE    FIXED    LAW    OF    PATENTS  §  561 

of  the  patent,  which  imposes  upon  the  contestant  the  burden  of  attack.  — 
Electric  v.  Edison,  61  Fed.  834;  10  C.  C.  A.  106. 


When  the  validity  of  a  patent  has  been  sustained  by  prior  adjudication, 
and  especially  after  a  long,  arduous  and  expensive  litigation,  the  only  question 
open  upon  motion  for  a  preliminary  injunction  in  a  subsequent  suit  against 
another  defendant,  is  the  question  of  infringement,  the  consideration  of  other 
defenses  being  postponed  until  final  hearing;  the  only  exception  to  the  rule 
being  where  new  evidence  is  of  such  a  conclusive  character  that,  if  it  had  been 
introduced  in  the  former  case,  it  probably  would  have  led  to  a  different  con- 
clusion. And  in  such  case  the  burden  is  upon  the  defendant  to  establish 
this,  and  every  reasonable  doubt  must  be  resolved  against  him.  —  Electric 
v.  Edison,  61  Fed.  834;  10  C.  C.  A.  106. 

Edison  v.  Beacon,  54  Fed.  678;   Edison  v.  Columbia,  56  Fed.  496. 


Where  the  validity  of  a  patent  has  been  sustained  by  prior  adjudication, 
and  especially  after  a  long,  arduous  and  expensive  litigation,  the  patentee 
may  rightfully  rest  upon  his  patented  right  confirmed  to  him  by  the  solemn 
adjudication  of  a  competent  judicial  tribunal.  He  who  attacks  that  right 
must  overcome  the  legal  presumption  of  right  in  the  patentee.  The  strength 
of  that  presumption  is  variant,  depending  upon  the  circumstances  surround- 
ing the  adjudication  relied  upon  to  support  it.  It  is  stronger  when  rested 
upon  a  final  hearing  than  upon  a  motion  for  a  preliminary  injunction.  Its 
potential  force  is  intensified  by  an  affirmance  by  an  appellate  tribunal  of  the 
adjudication  in  favor  of  the  patent.  The  extent  of  the  burden  of  overcoming 
the  presumption  is,  therefore,  measured  by  the  degree  of  effective  force 
imputed  to  the  presumption.  Where  anticipation  of  invention  has  been 
asserted  and  determined  to  be  unfounded,  the  presumption  would  be  much 
stronger  against  cumulative  evidence  to  prove  anticipation  by  the  one  whose 
claim  had  been  repudiated,  than  where  anticipation  is  asserted  in  behalf 
of  some  other  supposed  inventor,  whose  claim  was  not  in  contention  in  the 
case  adjudicated;  and  yet,  in  the  latter  instance,  in  addition  to  the  presump- 
tion attaching  to  the  patent  itself,  there  would  arise  a  further  presumption 
more  or  less  strong,  and  depending  upon  the  circumstances,  that,  as  the  issue 
was  the  validity  of  the  patent  because  of  anticipation,  bona  fide  contestants, 
earnestly  striving  to  undermine  the  patent,  would  have  asserted  the  defense, 
if  known  to  them,  and  deemed  substantial.  It  may  be  difficult  to  formulate 
a  rule  that  will  comprehend  all  the  conditions  which  could  be  presented, 
but,  we  think  it  safe  to  say  that  in  general,  when  the  validity  of  a  patent  has 
been  sustained  by  prior  adjudication  upon  final  hearing,  and  after  bona  fide 
and  strenuous  contest,  the  matter  of  its  validity  upon  motion  for  preliminary 
injunction  is  no  longer  at  issue,  all  defense,  except  that  of  infringement,  being 
reserved  to  the  final  hearing ;  subject,  however,  to  the  single  exception  that, 
where  a  new  defense  is  interposed,  the  evidence  to  support  it  must  be  so 
cogent  and  persuasive  as  to  impress  the  court  with  the  conviction  that,  if 
it  had  been  presented  and  considered  in  the  former  case,  it  would  probably 
have  availed  to  a  contrary  conclusion.  In  the  consideration  of  such  new 
defense  of  anticipation,  regard  should  be  had  to  the  rule  that  such  a  defense 
is  an  affirmative  one;  that  the  burden  of  proof  is  upon  him  who  asserts  it; 
and  that  the  grant  of  letters  patent  is  prima  facie  evidence  that  the  patentee 
is  the  first  inventor  of  the  device  described  therein,  and  of  its  novelty.  — 
Electric  v.  Edison,  61  Fed.  834;  10  C.  C.  A.  106. 

Coffin  v.  Ogden,  18  Wall  120;  Smith  v.  Vulcanite  Co.  93  U.  S.  486;  Lehnbeuter 
v.  Holthaus,  105  U.  S.  94;  Cantrell  v.  Wallick,  117  U.  S.  689;  Barbed  Wire 
Patent,  143  U.  S.  275. 


§  561  INJUNCTION  495 

The  decision  of  another  circuit  is  entitled  to  the  same  consideration  in  this 
court  as  it  had  in  the  court  below.  —  Duplex  v.  Campbell,  69  Fed.  250; 
16  C.  C.  A.  220. 

American  v.  National,  51  Fed.  229. 

Whether  this  court  will  apply  the  rule  in  favor  of  the  decisions  of  the 
various  circuit  courts,  or  will  limit  it  to  adjudications  of  the  appellate  courts, 
as  was  apparently  done  by  the  third  circuit  in  National  v.  American,  53 
Fed.  367,  quaere.  —  Bresnahan  v.  Tripp,  72  Fed.  920;   19  C.  C.  A.  237. 

The  second  patent  was  sustained  as  valid  after  a  full  hearing  on  the  merits, 
before  so  good  and  experienced  patent  judge  as  Judge  Townsend.  This 
certainly  justified  the  court  below  in  assuming  the  validity  of  the  patent  on 
a  motion  for  a  preliminary  injunction.  —  Thomson-Houston  v.  Ohio,  80  Fed. 
712;  26  C.  C.  A.  107. 

Thomson-Houston  v.  Winchester,  71  Fed.  192. 

We  think  the  prior  adjudication  should  be  regarded  as  a  finality  until 
sufficient  reason  for  departing  from  it  shall  have  been  made  to  plainly  appear, 
and  that  the  appellee  should  not,  upon  a  motion  to  dissolve  a  preliminary 
injunction,  be  deprived  of  the  advantage  it  holds  as  the  owner  of  a  patent 
adjudged  by  a  court  of  appeals  to  be  valid,  upon  anything  less  than  thor- 
oughly convincing  proofs.  —  Adams  v.  Tannage,  81  Fed.  178;  26  C.  C.  A. 
326. 

The  former  adjudication  was  entitled  to  great  weight  upon  the  application 
for  the  preliminary  injunction,  and  justified  although  it  did  not  necessarily 
control,  the  decision.  —  Thomson-Houston  v.  Hoosick,  82  Fed.  461;  27 
C.  C.  A.  419. 

In  the  case  of  Russell  v.  Place,  94  U.  S.  606,  it  was  held  that  a  judgment 
establishing  the  validity  of  the  patent  containing  two  claims,  but  not  dis- 
closing whether  the  judgment  was  based  upon  one  or  both  of  such  claims, 
would  not,  in  the  absence  of  extensive  evidence  indicating  the  precise  ground 
of  the  judgment,  constitute  an  estoppel  in  a  subsequent  action  between  the 
same  parties,  in  which  the  validity  of  the  same  patent  was  involved.  In  that 
case  the  question  related  to  a  certainty  required  in  the  records  in  order  for 
a  judgment  to  be  given  the  effect  of  an  estoppel;  but  in  our  opinion  it  is 
necessary  that  the  same  certainty  should  be  made  to  appear  in  relation  to 
the  issues  actually  adjudicated,  where  a  prior  judgment  is  offered  as  the  basis 
for  the  issuance  of  a  preliminary  injunction,  in  cases  of  this  character.  — 
Southern  v.  Earl,  82  Fed.  690;  27  C.  C.  A.  185. 

Coburn  v.  Clark,  15  Fed.  807;    Sewing  Machine  v.  Williams,  Fed.  Cas.  5847. 

The  owner  of  a  patent  who  has  been  fully  sustained  should  not  be  deprived 
of  his  injunctive  right  except  upon  thoroughly  convincing  additional  proof. 
—  Ford  Co.  v.  Tannage  Pat.  84  Fed.  644;  28  CCA.  503. 

Coming  to  the  rules  applicable  under  these  circumstances,  it  cannot  be 
denied  that  a  preliminary  injunction  may  properly  issue  in  a  patent  suit 
where  the  validity  of  the  patent  is  clear,  although  it  has  not  been  sustained 
by  a  prior  adjudication  or  public  acquiescence.  Of  course,  there  must  in 
every  instance  be  an  equitable  necessity  for  relief  by  injunction.  —  Wilson 
v.  Consolidated,  88  Fed.  286;  31  C  C  A.  533. 

Davis  v.  Edison.  60  Fed.  276. 


496  THE    FIXED    LAW   OF    PATENTS  §  561 

The  rule  as  to  prior  litigation  is  that  it  requires  "  a  bona  fide  and  strenuous 
contest,"  resulting  in  favor  of  the  patent.  —  Wilson  v.  Consolidated,  88  Fed. 
286;  31  C.  C.  A.  533. 

Electric  v.  Edison,  61  Fed.  834;   Bresnahan  v.  Leveler  Co.  72  Fed.  920. 

With  reference  to  a  prior  judgment  or  general  acquiescence,  it  is  clear, 
on  principle,  that  there  must  be  the  same  freedom  from  doubt  in  behalf  of  a 
party  applying  for  a  temporary  injunction,  as  if  the  question  was  one  of 
validity  alone.  A  court  would  be  no  more  justified  in  granting  such  an 
injunction  on  a  doubtful  case  of  prior  adjudication  than  it  would  be  on  a 
doubtful  case  of  validity.  Neither  can  a  doubtful  case  of  a  prior  judgment  be 
assisted  by  a  doubtful  case  of  acquiescence,  and  vice  versa.  It  is  plain,  on 
principle,  that  the  complainant's  right  must  be  clear,  either  as  to  the  validity 
of  the  patent  or  on  the  question  of  a  prior  judgment,  or  on  the  question  of 
acquiescence.  —  Wilson  v.  Consolidated,  88  Fed.  286;  31  C.  C.  A.  533. 

Ordinarily  a  prior  determination  on  final  hearing,  after  a  bona  fide  and 
strenuous  contest,  is  sufficient  to  justify  an  injunction,  even  against  a  new 
defendant.  —  Hatch  v.  Electric,  100  Fed.  975;  41  C.  C.  A.  133. 

Beach  v.  Hobbs,  92  Fed.  146;  Wilson  v.  Store  Service  Co.  88  Fed.  286. 

The  prior  adjudication  has  been  secured  by  complainant  on  testimony 
which  has  been  sifted  by  cross-examination,  and  it  would  seem  that  he 
should  be  entitled  to  cross-examination  of  defendant's  experts  before  being 
deprived  of  the  advantage  of  his  previous  decree.  Especially  so  in  view  of 
the  ease  with  which  ex  parte  affidavits  of  experts  exploiting  any  theory 
desired  may  apparently  be  obtained.  —  Consolidated  v.  Hays,  100  Fed. 
984;  41  C.  C.  A.  142. 

Curtis  v.  Wheel  Co.  58  Fed.  784. 

Prior  hearings  had  occurred,  resulting  in  an  injunction  against  an  alleged 
infringement  by  the  defendant  pending  final  hearing.  The  instant  case 
appeared,  therefore,  as  a  second  attempt  to  use  a  device  which  might  evade 
the  patent,  while  adopting  an  equivalent  means.  The  presumptions  which 
run  with  the  patent  are  thus  well  fortified  by  circumstances  to  entitle  the 
owner  to  injunctional  relief.  —  Austin  v.  American,  121  Fed.  76;  57  C. 
C.  A.  330. 

Electric  v.  Edison,  61  Fed.  834. 

That  where  a  patent  has  been  adjudicated  and  sustained  by  a  circuit  court 
of  appeals,  the  only  question  to  be  considered  as  a  defense  is  non-infringement, 
see  Cohn  v.  Stephenson,  142  Fed.  467;  73  C.  C.  A.  583. 

Philadelphia  v.  Edison,  65  Fed.  551;  Tannage  v.  Adams,  77  Fed.  191;  Adams 
v.  Tannage,  81  Fed.  178. 

Facts:  No  answer  was  made  to  the  motion  except  the  question  of  priority. 
Both  parties  had  been  in  interference  and  an  appeal  to  the  Circuit  Court  of 
Appeals,  D.  C.  had  been  decided  in  complainant's  favor.  Held:  That  an 
injunction  pendente  lite  may  issue  if  patentable  invention  appears  on  the 
face  of  the  patent,  and  the  presumptions  arising  from  the  grant  have  been 
reinforced  by  the  decision  of  a  competent  court  upholding  the  invention, 
upon  issues  duly  raised  and  fairly  litigated.  The  opinion  filed  below  rightly 
recognizes  the  interference  proceedings  and  decision  therein  by  the  Circuit 
Court  of  Appeals,  D.  C.  as  within  the  meaning  of  the  doctrine  above  stated.  — 
Scott  v.  Laas,  150  Fed.  764;  80  C.  C.  A.  500. 


§  562  INJUNCTION  497 

The  patent  was  before  this  court  in  a  prior  suit  and  held  valid.  Upon  such 
a  state  of  facts,  the  propriety  of  issuing  preliminary  injunction  is  well  settled 
in  this  circuit;  and  it  is  equally  well  settled  that  appeal  from  such  pre- 
liminary injunction  brings  up  only  the  propriety  of  the  action  of  the  circuit 
court.  The  whole  cause  is  not  to  be  re-opened.  That  is  a  matter  for  con- 
sideration when  the  new  cause  comes  to  a  final  hearing.  —  Consolidated  v. 
Diamond,  157  Fed.  677;  85  C.  C.  A.  349. 

American  v.  National,  51  Fed.  229;  Consolidated  v.  Littauer,  84  Fed.  165. 

In  the  present  case  the  right  to  a  preliminary  injunction  according  to  the 
course  and  principles  of  equity  was  made  clearly  to  appear  by  the  bill.  There 
had  been  a  conclusive  and  final  adjudication  of  complainant's  title  to  the 
patent  and  of  its  validity  by  the  Supreme  Court  of  the  United  States  after 
a  lengthy  and  spirited  contest  on  the  merits  of  the  case  (Carnegie  v.  Cambria, 
185  U.  S.  403),  and  there  was  a  clear  and  unequivocal  charge  of  infringement. 
In  such  cases  a  preliminary  injunction,  on  the  motion  of  complainants,  and 
in  the  absence  of  new  evidence  of  a  controlling  character,  is  granted  quite 
as  a  matter  of  course.  We  may  therefore  confidently  conclude  that  the  case 
made  by  the  bill  well  warranted  the  grant  of  a  preliminary  injunction,  and 
that  one  probably  would  have  been  granted,  had  a  motion  to  that  effect 
been  made.  (And  notwithstanding  the  fact  that  the  patent  would  expire 
inside  of  three  months).  —  Carnegie  v.  Colorado,  165  Fed.  195 ;    C.  C.  A. 

Electric  v.  Edison,  61  Fed.  834;   New  York  v.  Jackson,  91  Fed.  422. 

§  562.     Grounds  for  Granting  —  Sufficiency  —  General. 

The  patent  having  been  issued  fifteen  months  before  the  bill  was  filed,  and 
having  nearly  sixteen  years  to  run,  and  the  bill  alleging  that  the  public  have 
generally  acquiesced  in  the  validity  of  the  patent,  and  that  the  invention  has 
been  put  in  practice  by  the  plaintiff,  and  has  been  of  great  utility,  it  was  not 
necessary  to  show  a  recovery  at  law  to  warrant  jurisdiction  in  equity  for  an 
injunction  and  account.  —  McCoy  v.  Nelson,  121  U.  S.  484;  30  L.  Ed.  1017; 
7  S.  Ct.  1000. 

Root  v.  Railway,  105  U.  S.  189. 

Plaintiff  is  none  the  less  entitled  to  his  injunction  by  the  fact  that  defendant 
is  able  to  accomplish  the  same  result  by  another  and  different  method.  — 
DuBois  v.  Kirk,  158  U.  S.  58;  39  L.  Ed.  895;  15  S.  Ct.  729. 

The  object  and  purpose  of  a  preliminary  injunction  is  to  preserve  the 
existing  state  of  things  until  the  rights  of  the  parties  can  be  fairly  and  fully 
investigated  and  determined  upon  strictly  legal  proofs,  and  according  to  the 
course  and  principles  of  courts  of  equity.  The  prerequisites  to  the  allowance 
and  issuance  of  such  an  injunction  are  that  the  party  applying  for  the  same 
must  generally  present  a  clear  title,  or  one  free  from  reasonable  doubt,  and 
set  forth  acts  done  or  threatened  by  the  defendant,  which  will  seriously  or 
irreparably  injure  his  rights  under  such  title,  unless  restrained.  The  legal 
discretion  of  the  judge  or  court  in  acting  upon  applications  for  provisional 
injunction  is  largely  controlled  by  the  consideration  that  the  injury  to  the 
moving  party,  arising  from  a  refusal  of  the  writ,  is  certain  and  great,  while  the 
damage  to  the  party  complained  of,  by  the  issuance  of  the  injunction,  is 
slight  or  inconsiderable.  —  Blount  v.  Societe,  53  Fed.  98;   3  C.  C.  A.  455. 

Great  Western  v.  Birmingham,  2  Phil.  Ch.  602;  Glassott  v.  Lang,  3  Mylne  &  C. 
455;  Shrewsbury  v.  Railroad,  1  Sim.  (N.  S.)  410;  Georgia  v.  Braiseford,  2  Dall. 
402. 

To  warrant  a  writ  of  preliminary  injunction,  not  only  must  the  infringement 
be  without  reasonable  doubt,  but  the  rights  of  the  patentee  must  be  clear. 


498  THE    FIXED    LAW    OF    PATENTS  §  562 

Failing  prior  adjudication  in  favor  of  the  validity  of  the  patent,  there  must  be 
shown  such  continued  public  acquiescence  in  the  exclusive  right  asserted  as 
raises  a  presumption  of  validity,  a  presumption  not  arising  from  the  letters 
patent  unless  accompanied  by  public  acquiescence.  The  object  of  the  pro- 
visional remedy  is  preventive,  largely ;  and  it  will  not  be  granted  if  it  is  more 
likely  to  produce,  than  to  prevent,  possible  mischief.  —  Standard  Elevator 
Co.  v.  Crane,  56  Fed.  718;  6  C.  C.  A.  100. 

In  the  Missouri  case  the  court  held  that  "  complainants  must  show  a  clear 
right  in  support  of  a  preliminary  writ,  and  a  defense  which  puts  a  case  in 
doubt  is  sufficient  to  defeat  the  application."  This  is  the  rule  which  governs 
all  applications  where  the  patent  has  not  undergone  prior  judicial  investiga- 
tion and  been  sustained ;  but  in  cases  similar  to  the  one  before  us,  the  general 
rule  is  that  where  the  validity  of  the  patent  has  been  sustained  by  prior 
adjudication,  and  especially  after  a  long,  arduous  and  expensive  litigation, 
the  only  question  open,  on  motion  for  a  preliminary  injunction,  in  a  subse- 
quent suit,  against  another  defendant,  is  the  question  of  infringement, 
the  consideration  of  the  other  defenses  being  postponed  until  final  hearing. 
The  only  exception  to  this  general  rule  seems  to  be  where  the  new  evidence 
is  of  such  a  conclusive  character  that  if  it  had  been  introduced  in  the  former 
case,  it  would  probably  have  led  to  a  different  conclusion.  The  burden  is 
on  the  defendant  to  establish  this,  and  every  reasonable  doubt  must  be 
resolved  against  him.  —  Philadelphia  v.  Edison,  65  Fed.  551 ;   13  C.  C.  A.  40. 

Edison  v.  Beacon,  54  Fed.  678;  Barbed  Wire  Patent,  143  U.  S.  275. 

The  second  stated  objection  to  the  interlocutory  decree  is  "  that  the  patent 
has  never  been  sustained  by  a  court,  nor  sufficiently  acquiesced  in  by  the 
public."  To  this  it  is  enough  to  say  that,  until  the  defendants  began  to 
infringe,  the  plaintiff  had  no  occasion  to  apply  to  the  courts  to  protect  his 
patent,  and  that,  if  public  acquiescence  need  be  shown  to  entitle  the  owner 
of  a  valid  patent  to  a  preliminary  injunction  against  clear  infringement, 
such  acquiescence  satisfactorily  appears  here  in  the  facts  stated  in  the  opinion 
of  the  court  below.  It  is  shown,  indeed,  that  a  large  number  of  the  plaintiff's 
rings  were  not  marked  "  Patented;  "  but  a  sufficiently  large  number  of 
them  were  so  marked  to  give  general  notice  that  the  ring  was  patented.  There 
was  ample  proof  of  public  acquiescence.  —  McDowell  v.  Kurtz,  77  Fed.  206; 
23  C.  C.  A.  119. 

Whenever  it  is  manifest  to  the  court  that,  upon  the  case  made,  an  in- 
junction will  be  granted  at  final  hearing  to  the  complainant,  one  should  be 
awarded  to  him  preliminarily,  in  the  absence  of  facts  presenting  special  equit- 
able considerations  to  induce  the  court,  in  the  exercise  of  judicial  discretion,  to 
withhold  it.  Under  such  circumstances  there  is  no  reason  why  the  complain- 
ant should  not  have  his  remedy  immediately.  Why  should  a  court  of  equity 
permit  a  wrong,  indisputable  and  wanton,  to  go  unredressed  longer  than  nec- 
essary? The  object  of  a  preliminary  injunction  is  to  preserve  property 
rights  pending  the  final  determination  of  the  suit.  —  Allington  v.  Booth,  78 
Fed.  878;   24  C.  C.  A.  378. 

It  is  now  objected  that  a  preliminary  injunction  ought  not  to  be  allowed 
while  a  demurrer  is  pending.  Ordinarily,  this  is  true,  but  there  are  exceptions 
to  the  rule.  In  a  case  where,  on  examining  the  bill  and  the  demurrer,  the 
court  is  not  satisfied  that  the  demurrer  will,  on  the  argument  of  it,  be  sus- 
tained, and  where,  on  the  proofs  submitted,  allegations  of  fraud  pleaded  in 
the  bill  are  clearly  proven,  the  court  has,  within  reasonable  bounds,  a  dis- 
cretionary power  to  preserve  the  existing  status  of  affairs  by  a  preliminary 
injunction  to  prevent  the  carrying  out  of  the  fraud  until  the  demurrer  is 


§  563  INJUNCTION  499 

argued  and  disposed  of.  Any  other  rule  would  open  a  wide  door  to  the  grossest 
injustice.  Prima  facie,  the  complainant's  patents,  in  the  case  in  hand,  are 
valid,  and  since  the  demurrer  admits,  for  the  purposes  of  the  argument  of  it, 
the  fraud  pleaded  in  the  bill,  we  should  not  disturb  the  order  for  an  injunc- 
tion pendente  lite  unless  we  are  satisfied  that  there  is  reasonable  doubt  as  to 
the  sufficiency  of  the  bill  in  other  respects  than  in  the  "  formal  defects  " 
found  by  the  court  below,  or  unless,  on  an  independent  examination  of  the 
facts,  we  are  satisfied  no  fraud  has  been  shown. —  Chester  v.  Tindel-Morris, 
165  Fed.  899 ;  C.  C.  A. 

The  only  specific  objections  to  the  bill  are  that  it  fails  to  allege  (1)  that  the 
subject-matter  of  the  patent  was  not  abandoned,  (2)  that  its  subject-matter 
was  not  patented  in  any  foreign  country  more  than  two  years  prior  to  the 
application,  and  (3)  that  its  subject-matter  was  not  patented  in  any  foreign 
country  more  than  seven  months  (in  the  case  of  one  of  the  patents)  or  more 
than  twelve  months  (in  the  case  of  the  other  two)  before  the  application  in 
this  country  was  filed.  These  were  the  "  formal  defects  "  which  were  cured 
by  amendments,  and  we  think  that,  in  view  of  the  fraud  which  seems  on  the 
present  ex  parte  proofs  to  be  established,  those  defects  were  properly  re- 
garded as  not  sufficient  to  defeat  the  application  for  a  preliminary  injunction. 
—  Chester  v.  Tindel-Morris,  165  Fed.  899;  C.  C.  A. 

That  where  the  bill  shows  distinct,  palpable  fraud  on  the  part  of  the  de- 
fendant and  the  showing  is  not  successfully  controverted  by  the  proofs, 
even  if  the  patent  has  not  been  adjudicated,  an  injunction  should  issue,  see 
Chester  v.  Tindel-Morris,  165  Fed.  899;  C.  C.  A. 

§  563.     Grounds  for  Refusing  —  Acquiescence  not  Established. 

The  extent  of  the  sale  of  a  patented  invention  might  characterize  the 
degree  of  public  acquiescence.  The  mere  manufacture  and  placing  upon 
the  market  for  sale  does  not  indicate  acquiescence  by  the  public.  —  Ertel  v. 
Stahl,  65  Fed.  519;  13  C.  C.  A.  31. 

That  while  a  prior  litigation  which  has  been  determined  has  force  and 
effect  on  a  motion  for  a  preliminary  injunction,  it  would  appear  that  the 
recital  in  a  bill  of  numerous  pending  suits  is  without  effect  as  establishing 
acquiescence,  see  Wilson  v.  Consolidated,  88  Fed.  286;  31  C.  C.  A.  533. 

Three  other  patents,  covering  details  of  construction,  are  held  by  the  com- 
plainant, —  a  circumstance  which  may  have  a  bearing  on  the  alleged  ac- 
quiescence by  the  public,  the  taking  out  of  licenses,  etc.,  since  it  may  be  that 
some  one  or  more  of  the  other  patents  was  the  inducing  cause  to  acceptance 
of  license.  —  Aquarama  v.  Old  Mill,  115  Fed.  806;  53  C.  C.  A.  376. 

We  apprehend  that  the  Circuit  Court  fell  into  error  in  relying  upon  ac- 
quiescence of  the  public  in  the  validity  of  the  patent  in  suit  as  the  ground 
on  which  to  grant  an  injunction.  In  as  much  as  the  complainant  owned  and 
used  the  Wright  patent,  it  would  seem  that  acquiescence  may  have  been  in 
deference  to  it  rather  than  the  patent  in  suit.  The  Wright  patent  had 
stronger  claims  for  recognition  than  the  other,  and  we  think  it  very  unsafe 
to  rely  upon  public  acquiescence  shown  by  this  record.  It  should  be  added 
that  public  acquiescence,  though  sometimes,  in  doubtful  cases,  a  matter  of 
consideration,  is  not  available  to  maintain  a  patent  palpably  void.  —  Ameri- 
can v.  Wyeth,  139  Fed.  389;  71  C.  C.  A.  485. 

The  Union  Co.  and  the  Hall  Co.  were  rivals  in  business,  the  former  ad- 
vocating and  installing  the  so-called  normal  safety  system  and  the  latter 


500  THE    FIXED    LAW    OF   PATENTS  §  564 

the  normal  danger  system.  Every  consideration,  not  only  of  honesty  in 
competition  but  of  self  interest  also,  would  induce  the  Union  Co.  to  expedite 
its  own  system,  which  it  thoroughly  understood  and  in  the  efficiency  of  which 
it  had  implicit  confidence.  To  assert  that  its  course,  which  was  the  natural 
one  for  honorable  men  to  adopt,  was  due  solely  to  the  Wilson  (Hall  Co.'s) 
patents,  is,  we  think,  carrying  the  doctrine  of  acquiescence  beyond  the  limits 
set  by  former  adjudications.  —  Hall  v.  General,  153  Fed.  907 ;  82  C.  C.  A.  653. 

The  railroads  are  the  complainant's  only  customers  and  for  many  years 
the  Hall  Co.'s  only  competitor  was  the  Union  Co.  In  a  technical  sense, 
therefore,  there  was  no  public  acquiescence.  It  is  not  the  case  of  a  patented 
device  going  into  long  continued  general  use  in  circumstances  which  compel 
the  conviction  that  infringements  would  have  occurred  were  it  not  for  a 
settled  conviction  on  the  part  of  those  who  might  profit  by  infringing  that 
the  patent  is  valid.  —  Hall  v.  General,  153  Fed.  907;  82  C.  C.  A.  653. 

§  564.     Grounds  for  Refusing  —  Conflicting  Proofs. 

Assuming,  for  the  purpose  of  a  preliminary  injunction,  that  the  patent  is 
valid,  as  the  court  rightfully  did  (Elec.  Mfg.  Co.  v.  Edison,  61  Fed.  834) 
it  still  remained  that,  to  warrant  a  preliminary  injunction,  the  fact  of  in- 
fringement should  be  made  out  beyond  reasonable  doubt  (Standard  Elev.  Co. 
v.  Crane,  56  Fed.  718).  There  is  here  so  much  of  doubt  with  respect  to  the 
proper  construction  of  the  claims  of  the  patent  and  of  their  infringement 
that  it  is  needful  to  have  an  investigation  into  the  prior  art  to  determine 
the  exact  limitation  of  the  claims,  and  to  have  "  the  search-light  of  an  in- 
telligent cross-examination  "  to  determine  conclusively  the  fact  of  infringe- 
ment. —  Menasha  v.  Dodge,  85  Fed.  971 ;  29  C.  C.  A.  508. 

While  the  remedy  is  a  valuable  one,  it  is  also  a  dangerous  one ;  and  when 
applied  improvidently  may  work  irreparable  mischief.  It  should  never  be 
applied  when  the  complainant's  case  is  doubtful,  —  except  indeed  where 
the  object  is  merely  to  preserve  the  status  quo,  —  as  when  alleged  rights  are 
menaced.  —  Whippany  v.  United,  87  Fed.  215;  30  C.  C.  A.  615. 

Brush  v.  Electric,  64  Fed.  775;  Machine  Co.  v.  Adams,  Fed.  Cas.  752;  Standard 
v.  Crane,  56  Fed.  718. 

No  description  of  evidence  is  so  unreliable  as  ex  parte  affidavits,  and  dis- 
puted questions  can  never  be  safely  decided  upon  it.  —  Whippany  v.  United, 
87  Fed.  215;  30  C.  C.  A.  615. 

That  where  the  ex  parte  proofs  are  at  absolute  variance;  that  where  a 
license  which  would  estop  the  defendant  is  averred  by  complainant  and  flatly 
contradicted  by  the  defendant;  that  where  such  license  is  produced,  but 
is  unsigned  by  any  of  the  parties;  and  where  every  allegation  is  met  with 
absolute  contradiction,  the  court  should  refuse  a  preliminary  injunction,  see 
Aquarama  v.  Old  Mill,  115  Fed.  806;  53  C.  C.  A.  376. 

The  preliminary  proofs  relating  thereto  are  very  conflicting.  The  defend- 
ant is  a  mere  user.  No  irreparable  injury,  or,  indeed,  any  special  injury, 
to  the  complainant  from  the  defendant's  use  is  alleged  or  'shown.  Under 
the  circumstances,  then,  we  think  the  court  should  have  forborne  to  act 
until  full  proofs  were  before  it.  —  Jefferson  v.  Westinghouse,  134  Fed.  392 ; 
67  C.  C.  A.  189. 

This  is  a  question  of  too  much  difficulty  to  be  decided  upon  the  ex  parte 
opinions  of  experts.     The  depositions  deal  with  an  abstruse  and  recondite 


§§565-567  INJUNCTION  501 

subject,  and  present  conflicting  theories,  which  cannot  safely  be  accepted 
without  the  searching  elucidation  which  a  cross-examination  of  the  experts 
may  afford.  The  experts  are  in  flat  contradiction  upon  the  question  of  in- 
fringement, and,  in  view  of  the  large  importance  of  the  controversy,  the  rights 
of  the  parties  should  be  reserved  for  decision  until  final  hearing.  —  Westing- 
house  v.  Montgomery,  139  Fed.  868;  71  C.  C.  A.  582. 

The  circuit  judge  in  granting  the  injunction  inserted  the  following:  "  noth- 
ing in  this  injunctions]  order  shall  prevent,  or  is  intended  to  prevent  or 
enjoin,  the  defendant  from  handling,  using  or  selling  rubber  tires  and  rims 
covered  by  the  Grant  patent,  manufactured  by  the  Goodyear  Tire  &  Rubber 
Company,  having  a  right  to  manufacture,  use,  and  sell  such  tires  under  a 
judicial  decree  in  a  litigation  in  the  federal  courts  in  the  district  of  Indiana, 
heretofore  pending  between  the  complainants  and  such  parties,  wherein 
it  has  been  judicially  determined  that  said  Grant  patent  is  invalid  and  void." 

Held:  It  would  seem  that  the  rights  of  all  can  be  best  preserved  by  affirm- 
ing the  order,  at  the  same  time  directing  the  circuit  court  (upon  the  filing 
of  a  new  bond  or  the  extension  of  an  old  one)  to  suspend  the  operation  of  the 
injunction  until  final  disposition  of  the  cause.  The  record  at  final  hearing 
will  be  so  comprehensive  as  to  present  every  question,  and  when  it  reaches 
this  court  upon  appeal  a  review  of  them  can  be  secured  by  the  Supreme  Court 
either  by  a  certification  or  certiorari.  —  Consolidated  v.  Diamond,  157  Fed. 
677;  85  C.  C.  A.  349. 

Note:  The  decision  of  the  Supreme  Court  upon  the  certification  of  this 
case  to  it,  should  be  watched  for  a  further  determination  and  modification 
of  the  rule  laid  down  in  Kessler  v.  Eldred. 

§  565.     Grounds  for  Refusing  —  Damages  Adequate  Relief. 

It  would  be  most  unwise  to  imperil,  and  presumably  wholly  to  ruin,  the 
large  capital  and  interests  involved  in  the  business  of  the  appellants,  by 
arresting  the  enterprise  in  advance  of  a  final  decree,  when  the  damages  which 
the  appellee  may  sustain  can  be  compensated  in  money.  —  Standard  Elevator 
Co.  v.  Crane,  56  Fed.  718;  6  C.  C.  A.  100. 

It  is  by  no  means  the  duty  of  a  court  of  equity  to  cause  an  infringer,  who 
is  a  user,  to  suffer  a  pecuniary  calamity,  which  ruins  him,  and  is  far  out  of 
proportion  to  the  benefit  which  the  owner  of  the  patent  would  otherwise 
be  entitled  to  receive.  —  Edison  v.  Mt.  Morris,  58  Fed.  572;  7  C.  C.  A.  375. 

§  566.     Grounds  for  Refusing  —  Infringement  not  Clear. 

The  injunction  in  this  case  ought  not  to  have  been  granted,  unless,  on 
the  facts  proven,  the  respondent  had  clearly  taken  the  complainant's  device. 
The  rule  is  thus  applied  to  cover  the  issue  of  infringement  as  well  as  that  of 
the  validity  of  the  patent.  —  Hatch  v.  Electric,  100  Fed.  975;  41  C.  C.  A.  133. 

Blakey  v.  Mfg.  Co.  95  Fed.  136;   Walk.  Pat.  sec.  676;    Rob.  Pat.  sec.  1173. 

It  is  quite  manifest  that  there  is  presented  a  substantial  question  as  to 
infringement,  which  can  be  settled  only  upon  construction  of  the  patents, 
and  that  requires  a  presentation  of  the  state  of  the  art  and  a  history  of  the 
invention  in  the  Patent  Office.  The  case  would  seem  to  be  one  in  which  pre- 
liminary injunction  should  not  be  granted  without  proof  of  prior  adjudi- 
cation. —  Reed  v.  Smith,  107  Fed.  719;  46  C.  C.  A.  601. 

§  567.     Grounds  for  Refusing  —  Insufficiency  —  General. 

In  Standard  v.  Crane,  56  Fed.  718,  we  declared  the  principles  which 
should  govern  in  granting  injunctions  in  patent  cases  pendente  lite.    We  are 


502  THE    FIXED    LAW    OF    PATENTS  §  567 

satisfied  that  this  case  falls  within  the  principles  therein  asserted.  We  do 
not  deem  it  proper  here  and  now  to  say  more  than  this;  that  the  fact  of 
infringement  is  not  clear  from  doubt.  The  issuance  of  the  patent  for  the 
device  of  the  appellant  raises  a  certain  presumption  that  it  does  not  infringe 
the  prior  patent  of  the  appellee.  That  presumption  has  not,  for  the  purpose 
of  an  injunction  before  decree,  been  overcome  to  such  extent  that  we  can 
say  the  fact  of  infringement  is  not  doubtful.  There  has  been  no  adjudication 
sustaining  the  validity  of  the  patent  in  suit.  The  public  acquiescence  as- 
serted we  regard  of  doubtful  character;  as  referred  to  the  particular  device 
alleged  to  be  here  infringed,  neither  clearly  stated  nor  well  sustained  by 
proof.  If,  however,  the  fact  were  otherwise  respecting  the  question  of  public 
acquiescence,  and  the  validity  of  the  patent  may  be  said  to  be  conclusively 
established,  we  shall  regard  the  question  of  infringement  to  rest  in  such 
doubt  that,  within  the  principles  governing  the  granting  of  preliminary  in- 
junctions, we  think  the  restraining  order  here  ought  not  to  have  issued. 
The  pecuniary  ability  of  the  appellant  to  respond  in  damages,  if  they  shall 
ultimately  be  adjudged  infringers,  is  not  impugned.  —  Ertel  v.  Stahl,  65 
Fed.  517;  13  C.  C.  A.  29. 

There  is  a  prayer  for  an  injunction  presented  in  the  bill  before  us.  It  is 
important,  however,  to  determine  whether  there  are  sufficient  facts  pre- 
sented in  the  bill  to  warrant  the  court  in  granting  this  prayer.  There  are 
no  allegations  showing  that  the  patent  rights  of  appellants  have  been  long 
recognized  by  the  public;  no  allegations  showing  that  its  validity  had  ever 
been  determined  in  an  action  at  law.  There  are  no  allegations  showing 
grounds  for  a  discovery.  In  fact,  it  does  not  appear  but  that  every  important 
question  presented  in  the  bill  could  be  tried  as  well  at  law  as  in  equity.  In 
the  case  of  GuttaPerchat\  Goodyear,  3  Saw.  542,  Judge  Sawyer  thus  presents 
this  matter,  in  considering  the  bill  in  that  case:  "There  is  no  allegation 
that  the  matter  has  ever  been  litigated  before  and  decided  in  favor  of  com- 
plainant, and  no  allegation  in  the  bill  that  the  right  of  complainant  has  been 
submitted  to  or  recognized  by  the  public.  The  bill,  as  an  injunction  bill, 
is  defective  in  this  particular."  In  the  case  of  Hockholzer  v.  Eager,  2  Saw. 
361,  the  court,  while  acknowledging  that  it  is  not  always  necessary  that 
the  bill  for  an  injunction  should  show  that  there  had  been  a  trial  at  law, 
testing  the  rights  of  the  patentee,  and  the  validity  of  his  patent,  said:  "  Some- 
thing more  than  a  grant  of  letters  patent  must  be  shown,  —  something  which, 
in  the  absence  of  a  trial  at  law,  may  take  its  place  in  establishing  the  validity 
of  the  patent."  We  think  the  view  taken  in  these  cases  is  in  accordance 
with  the  general  view  entertained  in  courts  of  equity  in  regard  to  bills  in 
equity,  in  patent  causes,  asking  for  an  injunction.  —  Walk.  Pat.  660;  Story 
Eq.  Jur.  934.  —  Germain  v.  Wilgus,  67  Fed.  597;  14  C.  C.  A.  561. 

Note:   Doubtful  holding. 

The  motion  for  an  injunction  was  heard  within  eight  days  after  the  filing 
of  the  bill,  before  any  answer  could  properly  be  required,  and  before  answer 
filed.  The  validity  of  the  patent,  as  well  as  the  attack  upon  it,  rests  wholly 
upon  ex  parte  testimony,  which,  we  observed  in  Standard  v.  Crane,  56  Fed. 
718,  to  be  not  wholly  reliable.  We  are  not  satisfied  that  the  attack  upon  the 
patent  is  pretentious  merely,  or  that  it  is  offered  or  tendered  in  bad  faith. 
It  may  fail  to  be  sustained,  but  it  is  not  manifestly  without  foundation,  and 
so  ineffective  to  secure  the  appellee  an  opportunity  to  present  his  defense 
according  to  the  usual  procedure  in  like  cases.  This  patent  has  never  passed 
judicial  scrutiny.  It  was  but  recently  issued,  some  four  months  prior  to  the 
hearing  upon  the  motion  for  injunction.  If  public  acquiescence  could  be 
inferred,  under  any  circumstances,  within  that  brief  period,  it  certainly 
does  not  exist  in  this  case,  for  there  are  at  least  three  different  infringements 


§  567  INJUNCTION  503 

complained  of,  and  acquiescence  is  shown  by  one  party  only.  —  Williams  v. 
Breitling,  77  Fed.  285;  23  C.  C.  A.  171. 
Ertel  v.  Stahl,  65  Fed.  519. 

The  implication  here  that  a  temporary  injunction  may  be  the  sole  object 
of  a  bill  is  not  true.  Such  relief  is  granted  only  as  incidental  and  auxiliary 
to  the  final  relief  prayed,  which,  of  course,  may  be  only  an  injunction.  The 
appellee  therefore,  has  no  right  to  rest  upon  the  preliminary  order  and  the 
decree  pro  confesso.  —  Antisdel  v.  Chicago,  89  Fed.  308;  32  C.  C.  A.  216. 

A  preliminary  injunction  should  never  be  awarded  where  the  right  is 
doubtful,  or  the  wrong  uncertain,  and  that  the  infringement  here  charged 
has  not  been  established.  —  Blakey  v.  National,  95  Fed.  136;  37  C.  C.  A.  27. 

American  v.  Elizabeth,  4  Fish.  Pat.  Cas.  189;  Consolidated  v.  Accumulator,  55 
Fed.  485;  Van  Camp  v.  Cruikshanks,  90  Fed.  814;  Williams  v.  McNeely,  56  Fed. 
265. 

The  patent  sued  upon  is  a  very  recent  one,  and  there  is  no  such  proof 
of  long  continued  acquiescence  by  the  public  as  would  raise  a  prima  facie 
case  in  the  patentee's  favor.  Under  such  circumstances,  it  is  the  practice 
in  this  court  to  refuse  preliminary  injunction  when  there  has  been  no  adjudica- 
tion sustaining  the  patents,  if  there  appears  to  be  any  fair  question  as  to  the 
invention,  anticipation,  construction,  or  infringement.  —  Reed  v.  Smith, 
107  Fed.  719;  46  C.  C.  A.  601. 

Dickerson  v.  Machine,  35  Fed.  143. 

The  patents  have  never  been  litigated,  and  there  is  no  proof  of  public 
acquiescence.  The  affidavits  and  exhibits  raise  such  a  serious  question  as 
to  infringement  that,  under  the  rule  already  stated,  we  think  the  application 
for  a  preliminary  injunction  should  have  been  refused.  —  Newhall  v.  McCabe, 
125  Fed.  919;  60  C.  C.  A.  629. 

The  bill  was  filed  within  one  year  after  the  issuance  of  the  patents  in 
suit,  they  have  never  been  litigated,  and  there  is  no  proof  of  public  acqui- 
escence. Injunction  refused.  —  Newhall  v.  McCabe,  125  Fed.  919;  60 
C.  C.  A.  629. 

First.  The  five  patents  in  suit  relate  to  a  difficult,  complex  and  abstruse 
subject.  Because  of  its  complicated  character,  the  court  should  have  the 
benefit  of  the  opinions  of  those  skilled  in  the  art  tested  and  clarified  by 
cross-examination. 

Second.    The  patents  have  never  been  adjudicated  or  judicially  construed. 

Third.  The  defendants  assert  that  the  patents  are  invalid  for  lack  of 
novelty  and  invention  and  that  the  claims  of  three  of  the  patents  are  not 
infringed. 

Fourth.  We  think  the  complainants  have  failed  to  prove  a  case  of  ac- 
quiescence.   There  has  been  no  long  continued  public  acquiescence. 

Fifth.  We  are  not  convinced  that  the  complainants  will  suffer  irreparable 
damage.    That  the  defendants  are  amply  responsible  is  conceded. 

Sixth.  We  think  the  record  presents  too  many  elements  of  doubt  to 
warrant  the  issuing  of  a  preliminary  injunction.  —  Hall  v.  General,  153  Fed. 
907;  82  C.  C.  A.  653. 

The  patent  is  a  very  recent  one  —  issued  only  a  few  weeks  before  the 
motion  is  made.  It  had  never  been  adjudicated.  The  decision  in  inter- 
ference was  not  the  equivalent  of  adjudication  as  to  patentability  and  in- 
fringement;  and  sufficient  time  has  not  elapsed  to  present  proof  of  general 


504  THE    FIXED    LAW    OF    PATENTS  §§  568-569 

acquiescence.  Validity  and  infringement  are  vigorously  disputed,  and  we 
think  both  questions  should  be  left  for  determination  at  final  hearing.  — 
Hildreth  v.  Norton,  159  Fed.  428;  86  C.  C.  A.  408. 

Hall  v.  General,  153  Fed.  907;   Newhall  v.  McCabe,  125  Fed.  919. 

§  568.     Grounds  for  Refusing  —  Laches. 

When  there  was  a  delay  of  seventeen  years  nearly  and  no  explanation 
was  made,  such  laches  would  disentitle  complainant  to  a  preliminary  in- 
junction. —  Keyes  v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;  15  S.  Ct.  772. 

McLaughlin  v.  Peoples,  21  Fed.  574;  American  v.  Chicago,  41  Fed.  522;  Keyes 
v  Pueblo,  31  Fed.  560;  Root  v.  Railway,  105  U.  S.  189;  Clark  v.  Wooster,  119 
U.  S.  322;  Lane  v.  Locke,  150  U.  S.  193. 

It  has  never  been  held  that  mere  laches,  unaccompanied  by  circumstances 
which  amount  to  an  equitable  estoppel,  shut  out  a  party  from  all  relief 
in  a  court  of  equity.  Knowledge  of  and  long  continued  acquiescence  by  a 
complainant  in  an  infringement  may,  in  special  cases,  be  fatal  on  a  motion  for 
preliminary  injunction,  but  will  not,  on  a  final  hearing,  prevent  the  court 
from  granting  such  relief  as  may  be  just  and  equitable.  This  is  the  general 
rule  which  is  recognized  in  the  authorities.  —  Taylor  v.  Sawyer,  75  Fed. 
301 ;  22  C.  C.  A.  203. 

Kittle  v.  Hall,  29  Fed.  508;  McLean  v.  Fleming,  96  U.  S.  245;  Menendez  v. 
Holt,  128  U.  S.  514;  Price  v.  Steel,  46  Fed.  107;  N.  Y.  v.  Buffalo,  18  Fed.  638; 
Gilmore  v.  Anderson,  38  Fed.  846;   Brush  v.  Electric,  45  Fed.  241. 

One  who,  with  full  knowledge  of  a  patentee's  claim  of  infringement,  and 
against  his  protest,  continues  to  trespass,  cannot,  on  the  ground  of  the 
estoppel  or  laches  of  the  patentee,  successfully  defend  a  suit  for  infringement 
brought,  or  a  motion  for  a  preliminary  injunction  made  within  a  reasonable 
time.  Repeated  wilful  trespasses  establish  no  right  to  their  continuance. 
And  mere  delay  by  a  patentee  to  bring  his  suit  or  to  apply  for  his  preliminary 
injunction  for  any  reasonable  length  of  time  after  an  infringer  is  informed 
of  his  trespass,  unaccompanied  with  such  acts  of  the  patentee  and  such  facts 
and  circumstances  as  amount  to  an  equitable  estoppel,  will  not  deprive 
him  either  on  the  ground  of  laches  or  estoppel,  of  his  right  to  a  temporary 
injunction  or  to  a  recovery.  Moreover,  delay  in  prosecuting  other  infringers 
during  the  time  while  the  validity  of  the  patent  is  in  litigation  does  not 
constitute  laches.  —  Stearns-Roger  v.  Brown,  114  Fed.  939;  52  C.  C.  A.  559. 

American  v.  Southern,  34  Fed.  795;  Edison  v.  Sawyer,  53  Fed.  592;  Green  v. 
Barney,  19  Fed.  420;  Norton  v.  Can  Co.  57  Fed.  929.  , 

Defendant  did  not  put  its  tool  on  the  market  until  in  the  spring  or  summer 
of  1899.  Within  a  month  or  so  thereafter  complainants  began  litigation 
with  infringers,  and  has  continued  to  litigate  ever  since.  They  were  under 
no  obligation  to  sue  everyone  at  the  same  time.  —  Timolat  v.  Franklin, 
122  Fed.  69;  58  C.  C.  A.  405. 

American  v.  National,  90  Fed.  824;   Edison  v.  Mt.  Morris,  57  Fed.  644. 

§  569.     Grounds  for  Refusing  —  License. 

The  defendant  set  up  as  its  main  plea,  a  license.  While  there  was  some 
question  as  to  whether  certain  modifications  and  conditions  of  the  license 
contract  might,  on  final  adjudication,  be  held  not  to  excuse  the  acts  com- 
plained of,  the  court  held  that  the  fact  of  such  license,  creating  a  serious  doubt 
as  to  the  right  of  complainant  to  recover,  should  bar  the  granting  of  a  pre- 
liminary injunction.  —  American  v.  Talking  Machine,  98  Fed.  729;  39 
C.  C.  A.  245. 


§§  570-571  INJUNCTION  505 

That  an  injunction  will  not  lie  against  a  vendee  who  obtains  a  license 
upon  notice  of  infringement;  but  that  such  licensing  does  not  excuse  the 
vendor,  see  Johnson  v.  Foos,  141  Fed.  73;  72  C.  C.  A.  105. 


§  570.     Grounds     for    Refusing  —  Prior    Adjudication    Insuffi- 
cient. 

In  the  absence  of  prior  adjudication  or  public  acquiescence,  a  preliminary 
injunction  should  not  be  granted  unless  the  rights  of  the  patentee  be  clear 
and  the  infringement  without  reasonable  doubt.  —  Electric  v.  Edison,  61 
Fed.  834;  10  C.  C.  A.  106. 

Standard  v.  Crane,  56  Fed.  718. 

That  where  an  injunction  has  been  granted  following  the  decision  of  the 
circuit  court  in  another  circuit,  and  thereafter  the  circuit  court  of  appeals  has 
reversed  the  decision  followed,  even  if  the  reversal  was  not  on  the  merits, 
it  is  sufficient  to  warrant  the  vacating  of  the  injunction,  see  Prieth  v.  Camp- 
bell, 80  Fed.  539;  35  C.  C.  A.  624. 

Note:  This  seems  to  me  an  extreme  rule,  if  it  is  to  be  taken  as  a  general 
rule ;  because  it  is  perfectly  evident  that  a  case  might  be  reversed  on  grounds 
wholly  unconnected  with  the  question  of  merit  and  thus  deprive  the  in- 
ventor of  an  adjudication  of  great  value. 

Upon  an  application  for  preliminary  injunction,  it  would  be  a  most  ex- 
ceptional case  which  would  warrant  the  court  in  expanding  the  claim  beyond 
the  limits  fixed  in  an  exhaustive  opinion  at  final  hearing.  —  Dodge  v.  Fulton, 
92  Fed.  995;  35  C.  C.  A.  140. 

That  even  where  a  claim  has  been  previously  adjudicated,  if  its  construction 
with  reference  to  the  infringement  complained  of  is  in  doubt,  the  injunction 
should  be  refused,  see  Sprague  v.  Nassau,  95  Fed.  821 ;  37  C.  C.  A.  286. 

That  where  a  prior  adjudication  is  set  up  as  grounds  for  preliminary 
injunction  and  there  are  facts  involved  in  the  issue  other  than  those  deter- 
mined by  the  prior  adjudication,  such  facts  must  be  clearly  shown,  see 
Hatch  v.  Electric,  100  Fed.  975;  41  C.  C.  A.  133. 

Complainant  relies  upon  a  decision  of  the  Patent  Office  in  an  interference 
proceeding,  in  which  eight  different  applicants  were  involved,  of  whom  only 
Shaw  and  Asher  took  testimony.  That  decision,  however,  only  settled  the 
question  of  priority  as  between  Shaw  and  Asher,  and  is  not  such  an  adjudi- 
cation as  the  practice  calls  for,  where  there  is  substantial  question  as  to 
construction  and  infringement.  —  Reed  v.  Smith,  107  Fed.  719;  46  C.  C.  A. 
601. 

Dickerson  v.  Machine  Co.  35  Fed.  143;  Ironclad  v.  Vollrath,  52  Fed.  142; 
Rogers  v.  Mergenthaler,  58  Fed.  693. 


§571.     Grounds  for  Refusing  —  Title  in  Doubt. 

It  is  sufficient  to  say,  therefore,  without  passing  on  any  of  these  questions, 
that  the  uncertainty  as  to  said  agreements,  and  the  contradictory  character 
of  the  affidavits,  leave  the  question  of  license  in  such  serious  doubt  that  we 
think  no  injunction  should  issue  except  after  an  opportunity  has  been  given 
to  resolve  said  doubt  upon  final  hearing.  —  Armat  v.  Edison,  125  Fed.  939; 
60  C.  C.  A.  380. 


506  THE    FIXED    LAW    OF    PATENTS  §§  572-573 

It  is  a  fundamental  principle  that  injunctions  ought  not  to  issue  unless 
the  right  alleged  to  be  invaded  or  threatened  is  clear.  —  St.  Louis  v.  Sanitary, 
161  Fed.  725;  86  C.  C.  A.  585. 

Truly  v.  Wanzer,  5  How.  141. 

§  572.     Grounds  for  Refusing  —  Validity  Contested. 

The  validity  of  the  patent  is  strongly  assailed ;  its  infringement  is  vigor- 
ously denied.  We  think  it  clearly  within  the  ruling  of  Standard  v.  Crane, 
56  Fed.  718  and  Ertel  v.  Stahl  (herewith  decided),  65  Fed.  517.  —  Ertel  v. 
Stahl,  65  Fed.  519;  13  C.  C.  A.  31. 

Where  the  validity  of  the  patent  and  the  infringement  are  denied,  and 
defendant  sets  up  valid  defenses,  there  should  be  strong  proof  of  acquiescence 
to  warrant  the  issuing  of  an  injunction.  —  American  v.  Phoenix,  113  Fed.  629 ; 
51  C.  C.  A.  339. 

Smith  v.  Britannia,  92  Fed.  1003;  Fastener  v.  Fastener,  94  Fed.  523. 

§  573-     Modification. 

Many  users  of  electric  plants  had  put  in  their  plants  prior  to  the  adjudi- 
cation of  the  Edison  patent,  and  when  it  was  confidently  believed  it  was 
invalid.  On  proper  presentation  of  their  case  and  their  willingness  to  pur- 
chase the  Edison  lamps  the  court  would  modify  the  injunction  as  to  them, 
to  enable  them  to  continue  in  business.  —  Edison  Electric  v.  Sawyer-Man. 
53  Fed.  592;  3  C.  C.  A.  605. 

Note:  It  seems  to  me  this  holding  is  most  questionable.  The  remedy 
for  the  hardship  lay  farther  back.  So  long  as  the  damage  clearly  was  not 
irreparable,  the  relief  under  a  reasonable  bond  would  have  been  not  only 
proper  but  a  better  tempering  of  the  case  to  equity  than  the  manufacture  of 
a.  quasi  excuse  on  the  ground  that  these  innocent  persons  did  not  respect 
the  prima  facie  of  the  patent  which  the  law  gives  it.  Almost  as  well  might 
the  court  say,  "  the  patent  means  nothing  until  we  have  passed  upon  it; 
and  if  we  have  to  uphold  it,  we  will  temper  our  judgment  to  him  who  has 
relied  upon  our  theory." 

The  defendants,  in  desiring  to  obtain  an  unlimited  future  capacity  of 
ownership  of  the  patented  lamps,  for  the  purpose  of  extending  their  competi- 
tive power,  are  asking  too  much.  We  perceive  no  controlling  equity  which 
cause  us  to  compel  the  Illuminating  Company,  which  owns  an  equitable 
title  to  the  lamp  patent,  to  sell  lamps  to  a  competitor  for  the  purpose 
of  enabling  it  to  utilize  the  unused  portion  of  its  plant,  and  extend  its 
business  into  unoccupied  territory,  and  thus  permit  it  to  deprive  the 
owner  of  all  the  material  benefit  of  the  patent  during  the  comparatively 
brief  residue  of  its  life.  —  Edison  v.  Mt.  Morris,  58  Fed.  572;  7  C.  C.  A.  375. 

The  affirmance  in  this  court  of  a  preliminary  order  or  an  interlocutory 
decree  granting  an  injunction  does  not  operate  to  deprive  the  circuit  court 
of  the  power,  inherent  in  it,  temporarily  to  suspend  such  injunction,  upon 
sufficient  cause  shown,  after  proper  notice,  whenever  the  ends  of  justice  call 
for  the  exercise  of  such  power.  —  Edison  v.  U.  S.  59  Fed.  501 ;  8  C.  C.  A.  200. 

It  is  thus  manifest  that  the  defendant  is  enjoined  from  making  the  tubes 
for  any  purpose  whatever,  and  that  the  repair  of  a  single  tube  is  within  the 
prohibition  of  the  injunction.  In  this  respect  we  think  the  decree  is  too 
broad  and  sweeping.  The  theory  of  the  rule  invoked  by  the  complainant 
is  that  the  patentee  of  a  combination  cannot  be  deprived  of  his  gains  and 
profits  by  the  conversion  of  an  old  and  defunct  machine  under  the  guise 


§  574  INJUNCTION  507 

of  repairs.  If  anew  machine  be  needed  the  patentee  is  entitled  to  furnish  it, 
but  on  the  other  hand,  the  purchaser  of  a  patented  machine  is  entitled  to 
make  necessary  repairs  and  to  replace  worn  out  parts,  not  separately  pa- 
tented, so  long  as  the  identity  of  the  licensed  machine  is  not  destroyed. 
If  this  be  lawful  for  the  owner,  it  is  equally  so  for  the  mechanic  who  is  em- 
ployed to  do  the  work ;  the  latter  cannot  be  held  as  an  infringer  for  making 
repairs  which  the  former  has  an  undoubted  right  to  make.  —  Morrin  v. 
White,  143  Fed.  519;   74  C.  C.  A.  466. 

That  an  injunction  is  properly  limited  according  to  the  specific  terms  of 
Kessler  v.  Eldred,  206  U.  S.  285 ;  but  that  it  must  not  be  extended  to  defeat 
the  rights  of  patentees,  see  Consolidated  v.  Diamond,  162  Fed.  892;  89  C. 
C.  A. 582. 

§  574.     Non-User. 

The  facts  were  that  complainant  owned  and  held  the  patent  in  suit,  but 
did  not  use  it,  apparently  because,  from  manufacturing  reasons  it  was  de- 
sirable to  use  other  apparatus  already  in  use.  It  was  contended  by  defendant 
that  such  nonuser,  under  the  broad  and  general  provision  of  the  constitution, 
prevented  the  complainant  from  invoking  equitable  relief,  and  that  whatever 
relief  it  had  was  by  action  at  law.  Held:  but  granting  all  this,  it  is  certainly 
disputable  that  the  nonuse  was  unreasonable,  or  that  the  rights  of  the  public 
were  involved.  There  was  no  question  of  a  diminished  supply  or  of  increase 
of  prices  and  can  it  be  said,  as  a  matter  of  law,  that  a  nonuse  was  unreason- 
able which  had  for  its  motive  the  saving  of  the  expense  that  would  have  been 
involved  by  changing  the  equipment  of  a  factory  from  one  set  of  machines 
to  another?  And  even  if  the  old  machines  could  have  been  altered,  the  ex- 
pense would  have  been  considerable.  As  to  the  suggestion  that  competitors 
were  excluded  from  the  use  of  the  new  patent,  we  answer  that  such  exclusion 
may  be  said  to  have  been  of  the  very  essence  of  the  right  conferred  by  the  pat- 
ent, as  it  is  the  privilege  of  any  owner  of  property  to  use  or  not  use  it,  with- 
out question  of  motive.  We  have  seen  that  it  has  been  the  judgment  of 
Congress  from  the  beginning  that  the  sciences  and  useful  arts  could  be  best 
advanced  by  giving  an  exclusive  right  to  an  inventor.  It  is  manifest,  as 
is  said  in  Walker  on  Patents,  sec.  106,  that  Congress  has  not  "  overlooked 
the  subject  of  nonuser  of  patented  inventions."  And  another  fact  may  be 
mentioned.  In  some  foreign  countries  the  right  granted  to  an  inventor 
is  affected  by  nonuse.  This  jDolicy,  we  must  assume,  Congress  has  not  been 
ignorant  of  nor  of  its  effects.  It  has,  nevertheless,  selected  another  policy; 
it  has  continued  that  policy  through  many  years.  We  may  assume  that 
experience  has  demonstrated  its  wisdom  and  beneficial  effect  upon  the  arts 
and  sciences.  From  the  character  of  the  right  of  the  patentee  we  may  judge 
of  his  remedies.  It  hardly  needs  to  be  pointed  out  that  the  right  can  only 
retain  its  attribute  of  exclusiveness  by  a  prevention  of  its  violation.  Any- 
thing but  prevention  takes  away  the  privilege  which  the  law  confers  upon 
the  patentee. 

In  a  number  of  the  circuit  courts  of  appeals,  it  has  been  decided  that, 
as  a  consequence  of  the  exclusive  right  of  the  patentee,  he  is  entitled  to  an 
injunction  against  an  infringer,  even  though  he  does  not  use  the  patented 
device.  Edison  v.  Mt.  Morris,  58  Fed.  572;  Heaton  v.  Eureka,  77  Fed.  294; 
Crown  v.  Aluminum,  108  Fed.  845 ;  Fuller  v.  Berger,  120  Fed.  274 ;  Lamson  v. 
Hillman,  123  Fed.  416;  Victor  v.  The  Fair,  123  Fed.  425;  U.  S.  v.  Griffin,  126 
Fed.  364;  Rupp  v.  Elliott,  131  Fed.  730;  Railway  v.  Monroe,  147  Fed.  241; 
Jewell  v.  Jackson,  140  Fed.  340;  U.  S.  v.  Bradley,  149  Fed.  222;  Rubber  v. 
Milwaukee,  154  Fed.  358;  Indiana  v.  Case,  154  Fed.  365. 

Cases  holding  that,  as  incident  to  the  right,  he  is  entitled  to  an  injunction, 
though  he  has  not  used  the  invention,  are  Carr  v.  Rice,  Fed.  Cas.  2440; 


508  THE    FIXED    LAW    OF    PATENTS  §§  575-576 

Wintermute  v.  Redington,  Fed.  Cas.  17,896;  Ransom  v.  N.  Y.  Fed.  Cas. 
11,573;  Pitts  v.  Wemple,  Fed.  Cas.  20,  194;  Whitney  v.  Emmet,  Fed.  Cas. 
17,585;  Broadnax  v.  Central,  4  Fed.  214;  Re  Broasnahan,  18  Fed.  62;  Con- 
solidated v.  Coombs,  39  Fed.  803;  Wirt  v.  Hicks,  46  Fed.  71;  Campbell  v. 
Manhattan,  49  Fed.  930;  Edison  v.  Mt.  Morris,  57  Fed.  462;  Masseth  v. 
Johnston,  59  Fed.  613 ;  Bonsack  v.  Smith,  70  Fed.  383 ;  Columbia  v.  Freeman, 
71  Fed.  302;  Wyckoff  v.  Wagner,  88  Fed.  515;  White  v.  Peerless,  111  Fed. 
190;  Brodrick  v.  Mayhew,  131  Fed.  92;  National  v.  Daab,  136  Fed.  891; 
Hoe  v.  Miehle,  141  Fed.  115;  Hartman  v.  Park,  145  Fed.  358. 

Counsel  for  petitioner  cites  counter  cases,  which  he  contends  are  more 
direct  authority :  Isaacs  v.  Cooper,  Fed.  Cas.  7,096 ;  Ogle  v.  Ege,  Fed.  Cas. 
10,462;  Motte  v.  Bennett,  Fed.  Cas.  9,884;  Sullivan  v.  Redfield,  Fed.  Cas. 
13,597;  Magic  v.  Douglas,  Fed.  Cas.  8,948;  Hoe  v.  Knapp,  27  Fed.  212;  Ger- 
main v.  Wilgus,  67  Fed.  600;  Campbell  v.  Duplex,  86  Fed.  531 ;  1  Rob.  Pat. 
sec.  43;  Curt.  Pat.  sec.  320,  1st  ed.,  sec.  406,  3  ed.  —  Continental  v.  Eastern, 
210  U.  S.  405;  51  L.  Ed.  992;  28  S.  Ct.  748. 

As  the  patentees  have  never  made  any  use  of  their  alleged  invention,  nor 
attempted  to  do  so,  nor  permitted  its  use  by  others,  nor  given  any  explana- 
tion of  the  non-user,  or  any  reason  for  it ;  I  doubt  whether  the  case  submitted 
is  not  one  of  a  mere  legal  right,  and  whether  the  complainant  should  not  be 
left  to  its  remedy  at  common  law,  if  entitled  to  any  relief  at  all.  —  Mem. 
of  Putnam,  C.  J.  in  N.  Y.  v.  Hollingsworth,  56  Fed.  224;  5  C.  C.  A.  490. 

See  Sup.  Ct.  decision  supra. 

§  575.     Patent  Office  Decisions. 

An  interference  proceeding  cannot  be  invoked  against  strangers  on  the 
question  of  a  preliminary  injunction.  Judge  Lacombe,  who  carefully  re- 
viewed the  decisions  in  this  regard,  came  to  the  just  conclusion  that  the  only 
adjudication  which  can  support  such  an  injunction  is  a  judicial  one.  —  Wilson 
v.  Consolidated,  88  Fed.  286;  31  C.  C.  A.  533. 

Walk.  Pat.  sec.  674;   Dickerson  v.  Machine  Co.  35  Fed.  143. 

The  decision  in  interference  was  not  the  equivalent  of  an  adjudication 
as  to  patentability  and  infringement.  —  Hildreth  v.  Norton,  159  Fed.  428; 
86  C.  C.  A.  408. 

§  576.     Powers  and  Scope. 

Federal  courts  vested  with  jurisdiction  in  such  cases  have  power,  in 
their  discretion,  to  grant  injunctions  to  prevent  the  violation  of  any  right 
secured  by  a  patent,  as  in  other  cases  of  equity  cognizance.  —  Parks  v. 
Booth,  102  U.  S.  96;  26  L.  Ed.  54. 

Jurisdiction  and  power  to  grant,  history  and  general  statement.  —  Root  v. 
Railway,  105  U.  S.  189;  26  L.  Ed.  975. 

The  complainant  was  thus  compelled  not  only  to  go  into  another  juris- 
diction to  try  points  at  issue  below,  but  also  to  go  into  the  jurisdiction 
of  a  law  court  in  which  he  could  not  avail  himself  of  his  equities.  Under  these 
circumstances  the  court  below  enjoined  him.  It  is  a  familiar  principle  that 
when  a  court  of  equity  has  taken  jurisdiction  of  a  controversy  and  has  all 
the  parties  before  it,  it  proceeds  to  give  full  relief,  and  it  can  enjoin  any  pro- 
ceedings in  any  other  court  touching  the  matters  in  controversy  before  it.  — 
Berliner  v.  Seaman,  113  Fed.  750;  51  C.  C.  A.  440. 

The  injunction  forbids  "  the  making,  using,  or  selling  of  any  apparatus 
embodying  the  inventions  recited  or  specified  "  in  the  claims  of  the  patents. 


§  577  INJUNCTION  509 

The  monopoly  of  a  patent  extends  to  the  making  or  selling,  as  well  as  the 
using,  of  the  patented  device  within  the  United  States.  —  Bullock  v.  West- 
inghouse,  129  Fed.  105;  63  C.  C.  A.  607. 

Adams  v.  Burks,  17  Wall.  453;  Heaton  v.  Eureka,  77  Fed.  288;  Dorsey  v. 
Bradley,  12  Blatchf.  202. 

§  577*     Violation  of  —  Contempt. 

Process  of  contempt  is  a  severe  remedy  and  should  not  be  resorted  to 
where  there  is  fair  ground  of  doubt  as  to  the  wrongfulness  of  the  defendant's 
conduct.  —  California  v.  Molitor,  113  U.  S.  609;  28  L.  Ed.  1106;  5  S.  Ct.  618. 

The  power  of  the  court  to  direct  the  payment  of  a  part  or  all  of  the  fine 
to  the  complainant  in  an  application  for  contempt,  as  a  compensation  for  his 
time  and  outlay  in  prosecuting  the  application,  has  been  also  recognized 
in  the  circuit  courts  especially  in  this  circuit ;  and  in  practice  is  a  power  which 
ought  to  be  exercised  when  the  expenses  and  trouble  to  which  the  complain- 
ant has  been  subjected  justify  its  exercise.  —  Cary  v.  Acme,  108  Fed.  873; 
48  C.  C.  A.  118. 

In  re  Muller,  7  Blatchf.  23;  Macauley  v.  Machine,  9  Fed.  698;  in  re  Tift,  11  Fed 
463;    in  re  North  Bloomfield,  27  Fed.  795;    Wells  Fargo  v.  Oregon,  19  Fed.  20. 

The  articles  sold  in  supposed  violation  of  the  temporary  injunction  had 
been  made  before  the  injunction  was  granted,  and  pending  the  injunction 
were  shipped  to  Canada  and  there  sold.  There  had  been,  therefore,  no  vio- 
lation of  the  injunction,  because  there  had  been  no  making  or  selling  or  using 
of  the  patented  device  after  the  allowance  of  the  injunction,  within  the  limits 
of  the  United  States.  But  it  is  elementary  that  neither  the  making,  selling, 
nor  using  of  one  element  of  a  combination  is  infringement.  —  Bullock  v. 
Westinghouse,  129  Fed.  105;  63  C.  C.  A.  607. 

Prouty  v.  Ruggles,  16  Pet.  336;  Corn  Planter  Patent,  23  Wall.  181;  Rowell  v. 
Lindsay,  113  U.  S.  97. 

The  wilful  violation  of  an  injunction  by  a  party  to  the  cause  is  a  contempt 
of  court  constituting  a  specific  criminal  offense.  Crosby  case,  3  Wilson,  188; 
Ex  parte  Kearney,  7  Wheat.  38;  New  Orleans  v.  Steamship,  20  Wall.  387; 
Hayes  v.  Fischer,  102  U.  S.  121.  It  is  immaterial  to  consider  the  distinction 
sometimes  noticed  between  criminal  and  civil  contempts,  inasmuch  as  both 
kinds  involve  the  vindication  of  the  authority  of  the  court,  whether  the 
remedy  incidentally  inure  to  the  benefit  of  a  party  or  not.  Cyc.  Law  &  P.  6 
et  seq.  The  proceeding  to  punish  for  a  contempt  is  in  the  nature  of  a  crim- 
inal proceeding,  whether  the  result  be  partially  remediable  or  not,  and  the 
same  rules  prevail  which  govern  in  the  trial  of  indictments,  the  defendant 
being  entitled  to  any  reasonable  doubt.  Accumulator  v.  Consolidated,  53 
Fed.  793;  In  re  Acker,  66  Fed.  291 ;  Howell  v.  State,  10  Lea,  544;  4  Enc.  PI. 
&  Pr.  768  et  seq. ;  U.  S.  v.  Jose,  63  Fed.  951.  —  Bullock  v.  Westinghouse,  129 
Fed.  105;  63  C.  C.  A.  607. 

Proceedings  of  contempt  are  of  two  classes:  Those  prosecuted  to  pre- 
serve the  power  and  vindicate  the  dignity  of  the  courts  by  punishing  the 
contemnor,  and  those  prosecuted  to  compel  observance  and  redress  the 
violation  of  orders  or  decrees  made  in  behalf  of  a  party  to  an  action  pending 
before  the  court.  The  former  are  punitive  and  essentially  criminal  in  their 
nature,  and  the  government,  the  courts,  and  the  people  are  interested  in  their 
prosecution.  The  latter  are  civil,  remedial,  and  coercive  in  their  nature,  and 
the  parties  chiefly  interested  in  their  conduct  and  prosecution  are  the  in- 
dividuals whose  private  rights  and  remedies  they  are  necessary  to  redress. 


510  THE    FIXED    LAW    OF    PATENTS  §  578 

The  intentional  violation  of  an  injunction  by  a  party  to  the  cause  is  an  act 
in  defiance  of  the  authority  of  the  court  and  in  derogation  of  the  rights 
of  the  adverse  party,  and  a  prosecution  for  contempt  in  such  case  may  par- 
take of  both  punitive  and  remedial  character.  —  Christensen  v.  Westinghouse, 
135  Fed.  774;  68  C.  C.  A.  476. 


§  578.     Violation  of  —  Miscellaneous  Rules. 

The  fines  were,  in  fact,  measured  by  the  damages  the  plaintiff  had  sus- 
tained and  the  expenses  he  had  incurred.  They  were  incidents  of  his  claims 
in  the  suit.  His  right  to  them  was,  if  it  existed  at  all,  founded  on  his  right 
to  the  injunction,  and  that  was  founded  on  the  validity  of  the  patent.  — 
Worden  v.  Searles,  121  U.  S.  14;  30  L.  Ed.  853;  7  S.  Ct.  814. 

Distinguishing:  Ex  parte  Kerney,  20  U.  S.  39;  New  Orleans  v.  Steamship, 
87  U.  S.  387. 

The  sale  was  made  in  Canada  of  articles  then  in  Canada  to  a  Canadian 
manufacturer  to  be  used  in  the  ordinary  course  of  business,  and,  so  far  as 
known,  no  one  of  the  articles  was  thereafter  used  in  the  United  States. 
Inasmuch  as  the  articles  were  made  before  the  injunction,  the  manufacturer 
was  not  in  contempt  of  the  court's  order ;  and  as  no  preliminary  arrangements 
for  the  sale  were  made  in  the  United  States  the  sale  did  not  come  within  the 
prohibition.  —  Gould  v.  Sessions,  67  Fed.  163;  14  C.  C.  A.  366. 

The  defendant,  after  knowledge  that  the  injunction  had  been  issued, 
did  not  cease  the  publication  of  its  former  advertisement,  which  exhibited 
the  "  split  fastener,"  or  the  circulation  of  postal  cards  having  the  picture 
of  the  same  device.  It  says  that  before  the  injunction  was  issued  it  had  pre- 
viously made  a  contract  with  several  periodicals  for  a  year's  advertising, 
that  the  advertisement  as  prepared  included  a  picture  of  the  split  fastener, 
and  therefore,  that  the  printed  publication  was  not  the  act  of  the  defend- 
ants; but  it  did  not  change  or  take  steps  to  alter  the  advertisement,  and  it 
continued  to  circulate  the  old  postal  cards.  An  additional  defense  is  that 
the  injunction  prohibited  selling  the  fastener,  but  did  not  prohibit  offering  it 
for  sale.  These  advertisements  and  postal  cards  showed  a  careless  disregard 
of  the  spirit  of  the  order.  If  they  had  stood  alone,  the  acts  would  very  likely 
not  have  been  visited  with  punishment,  but  coupled  with  the  sales  of  the 
new  fasteners,  they  indicated  an  intent  which  was  not  consistent  with  in- 
nocence. —  Gary  v.  Acme,  108  Fed.  873;  48  C.  C.  A.  118. 

Nor  is  the  power  of  the  court  over  its  own  process,  as  between  the  parties, 
necessarily  controlled  by  the  rule  of  noninterference  with  press  publications 
as  to  disputed  rights  and  claims  of  different  parties  as  to  the  scope  of  its 
decisions.  It  is  probably  true  that,  in  a  case  of  honest  disagreement  or 
misunderstanding  as  to  the  true  import  of  a  decision,  or  in  an  extreme  case 
of  abuse  or  misuse  of  process  for  the  purpose  of  impairing  or  destroying 
rights  sought  to  be  established  by  the  court  through  its  decision,  the  court 
may  proceed  summarily  in  reference  thereto.  Such  power,  however,  would 
be  exercised  with  reluctance,  and  ordinarily  only  in  an  extreme  case.  — 
Hobbs  v.  Gooding,  113  Fed.  615;  51  C.  C.  A.  335. 

In  this  case  the  defendant  had  been  guilty  of  a  previous  violation  of  the 
injunction  order,  but  escaped  on  a  lame  excuse.  The  second  violation  was 
two-fold,  and  the  only  reply  defendant  made  was  to  raise  technical  objection 
to  notice  &c.  The  circuit  court  fined  the  defendant  in  all  $5,000,  one-half 
to  the  government  and  one-half  to  the  complainant.  On  appeal,  the  court 
held:   If  the  fines  in  the  present  case  had  been  imposed  solely  in  favor  of 


§579  INJUNCTION  511 

the  government,  the  question  whether  they  were  reasonable  or  excessive 
in  amount  would  be  so  largely  one  of  discretion  for  the  court  below  that  we 
should  not  feel  justified  in  disturbing  them.  We  think  that  when  the  fine 
is  imposed  by  way  of  indemnity  to  the  aggrieved  party,  it  should  not  exceed 
his  actual  loss  incurred  by  the  violation  of  the  injunction,  including  the  ex- 
penses of  the  proceedings  necessitated  in  presenting  the  offense  to  the  judg- 
ment of  the  court.  We  are  also  of  opinion  that  when  the  fine  is  not  limited 
to  the  taxable  costs  it  should  not  exceed  in  amount  the  loss  and  expenses 
established  by  the  evidence  before  the  court.  It  follows  that,  although  so 
much  of  the  orders  as  directs  the  payment  of  half  of  the  fine  to  the  clerk 
for  the  use  of  the  United  States  should  be  affirmed,  that  part  which  directs 
the  payment  of  half  to  the  complainant  should  be  reversed,  with  instructions 
to  the  court  below  to  take  evidence  and  order  payment  to  the  complainant 
of  such  sum  only  as  may  be  found  to  be  a  sufficient  indemnity.  —  Christensen 
v.  Westinghouse,  135  Fed.  774;  68  C.  C.  A.  476. 

The  service  of  a  copy  of  an  injunction  upon  the  solicitors  for  the  defend- 
ant in  an  equity  suit  ordinarily  affords  sufficient  notice  to  the  defendant, 
and  should  be  deemed  equivalent  to  actual  notice  to  the  defendant  of  the 
contents.  It  is  the  duty  of  the  solicitor  promptly  to  inform  his  client  of  the 
contents  of  the  document,  and  the  presumption  is  that  he  has  done  so.  If 
it  should  appear  that  he  has  not  done  so,  the  court  would  doubtless  acquit 
the  defendant  of  any  intentional  misconduct  in  a  proceeding  to  punish  him 
for  violating  the  order.  In  this  case  there  was  the  additional  presumption 
that  a  letter  properly  addressed  and  mailed  reached  its  destination  at  the 
proper  time  and  was  duly  received  by  the  person  to  whom  it  was  addressed. 
This  is  a  presumption  of  fact  resting  on  the  consideration  that  the  post  office 
is  a  public  agent  charged  with  the  duty  of  transmitting  letters,  and  that  what 
ordinarily  results  from  the  transmission  of  a  letter  through  the  post  office 
probably  resulted  in  the  given  case;  it  is  deduced  from  the  known  course 
of  business,  and  the  presumption  that  the  officers  of  the  postal  system  have 
discharged  their  duty.  —  Christensen  v.  Westinghouse,  135  Fed.  774;  68 
C.  C.  A.  476. 

Rosenthal  v.  Walker,  111  U.  S.  185;  Kimberly  v.  Arms,  129  U.  S.  512;  Hen- 
derson v.  Carbondale,  140  U.  S.  26;    Schutz  v.  Jordan,  141  U.  S.  213. 

That  a  person  not  actually  in  the  employ  of  or  acting  as  agent  of  a  de- 
fendant, and  having  no  official  notice  of  the  injunction,  but  actually  pos- 
sessing such  knowledge  and  acting  in  collusion  with  defendant,  may  be 
punished  for  contempt,  see  Hamilton  v.  Diamond,  137  Fed.  417;  69  C.  C.  A. 
532. 

§  579.     Miscellaneous  Injunction  Decisions. 

The  right  of  a  complainant  to  an  injunction,  on  cause  shown,  is  not 
abridged  by  the  fact  that  he  has  entered  into  a  combination  with  others  to 
create  a  monopoly  under  his  patents.  —  Edison  Electric  v.  Sawyer-Man.  53 
Fed.  592;  3  C.  C.  A.  605. 

The  fact  that  a  contracting  company  had  undertaken  to  build  certain 
devices  for  a  licensee  under  the  patent,  and  had  also  offered  to  furnish  similar 
devices,  as  part  of  another  contract  with  another  company,  not  a  licensee 
under  the  patent,  does  not  constitute  a  threat  of  infringement  sufficient  to 
justify  a  preliminary  injunction.  —  Johnson  v.  Union,  55  Fed.  487;  5  C.  C.  A. 
204. 

We  are  clearly  of  the  opinion  that  the  court  below,  in  refusing  to  modify 
its  order,  and  exempt  from  the  writ  of  injunction  the  articles  made  by  the 


512  THE    FIXED    LAW    OF    PATENTS  §  579 

company  which  as  defendant  in  another  suit  upon  this  patent  had  given 
bond  to  these  complainants,  and  which  had  sold  these  articles  to  this  defend- 
ant, acted  in  accordance  with  the  established  practice,  and  in  the  observance 
of  that  rule  of  comity  which  has  always  prevailed  in  the  courts  of  the  United 
States  in  like  cases.  —  Philadelphia  v.  Edison,  65  Fed.  551;  13  C.  C.  A.  40. 
Sessions  v.  Gould,  49  Fed.  855;  Electrical  v.  Julien,  47  Fed.  892;  Cary  v. 
Spring,  27  Fed.  299;  Coburn  v.  Clark,  15  Fed.  804;  Siebert  v.  Michigan,  34  Fed. 
33;    Ladd  v.  Cameron,  25  Fed.  37. 

It  was  earnestly  urged  to  our  consideration  that  unusual  conditions  existed 
here,  which  should  be  persuasive  to  the  allowance  of  the  injunction  in  this 
cause.  The  argument  was  with  respect  to  the  bicycle.  Every  part  of  its 
construction  is  fugitive  and  changeable  from  year  to  year,  and  with  respect 
to  the  lamp  in  question,  while  its  usefulness  at  the  present  was  strongly  as- 
serted, it  was,  nevertheless,  urged  that  it  was  likely  during  the  present  year 
to  be  superseded  by  an  electric  lamp  which  would  render  the  appellants' 
lamp  useless.  If  the  argument  be  well  founded  in  fact,  it  would  be  a  strong 
attack  upon  this  lamp  as  a  useful  invention,  within  the  meaning  of  the 
patent  law;  and,  if  it  be  true  that  the  lamp  in  question  is  likely  to  be  specially 
superseded,  —  since  there  is  here  no  attack  upon  the  financial  ability  of 
the  alleged  infringer  to  respond  in  damages,  while,  on  the  contrary,  it  has 
been  shown  affirmatively  that  it  is  abundantly  responsible,  —  there  would 
seem  to  be  no  necessity  for  the  injunction,  since  the  inventor,  if  his  lamp  is 
to  have  such  brief  existence,  could  be  fully  compensated,  and  would  be  aided 
by  the  active  exertions  of  the  infringer  in  placing  the  lamp  on  the  market 
during  the  short  term  of  its  life.  It  is  true  the  inventor  claims  that,  by  reason 
of  the  appearance  of  this  infringing  lamp,  he  reduced  the  price  of  his  own 
lamp,  to  maintain  it  upon  the  market,  and  to  undersell  the  infringing  lamp. 
That,  however,  was  a  voluntary,  and  possible  ill-advised,  act  on  his  part, 
since,  if  his  patent  should  be  sustained,  he  could  recover  damages  measured 
by  the  market  price  of  the  lamp  as  he  had  established  it,  and  not  by  the  price 
which  an  infringer  may  receive  for  it.  —  Williams  v.  Breitling,  77  Fed.  285; 
23  C.  C.  A.  171. 

A  settlement  before  final  decree  does  not  entitle  the  complainant  to  an 
injunction.  The  bill  should  be  dismissed.  —  Marden  v.  Campbell,  79  Fed. 
653;  25  C.  C.  A.  142. 

See,  Gamewell  v.  Municipal,  77  Fed.  490. 

The  act  of  August  13,  1888,  does  not  apply  to  suits  for  the  infringement 
of  patents,  or  other  actions  of  which  the  circuit  court  has  exclusive  jurisdiction. 
—  Southern  v.  Earl,  82  Fed.  690;  27  C.  C.  A.  185. 

In  re  Hohorst,  150  U.  S.  659;  In  re  Keasbey,  160  U.  S.  231. 

We  refer  to  them  (the  record  and  proceedings  in  the  court  below)  only 
because  we  do  not  wish  to  leave  any  presumption  that  we  impliedly  approve 
that  parties  should  proceed  with  a  voluminous  hearing  on  a  mere  motion 
for  an  ad  interim  injunction  at  a  time  when  a  final  hearing  may  be  accom- 
plished almost  as  speedily.  —  Wilson  v.  Consolidated,  88  Fed.  286;  31 
C.  C.  A.  533. 

The  bill  with  the  prayer  for  preliminary  injunction  was  filed  and  defendant 
required  to  show  cause  why  an  injunction  should  not  issue  on  the  return  day. 
On  the  return  day  defendant  answered  and  filed  affidavits.  Complainant 
did  not  move  for  injunction  but  afterwards  moved  the  court  for  a  show  cause 
order  returnable  in  one  week.  Held:  Manifestly  being  unprepared  at  that 
time  to  proceed,  and  clearly  it  was  not  entitled  at  that  time,  as  the  pleadings 


§  580  INTERFERENCES  513 

and  proofs  stood,  to  an  injunction.  Application  was  also  made  to  the  court 
at  that  time  for  an  injunction  or  restraining  order  pending  the  hearing  of 
the  new  motion.  Motion  denied.  —  Seiler  v.  Fuller,  102  Fed.  344;  42  C.  C.  A. 
386. 

Complainant  held  a  license  under  the  patent  not  exclusive,  but  an  exclusive 
license  to  the  trade  name  applied  to  the  patented  article.  He  brought  action 
to  restrain  defendant  from  using  such  trade  name,  not  being  in  position 
to  restrain  defendant  under  the  patent  since  he  held  a  license  right  there- 
under. It  was  held  that,  notwithstanding  complainant  held  such  exclusive 
license  to  the  trade  name  of  the  article,  since  said  trade  name  had  become 
the  common  designation  of  the  patented  article,  he  could  not  exclude  the 
defendant  from  the  use  of  the  same.  — Johnson  v.  Seaman,  108  Fed.  951 ;  48 
C.  C.  A.  158. 

Our  attention  is  directed  to  the  great  loss  the  appellant  will  sustain,  and 
to  the  public  inconvenience  which,  it  is  claimed,  will  be  experienced,  if  the 
injunction  is  allowed  to  go  into  effect.  Injunction  allowed.  —  Lanyon  v. 
Brown,  115  Fed.  150;  53  C.  C.  A.  354. 

Curry,  as  patentee,  is  estopped  to  deny  the  validity  of  the  claims ;  and  as 
a  mere  employee,  that  he  "  may  be  enjoined  whenever  this  is  necessary  to 
protect  the  holder  of  the  patent  against  future  infringements,  is  universally 
conceded."  —  Regent  v.  Penn,  121  Fed.  80;  57  C.  C.  A.  334. 

Rob.  Pat.  sec  912. 

Defendant  sells  perforated  music  rolls,  adapted  for  complainant's  instru- 
ments, and  also  several  other  varieties,  not  covered  by  complainant's  patent. 
The  injunction  restrains  defendant  from  directly  or  indirectly  vending  to 
others  to  be  used  music  rolls  adapted  and  intended  to  be  used  in  mechanical 
and  musical  instruments  purchased  from  the  complainant  herein  under 
patent  license  to  be  used  only  with  music  rolls  made  and  sold  by  said  com- 
plainant. —  ^olian  Co.  v.  Juelg  Co.  155  Fed.  119 ;  86  C.  C.  A.  205. 


INTERFERENCES. 

The  Statute  §  580 

General  Statement  §  581 

Actions  to  Compel  Issue  of  Patent 

§582 

Appeals  §  583  (see  §  109) 

Conclusiveness  §  584 

Miscellaneous  §  585 

See  —  Actions    §     25;     Adjudication 


§  30;  Appeals  §  114;  Commissioner  of 
Patents  §  258;  Estoppel  §  383;  In- 
junction §  575;  Interfering  Patents 
§  586;  Patent  Office  §  783;  Priority 
§  810;  Protests  §  848;  Public  Use  Pro- 
ceedings §  859;  Reduction  to  Practice 
§  860;   Res  Judicata  §  895 


§  580.     The  Statute. 

Sections  482  and  4909  relate  to  appeals  in  interferences,  and  sec.  4905 
provides  the  method  of  taking  proofs.  The  only  provision  necessary  to 
quote  is  the  following: 

Whenever  an  application  is  made  for  a  patent  which,  in  the  opinion  of  the 
Commissioner,  would  interfere  with  any  pending  application,  or  with  any 
unexpired  patent,  he  shall  give  notice  thereof  to  the  applicants,  or  applicant 
and  patentee,  as  the  case  may  be,  and  shall  direct  the  primary  examiner  to 
proceed  to  determine  the  question  of  priority  of  invention.  And  the  Com- 
missioner may  issue  a  patent  to  the  party  who  is  adjudged  the  prior  inventor, 
unless  the  adverse  party  appeals  from  the  decision  of  the  primary  examiner, 


514  THE   FIXED    LAW   OF   PATENTS  §§  581-584 

or  of  the  board  of  examiners-in-chief,  as  the  case  may  be,  within  such  time, 
not  less  than  twenty  days,  as  the  Commissioner  shall  prescribe.  —  R.  S. 
4904. 

§  581.     General  Statement. 

The  law,  practice,  and  procedure  in  interferences  is  a  distinct  and  separate 
branch  of  the  patent  law.  The  Court  of  Appeals,  D.  C.  is  the  court  of  last 
resort  in  interference  matters;  but  since  a  Patent  Office  adjudication  is 
not  final  except  between  the  parties  or  parties  in  privity,  interference  adju- 
dications amount  to  little  more  than  side  lights  which  may  or  may  not 
illumine  the  subject.  No  branch  of  the  patent  law  is  more  beset  with  tech- 
nicalities, more  objectionable  on  account  of  the  power  it  gives  to  a  powerful 
litigant  to  exhaust  a  weak  one,  or  more  in  need  of  reform  to  meet  the  changed 
conditions  of  industrial  fife  than  that  of  interferences. 

§  582.     Actions  to  Compel  Issue  of  Patent. 

Where  action  is  brought  to  compel  issue  of  patent  under  R.  S.  sec. 
4915,  the  court  will  not  only  determine  prior  rights  but  will  also  adjudi- 
cate the  patentability  of  the  invention.  —  Hill  v.  Wooster,  132  U.  S.  693 ;  33 
L.  Ed.  502;   10  S.  Ct.  228. 

In  an  action  under  sec.  4915  U.  S.  R.  S.  by  a  defeated  party  in  an  inter- 
ference, when  the  question  decided  in  the  patent  office  is  one  between  con- 
testing parties  as  to  priority  of  invention,  the  decision  there  made  must  be 
accepted  as  controlling  upon  that  question  of  fact  in  any  subsequent  suit 
between  the  same  parties,  unless  the  contrary  is  established  by  testimony 
which  in  character  and  amount  carries  thorough  conviction.  —  Standard 
v.  Peters,  77  Fed.  630;  23  C.  C.  A.  367. 

Morgan  v.  Daniels,  153  U.  S.  124. 

§  583.     Appeals. 

That  an  appeal  from  a  decision  of  a  primary  examiner  upon  a  motion  to 
dissolve  an  interference  in  which  it  was  held  that  the  party  had  the  right  to 
make  a  claim  is  not  allowable,  and  that  the  patent  office  rule  so  providing 
is  not  in  contravention  of  the  statutes,  see  Lowry  v.  Allen,  203  U.  S.  476; 
51  L.  Ed.  281;  27  S.  Ct.  141. 

§  584.     Conclusiveness. 

Decision  of  Patent  Office  on  priority  is  controlling  in  a  subsequent  suit 
between  same  parties,  in  the  absence  of  other  thoroughly  convincing  testi- 
mony. —  Morgan  v.  Daniels,  153  U.  S.  120;  38  L.  Ed.  657;  14  S.  Ct.  772. 

It  is  contended  that  it  was  too  late  for  the  complainant  to  raise  the  ques- 
tion, in  the  court  below,  whether  the  invention  of  one  of  the  parties  was  put 
in  issue  in  the  interference  and  that  he  is  thereby  estopped.  We  do  not 
concur  in  this  view.  The  interference  issue  is  drawn  up  by  the  patent  office 
examiners,  and  the  interference  is  declared,  before  either  party  has  access 
to  the  specifications  of  the  other,  and  the  claims  made  with  respect  to  the 
issue  are  submitted  before  the  specifications  are  disclosed.  Subsequently, 
perhaps,  the  question  might  be  raised,  but  we  do  not  think  that  a  failure 
to  raise  it  in  the  patent  office,  prevents  its  being  brought  to  the  attention 
of  the  court  in  a  proceeding  like  this  by  independent  bill.  —  Christie  v. 
Seybold,  55  Fed.  69;  5  C.  C.  A.  33. 

Hill  v.  Wooster,  132  U.  S.  693. 


§  585  INTERFERENCES  515 

Complainant  withdrew  from  the  contest  and  permitted  —  indeed  assisted 
—  contestant  to  make  out  his  case,  and  took  a  license  under  contestant's 
patent.  We  regard  it  an  admission  of  contestant's  priority.  —  Shoe- 
maker v.  Merrow,  61  Fed.  945;   10  C.  C.  A.  181. 

No  alleged  interference,  on  the  merits  of  which  the  patent  office  finally 
passed,  and  to  which  the  Messrs.  Cowles  were  parties,  was  declared  until 
after  the  issuing  of  the  process  patent  in  suit,  and  cannot  of  itself  control 
the  scope,  construction  or  validity  of  the  claims  in  question.  2  Rob.  Pat.  588. 
These  interference  proceedings  can  at  most  only  serve  to  disclose  the  under- 
standing of  the  patent  office  and  of  the  parties  to  such  interference  at  the 
time  as  to  the  validity  and  scope  of  these  claims.  They  are  not  conclusive 
in  any  sense  upon  the  rights  of  the  appellant.  —  Elec.  v.  Carborundum,  102 
Fed.  618;  42  C.  C.  A.  537. 

This  action  was  brought  to  cancel  an  agreement  of  license  from  defendant 
to  complainant  on  the  ground  that  the  claims  had  been  put  in  interference 
and  judgment  rendered  against  them  and  in  favor  of  the  other  interferent. 
Demurrer  was  interposed  on  the  ground  that  the  suit  was  unseasonably 
brought;  that  the  adjudication  by  the  examiner  of  interferences  was  not 
final.  Held:  That  the  judgment  was  not  final.  —  Westinghouse  v.  Hein, 
159  Fed.  936;  87  C.  C.  A.  142. 


§  585.     Miscellaneous. 

If  the  inventions  were  practically  one  and  the  same  the  patent  office  was 
in  error  in  dividing  the  invention,  and  as  it  adjudged  that  plaintiff  was  the 
prior  inventor,  he  was  the  one  entitled  to  the  patent.  —  DuBois  v.  Kirk 
158  U.  S.  58;  39  L:  Ed.  895;  15  S.  Ct.  729. 

It  will  hardly  be  contended,  if  Lobel  had  appeared  upon  the  adjourned  day, 
that  his  cross-examination  could  not  have  proceeded  legally.  If  on  that  day, 
he  had  announced  his  refusal  to  be  cross-examined,  there  would  have  been 
ample  time  to  procure  an  order  compelling  his  attendance  before  the  time 
for  taking  the  testimony  had  expired.  It  was  not,  however,  until  coun- 
sel on  the  other  side  had  consented  to  four  adjournments  that  they  were 
informed  that  Lobel  declined  to  be  cross-examined  further.  It  was  then  too 
late  to  proceed  within  the  assigned  time,  as  but  two  days  remained.  Thus, 
if  Lobel's  contention  be  sustained,  he  has,  by  persistently  securing  adjourn- 
ments for  his  own  convenience,  deprived  Cossey  of  a  substantial  right,  the 
exercise  of  which  he  postponed  for  the  accommodation  of  and  at  the  request 
of  Lobel.  Contempt  order  affirmed.  —  Lobel  v.  Cossey,  157  Fed.  664;  85 
C.  C.  A.  142. 

The  times  for  taking  testimony  had  been  fixed  and  the  junior  party  had 
delayed  until  near  the  close  of  his  time  limit  and  then  called  a  witness, 
examined  him,  and  asked  for  adjournments  which  carried  the  time  past 
the  time  limit  and  into  the  period  allotted  to  the  senior  party.  The  witness 
refused  to  appear  for  cross-examination  on  the  ground  of  expiration  of  time 
for  taking  his  testimony.  On  motion  to  punish  him  for  contempt  for  refusal 
to  obey  a  subpoena  issued  by  the  circuit  court,  held:  We  are  of  the  opinion 
that  Cossey  had  an  undoubted  right  to  cross-examine  Lobel  which  right  be- 
came vested  during  the  continuance  of  the  time  fixed  by  the  Commissioner 
of  patents,  and  that  the  circuit  court  had  jurisdiction  to  enforce  the  right 
notwithstanding  the  fact  that  the  time  had  expired  when  the  authority  of 
the  court  was  invoked.  —  Lobel  v.  Cossey,  157  Fed.  664;  85  C.  C.  A.  142. 


516  THE    FIXED   LAW   OF    PATENTS  §§  586-587 


INTERFERING  PATENTS. 

Statutory  Provision  §  586 

Rulings  §  587 

See  —  Priority  §  808;  Protests  §  848; 


Public  Use  Proceedings  §  859;    Re- 
duction to  Practice  §  860 


§  586.     Statutory  Provision. 

Whenever  there  are  interfering  patents,  any  person  interested  in  any  one 
of  them,  or  in  the  working  of  the  invention  claimed  under  either  of  them, 
may  have  relief  against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  interfering  patent; 
and  the  court,  on  notice  to  adverse  parties,  and  other  due  proceedings  had 
according  to  the  course  of  equity,  may  adjudge  and  declare  either  of 
the  patents  void  in  whole  or  in  part,  or  inoperative,  or  invalid  in  any  particu- 
lar part  of  the  United  States,  according  to  the  interest  of  the  parties  in  the 
patent  or  the  invention  patented.  But  no  such  judgment  or  adjudication 
shall  affect  the  right  of  any  person  except  the  parties  to  the  suit  and  those 
deriving  title  under  them  subsequent  to  the  rendition  of  such  judgment. 
—  R.  S.  4918. 

§  587.     Rulings. 

On  an  issue  made  directly  between  two  patents  under  section  4918,  R.  S., 
or  otherwise,  the  complainant  below  would  be  required  to  prove  earlier  in- 
vention in  his  behalf  beyond  reasonable  doubt.  (The  complainant's  patent 
having  been  filed  later.)  —  Brooks  v.  Sacks,  81  Fed.  403;  26  C.  C.  A.  456. 

Morgan  v.  Daniels,  153  U.  S.  120. 

It  is  said  that  section  4918  was  intended  to  subserve  the  single  purpose 
of  enabling  parties  to  obtain  an  adjudication  of  priority  of  invention  cov- 
ered by  interfering  patents,  with  the  consequent  authority  to  declare  the 
patent  of  the  later  inventor  void.  Consequently,  it  is  urged,  the  court  has 
no  authority  to  enquire  whether  the  supposed  invention  which  is  the  subject 
of  the  controversy  is  patentable  or  not.  It  appears  from  the  opinion  of  the 
learned  judge  who  decided  the  case  in  the  court  below,  found  in  the  record, 
that  this  construction  of  the  statute  was  there  accepted,  upon  the  authority 
of  certain  cases  cited  in  the  opinion,  without  any  original  consideration  of  the 
question  by  him;  but  we  are  unable  to  agree  that  the  court  is  so  rigidly 
tied  down  as  such  a  construction  of  the  statute  would  imply.  On  the  con- 
trary, we  think  the  court  is  bound  to  determine  whether,  upon  identifying 
the  subject  matter  of  the  interfering  patents,  the  invention  therein  stated 
is  patentable.  If  it  is  not,  and  the  court  should  go  on  and  pronounce  a 
decree  of  nullity  against  one  of  the  patents,  it  would  do  so  at  the  instance 
of  one  who  has  no  right  to  protect,  and  consequently  no  standing  on  which 
to  assail  his  adversary.  The  parties  would  not  stand  on  equal  ground  in 
such  a  litigation,  and  the  power  of  the  court  would  be  perverted  to  the 
determination  of  an  unprofitable  inquest  as  to  who  was  the  first  discoverer 
of  a  nullity.  The  outcome  would  be  that,  while  one  pretender  would  be 
dislodged,  the  other  would  occupy  the  field  unscathed.  We  think  that  if, 
upon  inspection  of  the  patents,  or  in  the  course  of  the  investigation  it  must 
make  in  order  to  determine  the  nature  of  the  alleged  invention,  the  court 
should  see  that  the  patents  are  void  for  lack  of  patentable  subject-matter, 
it  ought  not  to  proceed  to  an  inquiry  as  to  who  first  discovered  the  thing 
which  the  court  finds  to  be  null,  and  decree  thereon,  but  should  dismiss  the 
bill.  Manifestly,  it  is  necessary  that  the  court  should  know  what  the  in- 
vention is  which  supports  the  patents,  not  generally,  what  the  patents  are 
about,  but  what  is  the  particular  discovery  for  which  each  of  the  patents 
was  granted.  —  Palmer  v.  Lozier,  90  Fed.  732;  33  C.  C.  A.  255. 


§  587 


INVENTION 


517 


Foster  v.  Lindsay,  3  Dill.  126,  Fed.  Cas.  No.  4976;  Pentlarge  v.  Pentlarge,  19 
Fed.  817;  Lockwood  v.  Cleveland,  20  Fed.  164;  Sawyer  v.  Massey,  24  Fed.  144; 
American  v.  Ligowski,  31  Fed.  466;  Electric  v.  Brush,  44  Fed.  602. 

That  the  general  rule  as  to  demurrers  in  patent  causes  applies  to  actions 
brought  under  sec.  4918  R.  S.,  see  Simplex  v.  Wands,  115  Fed.  517 ;  53  C.  C.  A. 
171. 

That  the  Patent  Office  records  and  file  wrappers  may  be  considered  in 
determining  the  question  of  interference  between  two  patents,  see  Sim- 
plex v.  Wands,  115  Fed.  517;  53  C.  C.  A.  171. 

Sutter  v.  Robinson,  119  U.  S.  530;  Sargent  v.  Lock  Co.  114  U.  S.  63;  Brill  v. 
Car.  Co.  90  Fed.  666. 

The  court  is  not  limited  to  the  language  of  the  claims  and  specifications, 
but  may  take  into  consideration  certain  extraneous  facts.  For  example, 
it  may  have  recourse  to  the  testimony  of  experts  to  ascertain  the  meaning 
of  technical  words  or  phrases,  or  to  ascertain  the  difference  between  or  the 
identity  of  the  devices,  or  to  obtain  a  better  understanding  of  a  drawing 
or  model  or  the  character  and  operation  of  the  devices;  and  generally,  a 
court  may  avail  itself  of  the  testimony  of  experts  to  acquire  a  knowledge 
of  all  the  facts  pertaining  to  an  art  to  which  a  given  patent  belongs,  and  a 
full  understanding  of  the  progress  that  had  been  made  therein  at  the  time 
the  patent  was  issued.  The  adjudged  cases  afford  many  illustrations  of 
the  fact  that  proof  of  the  state  of  the  art  has  an  important  bearing  upon 
equivalency  and  construction  of  claims.  —  Simplex  v.  Wands,  115  Fed.  517; 
53  C.  C.  A.  171. 

Winans  v.  Railroad,  21  How.  88;  McCormick  v.  Talcott,  20  How.  402;  Machine 
Co.  v.  Lancaster,  129  U.  S.  263;  Miller  v.  Mfg.  Co.  151  U.  S.  186;  National  v. 
Interchangeable,  106  Fed.  693;  Railway  v.  Godehard,  59  Fed.  776;  McClain  v. 
Ortmayer,  141  U-  S.  419;  Walk.  Pat.  sec.  184. 

On  a  bill  filed  under  sec.  4918  R.  S.,  the  first  question  to  be  determined 
is  whether  the  patents  involved  are  interfering  patents,  since  the  right  to 
relief  is  grounded  on  the  fact  of  interference;  that  patents  do  not 
interfere,  within  the  meaning  of  the  patent  law,  unless  the  claims  of  the 
respective  patents,  or  some  of  them,  cover  the  same  mechanical  device  or 
combination;  that  it  is  the  claim  of  the  patent,  and  the  claim  only,  when 
properly  construed,  which  determines  the  thing  patented;  and  that  it  may 
happen  that  the  structure  described  in  one  patent  will  infringe  the  claims 
of  another  patent,  although  the  patents  are  not  interfering  patents,  within 
the  meaning  of  the  statute.  —  Simplex  v.  Wands,  115  Fed.  517;  53  C.  C.  A. 
171. 

Gold  v.  U.  S.  Fed.  Cas.  5,508;  Mfg.  Co.  v.  Craig,  49  Fed.  370. 


INVENTION. 

Statutory  Provisions  §  588 
General  Statement  §  589 
Abandonment  §  590  (see  §  1) 
Adaptation 

Arrangement  or  Grouping  §  591 

Strengthening    or  Increasing 

Weight  §  592 

Miscellaneous  Cases  §  593 
Aggregation  (see  §  42) 

Co- Action  Wanting  §  594 

Distinguished   from  Combination 

§595 


Not  Invention  §  596 

Old  Elements,  Old  Result  §  597 
Beneficial  Use  and  Scope  of  §  598 
Carrying  Forward  §  599 
Change  of  Form 

Same  Function  §  600 

Mere  Change  §  601 

When  Patentable  §  602 
Combinations  (see  §  249) 

Co-Action  of  Elements  §  603  (see 

§42) 

Entirety  §  604 


518 


THE   FIXED   LAW   OF   PATENTS 


§587 


Limitation  §  605 

Necessary  Elements  §  606 

New  Results  §  607 

Old  Elements,  New  Results  §  608 

Old  Elements,  Old  Result  §  609 

Presumptions  §  610 

Sub-Combinations  §  611 

Miscellaneous  Rulings  §  612 
Date  of  Completion  §  613 
Definitions  of  §  614 
Dividing  or  Uniting  Parts  §  615 
Double  or  Analogous  Use 

Analogous    Use     Non-Patentable 

§616 

Double  Use  Non-Patentable  §  617 

Double  Use  Patentable  §  618 
Duplication  §  619 
Evidence  of  (see  §  388) 

Acquiescence  §  620 

Attempted  Evasion  §  621 

Commercial  Success  §  622 

Commercial  Success  —  When  Not 

§  623 

Efficiency  §  624 

Extensive  Litigation  §  625 

Extensive  Use  §  626 

Extensive  Use  —  When  Not  §  627 

Obvious  Demand  §  628 

Patent  Prima  Facie  §  629 

Patent  Office  Action  §  630 

Prior  Failures  §  631 

Simplicity  §  632  {see  §§  692-3) 

Turning  Failure  Into  Success  §  633 

Use  by  Defendant  §  634 

Utility  —  When  Evidence  §  635 

Utility  —  When   Not  §  636 

Want  of  Invention  §  637 

Miscellaneous  Holdings  §  638 
Force  of  Nature  §  639 
Generic 

Construction  §  640 

Definition  §  641 

Improvement  §  642 

Scope  of  §  643 

What  is  §  644 
Immoral  Object  §  645 
Improvement  (see  §  430) 

Non-Patentable  §  646 

Patentability  §  647 

Miscellaneous  §  648 
Manufacture  §  649 
Mathematical  Formula  §  650 
Means  §  651 
Mechanical  Skill 

Adaptation  §  652 

Aggregation  §  653  (see  §  42) 

Carrying  Forward  §  654 

Change  of  Form  §  655 

Definition    and    Distinction    from 

Invention  §  656 

Degree  of    Knowledge    and    Skill 
§  657 

Dividing  or  Uniting  Parts  §  658 

Improvement  §  659  (see  §  430) 


Increased  Efficiency  §  660 

Old  Device,  Analogous  Use  §  661 

Old  Device,  New  Use  §  662 

Old  Elements  Old  Result  §  663 

Portability  §  664 

Strengthening  or  Increasing  §  665 

Miscellaneous  Decisions  §  666 
Novelty 

Definitions  and  Distinctions  §  667 

Evidence  of  §  668  (see  §  388) 

Miscellaneous  Rules  §  669 
Old  Device,  New  Use 

Aggregation  §  670  (see  §  42) 

General  Rules  §  671 

Non-Patentable  §  672 

Patentable  §  673 
Old  Elements,  New  Result  §  674 
Old  Elements,  Old  Result  §  675 
Old  Process,  New  Use 

Non-Patentable  §  676 

Patentable  §  677 
Omitting  Element  §  678 
Patentability 

Definition  §  679 

Patentable  Difference  §  680 

Duty  of  Court  §  681 

Mental  Conception  §  682 

Scientific    Principles    and    Ideas 

§683 

Miscellaneous  Rules  §  684 
Process  (see  §  813) 

Definition  §  685 

Mechanical  §  686 

Non-Patentable  §  687 

Process  and  Machine  §  688 
Property  of  Matter  §  689 
Result  or  Function  §  690 
Scientific  Principles  or  Laws  §  691 
Simplicity 

Does  not  Negative  Invention  §  692 

Ex  Post  Facto  Judgment  §  693 
Simplification  §  694 
Substitution 

Elements  §  695 

New     Material  —  Non-Patentable 

§696 

New  Material  —  Patentable  §  697 
Systems  and  Arrangements  §  698 
Tests  of 

Last  Step  Rule  §  699 

Miscellaneous  §  700 
Transposition  of  Parts  §  701 
Utility  §  702 

See — Anticipation  §  58;  Art  §  146; 
Composition  of  Matter  §  264;  Designs 
§  328;  Evidence  §  400;  Experiment 
§  412;  Function,  §  426;  Improvement 
§  430;  Machine  §  768;  Machine  and 
Process  §  770;  Machine  and  Product 
§  771;  Manufacture  §  772;  Process 
§  813;  Product  §  823;  Reduction  to 
Practice  §  860;  Unpatented  Invention 
§  930 


§§  588-589  INVENTION  519 

§  588.     Statutory  Provisions. 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new  and  useful 
improvements  thereof,  not  known  or  used  by  others  in  this  country,  before 
his  invention  or  discovery  thereof,  and  not  patented  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  before  his  invention  or  discovery 
thereof,  or  more  than  two  years  prior  to  his  application,  and  not  in  public 
use  or  on  sale  in  this  country  for  more  than  two  years  prior  to  his  applica- 
tion, unless  the  same  is  proved  to  have  been  abandoned,  may,  upon  payment 
of  the  fees  required  by  law,  and  other  due  proceedings  had,  obtained  a 
patent  therefor.  —  R.  S.  4886. 

On  the  filing  of  any  such  application  and  the  payment  of  the  fees  required 
by  law,  the  Commissioner  of  Patents  shall  cause  an  examination  to  be  made 
of  the  alleged  new  invention  or  discovery;  and  if  on  such  examination  it 
shall  appear  that  the  claimant  is  justly  entitled  to  a  patent  under  the  law, 
and  that  the  same  is  sufficiently  useful  and  important,  the  Commissioner 
shall  issue  a  patent  therefor.  —  R.  S.  4893. 

These  two  sections  stand  as  created  by  the  act  of  July  8,  1870,  with  the 
exception  of  the  two  clauses  in  sec.  4886  printed  in  italics,  which  were  added 
by  the  act  of  Mar.  3,  1897,  and  which  went  into  effect  Jan.  1,  1898. 

§  589.     General  Statement. 

This  title  covers  the  great,  main,  central  subject  of  the  law  of  patents. 
Under  it  are  treated  many  subjects,  such  as  novelty,  patentability  and  me- 
chanical skill,  which  are  commonly  made  the  subject  of  separate  discussion. 
Some  discussion  of  the  several  classes  of  patentable  inventions  will  be  found 
under  the  titles  Art,  Machine,  Manufacture,  Composition  of  Matter,  Improve- 
ment, Process,  Product;  and  the  subject  of  patentable  designs  is  separately 
treated  under  the  title  Designs. 

Attempted  definitions  of  invention,  novelty,  patentability,  will  be  found 
under  the  following  sections ;  but  they  are  of  little  value.  There  are,  however, 
two  practical,  useful  statements  of  the  Supreme  Court,  one  made  very  early 
in  the  history  of  the  law,  and  the  other  in  connection  with  the  most  elaborate 
opinion  ever  written  by  that  court  —  an  opinion  which  occupies  an  entire 
volume.    These  statements  are: 

The  end  to  be  accomplished  is  not  the  subject  of  a  patent.  The  invention 
consists  in  the  new  and  useful  means  of  obtaining  it.  —  Carver  v.  Hyde, 
16  Pet.  513;    10  L.  Ed.  105. 

When  the  question  is,  whether  a  thing  can  be  done  or  not,  it  is  always 
easy  to  find  persons  ready  to  show  how  not  to  do  it.  If  one  succeeds,  that 
is  enough,  no  matter  how  many  others  may  fail.  —  Telephone  Cases,  126 
U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778. 

As  has  been  so  well  stated  by  one  of  our  best  writers,  it  is  neither  the  means 
to  an  end  nor  the  end  itself  which  constitutes  invention,  but  the  idea  of 
means;  and  to  this  may  be  added,  to  bring  the  statement  within  the  Tele- 
phone Case  rule,  that  patentable  invention  —  invention  that  is  both  novel 
and  useful  under  the  statute  —  must  consist  of  an  idea  of  means  expressed 
in  terms  of  matter  novel  in  itself  and  capable  of  producing  a  useful  result. 
The  means  may  be  old  and  the  result  new,  in  which  case  the  idea  of  means 
resides  in  the  new  adaptation.  The  combination  may  be  new  and  the  result 
old,  in  which  case  the  idea  of  means  resides  in  the  new  combination. 

These  are  simple  rules,  but  they  are  effective.  The  question  of  invention 
can  never  be  bounded  by  fixed  rules.    The  courts  will  always  differ  and  dis- 


520  THE    FIXED    LAW    OF    PATENTS  §§  590-591 

sent,  as  in  the  Telephone  Cases;  and  often  a  question  will  arise,  as  in  the 
Westinghouse  Case  (Westinghouse  v.  Boyden,  170  U.  S.  537)  where  the  court 
required  three  arguments  of  the  case  before  it  could  be  decided,  which  will 
seem  to  baffle  the  greatest  minds,  and  the  decision  of  which  will  meet  with 
the  same  dissent  with  the  bar  as  it  did  with  the  bench.  The  difficulty  in 
determining  patentable  invention,  if  such  there  be,  arises,  on  the  one  hand, 
when  we  attempt  to  dignify  an  act  as  such  which  seems  hopelessly  inter- 
mixed with  a  multitude  of  minor  improvements,  and  on  the  other,  when  we 
encounter  a  basic  or  generic  discovery  the  bounds  of  which  we  know  not 
how  to  set. 

§  590.     Abandonment. 

The  knowledge  of  the  improvement  was  as  completely  lost  as  if  it  had 
never  been  discovered.  The  public  could  derive  no  benefit  from  it,  until 
it  was  discovered  by  another  inventor.  And  if  the  patentee  made  his  dis- 
covery by  his  own  efforts,  without  any  knowledge  of  the  old  device,  he 
invented  an  improvement  that  was  then  new,  and  at  the  time  unknown. 
—  Gayler  v.  Wilder,  10  How.  477;  13  L.  Ed.  504. 

Unsuccessful  and  abandoned  experiments  do  not  affect  the  validity  of 
a  subsequent  patent.  —  Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153; 
15  S.  Ct.  118. 

Brown  v.  Guild,  90  U.  S.  181;   Coffin  v.  Ogden,  85  U.  S.  120. 

There  is  a  degree  of  credit  due  to  one  who  explores  out  of  the  way  or 
hidden  places,  and  brings  to  the  light  and  to  the  uses  of  civilization,  as 
"  abandoned  experiments  "  the  discoveries  of  others,  whose  genius  was  itself 
a  disqualification  for  the  achievement  of  practical  success;  but  it  is  certainly 
no  part  of  the  patent  law  to  foster  attempts  to  appropriate  and  monopolize 
things  of  common-place  character  and  of  familiar  use,  on  the  ground  that, 
although  frequently  employed  even  in  patented  devices,  they  have  not 
been  claimed  as  inventions,  and  their  uses  and  benefits  exploited.  The 
obvious  need  not  be  explained.  —  Fuller-Warren  v.  Michigan,  86  Fed.  463; 
30  C.  C.  A.  193. 

Note:  For  full  list  of  cases  on  this  subject  see  Abandonment. 

§  591.     Adaptation  —  Arrangement  or  Grouping. 

Mere  order  and  arrangement  of  spacings  in  a  blank  book  for  a  specified 
use  cannot,  upon  the  most  liberal  construction  of  the  patent  laws,  be  held 
to  involve  any  invention.  —  Munson  v.  Mayor,  124  U.  S.  601 ;  31  L.  Ed.  586; 
8  S.  Ct.  622. 

The  different  arrangement  of  these  groupings  as  they  appear  in  the  patent 
sued  on  is  not  invention,  but  is  a  mere  matter  of  mechanical  judgement,  "  the 
natural  outgrowth  of  the  development  of  mechanical  skill  as  distinguished 
from  invention."  —  Florsheim  v.  Schilling,  137  U.  S.  64;  34  L.  Ed.  574;  11 
S.  Ct.  20. 

Burt  v.  Evory,  133  U.  S.  349,  and  authorities  there  cited;  Brown  v.  Piper, 
91  U.  S.  37. 

In  view  of  the  state  of  the  art,  it  required  no  invention  to  make  a  single 
die  to  cut  dough  on  a  flat  surface  into  anv  particular  desired  shape.  —  Butler 
v.  Steckel,  137  U.  S.  21;  34  L.  Ed.  582;  11  S.  Ct.  25. 

Smith  v.  Nichols,  88  U.  S.  112;  Dunbar  v.  Meyers,  94  U.  S.  187;  Pomace  v. 
Ferguson,  119  U.  S.  335;  Peters  v.  Active.  130  U.  S.  626;  Watson  v.  Cincinnati, 
132  U.  S.  161. 


§  592  INVENTION  521 

That  putting  a  part  in  a  secure  place  and  out  of  the  way  may  involve 
invention,  see  Standard  v.  Computing,  126  Fed.  639;  61  C.  C.  A.  541. 
Star  v.  General,  111  Fed.  398. 

Patentability  cannot  be  decreed  to  every  little  shift  that  a  woman  may 
make  in  the  arrangement  of  her  garments,  or  the  location  of  the  means 
through  which  such  arrangements  are  effected.  —  Kleinart  v.  Stein,  133 
Fed.  228;  66  C.  C.  A.  282. 

Mere  adjustability  of  parts  does  not  constitute  invention.  —  Smyth  v. 
Sheridan,  149  Fed.  208;  79  C.  C.  A.  166. 

Peters  v.  Hanson,  129  U.  S.  541;  Doig  v.  Morgan,  122  Fed.  460;  Sipp  v.  Atwood, 
142  Fed.  149. 

That  mere  positioning,  color  arrangement  of  common  devices,  like  catalog 
cards  and  card  markers,  or  similar  arrangement  resulting  in  mere  convenience 
with  no  new  function,  is  not  patentable,  see  Gunn  v.  Bridgeport,  152  Fed. 
434;  81  C.  C.  A.  576. 

Hollister  v.  Benedict,  113  U.  S.  72;  Aron  v.  Manhattan,  132  U.  S.  84. 

Where  adjustability  is  desired,  such  means  as  a  series  of  holes  in  the  sup- 
porting rod  of  a  carrier,  any  one  of  which  may  be  engaged  by  a  bolt  on  the 
main  machine  would  at  once  suggest  itself  to  a  skilled  mechanic.  Such 
means  have  been  used  in  the  agricultural  implement  art  long  prior  to  the 
date  of  the  patent.  In  our  judgment,  "  he  produced  no  new  result,  or  any 
improved  method  of  producing  the  old  result."  —  Rose  v.  Dowden,  157  Fed. 
681 ;  85  C.  C.  A.  449. 

Voigtmann  v.  Weis,  148  Fed.  848;   Smith  v.  Nichols,  21  Wall.  112. 

That  a  mere  location  or  arrangement  of  parts,  except  in  cases  where  such 
location  or  arrangement  produces  a  distinctively  novel  result,  is  not  pat- 
entable, see  Cutler-Hammer  v.  Automatic,  159  Fed.  447 ;  86  C.  C.  A.  477. 

But  the  structure  on  which  invention  is  predicated  here  is  unquestionably 
new,  there  being  a  readjustment  of  materials,  by  which  new  and  highly 
useful  results  are  brought  about.  —  Edison  v.  Novelty,  167  Fed.  977; 
C.  C.  A. 

Eainear  v.  Western,  159  Fed.  431. 

§  592.     Adaptation  —  Strengthening  or  Increasing  Weight. 

The  patented  device  was  a  door  knob  made  of  a  metallic  shank  fitting 
dovetail  into  a  porcelain  or  clay  knob.  The  elements  were  all  old,  and  the 
improvement  was  claimed  upon  the  new  material  from  which  the  knob  was 
made.  Held:  It  may  afford  evidence  of  judgement  and  skill  in  the  selection 
and  adaptation  of  the  materials  in  the  manufacture,  but  nothing  more.  — ■ 
Hotchkiss  v.  Greenwood,  11  How.  248;   13  L.  Ed.  683. 

A  mere  enlargement  of  a  machine  to  adapt  it  to  heavier  use,  or  the  mere 
strengthening  of  parts  for  such  use  is  not  invention.  —  Woodbury  v.  Keith, 
101  U.  S.  479;  25  L.  Ed.  939. 

An  improved  shawl  strap  having  a  rigid  cross-bar  to  give  rigidity  to  the 
package,  in  view  of  the  art  did  not  involve  invention.  —  Crouch  v.  Roemer, 
103  U.  S.  797;    26  L.  Ed.  426. 


522  THE    FIXED   LAW   OF   PATENTS  §  593 

It  is  not  invention  to  merely  improve  a  device  so  that  it  is  stronger  or 
more  durable.  —  Peters  v.  Hanson,  129  U.  S.  541;  32  L.  Ed.  743;  9  S.  Ct. 
393. 

A  mere  reinforcement  of  a  garment  by  the  addition  of  a  piece  of  cloth  is 
not  a  patentable  invention.  —  Patent  v.  Glover,  141  U.  S.  560;  35  L.  Ed. 
858;   12  S.  Ct.  79. 

Hollister  v.  Benedict,  113  U.  S.  58;  Thompson  v.  Boisselier,  114  U.  S.  11; 
Howe  v.  National,  134  U.  S.  388;  McClain  v.  Ortmayer,  141  U.  S.  419. 

Did  increasing  the  weight  of  the  hand  wheel  in  this  class  of  machines, 
in  order  to  correct  the  tendency  of  smaller  wheels  to  reverse,  involve  pat- 
entable novelty?  We  do  not  think  so.  The  use  of  hand  wheels  for  straight 
levers  was  old,  and,  whether  the  wheels  were  light  or  heavy,  they  alike  per- 
formed the  service  of  rotary  levers.  —  American  v.  Pennock,  164  U.  S.  26 ; 
41  L.  Ed.  337;   17  S.  Ct.  1. 

Merely  adapting  shape  and  casting  in  one  piece  is  not  invention.  —  Bothe 
v.  Paddock,  50  Fed.  536;  1  C.  C.  A.  575. 

A  change  due  merely  to  the  increased  strength  of  parts  does  not  constitute 
invention.  —  Vulcan  v.  Smith,  62  Fed.  444;  10  C.  C.  A.  493. 

The  strengthening  of  the  spring,  and  the  increase  of  rigidity  with  which  it 
was  attached  to  the  rockers  and  base,  may  have  involved  invention,  but  it 
so  nearly  resembles  a  mere  increase  in  the  physical  strength  of  an  already 
suggested  means  of  performing  a  known  function  that  it  is  certainly  not  a 
pioneer  or  primary  invention,  or  one  the  scope  of  which  the  courts  would  be 
inclined  to  enlarge  beyond  what  is  exactly  shown  in  the  patent.  It  is  not  a 
patent  in  the  construction  of  which  any  liberal  doctrine  of  equivalents 
will  be  applied.  —  Thomas  v.  Rocker  Spring  Co.  77  Fed.  420;  23  C.  C.  A. 
211. 

Mere  strengthening  of  a  structure  does  not  constitute  invention.  — 
Thomasson  v.  Bumpass,  78  Fed.  491 ;  24  C.  C.  A.  180. 

Superiority  due  mainly  to  increased  weight  and  strength  are  not  elements 
of  invention.  —  Frazer  v.  Gates,  85  Fed.  441 ;  29  C.  C.  A.  261. 

All  that  is  claimed  by  the  patentee  as  new  is  the  projecting  end  bars, 
and  the  extension  laterally  outward  beyond  the  side-rails  of  the  woven  wire 
fabric  for  the  purpose  described.  We  are  not  inclined  to  think  that  this 
device  involved  invention,  within  the  meaning  of  the  patent  law,  or  that  it 
would  not  have  easily  occurred  to  an  ordinary  skillful  mechanic.  —  Newark 
v.  Ryan,  102  Fed.  693;  42  C.  C.  A.  594. 

§  593-     Adaptation  —  Miscellaneous  Cases. 

The  subdivision  and  packing  of  articles  of  commerce  in  small  parcels 
for  convenience  of  handling  and  retail  sale  and  the  packing  of  these  small 
parcels  into  boxes  or  sacks  or  tying  them  together  in  bundles  for  convenience 
of  storage  and  transportation,  is  as  common  and  well  known  as  any  fact  con- 
nected with  trade,  and  is  not  patentable.  —  King  v.  Gallun,  109  U.  S.  99; 
27  L.  Ed.  870;  3  S.  Ct.  202. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Phillips  v.  Page,  24  How.  167;  Brown 
v.  Piper,  91  U.  S.  43;  Terhune  v.  Phillips,  99  U.  S.  592;  Atlantic  v.  Brady,  107 
U.  S.  192;   Slawson  v.  R.  R.  107  U.  S.  649;   Smith  v.  Goodyear,  93  U.  S.  486. 


§  594  INVENTION  523 

We  do  not  think  the  alleged  invention  (that  of  employing  rotary  cutters 
of  a  certain  character  for  truing  the  edge  of  a  shoe  sole)  is  a  combination 
of  previous  devices  rearranged  with  connections  and  adaptations  so  adjusted 
as  to  produce  a  novel  and  valuable  use  under  the  cases  cited.  —  Busell  v. 
Stevens,  137  U.  S.  423;  34  L.  Ed.  719;  11  S.  Ct.  150. 

LeRoy  v.  Tatham,  55  U.  S.  156;   Bean  v.  Smallwood,  2  Story,  408. 

It  is  not  invention  to  convert  a  heavy  and  unwieldy  device  into  a  light, 
quick  acting,  easily  applied  fastening.  —  Hay  v.  Heath,  71  Fed.  411;  18 
C.  C.  A.  157. 

It  would  seem  that  angular  relations  or  constructions  distinguishable  only 
mathematically  are  not  patentable.  —  Frazer  v.  Gates,  85  Fed.  441 ;  29 
C.  C.  A.  261. 

Caverly  v.  Deere,  66  Fed.  305. 

It  would  be  obviously  absurd  to  attribute  patentability  to  changes  in  the 
relative  location  of  chambers,  unless  a  distinctly  new  and  useful  result  was 
produced.  —  Bates  v.  Excelsior,  89  Fed.  498;  32  C.  C.  A.  267. 

Selection  among  known  means,  though  increasing  the  degree  of  efficiency, 
did  not  rise  to  the  dignity  of  independent  invention.  —  Wisconsin  v.  Ameri- 
can, 125  Fed.  761 ;  60  C.  C.  A.  529. 

Mast  v.  Stover,  177  U.  S.  485;  Lumber  Co.  v.  Perkins,  80  Fed.  528;  Kelly  v. 
Clow,  89  Fed.  297. 

That  a  cigar  band,  narrower  at  one  end  than  at  the  other,  is  not  novel 
in  the  patent  sense,  see  Regensburg  v.  Portuondo,  142  Fed.  160;  73  C.  C.  A. 
378. 


§  594.     Aggregation  —  Co-Action  Wanting. 

The  second  claim  of  the  reissue,  like  the  single  claim  of  the  original  patent 
for  the  use  in  succession,  or,  in  the  patentee's  phrase,  "  the  series  "  of  the 
two  pairs  of  old  dies,  the  one  pair  to  shape  the  arms  of  the  bolt,  and  the  other 
to  give  those  arms  the  requisite  curve,  does  not  show  any  patentable  in- 
vention. The  two  pairs  of  dies  were  not  combined  in  one  machine,  and  did 
not  co-operate  to  one  result.  Each  pair  was  used  by  itself  and  might  be  used 
so  at  any  distance  of  time  or  place  from  the  other ;  and  if  the  two  were  used  at 
the  same  place  and  in  immediate  succession  of  time,  the  result  of  the  action 
of  each  was  separate  and  distinct  and  was  in  no  way  influenced  by  the  action 
of  the  other.  This  was  no  combination  that  would  sustain  a  patent.  — 
Beecher  v.  Atwater,  114  U.  S.  523;  29  L.  Ed.  232;  5  S.  Ct.  1007. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Pickering  v.  McCullough,  104  U.  S.  310; 
Stephenson  v.  R.  R.  114  U.  S.  149. 

Unless  the  combination  accomplishes  some  new  result,  the  mere  multi- 
plicity of  elements  does  not  make  it  patentable,  so  long  as  each  element 
performs  some  old  and  well  known  function.  —  Richards  v.  Chase,  158  U.  S. 
299;  39  L.  Ed.  991;  15  S.  Ct.  831. 

It  is  the  immediate  mechanical  result  of  the  device  or  combination  which 
is  pertinent.  In  the  patent  in  suit,  only  when  in  use  can  the  combination 
be  complete  (according  to  complainant's  expert)  and  every  use  involves  a 
reconstruction  and  dissolution  of  the  combination.  If  there  has  ever  been 
granted  a  patent  for  such  a  combination  of  mechanical  elements,  designed 
to  expend  their  force  among  themselves,  and  to  effect  or  affect  nothing 


524  THE    FIXED    LAW    OF    PATENTS  §  595 

beyond,  it  has  not  come  to  our  knowledge;  but  whether,  if  granted,  it  could 
be  upheld,  need  not  now  be  considered.  —  Hay  v.  Heath,  71  Fed.  411;  18 
C.  C.  A.  157. 

§  595.     Aggregation  —  Distinguished  from  Combination. 

This  argument  (mere  aggregation)  would  be  sound  if  the  combination 
claimed  was  an  obvious  one  for  attaining  the  advantages  proposed,  one 
which  would  occur  to  any  mechanic  skilled  in  the  art.  But  it  is  plain  from 
the  evidence,  and  from  the  very  fact  that  it  was  not  sooner  adopted  and  used, 
that  it  did  not  for  years  occur  in  this  light  to  even  the  most  skilled  persons. 
It  may  have  been  under  their  very  eyes,  they  may  almost  be  said  to  have 
stumbled  over  it;  but  they  certainly  failed  to  see  it,  to  estimate  its  value 
and  to  bring  it  into  notice.  Who  was  the  first  to  see  it,  to  understand  its 
value,  to  give  it  shape  and  form,  to  bring  it  into  notice  and  urge  the  adoption 
is  a  question  to  which  we  shall  shortly  give  our  attention.  At  this  point 
we  are  constrained  to  say  that  we  cannot  yield  our  assent  to  the  argument, 
that  the  combination  of  the  different  parts  or  elements  for  attaining  the  object 
in  view  was  so  obvious  as  to  merit  no  title  to  invention.  Now  that  it  has 
succeeded,  it  may  seem  very  plain  to  anyone,  that  he  could  have  done  it 
as  well.  This  is  often  the  case  with  inventions  of  the  greatest  merit.  It  may 
be  laid  down  as  a  general  rule,  though  perhaps  not  an  invariable  one,  that 
if  a  new  combination  and  arrangement  of  known  elements  produce  a  new 
and  beneficial  result,  never  attained  before,  it  is  evidence  of  invention.  It 
was  certainly  a  new  and  useful  result  to  make  a  loom  produce  50  yards  a  day, 
when  it  never  before  produced  more  than  40;  and  we  think  that  the  combina- 
tion of  elements  by  which  this  was  effected,  even  if  those  elements  were 
separately  known  before,  was  invention  sufficient  to  form  the  basis  of  a 
patent.  —  Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

There  is  no  co-operative  action  of  these  distinct  claims  which  produces  a 
unitary  result.  Each  one  acts  separately  and  independently  of  the  other. 
It  has  been  repeatedly  held  that  a  mere  aggregation  of  old  elements  in  a 
new  relation  is  not  the  subject  of  a  patent.  —  Mott  v.  Standard,  53  Fed.  819; 
4  C.  C.  A.  28. 

Reckendorfer  v.  Faber,  92  U.  S.  347;  Pickering  r.  McCullough,  104  U.  S.  310; 
Hendy  v.  Iron  Works,  127  U.  S.  370;  Hailes  v.  Van  Wormer,  20  Wall.  353;  Union 
v.  Keith,  139  U.  S.  539;   Royer  v.  Roth,  132  U.  S.  210. 

Is  this  invention  a  mere  aggregation  or  is  it  a  patentable  combination? 
What  is  the  distinction  between  mere  aggregation  and  a  patentable  com- 
bination? A  combination  of  well-known  separate  elements,  each  of  which 
when  combined  operates  separately,  and  in  its  old  way,  and  in  which  no 
new  result  is  produced  which  cannot  be  assigned  to  the  independent  action 
of  one  or  the  other,  of  the  separate  elements,  is  an  aggregation  of  parts, 
merely,  and  is  not  patentable.  But  if  to  adapt  the  several  elements  to  each 
other  in  order  to  effect  their  co-operation  in  one  organization,  demands  the 
use  of  means  without  the  range  of  ordinary  mechanical  skill,  then  the  in- 
vention of  such  means  to  effect  the  mutual  arrangement  of  parts  would 
be  patentable.  The  parts  need  not  act  simultaneously,  if  they  act  unitedly 
to  produce  a  common  result.  It  is  sufficient  if  all  the  devices  co-operate 
with  respect  to  the  work  to  be  done,  and  in  furtherance  thereof,  although  each 
device  may  perform  its  own  particular  function  only.  —  Standard  v.  South- 
ern, 54  Fed.  521 ;  4  C.  C.  A.  491. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Reckendorfer  v.  Faber,  92  U.  S.  357; 
Pickering  v.  McCullough,  104  U.  S.  318. 

It  is  a  commonly  accepted  rule  of  the  law  of  patents  that  the  inventive 
idea  is  not  ordinarily  present  in  the  conception  of  a  combination  which 


§  596  INVENTION  525 

merely  brings  together  two  or  more  functions,  to  be  availed  of  independ- 
ently of  each  other.  The  mechanism  which  accomplishes  such  a  result  and 
no  more  is  ordinarily  spoken  of  as  a  mere  aggregation.  —  Osgood  v.  Metro- 
politan, 75  Fed.  670;  21  C.  C.  A.  491. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Brinkerhoff  v.  Aloe,  146  U.  S.  515;  Palmer  v.  Corning,  156  U.  S.  342;  Richards 
v.  Elevator,  158  U.  S.  299.       ' 

§  596.     Aggregation  —  Not  Invention. 

The  law  requires  more  than  a  change  of  form,  or  juxtaposition  of  facts, 
or  of  the  external  arrangement  of  things,  or  of  the  order  in  which  they  are 
used,  to  give  patentability.  —  Reckendorfer  v.  Faber,  92  U.  S.  347 ;  23  L.  Ed. 
719. 

Hailes  v.  Van  Wormer,  20  Wall.  353. 

All  the  elements  of  the  combination  are  old,  and  each  operates  only  in  the 
old  way.  Beyond  the  separate  and  well  known  results  produced  by  them 
severally,  no  one  of  them  contributes  to  the  combined  result  any  new  feature ; 
no  one  of  them  adds  to  the  combination  anything  more  than  its  separate  in- 
dependent effect ;  no  one  of  them  gives  any  additional  efficiency  to  the  others, 
or  changes  in  any  way  the  mode  or  result  of  its  action.  In  a  patentable 
combination  of  old  elements,  all  the  constituents  must  so  enter  into  it,  as 
that  each  qualifies  every  other ;  to  draw  an  illustration  from  another  branch 
of  the  law,  they  must  be  joint  tenants  of  the  domain  of  the  invention,  seized 
each  of  every  part,  per  my  et  per  tout,  and  not  mere  tenants  in  common, 
with  separate  interests  and  estates.  It  must  form  either  a  new  machine 
of  a  distinct  character  and  function,  or  produce  a  result  due  to  the  joint  and 
co-operating  action  of  all  the  elements,  and  which  is  not  the  mere  adding 
together  of  separate  contributions.  Otherwise,  it  is  only  a  mechanical 
juxtaposition,  and  not  a  vital  union.  —  Pickering  v.  McCullough,  104  U.  S. 
310;  26  L.  Ed.  749. 

Hailes  v.  Van  Wormer,  87  U.  S.  368;    Reckendorfer  v.  Faber,  92  U.  S.  357. 

In  view  of  these  facts,  which  are  either  matters  of  common  knowledge 
or  well  established  by  the  evidence,  the  only  field  of  invention  left  for  the 
patent  to  cover  was  the  application  by  the  old  and  familiar  arrangement 
of  shafts  and  cog-wheels,  of  the  power  of  an  auxiliary  engine  to  a  capstan 
instead  of  a  windlass.  A  capstan  differs  from  a  windlass  in  this  respect  only 
that  its  barrel  or  shaft  is  vertical,  while  that  of  the  windlass  is  usually  hori- 
zontal. It  is  plain,  therefore,  that  no  such  ingenuity  as  merited  the  issue  of 
a  patent  was  required  for  this  improvement,  but  only  the  ordinary  judgement 
and  skill  of  a  trained  mechanic.  —  Morris  v.  McMillin,  112  U.  S.  244;  28 
L.  Ed.  702;  5  S.  Ct.  218. 

Atlantic  v.  Brady,  107  U.  S.  192;  Penna.  v.  Locomotive,  110  U.  S.  490;  Hailes 
v.  Van  Wormer,  20  Wall.  353;  Phillips  v.  Detroit,  111  U.  S.  604;  Hotchkiss  v. 
Greenwood,  11  How.  248;  Phillips  v.  Paige,  24  How.  164;  Smith  v.  Nichols,  21 
Wall.  112;   Dunbar  v.  Meyers,  94  U.  S.  187;    Heald  v.  Rice,  104  U.  S.  737. 

There  is  no  specific  quality  of  the  result  which  cannot  be  definitely  assigned 
to  the  independent  action  of  a  single  element.  There  is,  therefore,  no  pat- 
entable novelty  in  the  aggregation  of  the  several  elements,  considered  in 
itself .  —  Thatcher  v.  Burtis,  121  U.  S.  286;  30  L.  Ed.  942;  7  S.  Ct.  1034. 

Hailes  v.  Van  Wormer,  87  U.  S.  353;  Heald  v.  Rice,  104  U.  S.  737;  Penna.  v. 
Locomotive,  110  U.  S.  490;  Morris  v.  McMillin,  112  U.  S.  244;  Hollister  v.  Bene- 
dict, 113  U.  S.  59;  Thompson  v.  Boisselier,  114  U.  S.  1;  Beecher  v.  Atwater, 
114  U.  S.  523;   Gardner  v.  Herz,  118  U.  S.  180. 


526  THE   FIXED   LAW   OF   PATENTS  §  596 

The  aggregation  of  old  elements,  some  found  in  one  patent  and  some  in 
another,  but  all  performing  like  functions  in  well-known  inventions  having 
the  same  object  with  no  substantial  difference  but  that  of  configuration  is 
not  invention.  —  Busell  v.  Stevens,  137  U.  S.  423;  34  L.  Ed.  719;  11  S.  Ct. 
150. 

Florsheim  v.  Schilling,  137  U.  S.  64. 

A  mere  aggregation  of  old  elements  in  a  new  relation  is  not  the  subject 
of  a  patent.  —  Union  v.  Keith,  139  U.  S.  530;  35  L.  Ed.  261;  11  S.  Ct.  621. 

Reckendorfer  v.  Faber,  92  U.  S.  347;  Pickering  v.  McCullough,  104  U.  S.  310; 
Stephenson  v.  Brooklyn,  114  U.  S.  149;  Hendy  v.  Golden,  127  U.  S.  370;  Hailea 
v.  Van  Wormer,  87  U.  S.  353. 

Mere  aggregation  of  old  elements  is  not  invention.  —  Adams  v.  Bellaire, 
141  U.  S.  539;  35  L.  Ed.  849;  12  S.  Ct.  66. 
Hailes  v.  Van  Wormer,  87  U.  S.  353;   Pickering  v.  McCullough,  104  U.  S.  310. 

A  mere  aggregation  of  functions  or  a  mere  difference  in  degree,  a  carrying 
forward  of  an  old  idea,  a  result,  perhaps  somewhat  more  perfect  than  had 
theretofore  been  attained,  but  not  rising  to  the  dignity  of  invention,  has  been 
repeatedly  held  to  be  invalid.  —  Wright  v.  Yuengling,  155  U.  S.  47;  39 
L.  Ed.  64;  15  S.  Ct.  1. 

Stimpson  v.  Woodman,  77  U.  S.  117;  Smith  v.  Nichols,  88  U.  S.  112;  Guidet 
v.  Brooklyn,  105  U.  S.  550;   Hall  v.  Macneale,  107  U.  S.  90. 

Mere  aggregation  of  old  devices,  performing  no  new  function,  is  not  in- 
vention. —  Wilson  v.  Ansonia,  54  Fed.  495 ;  4  C.  C.  A.  484. 

Dunbar  v.  Meyers,  94  U.  S.  187;  Holland  v.  Shipley,  127  U.  S.  398;  Schlict  v. 
Sherwood,  36  Fed.  591. 

In  this  case  there  is  no  joint  operation  or  effect  in  the  construction  of 
a  railway  car  and  the  oil  tank  combined  which  is  in  any  manner  due  from 
the  simultaneous  or  successive  action  of  the  two  combined.  It  is  a  mere 
aggregation  of  old  elements,  producing  no  new  results  by  the  combination. 
—  Standard  v.  Southern,  54  Fed.  521 ;  4  C.  C.  A.  491. 

The  invalidity  of  the  claim  rests  upon  the  fact  that  the  separate  sets  of 
devices  are  an  aggregation  which  do  not  combine  with  each  other,  and  each 
of  which  works  out  an  independent  and  separate  result,  which  is  not  due  to 
any  co-operating  action.  —  Bagley  v.  Empire,  58  Fed.  212;  7  C.  C.  A.  191. 

Pickering  v.  McCullough,  104  U.  S.  310. 

A  mere  aggregation  of  old  elements  performing  no  new  function,  and  ac- 
complishing no  new  results,  presents  no  patentable  novelty.  —  Muller  v. 
Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Lock  v.  Mosler,  127  U.  S.  354;  Knapp 
v.  Morss,  150  U.  S.  221. 

That  the  adaptation  of  known  mechanical  devices  to  attain  a  desired  end 
in  engineering,  although  the  end  attained  may  be  highly  useful,  in  the  ab- 
sence of  a  novel  function,  is  mere  aggregation  or  engineering  skill,  see  Dodge 
v.  New  York,  150  Fed.  738 ;  80  C.  C.  A.  404. 

Dunbar  v.  Eastern,  81  Fed.  201;    New  Departure  v.  Bevin,  73  Fed.  469. 

Can  a  monopoly  be  properly  granted  for  coupling  without  modification 
a  motor  that  will  run  any  kind  of  a  machine,  to  a  machine  that  will  run 
with  any  kind  of  a  motor?    The  answer  to  the  question  thus  stated  is  found 


§§  597-598  INVENTION  527 

in  Blake  v.  San  Francisco,  113  U.  S.  682;  Royer  v.  Roth,  132  U.  S.  201. 
The  result  was  a  distinct  step  in  advance.  But  it  was  the  inevitable  result 
of  attaching  to  each  other  the  unchanged  appliances.  —  National  v.  Powers, 
160  Fed.  460;  87  C.  C.  A.  444. 

§  597.     Aggregation  —  Old  Elements,  Old  Resu  It. 

The  combination  of  old  elements  to  produce  an  old  result,  where  the  com- 
bination was  a  mere  adaptation  of  well  known  mechanical  means  for  pro- 
ducing similar  results  is  not  valid.  —  Stimpson  v.  Woodman,  77  U.  S.  117; 
19  L.  Ed.  866. 

Where  a  combination  of  old  devices  produces  a  new  result,  such  combina- 
tion is  doubtless  patentable;  but  when  the  combination  is  not  only  of  old 
elements,  but  of  old  results,  and  no  new  function  is  evolved  from  such  com- 
bination, it  falls  within  the  rulings  of  this  court.  (Cited  below.)  —  Office  v. 
Fenton,  174  U.  S.  492;  43  L.  Ed.  1058;  19  S.  Ct.  641. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Phillips  v.  Detroit,  111  U.  S.  604;  Brinkerhoff  v.  Aloe,  146  U.  S.  515;  Palmer  v. 
Corning,  156  U.  S.  342;   Richards  v.  Elevator  Co.  158  U.  S.  299. 

All  the  elements  of  this  combination  were  old,  and  the  absence  from  it  of 
a  single  essential  element  was  fatal  to  the  claim  of  infringement.  —  Buffing- 
ton's  v.  Eustis,  65  Fed.  804;  13  C.  C.  A.  143. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Bragg  v.  Fitch,  121  U.  S.  478. 

To  combine  old  parts  in  such  manner  as  to  produce  a  new  result  by  their 
harmonious  co-operation  may  be  patentable ;  but  it  is  equally  true  that  where 
the  combination  is  not  only  of  old  parts,  but  of  old  results,  without  the 
addition  of  any  new  and  distinct  function,  the  combination  is  not  patent- 
able. —  Goodyear  v.  Rubber,  116  Fed.  363;  53  C.  C.  A.  583. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Pickering  v.  McCullough,  104  U.  S.  310; 
Florsheim  v.  Schilling,  137  U.  S.  64;  Knapp  v.  Morss,  150  U.  S  221;  Office  v. 
Fenton,  174  U.  S.  492;  Stearns  v.  Russell,  85  Fed.  218;  Overweight  v.  Vogt,  102 
Fed.  957;  Brinkerhoff  v.  Aloe,  146  U.  S.  515;  Reckendorfer  v.  Faber,  92  U.  S. 
347;    Muller  v.  Lodge,  77  Fed.  621. 

§  598.     Beneficial  Uses  and  Scope  of. 

The  inventor  of  a  machine  is  entitled  to  the  benefit  of  all  the  uses  to 
which  it  can  be  put,  no  matter  whether  he  has  conceived  the  idea  of  the  use 
or  not.  —  Roberts  v.  Ryer,  91  U.  S.  150;  23  L.  Ed.  267. 

It  is,  of  course,  true  that  a  mistaken  description,  or  even  misconception, 
of  the  operation  of  a  device  which  is  itself  fitly  described  and  claimed,  does 
not  vitiate  a  patent.  —  Temple  v.  Goss,  58  Fed.  196;  7  C.  C.  A.  174. 

Western  v.  Sperry,  58  Fed.  186. 

When  the  language  of  both  application  and  grant  is  so  positively  and 
directly  declaratory  of  what  was  asked  and  granted  as  we  find  in  this  case, 
we  consider  that  it  would  be  going  beyond  a  safe  rule  to  extend  the  operation 
and  protection  of  the  patent  further.  If  appellant  has  originally  made 
application  for  an  "  improvement  in  a  locking  device  for  safes,  jails,  and 
other  similar  structures,"  which  he  now  insists  upon  claiming  that  his  in- 
vention covers,  the  public  would  have  had  notice  of  his  claim,  but  the  lan- 
guage conveyed  no  such  idea.  If  we  should  declare  that  a  peculiarity  in  a 
locking  device  for  a  jail  cage  was  an  improvement  in  a  burglar-proof  safe, 
we  should  be  construing  a  patent  in  a  manner  different  from  the  plain  import 


528  THE    FIXED    LAW    OF    PATENTS  §  598 

of  its  terms,  and  thereby  doing  an  injustice  to  the  public.  —  Gerard  v  Die- 
bold,  61  Fed.  209;  9  C.  C.  A.  451. 

White  v.  Dunbar,  119  U.  S.  47;  Keystone  v.  Phoenix,  95  U.  S.  274;  Vance  v- 
Campbell,  1  Black,  427;  Burns  v.  Meyer,  100  U.  S.  671;  Railroad  v.  Mellon, 
104  U.  S.  112;    McClain  v.  Ortmayer,  141  U.  S.  419. 

Note:  This  rule,  in  derogation  of  the  older  rule  that  the  inventor  is  en- 
titled to  all  the  uses  to  which  his  invention  may  be  put,  is  one  which  must  be 
applied  with  care. 

The  rule  is  clear  that  ordinarily  a  patentee  who  is  first  to  make  an  inven- 
tion is  entitled  to  his  claim  for  all  the  uses  and  all  the  advantages  which 
belong  to  it,  so  far  as  the  new  application  does  not  itself  involve  further  in- 
vention. —  Reece  v.  Globe,  61  Fed.  958;  10  C.  C.  A.  194. 

Roberts  v.  Ryer,  91  U.  S.  150;  Stow  v.  Chicago,  104  U.  S.  547;  Miller  v.  Mfg. 
Co.  151  U.  S.  186;   Electric  v.  LaRue,  139  U.  S.  601. 

It  is  contended  that  the  patentee  did  not  contemplate  or  foresee  what  is 
now  claimed.  Be  this  as  it  may,  admitting  it  to  be  true  that  he  did  not 
realize  the  full  extent  of  his  discovery,  still  he  would  be  entitled  to  all  the 
necessary  and  legitimate  results  attained  by  his  invention,  including  even 
such  as  were  unexpected.  —  Thomson-Houston  v.  National,  65  Fed.  427 ; 
12  C.  C.  A.  671. 

Wells  v.  Jacques,  5  O.  G.  364;  Eames  v.  Andrews,  122  U.  S.  40;  Brown  v. 
D.  C.  130  U.  S.  87;  Stow  v.  Chicago,  104  U.  S.  457;  Gandy  v.  Belting  Co.  143 
U.  S.  587. 

If  the  idea  was  not  present  to  his  mind,  but  is  an  afterthought  perceived 
from  subsequent  experience  or  scientific  inspection  or  analysis,  it  is  obvious 
that  there  was  no  invention  in  thus  by  accident,  as  it  were,  supplying  the 
means  of  a  function  not  contemplated.  —  Wells  v.  Curtis,  66  Fed.  318;  13 
C.  C.  A.  494. 

That  an  inventor  is  entitled  to  all  the  uses  to  which  his  invention  may  be 
put,  see,  Dueber  v.  Robbins,  75  Fed.  17;  21  C.  C.  A.  198. 

An  inventor  is  entitled  to  all  the  uses  of  which  his  invention  is  capable, 
whether  he  then  knew  of  all  such  uses  or  not.  It  is  not  necessary  that  he 
shall  state  all  the  beneficial  results,  effects,  uses,  or  advantages  of  the  mech- 
anism which  he  has  devised.  —  Muller  v.  Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. 

Goshen  v.  Bissell,  72  Fed.  67. 

A  man  may,  under  certain  circumstances,  be  protected  in  building  stronger 
than  he  knows.  And  in  this  sense  it  is  broad  enough  to  cover  the  idea  that, 
if  the  momentum  element  which  was  described,  or  at  least  illustrated  by  the 
drawings,  becomes,  in  practical  operation,  a  more  potent  and  efficient 
element  than  was  understood,  still  the  patent  should  not  be  rendered  invalid 
for  that  reason.  —  Parsons  v.  Seelye,  100  Fed.  455;  40  C.  C.  A.  486. 

Wright  v.  Clinton,  67  Fed.  790. 

A  patentee  is  entitled  to  all  of  the  advantages  of  his  invention.  —  Dowagiac 
v.  Superior,  115  Fed.  886;  53  C.  C.  A.  36. 

Goshen  v.  Bissell,  72  Fed.  67;  Stearns  v.  Russell,  85  Fed.  218;  Palmer  v. 
Lozier,  90  Fed.  732;   National  v.  Interchangeable,  106  Fed.  693. 

Whether  the  inventor  knew  or  not  the  full  measure  of  the  beneficial  func- 
tions of  his  structure,  he  is  entitled  to  all  the  uses  of  his  invention.  —  Good- 
year v.  Rubber,  116  Fed.  363;  53  C.  C.  A.  583. 


§  599  INVENTION  529 

Goshen  v.  Bissell,  72  Fed.  67;  Dowagiac  v.  Superior,  115  Fed.  886;  Wells  v. 
Curtis,  66  Fed.  318. 

If  the  patent  gave  reason  to  suppose  that  the  inventor  may  probably 
have  contemplated  that  his  device  was  capable  of  other  uses,  and  made 
adequate  provision  therefor,  his  invention  should  be  regarded  as  covering 
them,  whether  he  mentioned  them  or  not,  or  whether  he  contemplated  any 
other  use  or  not.  —  Canda  v.  Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 

Goshen  v.  Bissell,  72  Fed.  67;   Stillwell-Bierce  v.  Eufaula,  117  Fed.  410. 

Possibly  he  valued  no  other  two-phased  alternating  current  motors, 
or  he  conceived  that  there  were  no  others,  so  that  naturally  the  practical 
application  which  he  had  in  mind  was  limited  accordingly.  Nevertheless 
he  is  entitled  to  the  advantage  of  the  well-settled  rule  by  virtue  of  which  an 
inventor  who  has  patented  his  invention  is  entitled  to  all  the  uses  to  which 
it  may  be  applied  of  the  class  to  which  he  himself  practically  applied  it.  — 
Westinghouse  v.  Stanley,  133  Fed.  167;  68  C.  C.  A.  523. 

The  object  that  the  inventor  seemed  to  have  chiefly  in  mind  was  to  avoid 
the  useless  converting  of  energy  into  heat  by  the  constant  and  rapid  changing 
of  poles  of  the  transformer  apparatus  then  in  use.  As  things  have  turned 
out,  this  has  not  proven  the  chief  actual  advantage.  Now  though  these 
advantages  be  different  from  the  one  chiefly  in  the  patentee's  mind,  the  in- 
vention will  not  on  that  account  fail,  if  there  be  in  the  concept  an  actual 
advantage,  and  the  structure  embodying  it  evinces  patentable  invention; 
for  a  patentee  is  entitled,  not  only  to  what  he  specifically  sees,  but  to  what 
has  been  brought  about  by  his  invention,  even  though  not  at  the  time 
actually  seen.  —  Kuhlman  v.  General,  147  Fed.  709;  78  C.  C.  A.  97. 

It  is  true  that  a  patentee  is  entitled  to  all  the  beneficial  uses  of  his  real 
invention  whether  stated  or  not.  But  the  fact  that  this  patentee,  while 
enumerating  in  his  specifications  some  12  advantages  resulting  from  the 
improved  construction,  has  not  even  hinted  at  or  suggested  any  resulting 
capacity  for  vertical  removal  of  the  plunger,  is  very  persuasive  that  this 
element,  instead  of  being  "  the  aim  and  purpose  of  the  invention  "  of  the 
patentee,  is  rather  the  discovery  of  his  expert.  —  Bates  v.  Force,  149  Fed. 
220;   79  C.  C.  A.  178. 

These  patents  are  for  a  structure,  and  the  patentees  are  clearly  entitled 
to  the  benefit  of  all  the  advantages  which  that  structure  possesses  over  prior 
structures  intended  to  accomplish  a  similar  purpose.  This  is  not  a  case  of 
preferred  structure,  but  only  of  the  use  to  which  the  structure  shown  in  the 
drawings  and  covered  by  the  claims  may  be  put.  It  would,  indeed,  be  an 
unjust  and  novel  doctrine  to  hold  that  a  patentee  is  to  be  deprived  of  the 
benefits  which  may  characterize  the  use  for  which  the  patented  structure 
was  mainly  designed.  —  Warren  v.  Blake,  163  Fed.  263 ;  C.  C.  A. 

But  the  failure  of  a  patentee  to  realize  all  the  benefits  and  possibilities  of 
his  invention  is  not  fatal.  The  after-discovery  of  unsuspected  usefulness  in 
a  disclosed  apparatus,  far  from  detracting  from  its  value,  may  serve  to 
enhance  it.  —  Westmoreland  v.  Hogan,  167  Fed.  327;  C.  C.  A. 


§  599.     Carrying  Forward. 

A  mere  carrying  forward  or  new  or  more  extended  application  of  the  origi- 
nal thought,  a  change  only  in  form,  proportions  or  degree,  doing  substantially 


530  THE    FIXED    LAW    OF    PATENTS  §  600 

the  same  thing  in  the  same  way  by  substantially  the  same  means  with  better 
results  is  not  invention.  —  Roberts  v.  Ryer,  91  U.  S.  150;  23  L.  Ed.  267. 

Smith  v.  Nichols,  21  Wall.  112. 

Distinguishing,  Roberts  v.  Harnden,  2  Cliff.  500. 

A  mere  carrying  forward  of  the  original  idea,  or  the  substitution  of  other 
elements,  producing  better  results,  is  not  invention.  —  Dunbar  v.  Meyers, 
94  U.  S.  187;  24  L.  Ed.  34. 

Smith  v.  Nichols,  21  Wall.  115. 

A  mere  carrying  forward,  or  new  or  more  extended  application  of  the  origi- 
nal thought,  a  change  only  in  form,  proportions,  or  degree,  the  substitution 
of  equivalents  doing  substantially  the  same  thing  in  the  same  way,  by  sub- 
stantially the  same  means  with  better  results,  is  not  invention.  —  Gibbon  v. 
Loewer,  79  Fed.  325 ;  24  C.  C.  A.  612. 

Smith  v.  Nichols,  21  Wall.  112;  Trimmer  v.  Stevens,  137  U.  S.  432;  Ansonia 
v.  Electrical,  144  U.  S.  11. 

Lynch  carried  forward  the  old  idea  by  a  mechanical  change  in  one  of  the 
elements  which  produced  better  results.  Such  a  change  is  not  patentable. 
—  Galvin  v.  City,  115  Fed.  511 ;  53  C.  C.  A.  165. 

Guidet  v.  Brooklyn,  105  U.  S.  550;  Rob.  Pat.  sec.  238;  Reckendorfer  v.  Faber, 
92  U.  S.  347. 

The  mere  carrying  forward  a  new  or  more  extended  application  of  the 
original  thought,  is  not  such  invention  as  will  sustain  a  patent.  Smith  v. 
Nichols,  21  Wall.  112;  Soehner  v.  Favorite,  84  Fed.  182;  American  v.  Wyeth, 
139  Fed.  389;  Schreiber  v.  Grimm,  72  Fed.  671 ;  Dunbar  v.  Meyers,  94  U.  S. 
187;  Goodyear  v.  Rubber,  116  Fed.  363;  Burnham  v.  Union,  110  Fed.  765; 
Overweight  v.  Vogt,  102  Fed.  957;  Campbell  v.  Duplex,  101  Fed.  282. 

There  is  a  recognized  exception  to  this  rule,  or  rather  counterpart  of  it, 
when  in  the  new  combination  a  new  mode  of  operation  is  effected  which 
produces  an  original  result.  Dowagiac  v.  Superior,  115  Fed.  886.  —  Bullock 
v.  General,  149  Fed.  409;  79  C.  C.  A.  229. 

§  6oo.     Change   of  Form  —  Same  Function. 

An  invention  consisting  of  a  change  of  form  without  change  of  principle  is 
not  invention.  —  Evans  v.  Eaton,  7  Wheat.  356;  5  L.  Ed.  472. 

A  change  of  form  of  a  machine  without  a  change  of  mode  of  operation, 
is  not  patentable.  A  change  of  mechanical  structure  is  not  patentable 
unless  it  produces  a  new  and  entirely  different  result.  —  Mast  v.  Rude,  53 
Fed.  120;  3  C.  C.  A.  477. 

Winans  v.  Denmead,  15  How.  330;  Sargent  v.  Larned,  2  Curt.  340;  Mabie  v. 
Haskell,  2  Cliff.  510;   Aiken  v.  Dolan,  3  Fish.  P.  C.  204. 

Under  ordinary  circumstances,  the  removal  of  surplus  material  or  needless 
parts  of  a  physical  structure,  without  changing  the  relation,  connection,  or 
operation  of  the  essential  elements,  cannot  be  invention.  —  Ferguson  v. 
Roos,  71  Fed.  416;   18  C.  C.  A.  162. 

To  change  the  degree  of  a  thing,  or  of  one  of  its  features,  is  not  patentable 
invention.  Guidet  v.  Brooklyn,  105 U.  S.  550;  Walk.  Pat.  (3d  Ed.)  sec.  31. 
And  so  of  any  change  in  the  "  form  of  embodiment,"  of  mere  degree  or  quality 
of  action,  without  changing  the  function  of  any  element,  or  adding  a  new 


§  601  INVENTION  531 

element,  although  it  may  greatly  improve  the  old  combination.     1  Rob. 
Pat.  sec.  237.  —  Baldwin  v.  Kresl,  76  Fed.  823;  22  C.  C.  A.  593. 

It  was  not  invention  to  put  one  (a  tire)  on  a  smaller  wheel.  The  question 
of  size  is  mostly  one  of  degree.  —  Hickory  v.  Frazier,  100  Fed.  99 ;  40  C.  C.  A. 
296. 

Watson  v.  Railway,  132  U.  S.  161;  French  v.  Carter,  137  IT.  S.  239;  Road 
Machine  v.  Pennock,  164  U.  S.  26;  International  v.  Gaylord,  140  U.  S.  55;  Adams 
v.  Stamping  Co.  141  U.  S.  539. 

Mere  variations  in  the  forms  of  means,  not  affecting  the  manner  in  which 
the  functions  are  performed,  are  not  material.  —  Eames  v.  Worcester,  123 
Fed.  67;  60  C.  C.  A.  37. 

Bundy  v.  Detroit,  94  Fed.  524. 

That  a  mere  change  in  curvature  or  contour,  involving  no  new  function, 
is  not  patentable,  see  Bradley  v.  Eccles,  126  Fed.  945;  61  C.  C.  A.  669. 

If  the  mere  narrowing  of  the  ends  of  the  belt  be  patentable,  as  to  which 
we  do  not  express  an  opinion,  the  defendant's  device  is  not  within  the  patent, 
for  its  ends  are  not  in  any  real  or  functional  sense  narrowed  at  all.  —  Mills 
v.  Russell,  144  Fed.  700;  75  C.  C.  A.  516. 

§  6oi.     Change  of  Form  —  Mere  Change. 

A  patent  cannot  be  granted  for  a  mere  change  of  form.  —  Winans  v.  Den- 
mead,  15  How.  330;  14  L.  Ed.  717. 

A  mere  change  of  size  or  form,  as  the  change  of  thread  or  mesh  in  netting, 
is  not  invention.  —  Dalton  v.  Jennings,  93  U.  S.  271 ;  23  L.  Ed.  925. 

Our  conclusion  is  that  the  absolute  length  and  size  of  the  valve  opening 
was  a  matter  of  judgement,  in  view  of  the  state  of  the  art  shown,  and  that 
there  was  no  invention  in  making  its  length  and  size  greater  or  less  in  a  reed 
board  of  a  given  width,  or  when  the  reed  board  was  made  wider  or  narrower 
or  had  more  or  less  sets  of  reeds  in  it,  either  full  or  partial.  —  Esty  v.  Bur- 
dett,  109  U.  S.  633;  27  L.  Ed.  1058;  3  S.  Ct.  531. 

The  complainant  was  the  first  to  employ  the  combination  claimed ;  but 
the  change  was  only  a  change  of  form,  and  not  patentable.  —  Mosler  v. 
Mosler,  127  U.  S.  354;  32  L.  Ed.  182;  8  S.  Ct.  1148. 

Hailes  v.  Van  Wormer,  87  U.  S.  353;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Pickering  v.  McCullough,  104  U.  S.  310. 

Change  of  form  is  not  invention.  —  Belding  v.  Challenge,  152  U.  S.  100; 
38  L.  Ed.  370;  14  S.  Ct.  492. 
Roberts  v.  Ryer,  91  U.  S.  150. 

A  mere  change  in  form,  as  in  the  vamp  of  a  rubber  overshoe,  so  as  to  pro- 
duce a  gore-shaped  extension  above  the  foxing  line,  could  not  require  any- 
thing beyond  the  range  of  ordinary  skill  of  the  calling.  —  Williams  v.  Good- 
year, 54  Fed.  498;  4  C.  C.  A.  485. 

Burt  v.  Evory,  133  U.  S.  349. 

Mere  increase  of  depth,  without  the  discharge  of  any  novel  and  additional 
function,  is  not  invention.  —  Benjamin  v.  Chambers,  59  Fed.  151 ;  8  C.  C.  A. 
61. 


532  THE    FIXED    LAW   OF    PATENTS  §  602 

A  mere  change  in  curvature  without  specifically  defining  the  degree  thereof 
is  not  patentable.  —  Davis  v.  Parkman,  71  Fed.  691 ;   18  C.  C.  A.  398. 

The  substitution  of  a  curvilinear  for  a  straight  line  is  not  invention.  — 
Long  v.  Pope,  75  Fed.  835;  21  C.  C.  A.  533. 
Winans  v.  Denmead,  15  How.  330. 

Mere  change  of  form,  portability  or  lightness  are  not  invention.  —  Olm- 
sted v.  Andrews  Co.  77  Fed.  835;  23  C.  C.  A.  488. 
McCleary  v.  Baker,  63  Fed.  841. 

A  change  of  form  although  producing  better  results  is  not  patentable.  — 
Birmingham  v.  Gates,  78  Fed.  350;  24  C.  C.  A.  132. 
Smith  v.  Nichols,  21  Wall.  119. 

It  is  a  mere  change  of  form  and  size  and  that  is  not  invention.  —  Warren 
v.  Rosenblatt,  80  Fed.  540;  25  C.  C.  A.  625. 
Smith  v.  Nichols,  21  Wall.  112. 

He  did  nothing  but  adapt  the  old  extinguisher  to  a  lighter  constructed 
after  the  old  designs;  and  this  does  not,  in  our  opinion,  in  view  of  the  well 
trodden  previous  art,  amount  to  invention.  —  Kessler  v.  Inks,  108  Fed. 
412;   47  C.  C.  A.  442. 

The  mere  change  of  size  or  form  of  a  simple  structure,  or  of  an  element 
in  a  combination,  made  for  the  purpose  of  accommodating  it  to  its  work 
within  the  sphere  of  its  contemplated  uses,  does  not  amount  to  invention.  — 
Eames  v.  Worcester,  123  Fed.  67;  60  C.  C.  A.  37. 

For  an  extreme  holding  that  a  change  of  form  and  also  a  change  of  ma- 
terial (cast  iron  to  steel)  is  not  invention,  see  Harder  v.  United  States,  160 
Fed.  463. 


§  602.     Change  of  Form  —  When  Patentable. 

When  form  was  the  essence  of  the  invention  —  a  peculiar  shaped  car  body 
where  its  strength  was  due  to  the  form  was  held  to  be  patentable.  —  Winans 
v.  Denmead  15  How.  330;  14  L.  Ed.  717. 

To  change  the  form  of  an  existing  machine,  and  by  means  of  such  change 
to  introduce  and  employ  other  mechanical  principles  or  natural  powers, 
or,  as  it  is  termed,  a  new  mode  of  operation,  and  thus  attain  a  new  and  useful 
result,  is  the  subject  of  a  patent.  —  Winans  v.  Denmead,  15  How.  330;  14 
L.  Ed.  717. 

r 

Where  form  is  the  essence  of  the  invention,  it  is  necessarily  material; 
and,  if  the  same  object  can  be  attained  by  a  machine  different  in  form  where 
that  form  is  inseparable  from  the  successful  operation  of  the  instrument, 
there  is  no  infringement.  —  Werner  v.  King,  96  U.  S.  218;  24  L.  Ed.  613. 

Winans  v.  Denmead,  15  How.  330. 

Possibly  an  exact  form  of  construction,  possessing  a  distinct  advantage  over 
other  forms,  may  be  patentable;  but  a  form  that  is  merely  tentative  and 
varying  with  each  case  is  not.  —  Western  v.  Standard,  84  Fed.  654;  28 
C.  C.  A.  512. 

Caverly  v.  Deere,  66  Fed.  305. 


§  603  INVENTION  533 

There  are  cases  where  the  form  of  a  device  is  the  principle  of  the  invention. 
There  are  other  cases  wherein  the  state  of  the  prior  art  and  the  specific  terms 
of  the  specifications  and  drawings  leave  no  doubt  of  the  intention  of  the 
applicant  to  restrict  his  claim  to  the  specific  form  of  the  device  or  element 
he  points  out.  In  such  cases  claims  of  patents  are  sometimes  limited  to 
the  specific  forms  of  the  devices  pointed  out  by  letters  or  numbers  in  the 
claims  or  specifications.  —  National  v.  Interchangeable,  106  Fed.  693;  45 
C.  C.  A.  544. 

Weir  v.  Morden,  125  U.  S.  98;  Railroad  Co.  v.  Kearney,  158  U.  S.  461;  Craw- 
ford v.  Heysinger,  123  U.  S.  589;  McCormick  v.  Aultman,  58  Fed.  773;  Newton 
v.  Mfg.  Co.,  119  U.  S.  373;  Bragg  v.  Fitch,  121  U.  S.  478;  Dryfoos  v.  Wiese,  124 
U.  S.  32;    Hendy  v.  Iron  Works,  127  U.  S.  370. 

The  question  is,  was  there  enough  in  the  recesses  and  projections,  as  there 
used,  to  suggest  the  conception  of  the  bands  and  grooves  of  the  patent 
in  suit?  We  think  not,  and  conclude  that  these  modifications  of  form  and 
arrangement  were  new  and  valuable  improvements,  and  involved  sufficient 
inventive  thought  to  sustain  a  patent.  —  American  v.  Driggs-Seabury,  114 
Fed.  936;  52  C.  C.  A.  556. 

The  fact  that  this  result  was  accomplished  by  a  single  change  does  not 
detract  from  its  patentability.  —  Hutter  v.  De  Q.  Bottle,  128  Fed.  283;  62 
C.  C.  A.  652. 

§  603.     Combinations  —  Co-Action  of  Elements. 

The  appellant  contends  that  this  is  not  a  patentable  combination.  We 
do  not  think  the  contention  supportable.  All  the  parts  of  the  device  co- 
operate to  produce  one  result,  and  it  is  easily  distinguishable  from  that 
denied  in  Reckendorfer  v.  Faber,  92  U.  S.  347  and  Adams  v.  Stamping  Co. 
141  U.  S.  539.  In  the  former  case  the  pencil  and  rubber  performed  different 
and  independent  things.  In  the  latter,  the  hinge  attachment  to  the  lantern 
was  a  substitute  for  a  detachable  fastening,  and  went  no  further.  —  Butte 
City  v.  Pacific,  60  Fed.  90;  8  C.  C.  A.  484. 

Invention  is  that  which  brings  out  of  the  realms  of  the  mind  something 
that  never  existed  before.  It  may  consist  in  the  combination  of  old  elements, 
the  invention  being  in  the  combination.  To  make  it  so  there  must  be  a 
joint  action  or  operation  of  the  elements,  —  i.  e.  the  elements  must  co- 
operate or  act  jointly  to  produce  the  result  or  object  of  the  combination,  — 
or  else  the  assembled  elements  is  a  mere  aggregation,  and  is  not  patentable. 
It  is  not  necessary,  however,  that  their  action  should  be  simultaneous.  — 
San  Francisco  v.  Keating,  68  Fed.  351 ;  15  C.  C.  A.  476. 

Standard  v.  Southern,  48  Fed.  110;  Engraving  v.  Hoke,  30  Fed.  444;  Blessing 
v.  Copper,  34  Fed.  753;  Root  v.  Sontag,  47  Fed.  309;  Mfg.  Co.  v.  Brill,  54  Fed. 
383;    National  v.  American,  53  Fed.  371;   3  Rob.  Pat.  1016. 

No  combination  of  elements  that  so  operate  can  be  regarded  as  a  mere 
aggregation,  for  each  one  has  a  direct  influence  upon  the  action  of  each  of 
the  others,  the  result  necessarily  being  the  product  of  the  combination  itself, 
and  not  a  mere  aggregate  of  several  units,  each  the  complete  product  of 
one  of  the  combined  elements.  —  Von  Schmidt  v.  Bowers,  80  Fed.  121 ; 
25  C.  C.  A.  323. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Royer  v.  Roth,  132  U.  S.  201;  Recken- 
dorfer v.  Faber,  92  U.  S.  347;   Beecher  v.  Atwater,  114  U.  S.  524. 

Nor  are  the  claims  in  question  subject  to  the  objection  urged  that  it  is 
"  a  mere  collocation  or  aggregation  of  old  elements,"  as  it  is  plain  that  the 


534  THE    FIXED    LAW    OF    PATENTS  §  603 

several  elements  are  brought  into  co-operation  and  thus  "  perform  addi- 
tional functions  and  accomplish  additional  results."  —  Milwaukee  v.  Bruns- 
wick-Balke,  126  Fed.  171;  61  C.  C.  A.  175. 
Rob.  Pat.  sec.  155. 

It  is  not  necessary  to  a  valid  combination  that  all  the  parts  shall  co- 
operate at  the  same  time.  It  is  enough  that,  in  the  normal  and  progressive 
use  of  the  machine,  they  do  so  at  some  time.  —  Sanders  v.  Hancock,  128 
Fed.  424;  63  C.  C.  A.  166. 

To  constitute  a  combination  it  is  essential  that  there  should  be  some 
joint  operation  performed  by  the  elements,  producing  a  result  due  to  their 
joint  and  co-operating  action,  while  in  an  aggregation  there  is  a  mere  adding 
together  of  separate  contributions,  each  operating  independently  of  the  other. 
—  American  v.  Helmstetter,  142  Fed.  978;  74  C.  C.  A.  240. 

Hailes  v.  Van  Wormer,  20  Wall.  353;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Pickering  v.  McCullough,  104  U.  S.  310. 

It  is  true  that  these  elements  do  not  act  synchronously,  but  this  is  not 
necessary,  simultaneous  action  being  frequently  absent  from  patentable 
combinations.  —  International  v.  Dey,  142  Fed.  736 ;  74  C.  C.  A.  68. 

National  v.  American,  53  Fed.  367;  Heath  v.  Hay,  67  Fed.  246;  Furbush  v. 
Cook,  2  Fish.  P.  C.  668. 

The  elements  of  the  claims,  considered  separately  or  in  different  environ- 
ments, were,  speaking  generally,  all  old.  The  question  here  is  was  the  com- 
bination old?  That  the  claim  covers  a  combination,  and  not  a  mere  aggre- 
gation, we  have  no  doubt,  even  though  the  operations  of  the  separate  ele- 
ments do  not  synchronize.  —  United  v.  Beattie,  149  Fed.  736 ;  79  C.  C.  A. 
442. 

Furbush  v.  Cook,  2  Fish.  Pat.  Cas.  668;  Heath  v.  Hay,  67  Fed.  246;  Inter- 
national v.  Dey,  142  Fed.  736. 

The  argument  that  the  straightening  press  does  not  act  simultaneously 
with  the  other  devices  included  in  the  combination,  if  true,  is  not  enough  to 
defeat  a  patent.  If  that  device  is  so  arranged  with  the  other  devices  made 
elements  in  the  combination  so  that  each  part  co-operates  to  produce  a 
single,  practical  and  beneficial  result,  it  is  not  important  that  the  final  result 
shall  have  been  produced  by  a  simultaneous  or  successive  action  of  the 
combined  elements.  —  National  v.  Aiken,  163  Fed.  254;  C.  C.  A. 

Sanders  v.  Hancock,  128  Fed.  424;  Stilwell-Bierce  v.  Eufaula,  117  Fed.  410; 
Furbush  v.  Cook,  2  Fish.  688. 

Note:  The  last  clause  must  be  read  in  the  disjunctive  sense.  The  action 
must  be  either  simultaneous  or  successive. 

If,  however,  the  adaptation  of  old  and  separate  elements,  so  that  they 
co-act  with  each  other  in  a  unitary  organization,  involves  the  exercise  of 
something  more  than  the  skill  of  an  ordinary  mechanic,  the  result  may  be 
patentable,  if  a  more  beneficial  result  is  effected  than  by  the  separate  opera- 
tion of  the  parts.  So  if  a  new  combination  and  arrangement  of  old  elements 
produces  a  new  and  beneficial  result,  as  to  greatly  increase  the  productive 
efficiency  of  a  machine,  it  is  evidence  of  invention.  —  National  v.  Aiken, 
163  Fed.  254;  C.  C.  A. 

Thatcher  v.  Burtis,  121  IT.  S.  286;  Overweight  v.  Vosrt,  102  Fed.  957;  St.  Louis 
v.  American,  156  Fed.  574;  Muller  v.  Tool  Co.  77  Fed^l;  Star  v.  General,  111 
Fed.  398;   Loom  Co.  v.  Higgins,  105  U.  S.  589. 


§§  604-605  INVENTION  535 

It  is  true  that  the  elements  of  the  combination  do  not  act  simultaneously; 
but  that  is  immaterial,  since  they  are  nevertheless  so  arranged  that  the 
action  of  each  is  necessary  and  contributes  to  the  general  result.  —  Maimen 
v.  Union,  165  Fed.  440;    C.  C.  A. 

The  fact  that  the  completed  nipple  is  developed  by  successive  steps  in 
the  same  machine  does  not  prevent  the  organized  mechanism,  which  produces 
the  result,  from  being  considered  a  combination.  —  Manville  v.  Excelsior, 
167  Fed.  538;  CCA. 

Furbush  v.  Cook,  Fed.  Cas.  4931;   National  v.  American,  53  Fed.  367. 

A  construction  of  the  claims  requiring  such  simultaneous  action  would 
relegate  even  such  a  marvelously  organized  machine  as  the  Mergenthaler 
linotype  to  the  unprotected  and  defenseless  class  of  aggregations.  —  Manville 
v.  Excelsior,  167  Fed.  538;  C  C  A. 

Mergenthaler  v.  Press,  57  Fed.  505. 

§  604.     Combinations  —  Entirety. 

A  combination  is  an  entirety;  if  one  of  the  elements  is  given  up,  the  thing 
claimed  disappears.  —  Vance  v.  Campbell,  66  U.  S.  427;   17  L.  Ed.  168. 

Argument  to  show  that  an  invention  consisting  of  a  combination  of  three  in- 
gredients which  are  old  is  not  the  same  as  that  of  a  combination  of  four  old  in- 
gredients is  quite  unnecessary,  as  the  negative  of  the  proposition  is  as  well 
settled  in  the  patent  law  as  it  is  in  mathematics.  —  Gill  v.  Wells,  89  U.S.I;  22 
L.  Ed.  699. 

A  combination  is  always  an  entirety.  In  such  cases  the  patentee  cannot 
abandon  a  part  and  claim  the  rest,  nor  can  he  be  permitted  to  prove  that  a 
part  is  useless  and  therefore  immaterial.  —  Schumacher  v.  Cornell,  96  U.  S. 
549;    24  L.  Ed.  676. 

Vance  v.  Campbell,  1  Black,  427. 

None  of  the  elements  or  devices  of  the  patented  machine  are  new,  and  the 
invention  itself  consists  in  a  combination  of  old  devices.  Such  a  combination 
is  an  entirety,  though  more  than  one  combination  may  be  included  in  the 
same  patent.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Gill  v.  Wells,  22  Wall.  2-24. 

If  a  useful  and  new  unitary  result  appears  as  the  product  of  the  inter- 
action of  the  elements,  though  all  be  old,  the  union  is  a  true  combination; 
and,  if  unpatentable,  it  is  for  want  of  invention.  —  Regent  v.  Penn,  121  Fed. 
80;  57  C  C  A.  334. 

Parks  v.  Booth,  102  U.  S.  96;  Johnson  v.  R.  Co.  33  Fed.  499;  National  v. 
American,  53  Fed.  367. 

§  605.     Combinations  —  Limitation. 

Four  propositions  were  decided  in  the  case  of  Vance  v.  Campbell,  1  Black, 
428;  (1)  That  a  patentee,  in  a  suit  for  an  infringement  of  an  invention  con- 
sisting of  a  combination  of  old  ingredients,  cannot  in  his  proofs  abandon  a 
part  of  such  combination  and  maintain  his  claim  to  the  rest,  for  the  reason 
that  unless  the  patented  combination  is  maintained,  the  whole  of  the  in- 
vention falls.  (2)  That  the  patentee  in  such  a  suit  cannot  be  allowed  to 
prove  that  any  part  of  the  combination  is  immaterial  or  useless.  (3)  That 
the  combination  is  an  entirety,  and  that  if  one  of  the  ingredients  be  given 
up  the  thing  claimed  disappears,  which  is  an  obvious  truth,  as  the  invention 


536  THE    FIXED   LAW   OF    PATENTS  §  606 

in  such  a  case  consists  simply  in  the  combination.  (4)  That  the  clause  which 
provides  that  the  suit  shall  not  be  defeated  where  the  patentee  claims  more 
than  he  has  invented,  in  case  he  shall  disclaim  such  part,  applies  only  when 
the  part  invented  can  be  clearly  distinguished  from  that  improperly  claimed, 
which  shows  that  the  clause  cannot  apply  to  a  patent  granted  for  an  inven- 
tion consisting  of  a  combination  of  old  ingredients.  —  Gill  v.  Wells,  89  U.  S. 
1;  22  L.  Ed.  699. 
Case  v.  Brown,  2  Wall.  320;   Burr  v.  Duryee,  1  Wall.  566. 

That  a  combination  will  be  strictly  limited  to  its  elements,  see  Knapp  v. 
Morss,  150  U.  S.  221;  37  L.  Ed.  1059;  14  S.  Ct.  81. 

It  is  material  to  observe  that  the  invention  claimed  is  the  combination 
of  certain  described  elements.  This  amounts  to  a  disclaimer  of  anything 
new  in  the  elements,  so  far  as  this  patent  is  concerned.  —  Wells  v.  Curtis, 
66  Fed.  318;   13  C.  C.  A.  494. 

Corn  Planter  Pat.  23  Wall.  181;  Miller  v.  Brass  Co.  104  U.  S.  350;  Rowell  v. 
Lindsay,  113  U.  S.  97. 

His  claim  is  for  the  combination  of  three  parts.  His  claim,  then,  is  for 
an  entirety.  He  cannot  abandon  a  part,  and  claim  the  rest.  He  must  stand 
by  his  claim  as  he  has  made  it.  If  more  or  less  then  the  whole  of  his  ingredients 
are  used  by  another,  such  party  is  not  an  infringer,  because  he  has  not  used 
the  invention  or  discovery  patented.  Shumacher  v.  Cornell,  96  U.  S.  549. 
When  a  patent  is  for  a  combination  only,  none  of  the  separate  elements  of 
which  the  combination  is  composed  are  included  in  the  monopoly.  Rowell 
v.  Lindsay,  113  U.  S.  101.  Or,  as  expressed  by  Mr.  Justice  Bradley  in  the 
Corn  Planter  Patent  (Brown  v.  Guild)  23  Wall.  181: 

"  When  a  patentee,  after  describing  a  machine,  claims  as  his  invention  a 
certain  combination  of  elements,  or  a  certain  device  or  part  of  the  machine, 
this  is  an  implied  declaration,  as  conclusive,  so  far  as  that  patent  is  concerned, 
as  if  it  were  expressed,  that  the  specific  combination  or  thing  claimed  is  the 
only  part  which  the  patentee  regards  as  new." 

See,  also,  Voss  v.  Fisher,  113  U.  S.  213.  —  Carter  v.  Hanes,  78  Fed.  346; 
24  C.  C.  A.  128. 

The  patent  should  not  be  limited  to  the  particular  form  of  devices  described 
but  it  should  be  limited  to  cover  a  combination  of  these  elements  or  their 
known  equivalents,  at  the  date  of  the  patent.  —  Beach  v.  Hobbs,  92  Fed. 
146;   34  C.  C.  A.  248. 

Winans  v.  Denmead,  15  How.  330;  Machine  Co.  v.  Lancaster,  129  U.  S.  263; 
Tilghman  v.  Proctor,  102  U.  S.  707;    Proctor  v.  Bennis,  36  Ch.  Div.  740. 


§  6o6.     Combinations  —  Necessary  Elements. 

One  who  has  made  a  combination  of  three  elements,  all  necessary  to  opera- 
tion, cannot  by  making  a  claim  for  two  of  them  forestall  another  who  has 
so  combined  these  two  elements  that  they  perform  the  same  function  as 
the  three  elements.  —  National  v.  Hedden,  148  U.  S.  482;  37  L.  Ed.  529; 
13  S.  Ct.  680. 

The  magnetic  current  itself,  is  not  a  part  of  the  device,  any  more  than  is 
water  an  element  of  a  water-wheel.  In  the  one,  the  water  is  the  power 
and  in  the  other  the  electric  current,  and  the  devices  are  contrived  for  the 
purpose  of  controlling  and  applying  the  power.  —  Western  v.  Sperry,  58 
Fed.  186;  7  C.  C.  A.  164. 


§  607  INVENTION  537 

The  specification  contains  no  suggestion  that  this  particular  arrangement 
of  parts  may  be  dispensed  with;  and  when  a  patentee  has  there  carefully 
and  specifically  pointed  out  the  details  of  a  structure,  which  details,  as  he 
shows,  discharge  a  stated  function,  it  is  not  for  the  courts  to  declare  them 
immaterial.  —  Philadelphia  v.  Weeks,  61  Fed.  405;  9  C.  C.  A.  555. 

A  mechanical  connection  would  not  be  indispensable,  unless  there  was  a 
necessity  for  it,  or  unless  a  mechanical  connection  created  a  difference  in 
the  means  by  which  the  result  was  accomplished,  which,  in  view  of  the  narrow- 
ness of  the  invention,  was  a  radical  difference.  —  Westinghouse  v.  N.  Y.  63 
Fed.  962;  11  C.  C.  A.  528. 

Where  an  alternative  construction  is  shown,  dispensing  with  one  element 
made  essential  to  the  principal  construction  such  element  cannot  be  claimed 
as  essential  in  itself.  —  Wells  v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Trimmer  v.  Stevens,  137  U.  S.  423. 

If  the  broader  of  two  claims  is  valid,  the  narrower  for  the  same  combination 
with  limitations  which  include  some  additional  minor  improvements,  is 
also  valid.  —  Schenck  v.  Singer,  77  Fed.  841 ;  23  C.  C.  A.  494. 

It  is  difficult  to  understand  why,  if  the  drawings  should  be  considered  as 
controlling  the  "  scroll  shaped  or  convoluted  plate,"  which  they  also  depict, 
ought  not  to  be  regarded  as  a  material  feature,  and  this  plate,  it  is  admitted, 
the  appellees  do  not  use.  —  Boynton  v.  Norris,  87  Fed.  225;  30  C.  C.  A.  617. 

Note:  The  attempt  here  was  to  introduce  an  element  into  a  claim  to  make 
the  case  by  reading  in  a  minor  element  shown  and  described  as  a  preferred 
form  but  not  made  an  element  of  the  claim  itself,  and  the  court  held  it  could 
not  be  so  read  in. 

Each  element  of  the  combination  set  forth  in  this  claim  is  distinct  in  its 
character,  and  clearly  and  specifically  described,  and  there  is  nothing  in  its 
structure  to  make  it  an  exception  to  the  general  rule,  that  every  part  of 
the  combination  claimed  is  conclusively  presumed  to  be  material,  so  that 
if  one  of  its  elements  is  omitted,  the  thing  claimed  does  not  exist.  —  Spear  v. 
Kelsey,  158  Fed.  622;  85  C.  C.  A.  444. 


§  607.     Combinations  —  New  Result. 

Improvements  in  an  apparatus  may  be  valid,  if  new  and  if  they  accom- 
plish a  new  and  useful  result,  even  though  all  the  elements  of  the  same  are 
old,  provided  the  combination  or  arrangement  of  the  elements  is  new  and 
of  such  a  character  as  to  involve  invention.  —  Fuller  v.  Yentzer,  94  U.  S. 
299;    24  L.  Ed.   107. 

Dissenting:  Waite,  Strong,  Miller,  Bradley. 

The  combination  of  old  and  well  known  elements  so  as  to  produce  a  useful 
machine  which  is  new  is  patentable.  —  Wicke  v.  Ostrum,  103  U.  S.  461; 
26  L.  Ed.  409. 

A  combination  is  patentable  only  when  the  essential  elements  of  which 
it  is  composed  produce  by  their  joint  action  a  new  and  useful  result,  or  an 
old  result  in  a  cheaper  or  otherwise  more  advantageous  way.  —  Stephenson 
v.  Brooklyn,  114  U.  S.  149;  29  L.  Ed.  58;  5  S.  Ct.  777. 

Hailes  v.  Van  Wormer,  87  U.  S.  35.3;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Pickering  v.  McCullough,  104  U.  S.  310. 


538  THE    FIXED    LAW   OF   PATENTS  §  608 

To  sustain  a  patent  on  a  combination  of  old  devices  it  is  well  settled  that 
a  new  result  must  be  obtained  which  is  due  to  the  joint  and  co-operating 
action  of  all  the  old  elements.  Either  this  must  be  accomplished  or  a  new 
machine  of  distinct  character  and  function  must  be  constructed. —  Brinker- 
hoff  v.  Aloe,  146  U.  S.  515;  36  L.  Ed.  1068;  13  S.  Ct.  221. 

Pickering  v.  McCullough,  104  U.  S.  310;  Hailes  v.  Van  Wormer,  87  U.  S.  353; 
Double  Pointed  v.  Two  Rivers,  9  Biss.  258;  Metropolitan  v.  Young,  14  Blatchf. 
46. 

The  use  of  cast  lines  of  type,  as  the  unit  of  composition,  instead  of  individ- 
ual type,  is  an  improvement  in  the  art  of  unsurpassed  value.  Not  only,  then, 
are  the  combinations  novel,  but  the  result  is  entirely  new  and  highly  bene- 
ficial. In  our  judgment  these  inventions  are  fundamental,  coming  within 
the  principle  of  the  ruling  in  Morley  v.  Lancaster,  129  U.  S.  263.  We  find 
nothing  in  the  prior  art  to  limit  these  claims,  or  to  deprive  the  patentee  of 
a  liberal  construction  thereof.  —  Rogers  v.  Mergenthaler,  64  Fed.  799;  12 
C.  C.  A.  422. 

The  argument  that  the  claim  is  void  for  lack  of  novelty  if  construed  to 
cover  a  stiff  sectional  brush,  because  such  brushes  were  old,  loses  sight  of 
the  distinction,  which  we  have  endeavored  to  point  out,  that  it  is  not  the 
brush  alone  which  gives  patentability  to  the  claim,  but  the  novel  motion  of 
the  brush.  It  would  be  better  to  hold  the  patent  invalid  at  the  outset  than 
to  destroy  it  by  the  illiberal  construction  for  which  the  appellant  contends. 
Few  patents  can  survive  if  such  criticisms  are  allowed  to  prevail.  —  Ci- 
miotti  v.  American,  115  Fed.  498;  53  C.  C.  A.  230. 


§  608.     Combinations  —  Old    Elements,  New   Results. 

The  combination  must  be  new;  and  if  productive  of  new  and  useful  re- 
sults, and  not  a  mere  aggregation  of  results,  it  might  be  the  subject  of  a 
patent,  though  all  the  parts  were  used  before.  —  Dane  v.  Chicago,  131  U.  S. 
cxxvi,  app.;  23  L.  Ed.  82. 

If  a  combination  of  old  elements,  as  such,  produces  no  new  and  useful 
results,  there  can  be  no  doubt  but  that  the  combination  is  unpatentable.  — 
Palmer  v.  Corning,  156  U.  S.  342;  39  L.  Ed.  445;  15  S.  Ct.  381. 

Hailes  v.  Van  Wormer,  87  U.  S.  350;  Reckendorfer  v.  Faber,  92  U.  S.  347; 
Pickering  v.  McCullough,  104  U.  S.  310;    Thatcher  v.  Burtis,  121  U.  S.  286. 

The  mere  fact  that  the  patented  invention  is  but  a  combination  of  old 
ingredients  or  materials  is  not  a  tenable  objection  to  the  patent,  since  it  is 
a  general  rule  that  a  patentable  invention  may  consist  entirely  in  a  new 
combination  or  arrangement  of  old  and  well-known  ingredients  or  elements, 
provided  a  new  and  useful  result  is  thereby  attained.  —  Thomson  v.  Citizens 
Nat.  Bk.,  53  Fed.  250;  3  C.  C.  A.  518. 

Seymour  v.  Osborne,  11  Wall.  516;  Rees  v.  Gould,  15  Wall.  187. 

If  it  were  essential  to  a  valid  patent  for  any  combination  whatever  that 
the  mode  of  action  of  every  element  included  in  the  combination  should  be 
changed  by  each  of  the  others,  it  would  have  been  impossible  to  sustain 
several  combination  patents  which  have  in  fact  been  upheld,  as,  indeed, 
it  would  be  difficult  to  conceive  of  any  mechanical  combination  which  would 
be  both  possible  and  patentable.  A  screw  or  a  lever  can  act  only  in  one- 
way, yet  a  screw  and  a  lever  may  so  act  in  combination  as  to  produce,  in  con- 
sequence of  their  combination,  a  single,  new  and  useful  result.  Moreover, 
there  is  no  intimation  in  the  opinion  in  Pickering  v.  McCullough  of  a  purpose 


§  608  INVENTION  539 

to  overrule  the  earlier  decisions  with  which  (upon  the  view  taken  of  it  by 
counsel)  it  would  appear  to  conflict,  nor  has  it  in  later  cases  (which,  of  course, 
are  to  be  followed)  prevented  the  Supreme  Court  from  declaring  the  law  of 
this  subject  in  accordance  with  our  misunderstanding  of  it.  —  National  v. 
American,  53  Fed.  367 ;  3  C.  C.  A.  559. 

Explaining  Pickering  v.  McCullough,  104  U.  S.  310. 

Blake  v.  Robertson,  94  U.  S.  728;  Parks  v.  Booth,  102  U.  S.  96;  Loom  Co. 
v.  Higgins,  105  U.  S.  580;  Clough  v.  Barker,  106  U.  S.  166;  Railway  v.  National, 
110  U.  S.  229;   Lock  Co.  v.  Sargent,  117  U.  S.  536. 

But  the  mere  fact  that  the  patentee's  invention  is  but  the  combination  of  old 
ingredients  or  materials  is  no  answer  to  the  patent,  for  it  is  a  general  rule 
that  a  patentable  invention  may  consist  entirely  in  a  new  combination  or 
arrangement  of  old  or  well  known  ingredients  or  elements,  provided  a  new 
and  useful  result  is  thereby  attained.  —  Griswold  v.  Harker,  62  Fed.  389; 
10  C.  C.  A.  435. 

Thomson  v.  Bank,  53  Fed.  250;  Seymour  v.  Osborne,  11  Wall.  516;  Gould  v. 
Rees,  15  Wall.  187. 

Drawings  and  a  model  have  been  submitted  showing  how  easy  it  is  to 
unite  the  C.  patent  with  the  W.  patent.  In  our  view  this  is  but  wisdom 
after  the  fact.  The  combination  shown  in  the  drawings  and  model  submitted 
is  a  combination  suggested  by  the  patent  in  suit,  and  which  but  for  the  patent 
in  suit,  would  seem  much  more  difficult  than  it  now  does.  More  than  this,  it 
involved  patentable  invention  to  see  that  a  union  of  the  elements  of  the  W. 
patent  with  those  of  the  C.  patent  would  have  a  beneficial  result. —  Columbus 
v.  Robbins,  64  Fed.  384;  12  C.  C.  A.  174. 

The  elaborate  effort  of  the  defendant  to  show  that  the  different  elements 
of  the  Hook  machine  existed  in  scattered  form  in  mechanism  relating  to 
arts  remote  from  that  of  a  continuous  cigarette  rod  was  superfluous.  It  is 
admitted  by  the  complainant  that  each  element  per  se  was  old,  and  it  is  prac- 
tically admitted  by  the  defendant  that  the  combination  of  the  several  ele- 
ments was  new.  —  Bonsack  v.  Elliott,  69  Fed.  335 ;  16  C.  C.  A.  250. 

If  there  is  anything  new  or  patentable  in  the  construction  described  by 
Murphy,  it  is  not  in  any  of  the  elements  he  has  used,  but  in  the  novelty 
of  their  combination.  His  patent  must  stand,  if  it  can  be  maintained  at  all, 
-on  the  principle  that  a  new  combination  or  arrangement  of  old  or  well  known 
ingredients,  by  which  a  new  and  useful  result  is  attained,  may  be  a  patentable 
invention.  —  Murphy  v.  Excelsior,  76  Fed.  965 ;  22  C.  C.  A.  658. 

Griswold  v.  Harker,  62  Fed.  389;  Thomson  v.  Bank,  53  Fed.  250;  Seymour  v. 
Osborne,  11  Wall.  516;   Gould  v.  Rees,  15  Wall.  187. 

In  Hoffman  v.  Young,  2  Fed.  74,  the  claim  in  a  combination  patent  was 
sustained  on  the  ground  that  it  presented  evidence  of  invention,  because 
a  new  result  had  been  produced,  though  it  was  conceded  the  case  was  near 
the  boi'der  line  of  nonpatentability.  In  National  v.  American,  53  Fed.  369, 
this  court  decided  that  the  invention  there  in  suit  achieved  by  the  inventor 
was  absolutely  and  entirely  new,  and  had  not  by  any  means  been  previously 
attained.  In  each  of  these  cases,  cited  by  counsel  for  the  appellee,  the 
production  of  a  new  result  is  made  the  test  of  patentability.  On  the  other 
hand,  numerous  authorities  may  be  found  in  which  patents  for  combinations 
in  machinery  and  in  compositions  have  been  held  void  for  want  of  invention. 
We  refer  to  a  few  only:  Vinton  v.  Hamilton,  104  U.  S.  485;  Heald  v.  Rice, 
104  U.  S.  737;  Heating  Co.  v.  Burtis,  121  U.  S.  286.  In  Aron  v.  Railroad  Co., 
132  U.  S.  84,  a  patentee  had  made  use  of  devices  of  earlier  patents.    All  that 


540  THE   FIXED   LAW   OF   PATENTS  §  609 

he  did  was  to  adapt  them  to  the  special  purpose  to  which  he  contemplated 
their  application,  by  making  modifications  which  did  not  require  invention, 
but  only  the  exercise  of  ordinary  mechanical  skill.  This  was  held  insufficient 
to  sustain  a  patent.  —  Green  v.  American,  78  Fed.  119;  24  C.  C.  A.  41. 

It  is  insisted  that  novelty  of  the  combination  can  only  be  destroyed  by 
showing  that  all  of  its  elements  have  been  used  together  before,  and  in  the 
same  relation  to  each  other.  The  contrary  is  well  established.  —  Kelly  v. 
Clow,  89  Fed.  297 ;  32  C.  C.  A.  205. 

Thompson  v.  Boisselier,  114  U.  S.  1;  Hill  v.  Wooster,  132  U.  S.  693;  Burt  v. 
Evory,  133  U.  S.  349;  Pickering  v.  McCullough,  104  U.  S.  310;  Florsheim  v. 
Schilling,  137  U.  S.  634;  Adams  v.  Stamping  Co.  141  U.  S.  539;  Deere  v.  Plow- 
Works,  56  Fed.  841;   Lumber  Co.  v.  Perkins,  80  Fed.  528. 

Every  element  of  the  combination  in  controversy  was  unquestionably 
old,  but  there  was  nothing  in  the  prior  art  to  suggest  a  rotary  brush  working 
in  the  environment  shown  in  the  Sutton  patent.  There  was  nowhere  a 
rotary  brush  making  a  "  part  "  on  a  keen  edged  stretcher  bar  and  brushing 
the  fur  down  and  out  of  reach  of  the  cutting  knives  during  the  moment 
necessary  for  the  removal  of  the  stiff  hairs.  It  is  the  presence  of  this  element 
in  the  combination  which  produces  the  new  result  and  entitles  its  originator 
to  protection.  —  Cimiotti  v.  American,  115  Fed.  498;  53  C.  C.  A.  230. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Topliff  v.  Topliff,  145  U.  S.  156;  Hobbs 
v.  Beach,  180  U.  S.  383. 

Even  if  it  be  conceded  that  the  individual  elements  composing  the  com- 
bination are  to  be  found  in  the  prior  art,  yet  to  make  the  selection  of  these 
parts  from  the  prior  art,  and  to  combine  them  so  as  to  produce  a  clutch  which 
is  at  the  same  time  simple,  compact,  effective  and  useful,  required  more  than 
ordinary  mechanical  skill.  —  Fairbanks  v.  Stickney,  123  Fed.  79;  59  C.  C.  A. 
209. 

It  is  not  of  consequence  that  the  elements  of  each  claim  may  be  old,  for 
the  claims  are  for  a  combination,  and  if  the  combination  be  new,  or  if  by  a 
new  mode  of  organization  new  or  better  results  are  obtained,  the  patent  may 
be  sustained.  —  Dunn  v.  Standard,  163  Fed.  521 ;  C.  C.  A. 

Davis  v.  Perrv,  120  Fed.  941;  Brown  v.  Huntington,  134  Fed.  735;  Hobbs  v. 
Gooding,  111  Fed.  403;  Dececo  v.  Gilchrist,  125  Fed.  293;  Western  v.  North, 
135  Fed.  80;  Sanders  v.  Hancock,  128  Fed.  424;  Stilwell  v.  Eufaula,  117  Fed.  410. 

That  the  fact  that  all  of  the  elements  of  a  combination  may  be  found  in 
the  prior  art,  and  apparently  in  combination  in  the  claims  of  prior  patents, 
does  not  anticipate  unless  when  read  in  connection  with  the  specification 
of  the  patent  in  suit  the  structure  and  function  of  the  invention  appears,  see 
—  Warren  v.  Blake,  163  Fed.  263;  C.  C.  A. 

§  609.     Combinations  —  Old  Elements,  Old  Result. 

None  of  the  separate  elements  of  which  the  combination  is  composed 
are  claimed  as  the  invention  of  the  patentee,  therefore  none  of  them  standing 
alone  are  included  in  the  monopoly  of  the  patent.  —  Rowell  v.  Lindsay,  113 
U.  S.  97;  28  L.  Ed.  906;  5  S.  Ct.  507. 

Corn  Planter  Pat.  23  Wall.  224;  Merrill  v.  Youmans,  94  U.  S.  573;  Water  v. 
Desper,  101  U.  S.  332;   Miller  v.  Brass  Co   104  U.  S.  350. 

The  mere  adaptation  of  an  old  device  to  a  new  combination,  involving  no 
functional  change,  is  not  invention.  —  Royer  v.  Roth,  132  U.  S.  201 ;  33 
L.  Ed.  322;   10  S.  Ct.  58. 


§  610  INVENTION  541 

Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  Pomice  v.  Ferguson,  119  U.  S. 
335;  Thatcher  v.  Burtis,  121  U.  S.  286;  Dreyfus  v.  Searle,  124  U.  S.  60;  Hendy 
v.  Golden,  127  U.  S.  370. 

The  combination  of  old  devices  into  a  new  article,  without  producing  any 
new  mode  of  operation  is  not  invention.  —  Florsheim  v.  Schilling,  137  U.  S. 
64;  34  L.  Ed.  574;  11  S.  Ct.  20. 

Burt  v.  Evory,  133  U.  S.  349;  Hailes  v.  Van  Wormer,  87  U.  S.  353;  Recken- 
dorfer  v.  Faber,  92  U.  S.  347;  Double  Pointed  v.  Two  Rivers,  109  U.  S.  117; 
Bussey  v.  Excelsior,  110  U.  S.  131;  Phillips  v.  Detroit,  111  U.  S.  604;  Stephenson 
v.  Brooklyn,  114  U.  S.  149;  Beecher  v.  Atwater,  114  U.  S.  523;  Thatcher  v. 
Burtis,  121  U.  S.  286;   Hendy  v.  Golden,  127  U.  S.  370. 

A  new  combination  of  old  elements,  by  which  an  old  result  is  attained  in  a 
more  economical  and  efficient  way  may  be  protected  bv  a  patent.  —  Ide  v. 
Trorlicht,  115  Fed.  137;  53  C.  C.  A.  341. 

National  v.  Interchangeable,  106  Fed.  693;  Seymour  v.  Osborne,  11  Wall. 
516;   Rees  v.  Gould,  15  Wall.  187;   Thomson  v.  Bank,  53  Fed.  250. 

His  device  may  not  have  been  a  great  improvement,  but  it  was  certainly 
a  marked  advance  in  the  art,  and,  in  view  of  the  numerous  less  successful 
attempts  to  take  the  step  he  took  which  were  rewarded  with  patents  by  the 
government,  and  in  view  of  the  evident  inability  of  those  inventors  and  of 
the  proprietors  of  mere  mechanical  skill  to  reach  the  point  to  which  Collins 
attained,  the  title  of  inventor  ought  not  to  be  denied  him.  His  invention 
is  one  of  those  intermediate  steps  in  the  gradual  progress  of  a  useful  art 
toward  perfection  which  are  evidenced  by  the  great  majority  of  patented 
inventions,  and  it  falls  within  the  familiar  rules  that  a  new  combination  of 
old  elements  by  which  an  old  result  is  attained  in  a  more  facile,  economical, 
and  efficient  way  may  be  protected  by  a  patent.  —  Anderson  v.  Collins,  122 
Fed.  451 ;  58  C.  C.  A.  669. 

National  v.  Interchangeable,  106  Fed.  693;  Seymour  v.  Osborne,  11  Wall.  516; 
Rees  v.  Gould,  15  Wall.  187;  Thomson  v.  Bank,  53  Fed.  250;  Ide  v.  Trorlicht, 
115  Fed.  137. 


§  6 io.     Combinations  —  Presumptions. 

A  claim  for  a  combination  carries  with  it  an  implication  that  the  separate 
elements  are  old.  —  Westinghouse  v.  Edison,  63  Fed.  588;  11  C.  C.  A.  342. 
Corn  Planter  Pat.  23  Wall.  181. 

When  a  combination  is  claimed,  there  arises  an  implied  concession  that 
the  elements  are  old  and  not  separately  patentable.  —  Hay  v.  Heath,  71 
Fed.  411;  18  C.  C.  A.  157. 

The  claim  under  consideration  being,  as  finally  amended  in  the  patent 
office,  "  for  a  combination,"  it  would  seem  clear  that  we  may  hold  that  the 
devices  entering  into  such  combination  are  old  and  common  property.  — 
Birmingham  v.  Gates,  78  Fed.  350;  24  C.  C.  A.  132. 

Corn  Planter  Patent,  23  Wall.  181. 

The  invention  claimed  is  a  combination  of  the  elements.  This  implies  that 
all  the  rest  is  old,  or,  at  least,  that  the  patentee  does  not  so  far  as  this  patent 
is  concerned,  claim  the  elements  separately.  —  St.  Louis  v.  National,  87 
Fed.  885;  31  C.  C.  A.  265. 

Corn  Planter  Pat.  23  Wall.  181. 


542  THE   FIXED   LAW   OF    PATENTS  §§  611-612 

§  611.     Combinations  —  Sub-Combinations. 

Undoubtedly  a  patentee  may  claim  and  obtain  a  patent  for  an  entire 
combination  or  process,  and  also  for  such  parts  of  the  combination  or  process 
as  are  new  and  useful,  or  he  may  claim  and  obtain  a  patent  for  both.  —  Rail- 
road v.  DuBois,  79  U.  S.  47;  20  L.  Ed.  265. 

A  sub-combination  may  be  the  subject  of  a  claim  for  an  improvement, 
and  such  sub-combination  in  combination  with  the  machine  or  apparatus  may 
be  the  subject  of  a  claim.  —  Parks  v.  Booth,  102  U.  S.  96;  26  L.  Ed.  54. 

Many  subcombinations,  although  new,  are  not  useful,  except  to  perform 
their  appropriate  functions  in  the  machine  of  which  they  are  a  part.  The 
description  in  the  patent  of  the  whole  machine,  and  of  the  means  or  mode 
by  which  the  subcombination  is  brought  into  co-operative  relation  with  the 
other  parts,  usually  indicates  how  the  subcombination  may  effect  a  useful 
result.  When  this  is  so,  the  combination  need  not  be  operative  alone,  because 
(to  use  the  language  of  Mr.  Walker)  "  utility  is  justly  ascribed  to  things  which 
have  their  use  in  co-operating  with  other  things  to  perform  a  useful  work." 
—  Thomson-Houston  v.  Black  River,  135  Fed.  759;  68  C.  C.  A.  461. 

Taylor  v.  Sawyer,  75  Fed.  301;  Loom  Co.  v.  Higgins,  105  U.  S.  585;  Thomson- 
Houston  v.  Elmira,  71  Fed.  396. 

§  612.    Combinations  —  Miscellaneous  Rulings. 

Cases  arise  where  a  patentee,  having  invented  a  new  and  useful  combination 
consisting  of  several  ingredients,  which,  in  combination,  compose  an  organ- 
ized machine,  also  claims  to  have  invented  new  and  useful  combinations 
of  fewer  numbers  of  the  ingredients  and,  in  such  cases,  the  law  is  well  settled 
that,  if  the  several  combinations  are  new  and  useful  and  will  severally  produce 
new  and  useful  results,  the  inventor  is  entitled  to  a  patent  for  the  several 
combinations,  provided  that  he  complies  with  the  requirement  of  the  Patent 
Act  and  files  in  the  Patent  Office  a  written  description  of  each  of  the  alleged 
new  and  useful  combinations  and  of  the  manner  of  making,  constructing  and 
using  the  same. 

He  may  give  the  description  of  the  several  combinations  in  one  specifica- 
tion and,  in  that  event,  he  can  secure  the  full  benefit  of  the  exclusive  right 
to  each  of  the  several  inventions,  by  separate  claims  referring  back  to  the 
description  in  the  specification.  —  Gill  v.  Wells,  89  U.  S.  1 ;  22  L.  Ed.  699. 

The  object  of  the  patented  combination  was  the  accomplishment  of  a 
particular  result.  But  this  result  or  idea  is  not  monopolized  by  the  patent. 
The  thing  patented  is  the  particular  means  devised  by  the  inventor  by  which 
the  result  is  attained,  leaving  it  open  to  any  other  inventor  to  accomplish 
the  same  result  by  other  means.  To  constitute  identity  of  invention,  and 
therefore  infringement,  not  only  must  the  result  attained  be  the  same,  but 
in  case  the  means  used  for  its  attainment  is  a  combination  of  known  elements, 
the  elements  combined  in  both  cases  must  be  the  same,  and  combined  in  the 
same  way,  so  that  each  element  shall  perform  the  same  function,  provided, 
however,  that  the  differences  alleged  are  not  merely  colorable,  according  to  the 
rule  forbidding  the  use  of  known  equivalents.  —  Electric  v.  Hall,  114  U.  S. 
87;  29  L.  Ed.  96;  5  S.  Ct.  1069. 

Prouty  v.  Ruggles,  16  Pet.  336;  Silsby  v.  Foote,  14  How.  217;  McCormick  v. 
Talcott,  20  How.  402;  Vance  v.  Campbell,  1  Black,  427;  Eames  v.  Godfrev,  1 
Wall.  78;  Dunbar  v.  Myers,  94  U.  S.  187;  Fuller  v.  Yentzer,  94  U.  S.  288;  Im- 
hauser  v.  Buerk,  101  U.  S.  647;  Gage  v.  Herring,  107  U.  S.  640;  Seymour  v. 
Osborne,  11  Wall.  516;  Gould  v.  Rees,  15  Wall.  194;  Gill  v.  Wells,  22  Wall.  1; 
McMurray  v.  Mallory,  111  U.  S.  97;   Fay  v.  Cordesman,  109  U.  S.  408. 


§  612  INVENTION  543 

The  most  that  can  be  said  of  the  invention  of  the  patent  in  suit,  is  that 
it  shows  on  the  part  of  the  inventor  great  industry  in  acquiring  a  thorough 
knowledge  of  what  others  had  done  in  a  rapid  and  improved  mode  by  the 
various  devices  perfected  by  patents  for  that  purpose,  good,  judgement  in 
selecting  and  combining  the  best  of  them  with  no  little  mechanical  skill 
in  their  application ;  but  it  presents  no  discoverable  trace  of  original  thought. 
Busell  v.  Stevens,  137  U.  S.  423;  34  L.  Ed.  719;  11  S.  Ct.  150. 

A  grating  which  performed  no  mechanical  function  in  the  combination 
claimed  in  an  improvement  in  the  construction  and  operation  of  prisons 
cannot  be  considered  as  a  part  of  a  patentable  mechanical  combination.  — 
Fond  Du  Lac  v.  May,  137  U.  S.  395;  34  L.  Ed.  714;  11  S.  Ct.  98. 

Brown  v.  Davis,  116  U.  S.  237;    Forncrook  v.  Root,  127  U.  S.  176. 

It  is  true  that  the  combination  of  known  devices  in  such  manner  as  to 
produce  results  new  in  kind  or  character  is  patentable ;  yet  when  patents  for 
the  combination  of  known  devices  in  such  manner  as  to  produce  results 
new  and  better  in  degree  only  than  others  previously  produced  are  brought 
before  the  courts,  they  are  held  to  be  non-patentable.  —  Ashton  v.  Coale,  52 
Fed.  314;  3  C.  C.  A.  98. 

The  constituent  elements  of  the  claims  in  suit  are  proved  and  conceded 
to  be  all  old.  As  combined,  they  are  without  essential  change  of  individual 
structure  or  function,  and  they  effect  by  their  co-operation,  no  distinctly  new 
result.  In  the  specification  of  the  patent,  the  only  novelty  claimed  is  in 
features  of  construction.  The  one  feature  insisted  upon  in  argument  is 
the  diverging  and  adjustable  arms,  and  it  is  the  adjustability  on  which  chief 
reliance  seems  to  be  placed.  But  there  is  no  novelty  in  that,  nor  in  the  means 
of  producing  it.  —  Deere  v.  Case,  56  Fed.  841 ;  6  C.  C.  A.  157. 

Florsheim  v.  Schilling,  137  U.  S.  64;  Burt  v.  Evory,  133  U.  S.  349;  Pickering 
v.  McCullough,  104  U.  S.  310;  Hill  v.  Wooster,  132  U.  S.  693;  Thompson  v. 
Boisselier,  114  U.  S.  1. 

In  determining  whether  a  new  combination  of  old  elements  constitutes 
invention,  the  most  important  and  controlling  considerations  are,  the  in- 
trinsic novelty  and  utility  of  the  concrete  invention.  —  Kelly  v.  Clow,  89 
Fed.  297;  32  C.  C.  A.  205. 

A  plausible  and  persuasive  argument  may  be  made  that  this  combination 
falls  under  either  class  of  cases  (Atlantic  Works  v.  Brady,  107  U.  S.  192  or 
Loom  Co.  v.  Higgins,  105  U.  S.  580)  that  it  might  have  been  and  was  pro- 
duced by  the  skill  of  the  trained  mechanic  or  by  the  intuitive  genius  of  the 
inventor.  The  patent  which  describes  it,  however,  raises  a  presumption  in 
favor  of  its  novelty  and  its  patentability.  It  was  a  new  combination.  No 
such  separate  yet  uniform  grouping  of  corresponding  annunciators  and 
answering  jacks  with  a  multiple  switchboard  had  ever  been  made  or  used 
before  Seeley  conceived  and  described  it.  That  combination  was  not  a  pioneer ; 
perhaps  it  was  not  a  great  invention.  But  it  discharged  the  functions  of  the 
multiple  switchboard,  its  annunciators,  and  switches  more  speedily  and  effi- 
ciently than  they  had  ever  been  performed  without  it,  and  a  new  combination 
of  old  elements  by  which  an  old  result  is  attained  in  a  more  facile,  economical, 
and  efficient  way  may  be  protected  by  a  patent.  —  Kinloch  v.  Western,  113 
Fed.  659;  51  C.  C.  A.  369. 

National  v.  Interchangeable,  106  Fed.  693;  Seymour  v.  Osborne,  11  Wall.  516; 
Gould  v.  Rees,  15  Wall.  187;   Thomson  v.  Bank,  53  Fed.  250. 

The  addition  of  the  drill-rest  does  not  defeat  the  claim ;  for  assuming  that 
it  is  not  of  itself  sufficient  to  support  a  patent,  the  uniting  it  with  a  combina- 


544  THE    FIXED    LAW    OF    PATENTS  §  613 

tion  which  is  patentable  cannot  render  the  new  combination  invalid.  Com- 
bined with  the  new  device,  the  conjoint  mechanical  effect  is  new.  —  Eames  v. 
Worcester,  123  Fed.  67;  60  C.  C.  A.  37. 

If  it  be  true  that  the  elements  which  make  up  the  combination  had  never, 
before  the  date  of  that  patent,  been  placed  in  precisely  the  same  relation  to 
each  other  as  he  placed  them,  yet  it  is  by  no  means  certain  that  the  con- 
struction of  his  machine  called  for  the  exercise  of  the  inventive  faculty.  — 
Wilson  v.  Townley,  125  Fed.  491;  60  C.  C.  A.  327. 

Convinced,  as  we  are,  that  the  plaintiff  has  supplied  features  that  have 
brought  success,  where  others  who  had  preceded  him  failed,  we  are  inclined 
to  scan  narrowly  the  means  by  which  it  has  been  obtained.  The  mechanical 
elements  combined  are  no  doubt  old,  and  so,  to  a  certain  extent,  may  be  the 
result  accomplished.  But  nowhere  do  we  find  the  same  combination  em- 
ployed to  produce  it,  and  the  efficiency  attained  is  so  much  in  advance  of 
what  had  gone  before  as  of  itself  to  suggest,  if  it  does  not  prove,  the  exercise 
of  inventive  skill.  —  Boyer  v.  Keller,  127  Fed.  130;  62  C.  C.  A.  244. 

Sessions  v.  Romadka,  145  U.  S.  29;  Hobbs  v.  Beach,  180  U.  S.  383;   Taylor  v. 
Sawyer,  75  Fed.  301;    Stevenson  v.  McFassell,  90  Fed.  707;    National  v.  I 
changeable,  106  Fed.  693. 

The  invention  is  not  a  generic  one,  far  from  it.  Every  element  of  the 
claims,  considered  separately  and  in  different  environment,  was  old,  but 
Yawman  was  the  first  to  assemble  them  in  the  combinations  in  contro- 
versy. By  so  doing  he  made  an  advance,  which,  though  it  did  not  go  far, 
entitled  him  to  protection.  —  Yawman  v.  Vetter,  159  Fed.  443;  86  C.  C.  A. 
473. 

Hobbs  v.  Beach,  180  U.  S.  383;  Magowan  v.  Packing  Co.  141  U.  S.  332;  Davis 
v.  Perry,  120  Fed.  941;   Hutter  v.  Stopper  Co.  128  Fed.  283. 

§  613.     Date  of  Completion. 

A  patent  relates  back,  where  the  question  of  novelty  is  in  issue,  to  the 
date  of  the  invention,  and  not  to  the  time  of  the  application  for  its  issue.  — 
Klein  v.  Russell,  86  U.  S.  433;  22  L.  Ed.  116. 

In  the  absence  of  other  evidence,  the  invention  of  the  patent  is  presumed 
to  be  identical  with  that  disclosed  by  the  application.  —  Drewson  v.  Hartje, 
131  Fed.  734;  65  C.  C.  A.  548. 

Loom  Co.  v.  Higgins,  105  U.  S.  580. 

The  following  opinion  by  Judge  Holt  is  so  complete  a  monograph  upon 
this  subject  that  it  must  be  given  well-nigh  in  full. 

This  is  a  bill  in  equity  under  4920  R.  S.  for  infringement.  The  only 
defense  is  priority  of  invention.  Under  sec.  4920  the  defendant  contends, 
first,  that  Watson  was  the  original  and  first  inventor  of  the  thing  patented, 
and,  second,  that  Thomas  unjustly  obtained  his  patent  for  that  which  was 
in  fact  invented  by  Watson,  who  was  using  reasonable  diligence  in  adapting 
and  perfecting  the  same.  The  first  defense  turns  upon  the  respective  dates 
of  the  Thomas  and  Watson  inventions,  and  the  second  defense  raises  a 
question  of  fact  as  to  Watson's  diligence  in  adapting  and  perfecting  his 
invention.  Thomas  filed  his  application  Dec.  17,  1896,  and  his  patent 
issued  July  26,  1904.  Watson  conceived  his  invention,  illustrated  it  by  a 
drawing,  and  disclosed  it  to  others  as  early  as  Jan.  10,  1896.  He  reduced  his 
invention  to  practice  by  the  building  of  a  machine  in  Apr.,  1897.  He  filed 
his  application  Mar.  11,  1898,  and  his  patent  issued  Sept.  26,  1899.  It 
may  be  noted,  first,  that  Thomas'  application  antedates  Watson's  reduction 


§  613  INVENTION  545 

to  practice  by  4  months,  and  Watson's  application  by  15  months;  and 
second,  that  Watson's  conception  antedates  Thomas'  application  by  11 
months.  The  main  controversy  with  respect  to  the  Thomas  invention  is 
whether  the  date  of  his  invention  is  the  date  of  his  application,  Dec.  17, 
1896,  and  the  main  controversy  with  respect  to  the  Watson  invention  is 
whether  the  date  of  his  invention  is  the  date  of  his  conception,  Jan.  10,  1896. 

Under  a  rule  of  the  Patent  Office,  the  filing  of  an  allowable  application 
is  a  constructive  reduction  to  practice.  In  accordance  with  this  rule,  the 
date  of  the  Thomas  invention  was  fixed  as  of  Dec.  17,  1896,  the  date  of  his 
application ;  and  the  burden  of  proof  was  thrown  upon  Watson  to  establish 
the  fact  of  reasonable  diligence  from  the  date  of  his  prior  conception,  Jan. 
10,  1896,  to  the  time  Thomas  filed  his  application.  Upon  this  issue  of  dili- 
gence on  the  part  of  Watson,  the  Examiner  of  Interferences  and  the  Com- 
missioner of  Patents,  and  the  Court  of  Appeals,  D.  C,  found  against  Watson, 
and  adjudged  Thomas  the  prior  inventor,  and  accordingly  a  patent  was  issued 
to  Thomas  under  sec.  4904.  As  a  result  of  the  interference  proceedings,  there 
are  two  outstanding  patents  for  the  same  invention  issued  to  independent 
inventors. 

The  decision  in  interference  proceedings  is  not  conclusive  on  the  question 
of  priority  of  invention.  The  same  question  may  arise  in  subsequent  suits 
instituted  under  sees.  4915,  4918  and  4920,  R.  S.  In  the  present  suit,  the 
question  of  priority  is  raised  under  paragraphs  2  and  4  of  sec.  4920.  In 
order  to  determine  the  question  of  priority  under  these  paragraphs,  we 
must  ascertain  the  respective  dates  of  the  Thomas  and  Watson  inventions. 
If  we  find  the  date  of  the  Thomas  invention  is  prior  to  the  date  of  the  Watson 
invention,  then  Thomas  is  the  original  and  first  inventor,  unless  Watson 
was  using  reasonable  diligence  in  adapting  and  perfecting  his  invention  from 
the  time  of  his  conception.  On  the  other  hand,  if  we  find  that  the  date  of 
the  Watson  invention  is  prior  to  the  date  of  the  Thomas  invention,  then 
Watson  is  the  original  and  first  inventor.  No  question  of  diligence  arises 
regarding  the  Thomas  invention,  because  the  complainant  does  not  under- 
take to  carry  the  date  of  the  Thomas  invention  back  of  his  application,  while 
in  the  case  of  Watson  it  is  sought  to  carry  the  date  of  invention  back  to  his 
conception. 

In  patented  inventions  there  are  several  distinct  stages  of  the  invention. 
Some  patented  inventions  comprise  only  three  stages,  namely,  conception 
(evidenced  by  drawings,  disclosures,  or  models),  application,  patent;  while 
other  patented  inventions  comprise  four  stages,  namely,  conception,  reduc- 
tion to  practice,  application,  patent. 

The  date  of  the  first  class  of  patented  inventions  must  be  either  (1)  the 
date  of  the  patent,  or  (2)  the  date  of  the  application,  or  (3)  the  date  of  the 
conception;  while  the  date  of  the  second  class  must  be  either  (1)  the  date  of 
the  patent,  or  (2)  the  date  of  the  application,  or  (3)  the  date  of  the  reduction 
to  practice,  or  (4)  the  date  of  the  conception. 

When  two  patents  for  the  same  invention  have  been  issued  to  independent 
inventors,  we  understand  the  rule  to  be  that  the  dates  of  their  respective 
inventions  are,  (1)  the  dates  of  the  patents;  (2)  the  dates  of  the  applications, 
provided  the  application  sufficiently  describes  the  invention;  (3)  the  dates  of 
actual  reduction  to  practice ;  (4)  the  dates  of  conception ;  with  this  qualifica- 
tion, that,  if  either  patentee  seeks  to  carry  the  date  of  his  invention  back  to 
the  date  of  his  conception,  he  must  show  reasonable  diligence  in  adapting  and 
perfecting  his  invention,  either  by  actual  reduction  to  practice  or  by  filing 
his  application. 

Applying  this  rule,  it  appears  that  Thomas'  application  of  Dec.  17,  1896, 
carries  the  date  of  his  invention  back  of  Watson's  application,  Mar.  11,  1898, 
and  back  of  Watson's  conception,  Jan.  10,  1896.  It  follows,  therefore,  that 
Watson,  in  order  to  establish  an  earlier  date  than  Thomas,  must  show  that 


546  THE    FIXED    LAW    OF    PATENTS  §  61S 

between  the  date  of  his  conception,  Jan.  10,  1896,  and  the  date  of  his  actual 
reduction  to  practice,  Apr.,  1897,  he  was  "  using  reasonable  diligence  in 
adapting  and  perfecting  "  his  invention. 

The  defendant  contends  that  the  courts  have  adopted  another  and  a 
different  rule  for  determining  the  dates  of  inventions  under  the  patent  laws, 
and  that  rule  is  as  follows:  Inventions  are  divided  into  two  classes,  simple 
and  complicated.  Simple  inventions  may  be  completed  by  drawings  or  dis- 
closure which  sufficiently  describe  the  invention,  while  complicated  inven- 
tions require  for  their  completion  actual  reduction  to  practice.  With  respect 
to  this  theory  of  the  defendant,  it  is  sufficient  to  say  that  it  is  novel  and 
plainly  unsound.  No  such  distinction  between  inventions  is  found  in  the 
statutes,  or  has  ever  been  recognized  by  the  courts  in  any  adjudicated  cases. 
It  may  be  further  observed  that  any  such  artificial  distinction  would  lead  to 
hopeless  confusion  and  great  injustice. 

In  the  present  case  the  question  of  priority  of  invention  involves  two 
fundamental  inquiries :  First,  is  the  date  of  the  patented  invention  as  early 
as  the  date  of  the  application?  In  other  words,  can  Thomas  carry  back  the 
date  of  his  invention  to  the  date  of  his  application?  Second,  is  the  date  of  a 
patented  invention  as  early  as  the  date  of  conception?  In  other  words,  can 
Watson  carry  back  the  date  of  his  invention  to  the  date  of  his  drawing  and 
disclosure? 

First.  With  respect  to  the  first  proposition  it  may  be  said  that  the  law 
is  well  settled  that  the  date  of  a  patented  invention  is  at  least  as  early  as  the 
date  of  the  application,  provided  it  sufficiently  describes  the  invention  to 
enable  those  skilled  in  the  art  to  understand  it;  and  we  have  found  no  de- 
cision in  which  this  rule  is  questioned.  (Quoting  and  reviewing  Walk. 
Pat.  4th  ed.  §  70;  Kearney  v.  Railroad,  32  Fed.  320;  National  v.  Brown,  36 
Fed.  317 ;  Prindle  v.  Brown,  155  Fed.  531 ;  Bates  v.  Coe,  98  U.  S.  31 ;  Barnes 
v.  Walworth,  51  Fed.  88,  affd.  60  Fed.  605 ;  Barbed  Wire  Case,  143  U.  S. 
275;  Miller  v.  Fagle,  151  U.  S.  186;  Westinghouse  v.  Chartiers,  43  Fed.  582.) 

The  rule  of  the  Patent  Office  that  the  filing  of  an  allowable  application  is 
constructive  reduction  to  practice  is  only  the  expression  in  another  form  of 
the  rule  that  the  application  for  a  patented  invention,  if  it  sufficiently  de- 
scribes the  invention,  is  conclusive  evidence  that  the  invention  was  made  at 
least  as  early  as  that  date.  (Quoting  and  reviewing  Lorraine  v.  Thurmond, 
51  O.  G.  1781;  Agawam  v.  Jordan,  7  Wall.  583;  Sevmour  v.  Osborne,  11 
Wall.  516;  Clark  v.  Willimantic,  140  U.  S.  481;  Woodcock  v.  Parker,  Fed. 
Cas.  1813;  Bedford  v.  Hunt,  Fed.  Cas.  1217;  Reed  v.  Cutter,  Fed.  Cas. 
11,645;  Washburn  v.  Gould,  Fed.  Cas.  17,214;  White  v.  Allen,  Fed.  Cas. 
17,535;  Winans  v.  New  York,  Fed.  Cas.  17,864.) 

At  the  same  time  we  have  the  equally  well  settled  rule  that  an  invention 
need  not  be  perfected  and  adapted  to  use,  or  reduced  to  practice,  in  order  to 
obtain  a  valid  patent,  since  no  such  condition  is  contained  in  the  statute. 
Wheeler  v.  Clipper,  Fed.  Cas.  17,493;  Telephone  Cases,  126  U.  S.  1. 

The  cases  which  hold  that  a  rejected  application  is  not  sufficient  to  estab- 
lish priority  of  invention  under  the  statutes  have  no  bearing  on  the  question 
of  the  legal  effect  of  a  complete  and  allowable  application  which  will  result 
or  has  resulted  in  the  granting  of  a  patent.  Corn  Planter  Pat.  23  Wall.  181 ; 
Lyman  v.  Lalor,  Fed.  Cas.  8632;  Northwestern  v.  Philadelphia,  Fed.  Cas. 
10,337. 

Second.  We  have  now  to  consider  the  question  whether  Watson  can  carry 
the  date  of  his  invention  back  to  the  time  of  his  conception,  Jan.  10,  1896. 
This  question  must  be  viewed  from  two  standpoints:  First,  can  it  be  said 
that  Watson's  conception,  drawings  and  disclosure  to  others,  of  themselves, 
or  without  regard  to  his  subsequent  acts,  can  constitute  a  complete  invention 
within  the  meaning  of  the  patent  laws?  Second,  can  Watson  as  a  patentee 
carry  back  the  date  of  his  invention  to  the  time  of  his  conception? 


§  6H  INVENTION  547 

(1)  The  law  appears  to  be  well  established  that  a  conception  evidenced 
by  disclosure,  drawings,  and  even  a  model,  confers  no  rights  upon  an  inventor 
unless  followed  by  some  other  act,  such  as  actual  reduction  to  practice,  or 
filing  an  application  for  a  patent.  A  conception  of  this  character  is  not  a 
complete  invention  under  the  patent  laws.  If  it  did  constitute  an  invention 
under  the  statutes,  then  an  inventor  might  stop  with  his  drawings  and  dis- 
closure, and  hold  the  field  for  all  time  against  a  subsequent  inventor  who  had 
reduced  his  invention  to  practice,  or  who  had  obtained  a  patent.  The  law 
will  not  permit  this.  An  inventor  must  not  stop  with  this  stage  of  his  inven- 
tion, but  he  must  proceed  with  reasonable  diligence^  to  perfect  his  invention, 
either  by  actual  reduction  to  practice,  or  by  filing  his  application  for  a  patent. 
(Quoting  and  reviewing  Detroit  v.  Renchard,  9  Fed.  293;  Reeves  v.  Key- 
stone, Fed.  Cas.  11,660;  Pennsylvania  v.  Simpson,  29  Fed.  288;  Winans  v. 
New  York,  Fed.  Cas.  17,864;  Electric  v.  Hall,  6  Fed.  603;  Draper  v.  Po- 
tomska,  Fed.  Cas.  4072;  Ellithorp  v.  Robertson,  Fed.  Cas.  4408.) 

(2)  The  next  question  we  have  to  consider  is  whether  Watson  as  a  patentee 
can  carry  back  the  date  of  his  invention  to  the  date  of  his  conception ;  that 
is,  to  his  drawing  and  disclosure  of  Jan.  10,  1896.  We  understand  the  true 
rule  to  be  that  a  patentee  who  undertakes  to  carry  back  the  date  of  his 
invention  to  his  drawings  and  disclosure  must  show  reasonable  diligence  in 
adapting  and  perfecting  his  invention,  either  by  actual  reduction  to  practice 
or  by  filing  his  application.  This  rule  is  supported  by  the  great  weight  of 
authority,  and  we  have  found  no  cases  which  directly  hold  that  this  is  not  the 
law,  though  there  are  some  cases  in  which  a  patentee  has  been  permitted  to 
carry  back  his  invention  to  his  drawings  and  disclosure,  where  the  question 
of  diligence  was  not  raised  or  passed  upon.  Loom  Co.  v.  Higgins,  105  U.  S. 
580;  Dodge  v.  Porter,  98  Fed.  624;  Westinghouse  v.  Stanley,  133  Fed.  167. 
No  sound  reason  has  been  advanced  why  the  doctrine  of  diligence  should 
not  apply  to  a  patentee  as  well  as  an  inventor  who  has  not  secured  a  patent. 
On  the  other  hand,  any  such  distinction  in  favor  of  patentees  is  not  in  har- 
mony with  the  patent  laws.  We  have  seen  that  an  invention  in  the  sense  of 
the  patent  law  signifies  a  completed  invention,  and  that  the  earliest  date  of 
an  invention  is  the  time  of  its  completion.  We  have  also  seen  that  an  inven- 
tion may  be  completed  either  by  actual  reduction  to  practice  or  by  filing  a 
complete  and  allowable  application  in  conformity  with  the  statutes. 

This  general  principle,  however,  is  subject  to  this  qualification:  (Here 
follows  a  discussion  of  the  acts  of  July  4,  1836,  sec.  15;  Feb.  21,  1793,  sec. 
6;  and  a  review  of  the  cases  bearing  thereon:  Reed  v.  Cutter,  supra;  Loom 
Co.  v.  Higgins,  supra;  Odell  v.  Stout,  22  Fed.  159;  Reeves  v.  Keystone, 
supra;  Christie  v.  Seybold,  55  Fed.  69;  Merrow  v.  Shoemaker,  59  Fed.  120; 
Detroit  v.  Renchard,  supra;  Pennsylvania  v.  Simpson,  supra;  Electric  v. 
Hall,  supra;  Morgan  v.  Daniels,  153  U.  S.  120).  —  Automatic  v.  Pneumatic, 
166  Fed.  2S8;  C.  C.  A. 

§  614.     Definitions  of. 

The  invention  itself  is  an  intellectual  process  or  operation;  and  like  all 
other  expressions  of  thought,  can  in  many  cases  scarcely  be  made  known, 
except  by  speech.  The  invention  may  be  consummated  and  perfect  and 
may  be  susceptible  of  complete  description  in  words,  a  month  or  even  a 
year  before  it  can  be  embodied  in  a  visible  form,  machine  or  composition 
of  matter.  —  Railroad  v.  Stimpson,  14  Pet.  448;   10  L.  Ed.  535. 

The  complainant  alleges  that  he  has  invented  a  new  and  useful  improve- 
ment in  the  construction  of  jails.  Now  a  jail  can  hardly  come  under  the 
denomination  of  a  "  machine;  "  nor,  though  made  by  hands,  can  it  well 
be  classed  with  "  manufactures;  "  nor,  although  compounded  of  matter  can 
it  be  termed  a  "  composition  of  matter  "  in  the  meaning  of  the  Patent  Act. 


548 


THE    FIXED    LAW    OF    PATENTS 


§614 


"  But  if  the  subject  matter  be  neither  a  machine  nor  a  manufacture  nor  a 
composition  of  matter,"  then,  says  Curtis  Pat.  91,  "it  must  be  an  art,  for 
there  can  be  no  valid  patent  except  it  be  for  a  thing  made  or  for  the  art  or 
process  of  making  a  thing."  Now,  without  attempting  to  define  the  term 
"  art  "  with  logical  accuracy,  we  take  as  examples  of  it,  some  things  which, 
in  their  concrete  form,  exhibit  what  we  all  concede  to  come  within  a  correct 
definition,  such  as  the  art  of  printing,  that  of  telegraphy,  or  that  of  photog- 
raphy. The  art  of  tanning  might  also  come  within  the  category,  because  it 
requires  various  processes  and  manipulations.  The  difficulty  still  exists 
however,  under  which  category  of  the  Patent  Act  an  improvement  in  the 
construction  of  jails  is  to  be  classed  or  whether  under  any.  —  Jacobs  v. 
Baker,  74  U.  S.  295;  19  L.  Ed.  200. 

A  patentable  invention  is  a  mental  result.  It  must  be  new  and  shown  to 
be  of  practical  utility.  Everything  within  the  domain  of  the  conception 
belongs  to  him  who  conceived  it.  The  machine,  process  or  product  is  but 
the  material  reflex  and  embodiment.  —  Smith  v.  Nichols,  88  U.  S.  112;  22 
L.  Ed.  566. 

Reviewed  at  length  by  Justice  Brown  in  McClain  v.  Ortmayer,  141  U.  S. 
419;  35  L.  Ed.  800;  12  S.  Ct.  76. 

A  discovery  which  adds  to  our  knowledge  and  makes  a  substantial  advance 
in  the  useful  arts  is  invention.  —  Magowan  v.  N.  Y.  141  U.  S.  332;  35  L.  Ed. 
781;  12  S.  Ct.  62. 

Atlantic  v.  Brady,  107  U.  S.  192;    Hollister  v.  Benedict,  113  U.  S.  59. 

Specifications  and  claims  are  necessary,  but  inventions  consist  in  things, 
not  in  words.  —  Thomson-Houston  v.  Western,  72  Fed.  530;  19  C.  C.  A.  1. 

It  is  not  mere  novelty.  —  Tiemann  v.  Kraatz,  85  Fed.  437;  29  C.  C.  A.  257. 
Thompson  v.  Boisselier,  114  U.  S.  11;    Gardner  v.  Herz,  118  U.  S.  191. 

As  I  look  at  it,  the  life  germ  of  any  creation  is  not  so  much  the  mechanical 
form  in  which  it  finally  becomes  embodied,  as  the  flash  of  inspiration,  out 
of  the  darkness  in  which  it  lay  concealed,  first  revealed  its  possibility.  The 
possibility  of  a  thing  once  seen,  it  is  of  no  great  moment  that  a  ready  me- 
chanical means  of  bringing  it  into  form  is  at  hand;  nor  that  the  mechanical 
means  used  are  similar  to  those  employed  before  in  the  allied  arts;  nor 
that  any  mind  would  have  seen  the  adaptability,  mechanically,  of  what  al- 
ready existed  to  what  was  now,  for  the  first  time,  about  to  exist.  Invention 
is  not,  in  my  judgment,  confined  to  the  concrete  mechanical  form  into  which 
an  idea  ultimately  evolves.  Invention  is  the  idea  itself,  the  burst  of  new 
thought,  the  discovery;  and  patentable  invention  is  the  conjunction  of  these 
two  appropriate  and  efficient  mechanical  means.  Confessedly,  an  old  idea, 
carried  out  mechanically  in  a  new  form,  is  patentable  invention.  To  my 
mind,  a  new  idea,  carried  out  mechanically  in  an  old  form,  ought  equally 
to  be  regarded  as  patentable  invention.  To  hold  otherwise  is  to  dethrone 
the  head  and  enthrone  the  hands  —  to  leave  genuine  genius  unrecompensed, 
while  placing  the  crown  on  mechanical  skill.  (Grosscup,  J.  concurring 
unwillingly  in  view  of  Kokomo  v.  Kitselman,  189  U.  S.  8.)  —  Brown  v. 
Crane,  133  Fed.  235;  66  C.  C.  A.  676. 

Whether,  in  a  given  case,  there  has  been  the  exercise  of  the  inventive 
faculty,  within  the  meaning  of  the  patent  laws,  is  always  a  delicate  and 
sometimes  difficult  question  addressed  to  the  sound  judgment  of  the  court. 
It  is  difficult,  perhaps  impossible,  to  describe  general  rules  for  the  exercise 


§  615  INVENTION  549 

of  this  judicial  function.  It  demands  careful  consideration  of  the  prior 
art  and  the  essential  and  distinguishing  feature  of  the  device  or  combina- 
tion, as  to  which  invention  is  alleged,  and  appreciation  of  the  practical 
working  of  the  mental  faculties.  But  it  must  often  happen,  and  is  unavoid- 
able, that  what  is  evidence  of  inventive  genius  to  one  mind,  may  only  suggest 
the  exercise  of  mechanical  skill  to  another  equally  sincere  and  intelligent. 
—  Buchanan  v.  Perkins,  135  Fed.  90;  67  C.  C.  A.  564. 

It  is  said  that  from  time  immemorial  eye  shades  have  been  made  by 
cutting  visors  from  papers  and  tying  them  on  with  strings.  If  this  was  a 
matter  of  common  knowledge,  so  much  more  the  marked  was  the  intuitive 
flash  that  finally  came  to  Mahony's  mind,  and  to  his  alone.  We  think  there 
was  invention  of  the  "  happy  thought  "  kind.  —  Mahony  v.  Malcom,  143 
Fed.  124;  74  C.  C.  A.  318. 

Williams  v.  American,  86  Fed.  641;  Eastman  v.  Mayor,  134  Fed.  844;  Regent 
v.  Penn,  121  Fed.  80. 


§  615.     Dividing  or  Uniting  Parts. 

It  is  not  invention  to  make  the  frame  of  a  machine  integral  rather  than  to 
bolt  two  sections  together  when  both  perform  the  same  service.  —  Bagley  v. 
Empire,  58  Fed.  212;   7  C.  C.  A.  191. 

It  does  not  involve  invention  to  cast  a  part  of  a  machine  in  two  pieces 
which  before  was  cast  in  one  piece.  —  Birmingham  v.  Gates,  78  Fed.  350; 
24  C.  C.  A.  132. 

It  could  not  involve  any  invention  to  make  a  complete  door  frame  in  two 
parts.  All  that  was  necessary  to  be  done  by  the  carpenter  was  to  make  a 
complete  frame,  and  then  divide  the  jamb  longitudinally  into  two  sections 
by  the  saw.  —  Roehr  v.  Bliss,  102  Fed.  692;  42  C.  C.  A.  593. 

The  conclusion  from  all  the  cases  must  be  that  the  mere  making  in  one 
piece  of  a  device  formerly  made  in  two  parts  mechanically  attached  is  not 
invention.  The  exception  to  the  general  rule  must  depend  upon  special 
facts  indicating  the  presence  of  inventive  faculty  in  a  degree  greater  than 
the  mere  mechanical  knowledge  exhibited  by  so  simple  an  improvement. 
Much  stress  has  been  laid  upon  the  alleged  large  use  and  sale  of  this  improved 
socket.  The  evidence  upon  this  point  is  not  very  forceful  in  respect  to  this 
particular  invention.  The  sales  were  chiefly  of  a  structure  which  included 
track  plate  and  socket,  or  these  in  combination  with  a  caster,  the  track  plate 
and  caster  being  the  subject  of  other  patents;  and  it  is  not  made  plain 
that  any  more  of  the  alleged  success  of  the  sale  of  the  track  plate  socket  was 
due  to  the  socket  than  to  the  track  plate.  However  this  may  be,  we  do  not 
think  the  question  of  patentability  is  doubtful,  and  it  is  only  when  the  pa- 
tentability of  a  device  is  doubtful  that  the  general  use  of  the  patented  article 
may  turn  the  scale.  —  Standard  v.  Caster,  113  Fed.  162;  51  C.  C.  A.  109. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Duer  v.  Lock,  149  U.  S.  216;  Krementz 
v.  Cottle.  143  U.  S.  556;  Howard  v.  Stove,  150  U.  S.  164;  Mfg.  Co.  v.  Holtzer, 
67  Fed.  907. 

All  that  this  claim  requires  is  that  there  shall  be  air-passages  and  that 
they  shall  be  screened.  Since  this  is  so,  there  surely  is  no  invention  in  merely 
reducing  the  number  of  air-passages  from  two  to  one.  —  Murray  v.  Conti- 
nental, 149  Fed.  989;  79  C.  C.  A.  499. 


550  THE    FIXED   LAW    OF    PATENTS  §616 

There  is  no  invention  in  making  two  parts  of  one  thing,  or  one  of  two,  when 
by  such  change  no  different  result  is  attained.  —  D'Arey  v.  Staples,  161  Fed. 
733;  88  C.  C.  A.  606. 

Bundy  v.  Detroit,  94  Fed.  524;  Eames  v.  Worcester,  127  Fed.  67;  General 
v.  Yost,  139  Fed.  568;  Standard  v.  Caster,  113  Fed.  162;  Howard  v.  Detroit, 
150  U.  S.  164. 

§  616.  Double  or  Analogous  Use  —  Analogous  Use  Non-Pat- 
entable. 

The  application  of  a  patented  device  to  another  use,  where  such  new  appli- 
cation does  not  involve  the  exercise  of  the  inventive  faculty,  is  as  much  an 
infringement  as  though  the  machine  were  an  exact  copy  of  the  old.  —  West- 
ern v.  LaRue,  139  U.  S.  601 ;  35  L.  Ed.  294;  1  S.  Ct.  670. 

Winans  v.  Denmead,  56  U.  S.  330;  Sewell  v.  Jones,  91  U.  S.  171;  Howe  v. 
Abbott,  2  Story,  190;    Walton  v.  Potter,  1  Web.  P.  C.  585. 

Mere  analogous  use  is  not  patentable.  —  Grant  v.  Walter,  148  U.  S.  547; 
37  L.  Ed.  552;  13  S.  Ct.  699. 

Brown  v.  Piper,  91  U.  S.  37;  Pennsylvania  v.  Safety  Truck,  110  U.  S.  491; 
Miller  v.  Foree,  116  U.  S.  22;    Dreyfus  v.  Searle,  124  U.  S.  60. 

The  adaptation  of  an  old  device  to  an  analogous  purpose  in  the  same  art 
is  mere  double  use.  —  Griswold  v.  Wagner,  68  Fed.  494;    15  C.  C.  A.  525. 

Potts  v.  Creager,  155  U.  S.  597;  Brown  v.  Piper,  91  U.  S.  27;  Penna.  v.  Loco- 
motive, 110  U.  S.  490;  Atlantic  v.  Brady,  107  U.  S.  192;  Tucker  v.  Spalding,  13 
Wall.  453. 

Complainants  seek  to  eliminate  the  Elston  patent  from  the  case  by  the 
suggestion  that  the  workmen  who  make  mattresses  for  beds,  do  not  make 
seats  for  railroad  cars  (the  Elston  patent  was  for  a  seat  for  railroad  car). 
That  circumstance,  however,  is  immaterial  when  an  old  contrivance  is  ap- 
plied in  an  old  way  to  an  analogous  subject,  without  any  novelty  in  the 
mode  of  applying  such  a  contrivance  to  the  new  purpose.  —  Rogers  v. 
Fitch,  81  Fed.  959;  27  C.  C.  A.  23. 

Penna.  v.  Locomotive,  110  U.  S.  497;  Aron  v.  Railway,  132  U.  S.  89;  Briggs 
v.  Ice  Co.  60  Fed.  87. 

The  form  of  his  stay  was  old,  the  material  was  old,  and  in  bringing  them 
together  in  the  particular  form  described  in  the  patent,  he  did  not  develop 
in  either  any  new  characteristics  or  capacitv.  —  Janowitz  v.  Levison,  82 
Fed.  63;   27' C.  C.  A.  61. 

It  is  true  as  already  stated,  that  nearly  all,  if  not  all,  the  elements  of 
Grosselin's  combination  were  so  common  in  the  practical  arts  that  their 
use  anywhere  must  be  regarded  as  analogous  to  previous  uses;  and  especially 
is  this  true  of  the  cone  pulleys.  But  this  does  not  wholly  settle  the  matter. 
The  statements  of  the  rule  in  Potts  v.  Creager,  155  U.  S.  p.  606,  show  that 
the  rule  is  not  rigid  but  that  it  merely  lays  the  basis  of  presumptions  which 
ordinarilv  are  against  patentability.  —  Heap  v.  Tremont,  82  Fed.  449 ;  27 
C.  C.  A.  316. 

National  v.  Boston,  156  U.  S.  502;  Watson  v.  Stevens,  51  Fed.  757;  Osgood  v. 
Metropolitan,  75  Fed.  670;    Mfg.  Co.  v.  Holtzer,  67  Fed.  907. 

That  the  mere  transfer  of  a  device  from  one  field  to  an  analogous  use, 
without  change  of  function  is  not  patentable,  see  Cushman  v.  Goddard,  95 
Fed.  664;   37  C.  C.  A.  221. 

Penna.  v.  Locomotive,  110  U.  S.  490;   Heap  v.  Tremont,  82  Fed.  449. 


§  616  INVENTION  551 

The  prior  art  showed  both  the  ordinary  atomizer  and  the  especially  designed 
atomizer  for  the  use  of  pigments,  the  latter  being  especially  designed  to 
throw  a  much  finer  stream.  The  Fry  patent  required,  for  ceramic  work, 
an  ordinary  atomizer,  and  the  specially  designed  pigment  atomizer  would 
not  do  the  work.  It  was  held  that  the  mere  transfer  of  an  ordinary  atomizer 
to  do  the  work  which  the  existing  pigment  atomizer  would  not  perform,  was 
not  invention.  —  Fry  v.  Rookwood,  101  Fed.  723;  41  C.  C.  A.  634. 

The  object  is  the  old  object,  and  the  result  is  simply  the  old  result  of  in- 
sulation, which  is  to  prevent  discharges  at  an  injurious  place.  We  cannot 
perceive  that  the  effect  of  the  insulation  in  an  arc-rupturing  device  was  any- 
thing more  than  the  old  effect,  which  has  always  accompanied  insulation, 
and  which  was  accomplished  by  the  old  mechanical  means,  although  it 
was  used  to  prevent  lateral  discharges  in  connection  with  an  arc-rupturing 
device.  —  Thomson-Houston  v.  Nassau,  107  Fed.  277;  46  C.  C.  A.  263. 

The  only  difference  is  that  Bemis  claimed  his  combination  "  in  a  trans- 
planting machine,"  while  the  existing  combinations  appeared  in  seed  planters. 
Granting  that  Bemis  made  a  new  and  useful  improvement  in  transplanters, 
the  substitution  of  a  known  part  of  a  seed  planter  for  the  corresponding  part 
of  a  transplanter,  with  the  required  and  self-suggesting  changes,  did  not, 
in  our  judgment,  involve  the  exercise  of  the  inventive  faculty.  —  Seiler  v. 
Fuller,  121  Fed.  85;  57  C.  C.  A.  339. 

In  view  of  the  fact  that  Gendron  showed  that  his  invention  was  designed 
to  be  used  in  vehicle  manufacture  in  joining  hollow  seamless  malleable 
castings  "  to  whifnetrees,  axles,  and  other  similar  bodies,"  we  cannot  ascribe 
to  the  transfer  of  the  process  to  joining  hollow  seamless  malleable  spoke 
sockets  to  spokes  the  dignity  of  invention.  —  Bettendorf  v.  Little,  123  Fed. 
433;  59  C.  C.  A.  473. 

Lovell  v.  Cary,  147  U.  S.  623;  Potts  v.  Creager,  155  U.  S.  597;  Mast  v.  Stover, 
177  U.  S.  485;   Johnson  v.  Toledo,  119  Fed.  885. 

Whether  houses  and  incubators  are  or  are  not  in  the  same  class  is  unim- 
portant. The  patent  in  suit  deals  with  the  problem  of  ventilating  an  incu- 
bator; the  two  earlier  patents,  with  the  problem  of  ventilating  a  house  or  a 
room;  and  we  are  clearly  of  the  opinion  that  the  devising  of  systems  of 
ventilation  belongs  to  a  single  art,  whether  such  systems  are  to  be  applied 
to  a  hospital,  a  sewer,  a  ship's  hold,  a  cold-storage  box,  an  incubator,  or  any 
other  structure  where  circulation  of  air  is  sought  to  be  secured.  —  Jones  v. 
Cyphers,  126  Fed.  753;  62  C.  C.  A.  21. 

It  is  possible  that  the  inventor  was  the  first  to  conceive  that  windows  thus 
constructed  would  be  a  valuable  adjunct  to  fire-proof  buildings.  If  so,  it  is 
the  previousness  of  his  conception  that  constitutes  the  merit  of  his  so-called 
invention;  for  the  mechanical  embodiment  of  that  conception  is  old.  But 
it  does  not  follow  that  a  conception  is  patentable  merely  because  it  is  first 
in  time.  Concept  alone  is  not  patentable.  Concept  must  be  accompanied 
by  mechanical  embodiment;  and  as  the  law  now  stands,  the  mechanical 
embodiment,  to  make  the  invention  patentable,  must  itself  be  unanticipated. 
—  Voightmann  v.  Perkinson,  138  Fed.  56;  70  C.  C.  A.  482. 

As  no  adaptation  beyond  known  equivalents  was  made  or  needed,  and 
as  the  transfer  was  from  the  very  same  art,  the  claims  must  be  void.  — 
Covel  v.  Rich,  142  Fed.  468;  73  C.  C.  A.  584. 

Potts  v.  Creager,  155  U.  S.  597;  Mast  v.  Stover,  177  U.  S.  485;  Stearns  v.  Russell, 
85  Fed.  229;    Chisholm  v.  J'  hnson,  115  Fed.  625. 


552  THE    FIXED    LAW    OF    PATENTS  §  617 

The  new  and  analogous  use  to  which  the  old  and  familiar  process  was  put 
(winnowing  coffee  after  it  had  been  roasted  and  slightly  crushed)  does  not 
amount  to  invention.  —  Baker  v.  Duncombe,  146  Fed.  744;  77  C.  C.  A.  234. 

Slawson  v.  Grand,  107  U.  S.  649;  Grant  v.  Walter,  148  U.  S.  547;  Knapp  v. 
Morss,  150  U.  S.  221;   Aron  v.  Manhattan,  132  U.  S.  84. 

§  617.     Double  or  Analogous  Use  —  Double  Use  Non-Pate ntable. 

If  what  it  actually  did  is  in  its  nature  the  same  as  sawing,  and  its  structure 
and  action  suggested  to  the  mind  of  an  ordinary  skilled  mechanic  this  double 
use  to  which  it  could  be  put  without  material  change,  it  is  not  invention. 
—  Tucker  v.  Spalding,  80  U.  S.  453;  20  L.  Ed.  515. 

A  double  use  is  not  patentable,  nor  does  its  cheapness  make  it  so.  —  Reck- 
endorfer  v.  Faber,  92  U.  S.  347;  23  L.  Ed.  719. 
Curtis,  sec.  56,  73. 

The  employment  of  old  mechanism  producing  the  same  mechanical 
effect,  the  only  advantage  being  an  increased  degree  of  security  or  safety 
is  not  invention.  —  Fond  du  Lac  v.  May,  137  U.  S.  395;  34  L.  Ed.  714; 
11  S.  Ct.  98. 

Tucker  v.  Spalding,  80  U.  S.  453;  Corn  Planter  Patent,  90  U.  S.  181;  Brown  v. 
Piper,  91  U.  S.  37;  Dunbar  v.  Meyers,  94  U.  S.  187;  Vinton  v.  Hamilton,  104  U.  S. 
485;  Heald  v.  Rice,  104  U.  S.  737;  Hall  v.  Macneale,  107  U.  S.  90;  Thompson 
v.  Boisselier,  114  U.  S.  1;  Stephenson  v.  Brooklyn,  114  TJ.  S.  149;  Aron  v.  Man- 
hattan, 132  U.  S.  84;  Watson  v.  Cincinnati,  132  U.  S.  161;  Hill  v.  Wooster,  132 
U.  S.  693;  Burt  v.  Evory,  133  U.  S.  349;  St.  Germain  v.  Brunswick,  135  U.  S. 
227. 

The  public  cannot  be  deprived  of  an  old  process  because  some  one  has 
discovered  that  it  is  capable  of  producing  a  better  result  or  has  a  wider  range 
of  use  than  was  before  known.  —  Lovell  v.  Cary,  147  U.  S.  623 ;  37  L.  Ed.  307 ; 
13  S.  Ct.  472. 

Smith  v.  Nichols,  88  U.  S.  112;    Roberts  v.  Ryer,  91  U.  S.  150. 

The  mere  carrying  forward  of  an  old  process  to  perform  an  analogous  use 
not  invention.  —  Lovell  v.  Cary,  147  U.  S.  623;  37  L.  Ed.  307;  13  S.  Ct.  472. 

The  combination  of  old  elements  which  perform  no  new  function  and  ac- 
complish no  new  results  does  not  involve  patentable  novelty.  —  Knapp  v. 
Morss,  150  U.  S.  221;  37  L.  Ed.  1059;  14  S.  Ct.  81. 

Mosler  v.  Mosler,  127  U.  S.  361;  Hailes  v.  Van  Wormer,  87  U.  S.  353;  Recken- 
dorfer  v.  Faber,  92  U.  S.  347;  Pickering  v.  McCullough,  104  U.  S.  310;  Peters 
v.  Hanson,  129  U.  S.  541. 

Dissented  to.  Brown  and  Shiras.  While  change  was  not  radical  it  was  still 
invention. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Washburn  v.  Beat  Em  All,  143  U.  S.  275; 
Gandy  v.  Main,  143  U.  S.  587;   Topliff  v.  Topliff,  145  U.  S.  156. 

For  the  leading  cases  on  this  subject  (quoted  under  §671)  see  Potts  v. 
Creager,  155  U.  S.  597;  39  L.  Ed.  275;  15  S.  Ct.  194. 

He  invented  no  new  device,  he  used  it  for  no  new  purpose ;  he  applied  it 
to  no  new  machine.  All  he  did  was  to  apply  it  to  a  new  purpose  in  a  machine 
where  it  had  not  before  been  used  for  that  purpose.  In  our  opinion  this 
transfer  does  not  rise  to  the  dignity  of  invention.  —  Mast  v.  Stover,  177 
U.  S.  485 ;  44  L.  Ed.  856 ;  20  S.  Ct.  708. 

Potts  v.  Creager,  155  TJ.  S.  597. 


§§  618-620  INVENTION"  553 

§  6 1 8.     Double  or  Analogous  Use  —  Double  Use  Patentable. 

The  distinction  between  a  double  use,  as  the  result  of  mere  mechanical 
skill,  and  a  new  use  created  by  the  inventive  faculty  is  strikingly  illustrated 
in  the  case  of  Colgate  v.  Western,  15  Blatchf.  365.  —  Busell  v.  Stevens,  137  U. 
S.  423;  34  L.  Ed.  719;  11  S.  Ct.  150. 

As  a  broad  invention  it  has  nothing  which  was  not  fully  described  in  the 
prior  systems  except  a  single  receiver  in  lieu  of  two.  It  is  apparent  that, 
when  a  single  receiving  instrument  was  desired  in  the  place  of  two,  the  change 
could  easily  have  been  made  by  any  person  skilled  in  the  art. 

Therefore  I  felt  at  liberty  to  proceed  in  this  case  on  my  own  convictions, 
on  my  understanding  of  the  tendency  and  practical  effect  of  the  decisions 
of  the  Supreme  Court  during  the  last  few  years  which  have  sustained  so 
many  decrees  in  the  circuit  courts  holding  patents  invalid  for  want  of  patent- 
able novelty,  and  reversed  so  many  in  which  the  patents  have  not  been  held 
invalid  for  that  reason,  and  especially  the  tendency  and  practical  effect 
of  the  series  of  cases  concerning  "  double  use,"  so  called,  beginning  with 
Penna.  v.  Locomotive,  110  U.  S.  490  and  ending  with  Knapp  v.  Morss,  150 
U.  S.  221  and  of  the  rule  in  Gordon  v.  Warder,  150  U.  S.  47.  But,  apparently 
the  trend  of  this  court,  as  shown  in  Folding  Bed  Co.  v.  Osgood,  58  Fed.  583 
and  Herrick  v.  Leveller  Co.  60  Fed.  80,  precludes  me  from  following  my  own 
views,  as  above  expressed.  (Dissenting  opinion  of  Putnam,  C.  J.).  —  Game- 
well  v.  Municipal,  61  Fed.  948;  10  C.  C.  A.  184. 

This  was  an  action  for  infringement  of  a  tanning  process.  Respondent 
set  up  as  anticipatory  a  similar  process  for  dyeing.  Held:  In  dyeing  and 
printing  on  fabrics  and  in  the  treatment  of  wools,  the  end  finally  accomplished 
is  not  at  all  analogous  to  that  of  manufactured  leather.  The  same  ingredi- 
ents may  be  used  to  reach  the  one  result  as  the  other  but  they  are 
not  used  for  a  like  purpose.  They  do  not  affect  the  different  materials 
in  the  same  way,  and  the  product  evolved  in  the  one  case  is  wholly  unlike 
the  change  effected  in  the  other.  The  fact  that  hides  are  substituted  for 
fabrics  or  wool,  and  that  the  thing  produced  is  leather,  and  not  dyed  fabric 
or  treated  wool  distinguishes  the  two  processes.  The  art  of  dyeing  and 
of  leather  making  are  wholly  unallied,  and  therefore  the  doctrine  of  double 
use  has  no  pertinency.  —  Tannage  v.  Zahn,  70  Fed.  1003;   17  C.  C.  A.  552. 

Potts  v.  Creager,  155  U.  S.  606. 

§  619.     Duplication. 

Mere  duplication  is  not  invention.  —  Topliff  v.  Topliff,  145  U.  S.  156;  36  L. 
Ed.  658;  12S.Ct.  825. 

Dunbar  v.  Meyers,  94  U.  S.  187;   Slawson  v.  Grand,  107  U.  S.  649. 

Note:  Further  cases  bearing  on  this  subject  will  be  found  under  Aggre- 
gation, Adaptation,  Mechanical  Skill  and  Novelty. 

§  620.     Evidence  of  —  Acquiescence. 

In  view  of  the  Moore  patent  and  of  the  state  of  the  art,  the  patent  in  suit 
is  an  extremely  narrow  one ;  but  in  view  of  the  favor  with  which  it  has  been 
received  by  the  trade,  and  the  long  acquiescence  shown,  we  are  not  prepared 
to  hold  that  there  was  no  invention  in  so  reorganizing  the  fastener  of  the 
prior  art  as  to  produce  for  the  first  time  a  device  such  as  that  described.  — 
Acme  v.  Cary,  101  Fed.  269;  41  C.  C.  A.  338. 

Here  was  an  invention  which,  if  it  was  an  invention,  was  of  such  a  charac- 
ter that,  notwithstanding  the  parties  are  at  issue  in  regard  to  the  extent 


554  THE    FIXED    LAW    OF    PATENTS  §§  621-622 

of  its  practical  value,  it  promised  and  accomplished  great  pecuniary  advan- 
tage. Yet  it  must  be  conceded,  as  is  apparent  from  the  general  tone  of  the 
whole  record,  and  from  the  way  in  which  the  case  has  been  developed  before 
us,  that  the  patent  was  long  acquiesced  in.  It  is  also  certain  from  the  testi- 
mony in  the  case  that  an  interference  was  declared  between  Ferraris  and 
Tesla,  and  decided  in  favor  of  the  latter.  While,  of  course,  such  decisions 
are  not  formally  operative  as  between  other  parties,  as  we  have  shown  in 
Wilson  v.  Consolidated,  88  Fed.  286,  especially  when,  as  in  the  present  case, 
courts  are  not  advised  what  the  nature  of  the  contest  was,  or  even  whether 
it  was  a  real  one,  yet  such  issues,  when  determined,  necessarily  contribute, 
with  other  adjudications,  to  make  up  the  body  of  expert  and  legal  opinion 
which  goes  to  show  that  the  patent  has  been  approved  and  acquiesced  in 
by  those  who  understand  its  relations  to  the  art.  Although  such  general 
judgment  cannot  be  measured  by  the  law,  yet  it  must  be  conceded  that  it  has 
its  weight,  especially  with  regard  to  the  state  of  the  art  at  a  period  some 
years  remote.  In  some  cases,  after  a  long  lapse  of  time,  it  is  the  most  re- 
liable test  in  reference  thereto;  and,  in  any  event,  it  affords  material  support 
to  the  patentee  on  issues  of  fact  of  the  kind  at  bar,  relating  to  occurrences 
as  to  which  so  many  years  have  gone  by.  —  Westinghouse  v.  Stanley,  133 
Fed.  167;  68  C.  C.  A.  523. 

Never  until  this  cause  was  instituted,  so  far  as  we  are  informed,  was  the 
validity  of  the  patent  disputed.  During  all  that  period  of  10  years  there 
seems  to  have  been  a  public  acquiescence  in  its  validity.  With  these  facts 
before  us,  we  think  we  are  not  justified  in  holding  the  first  claim  of  the  patent 
invalid.  —  Wolff  v.  Du  Pont,  134  Fed.  862;  67  C.  C.  A.  488. 

Although  the  letters  patent  issued  more  than  14  years  before  the  filing  of 
this  bill,  no  practical  use  was  ever  made  of  the  alleged  invention  covered  by 
the  claim  now  in  issue.  Consequently  the  patent  lacks  the  support  coming 
from  public  acquiescence  which  is  often  of  great  value,  not  only  in  giving 
support  to  an  alleged  invention,  but  also  in  justifying  a  breadth  of  con- 
struction of  the  patent  itself,  so  that  the  complainant  is  subject  to  the 
scrutiny  and  the  limitations  of  the  class  observed  in  our  opinion  in  U.  S. 
Hog  v.  North,  158  Fed.  818,  and  in  the  cases  there  cited,  and  in  Deering 
v.  Harvester,  155  U.  S.  286.  —  Boston  v.  Pennsylvania,  164  Fed.  557; 
C.  C.  A. 

§621.     Evidence  of — Attempted  Evasion. 

Indeed,  its  great  usefulness  and  ingenuity  are  especially  illustrated  by 
the  cumbersome  efforts  of  the  respondent  to  accomplish  the  results  of  the 
patented  device  by  its  alleged  infringing  machine.  —  Heap  v.  Tremont,  82 
Fed.  449;   27  C.  C.  A.  316. 

§  622.     Evidence  of  —  Commercial  Success. 

The  argument  drawn  from  commercial  success  is  not  always  to  be  relied 
on.  Other  causes,  such  as  the  enterprise  of  the  vendors  and  the  lavish  ex- 
penditures in  advertising  may  cooperate  to  promote  a  large  demand.  But 
when  the  other  facts  in  the  case  leave  the  question  of  invention  in  doubt, 
the  fact  that  the  device  has  gone  into  general  use  and  has  displaced  other 
devices  which  had  previously  been  employed  for  analogous  uses  is  suffi- 
cient to  turn  the  scale  in  favor  of  the  existence  of  invention.  —  Krementz 
v.  Cottle,  148  U.  S.  556;  37  L.  Ed.  558:   13  S.  Ct.  719. 

Quoting  from  Con.  B.  S.  Co.  v.  Detroit,  47  Fed.  894. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Con.  S.  V.  Co.  v.  Crosbv,  113  U.  S.  157; 
Magowan  v.  N.  Y.  141  U.  S.  332;  Washburn  v.  Beat  Em  AH,  143  U.  S.  275; 
Gandy  v.  Main,  143  U.  S.  587;   Topliff  v.  Topliff,  145  U.  S.  156. 


:  GJJ  INVENTION  555 

The  shredders  failed  to  properly  prepare  the  cane  for  the  mill.  The  Kra- 
jewski  machine  succeeds.  —  Krajewski  v.  Pharr,  105  Fed.  514;  44  C.  C.  A. 
572. 

In  Re  Barbed  Wire  Patent,  143  U.  S.  275;  Schroeder  v.  Brammer,  98  Fed.  880; 
Dudley  v.  Munger,  1  C.  C.  A.  158;  Consolidated  v.  Crosby,  113  U.  S.  157;  Smith 
v.  Vulcanite,  93  U.  S.  486;  Magowan  v.  Packing  Co.,  141  U.  S.  332-343;  Potts 
v.  Creager,  155  U.  S.  597. 

The  fact  that  the  device  was  at  once  successful,  and  that,  to  a  large  extent, 
it  practically  displaced  all  lifting  jacks  in  previous  use,  must  be  regarded  as  a 
circumstance  of  decided  significance.  Such  circumstance  clearly  discloses  the 
meritoriousness  of  the  device.  And  it  is  well  settled  that,  when  the  question 
of  patentable  novelty  is  fairly  open  to  doubt,  the  practical  success  of  the 
device,  with  the  fact  that  it  displaced  similar  devices  in  previous  use,  is 
sufficient  to  turn  the  scale  in  favor  of  the  invention.  —  Kalamazoo  v .  Duff, 
113  Fed.  264;  51  C.  C.  A.  221. 

Smith  v.  Vulcanite,  93  U.  S.  486;  Magowan  v.  Packing  Co.  141  U.  S.  333; 
National  v.  Interchangeable,  106  Fed.  693;  Hallock  v.  Davison,  107  Fed  482- 
Barbed  Wire  Pat.  143  U.  S.  275;  Topliff  v.  Topliff,  145  U.  S.  156;  Krementz  v. 
Cottle,  146  U.  S.  556;  Consolidated  v.  Detroit,  47  Fed.  894;  Mfg.  Co.  v.  Adams, 
151  U.  S.  139. 

If  there  is  any  doubt  upon  the  question  of  patentability,  the  practical 
and  commercial  results  of  the  improvement  must  resolve  such  doubt  in  its 
favor,    (p.  498.) 

It  is  at  most  merely  the  use  of  an  old  device  for  a  new  and  analogous  pur- 
pose, without  the  necessity  of  any  adaptation  in  order  to  discharge  the  old 
function  in  the  new  device.  Its  confessed  commercial  success,  therefore, 
cannot  be  accepted  as  evidence  of  invention,  (p.  501.)  —  Westinghouse  v. 
Union,  117  Fed.  495;  55  C.  C.  A.  230. 

Note:  It  is  true,  these  two  conflicting  statements,  seemingly  so,  refer  to 
two  different  patents;  but  it  is  perhaps  as  good  an  illustration  how  a  so- 
called  rule  of  law  becomes  a  "  wax  nose  "  as  can  be  found. 

The  testimony  shows  that  the  public  by  large  purchases  appreciated  Hoyt's 
device;  and  while  this  fact  is  not  controlling,  it  is  entitled  to  consideration, 
when  commercial  success  is  not  shown  to  be  due  to  other  causes.  —  Dowagiac 
v.  Minnesota,  118  Fed.  136;  55  C.  C.  A.  86. 

Gandy  v.  Belting,  143  U.  S.  587;  Lane  v.  Welds,  99  Fed.  286;  Dowagiac  v. 
Superior,  115  Fed.  886. 

Commercial  success  is  not  an  infallible  standard  by  which  to  test  the 
merit  of  an  invention.  Such  success  is  often  due  to  mere  business  ability 
in  manufacturing,  exploiting,  and  advertising;  but  given  a  large  demand 
for  a  particular  thing,  a  market  already  created,  and  an  invention  which  it 
is  free  to  use,  the  fact  that  it  is  not  used  strongly  demonstrates  its  inade- 
quacy. —  Ideal  v.  Crown,  131  Fed.  244;  65  C.  C.  A.  436. 

The  hard-headed  men  of  trade  do  not  place  themselves  in  a  position  where 
they  must  accept  the  alternative  of  an  infringement  suit  or  the  payment 
of  license  fees  for  the  use  of  an  article  when  an  equally  good  article  may 
be  had  for  nothing.  It  should  be  and  is  the  desire  of  the  court  in  approaching 
the  consideration  of  a  patent  for  a  structure  which  has  thus  won  a  position 
of  unchallenged  supremacy  in  the  commercial  world,  to  endeavor  to  sustain 
rather  than  defeat  the  patent.  —  Consolidated  v.  Firestone,  151  Fed.  237: 
80  C.  C.  A.  589. 


556  THE    FIXED    LAW    OF    PATENTS  §§  623-624 

Even  if  appellee's  commercial  success  with  a  ventilated  armature  core 
was  due  to  Reist's  teachings,  rather  than  to  the  skill  of  appellee's  mechanics 
in  working  out  indispensable  features  that  were  not  disclosed  by  Reist,  that 
fact  "  would  only  be  influential  in  resolving  a  doubt  "  —  it  would  not  also 
serve  to  inject  a  doubt  into  an  otherwise  clear  case.  —  National  v.  General, 
159  Fed.  934;  87  C.  C.  A.  462. 

§  623.     Evidence  of  —  Commercial  Success  —  When  Not. 

The  appellants  rely  on  the  fact  that  the  patented  machine  was  the  first 
successful  one,  and  on  the  fact  that  it  had  great  commercial  success.  The 
decisions  touching  the  effect  of  these  propositions  are  so  numerous  and  modern 
that  they  need  not  be  referred  to  specifically,  but  they  limit  the  application 
of  them  to  doubtful  cases  turning  on  questions  of  utility  or  patentable  in- 
vention. They  have  no  pertinency  in  cases  which  turn  on  the  construction 
of  the  patent.  —  DeLoriea  v.  Whitney,  63  Fed.  611;  11  C.  C.  A.  355. 

The  rule  of  commercial  success  determining  invention  is  applied  only  in 
cases  of  doubtful  invention,  and  not  where  there  is  palpable  want  of  any 
inventive  art.  —  Olmsted  v.  Andrews,  77  Fed.  835;  23  C.  C.  A.  488. 

There  is  too  much  evidence  in  this  record  as  to  consent  decrees  against 
rival  makers  of  tires  to  predicate  much  upon  the  mere  fact  that  the  Grant 
tire  has  met  with  a  large  sale.  The  general  use  of  a  patented  article  is  only 
evidence  of  value  when  the  novelty  or  utility  of  the  article  is  a  matter  of 
great  doubt,  and  its  evidential  value  in  even  such  cases  is  nothing  when  it 
can  be  attributed  to  something  other  than  novelty.  —  Goodvear  v.  Rubber, 
116  Fed.  363;  53C.C.A.583. 

Watch  Co.  v.  Robbins,  75  Fed.  17;  Lane  v.  Welds,  99  Fed.  286;  McClain  v. 
Ortmayer,  141  U.  S.  419. 

In  considering  the  question  of  the  patentable  character  of  the  machine  in 
question,  we  must  not  be  misled  by  the  fact  that  its  use  has  been  attended 
with  commercial  success  in  the  way  of  a  large,  better,  and  cheaper  product; 
for,  in  the  steady  advance  incident  to  progress  in  manufacturing,  many  non- 
patentable  processes  and  methods  have  proved  most  original  and  exceed- 
ingly profitable,  and  it  must  be  remembered  that  everything  novel  and  useful 
is  not  therefore  necessarily  patentable.  —  Daylight  v.  American,  142  Fed.  454; 
73  C.  C.  A.  570. 

That  mere  evidence  of  large  sales  without  proof  that  the  same  was  due  to 
the  improvement  is  not  proof  of  novelty,  see  Fielding  v.  Crouse,  154  Fed. 
377;  83  C.  C.  A.  331. 

The  commercial  success  of  the  article  manufactured  under  the  complain- 
ant's patent  is  also  pointed  out  as  indicating  invention.  But  this  is  only 
one  element  to  be  considered,  and  then  only  when  patentability  is  doubtful. 
Moreover,  it  is  not  entirely  clear  that  this  commercial  success  is  not  in  some 
measure  due  to  the  machines  used  by  the  complainants  and  their  licensees 
for  attaching  the  binder.  —  Locklin  v.  Buck,  159  Fed.  434;  86  C.  C.  A.  414. 


§  624.     Evidence  of  —  Efficiency. 

That  a  combination  making  a  superior  and  cheaper  article  is  itself  a 
patentable  invention,  we  are  unable  to  agree  with.  —  Florsheim  v.  Schilling, 
137  U.  S.  64;  34  L.  Ed.  574;  11  S.  Ct.  20. 

Pickering  v.  McCullough,  104  U.  S.  310. 


§  624  INVENTION  557 

Large  capacity  of  device  is  persuasive  but  by  no  means  conclusive  proof 
of  invention.  —  National  v.  Hedden,  148  U.  S.  482;  37  L.  Ed.  529;  13  S.  Ct. 
680. 

A  glance  at  the  patent  and  the  invention  itself,  and  the  fact  that  the  de- 
fendant used  and  paid  royalty  for  the  use  of  it  for  years,  and  now  infringes, 
sufficiently  establish  utility.  —  Thomson  v.  Citizens  Nat.  Bk.,  53  Fed. 
250;  3  C.  C.  A.  518. 

The  patent  was  a  notable  step  in  advance,  —  a  marked  improvement; 
and,  to  those  who  made  it,  we  think  the  quality  of  inventors  ought  not  to  be 
denied.  —  Griswold  v.  Harker,  62  Fed.  389;  10  C.  C.  A.  435. 

Thomson  v.  Bank,  53  Fed.  250;  Loom  Co.  v.  Higgins,  105  U.  S.  580;  Con- 
solidated v.  Crosby,  113  U.  S.  157;  Magowan  v.  Packing  Co.  141  U.  S.  332; 
Barbed  Wire  Case,  143  U.  S.  275. 

It  is  argued  that  there  must  be  invention  in  complainant's  machine  from  the 
fact  that  it  produces  more  per  diem  than  any  that  preceded  it.  But  the 
increased  speed  is  due,  not  to  the  introduction  of  a  new  element  into  his  com- 
bination, or  to  a  new  combination  of  known  elements;  it  is  attributable 
only  to  the  superior  strength  and  firmness.  It  requires  no  reasoning  to  prove 
that  if  the  prior  machines  were  constructed  with  equal  strength  and  rigidity, 
they  will  run  at  the  same  speed  and  accomplish  the  same  result  with  com- 
plainant's machine.  —  Vulcan  v.  Smith,  62  Fed.  444;  10  C.  C.  A.  493. 

The  protection  of  the  statute  is  granted  for  things  invented,  not  for  things 
produced.  The  qualities  claimed  belong,  as  we  think,  to  the  domain  of 
mechanical  skill  and  not  to  the  domain  of  the  inventive  faculty.  It  is  ex- 
cellence of  workmanship,  superiority  and  lightness  of  material,  structural 
changes  of  form  and  proportion  which  produce  the  claimed  result.  — 
Olmsted  v.  Andrews  Co.  77  Fed.  835;    23  C.  C.  A.  488. 

When  the  increase  of  speed  is  so  great  as  it  appears  to  be  in  this  instance, 
and  that,  too,  in  a  part  where  increase  of  speed  (efficiency  being  preserved) 
is  of  such  practical  importance,  we  are  disposed  to  consider  the  changes 
in  parts  and  arrangement  of  parts  as  showing  meritorious  invention.  This 
capacity  for  high  speed  is  not  an  afterthought,  for  at  the  beginning  of  the 
specification,  is  found  a  statement  that  the  machine  has  been  contrived  with 
reference  to  running  at  a  very  high  speed.  —  Willcox  v.  Merrow,  93  Fed.  206 ; 
35  C.  C.  A.  269. 

It  is  an  improvement  because  it  saves  time.  How  much  time  is  thus  saved 
is  not  entirely  clear.  But  whether  it  were  greater  or  less,  the  majority  of 
the  court  are  of  the  opinion  that  the  device  employed  to  effect  it  is  a  simple 
and  obvious  mechanical  contrivance,  quite  within  the  intelligence  of  the  ordi- 
nary skilled  workman  to  produce,  and  that  it  does  not  disclose  patentable 
invention.  —  Doig  v.  Morgan,  122  Fed.  460;  59  C.  C.  A.  616. 

Consolidated  v.  Barnard,  43  Fed.  527;  Office  Specialty  v.  Globe,  77  Fed.  465; 
Aron  v.  Manhattan,  132  U.  S.  84. 

While  the  mere  assembling  in  a  new  organization  of  parts  of  old  structures 
to  perform  the  same  function  in  their  new  place  that  they  did  in  the  old  is 
not  invention,  yet  where  they  are  so  taken  and  are  organized  in  a  new  and 
useful  manner,  so  as  to  produce  a  more  beneficial  result,  there  may  be  inven- 
tion ;  and  when  the  combination  displays  the  exercise  of  intuitive  skill  and 
genius  beyond  that  possessed  and  exercised  by  those  well  skilled  in  the  prac- 
tice of  their  art,  and  the  discovery  is  of  something  new  and  useful,  invention 
should  be  recognized.  —  Western  v.  North,  135  Fed.  79;  67  C.  C.  A.  553. 


558  THE    FIXED    LAW    OF    PATENTS  §§  625-626 

Not  only  is  there  a  judicious  selection  by  the  inventor  of  the  mechanism 
employed,  but  there  is  a  discriminating  adaptation  of  it  to  the  work  to  be 
performed,  which  suggests  something  more  than  the  mere  skill  of  the  ordinary 
mechanic,  and  partakes  rather  of  the  inventive  insight  and  discovery  which 
it  is  the  design  of  the  patent  law  to  foster  and  protect.  —  American  v.  Mills, 
149  Fed.  743;  79  C.  C.  A.  449. 

In  a  very  considerable  sense,  and  from  the  very  nature  of  things,  every 
patent  so  far  as  the  fact  of  invention  is  concerned,  is  to  stand,  if  it  stands  at 
all,  upon  its  own  inherent  merit,  and  therefore  a  given  situation  is  not  much 
aided  by  authorities  otherwise  than  by  the  relative  measure  of  merit  ascer- 
tained under  somewhat  unsatisfactory  methods  of  comparison;  but  if  the 
ingenious  barbed  wire  twist,  which  "  turned  a  failure  into  a  success  "  was 
invention,  surely  what  Houghton  accomplished  through  a  successful  sub- 
stitution of  metal  parts  for  wood  and  by  way  of  an  ingenious  adaptation  of 
hard-tempered  wire  and  sheet  metal  parts,  so  assembled  as  to  be  easily 
adjustable  to  old  and  new  machines  alike,  ought  to  be  accepted  as  invention. 
—  Houghton  v.  Whitin,  153  Fed.  740;  83  C.  C.  A.  84. 

Notwithstanding  the  fact  that  the  vertical  strip  is  new,  the  invention 
after  all,  resides  in  a  broader  sense,  in  the  conception  of  the  combination, 
and  in  the  exceedingly  practical  and  meritorious  adaptation  of  the  various 
metal  parts  in  a  complete  mechanical  appliance  capable  of  doing  the  work 
and  of  successfully  meeting  the  requirements  of  an  existing  necessity.  — 
Houghton  v.  Whitin,  153  Fed.  740;  83  C.  C.  A.  84. 

That  a  machine  shall  produce  an  original  result  is  not  necessary  to  patenta- 
bility. If  the  new  arrangement  increases  the  effectiveness  of  the  old  by 
increased  product  or  by  lessening  the  expense,  the  fact  affords  evidence  of 
invention.  —  National  v.  Aiken,  163  Fed.  254;    C.  C.  A. 

Loom  Co.  v.  Higgins,  105  U.  S.  589;  Star  v.  General,  111  Fed.  398. 

§  625.     Evidence  of  —  Extensive  Litigation. 

The  extent  of  this  litigation  attests  at  least  the  utility  of  the  process 
supposed  to  be  described  in  the  patent,  as  it  shows  and  measures  the  extent 
of  the  public  demand  for  its  use.  —  Eames  v.  Andrews,  122  U.  S.  40  (Driven 
Well  Pat.);  30  L.  Ed.  1064;  7  S.  Ct.  1073. 

Another  volume  of  500  pages  has  been  added  to  the  library  which  has 
accumulated  during  the  last  ten  years  through  the  efforts  of  many  defendants 
who  seem  determined  to  use  what  they,  in  effect,  assert  to  be  a  useless  device. 
The  indomitable  persistency  with  which  these  people  have  fought  for  the 
right  to  use  the  Grant  patent  is  more  persuasive  evidence  of  its  merits  than 
the  opinions  of  experts.  —  Consolidated  v.  Diamond,  162  Fed.  892;  89 
C.  C.  A.  582. 

§  626.     Evidence  of  —  Extensive  Use. 

We  do  not  say,  the  single  fact  that  a  device  has  gone  into  general  use  and 
has  displaced  other  devices  which  had  previously  been  employed  for  analo- 
gous uses  establishes  invention.  It  may,  however,  always  be  considered; 
and  when  the  other  facts  in  the  case  leave  the  question  in  doubt,  it  is  sufficient 
to  turn  the  scale.  —  Smith  v.  Goodyear,  93  U.  S.  486;  23  L.  Ed.  952. 

This  was  a  problem  of  the  reconciliation  of  antagonisms,  which  so  often 
occur  in  mechanics  and  without  which  practically  successful  results  are  not 
attained.  —  Consolidated  v.  Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct. 
513. 


§  626  INVENTION  559 

The  testimony  is  very  full  and  clear  that,  as  a  process,  it  was  not  known 
or  used  before  in  the  art;  that  it  worked  a  valuable  and  important  change  in 
that  art,  in  the  particulars  set  forth  in  the  specification;  that  it  went  at  once 
extensively  into  use  in  Europe  and  the  United  States;  and  that  it  was  recog- 
nized as  a  new  and  valuable  invention  in  published  works  on  the  subject, 
immediately  after  it  was  made  known.  —  New  Process  v.  Maus,  122  U.  S. 
413;  30  L.  Ed.  1193;  7  S.  Ct.  1304. 

The  fact  that  an  article  sold  generally  on  the  market  at  from  15  to  20 
per  cent,  more  than  other  similar  articles  although  it  cost  10  per  cent,  less  to 
produce  it,  is  evidence  of  novelty.  —  Magowan  v.  N.  Y.  141  U.  S.  332;  35 
L.Ed.  781;  12  S.  Ct.  62. 

Where  an  article  went  at  once  into  such  extensive  public  use  as  almost  to 
supersede  all  others ;  that  fact  was  pregnant  evidence  of  novelty,  value,  and 
usefulness.  —  Magowan  v.  N.  Y.  141  U.  S.  332;  35  L.  Ed.  781 ;  12  S.  Ct.  62. 

Smith  v.  Goodyear,  93  U.  S.  486;   Webster  v.  Higgins,  105  U.  S.  580. 

The  fact  that  the  salient  feature  of  an  invention  has  gone  into  general  use 
is  evidence  that  that  feature  was  novel.  —  Hoyt  v.  Home,  145  U.  S.  302; 
36  L.  Ed.  713;  12  S.  Ct.  922. 

While  the  question  of  patentable  novelty  in  this  device  is  by  no  means 
free  from  doubt,  we  are  inclined,  in  view  of  the  extensive  use  to  which  these 
springs  have  been  put  by  manufacturers  of  wagons,  to  resolve  the  doubt  in 
favor  of  the  patentees.  —  Topliff  v.  Topliff,  145  U.  S.  156;  36  L.  Ed.  658; 
12  S.  Ct.  825. 

Taylor  seems  to  have  been  the  first  to  invent  a  practical  trunk  fastener  to 
take  the  place  of  the  old  fashioned  strap  and  buckle,  and  that,  improved 
upon,  as  it  undoubtedly  has  been,  it  has  completely  taken  the  place  of  the 
earlier  devices,  we  should  be  inclined  to  resolve  the  doubt  in  favor  of  the 
patentee.  —  Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;  12  S.  Ct. 
799. 

General  use  evidence  of.  —  Keystone  v.  Adams,  151  U.  S.  139;  38  L.  Ed. 
103;  14  S.  Ct.  295. 

The  strongest  evidence  that  the  invention  is  a  useful  one  is  the  fact  that 
more  than  one-half  of  all  the  articles  to  which  it  is  particularly  applicable, 
are  made  under  it  and  embody  the  combination  of  elements  which  is  set 
forth  in  its  specifications.  Nor  is  it  any  answer  that  the  companies  using  it 
have  a  monopoly  of  the  business.  They  would  use  ordinary  business  discre- 
tion, and  would  be  guided  by  the  demands  of  the  public.  —  Columbus  v. 
Robbins,  64  Fed.  384;  12  C.  C.  A.  174. 

Yet  these  are  the  facts  that  various  crude  and  unsatisfactory  expedients 
had  been  used  by  many  persons  for  the  purpose  of  accomplishing  what 
Davis  accomplished  by  his  simple  expedient,  that  this  occurred  to  none  of 
them,  and  that  after  it  had  been  suggested  by  him  it  came  into  general  use. 
The  basis  of  the  claim  seems  feeble,  and,  if  it  had  nothing  in  its  behalf  except 
what  we  can  find  as  a  matter  of  first  impression,  we  might  reject  it.  Yet  the 
presumptions  arising  in  its  favor  from  the  findings  of  the  patent  office  and 
the  circuit  court,  in  connection  with  those  coming  from  the  facts  we  have 
stated,  prevent  us  from  reversing  the  decree  below.  —  Davis  v.  Parkman, 
71  Fed.  961;   18  C.  C.  A.  398. 

Watson  v.  Stevens,  51  Fed.  757. 


560  THE    FIXED    LAW    OF    PATENTS  §  626 

The  fact  that  this  device  may  have  gone  into  general  use,  and  may  have 
displaced  other  devices  previously  used  for  the  same  or  analogous  purposes, 
might  be  sufficient  to  turn  the  scale  in  favor  of  patentability,  if  the  question 
were  doubtful;  but  it  is  not  sufficient  in  this  case,  when  the  court  is  clearly 
satisfied  that  there  was  no  invention,  in  view  of  what  was  old  and  well 
known.  —  Codman  v.  Amia,  74  Fed.  634;  20  C.  C.  A.  566. 

If  this  invention  had  been  put  in  early  use,  and  so  continued  with  a  long 
public  acquiescence,  it  might,  perhaps,  have  safely  received  therefrom  a 
practical  construction  more  favorable  to  the  complainants.  But  in  view  of 
the  rapidity  with  which  mechanical  improvements  advance  in  this  age,  it 
would  establish  a  very  dangerous  precedent  to  give  a  mere  paper  patent, 
which  has  lain  dormant  for  years,  a  breadth  not  contemplated  on  its  face, 
by  reason  of  some  new  function  discovered  long  after  its  issue,  and  after 
the  function  had  been  availed  of  in  practice  by  others.  —  Long  v.  Pope, 
75  Fed.  835;    21  C.  C.  A.  533. 

The  fact  that  a  device  has  had  large  use  when  sold  in  combination  with 
another  patented  device  does  not  argue  novelty  when  the  extended  use  is 
due  to  the  novelty  of  the  device  used  in  conjunction  with  it.  —  Dueber  v. 
Robbins,  75  Fed.  17;  21  C.  C.  A.  198. 

Extensive  use  is  only  an  element  to  be  considered  in  a  case  where  patenta- 
bility and  invention  are  doubtful.  Where,  as  here,  the  extended  use  can  be 
attributed  to  something  other  than  the  mere  novelty  of  the  device  it  loses  its 
evidential  force.  —  Dueber  v.  Robbins,  75  Fed.  17;  21  C.  C.  A.  198. 

In  view  of  the  prior  state  of  the  art  thus  exhibited,  it  seems  now  to  have 
been  a  very  simple  thing  to  do  what  was  done  by  the  patentees.  It  was  only 
necessary  for  them  to  take  the  Levitt  frame,  change  the  location  of  the  brace, 
perhaps  enlarge  the  diameter  of  its  arms,  remove  the  metallic  loop,  and  insert 
in  the  cross  brace  the  short  shaft  shown  in  the  patent  to  Brill.  But  the  record 
in  this  case  affords  extrinsic  evidence  of  a  most  convincing  kind  that  what  was 
done  by  the  patentees  was  not  an  obvious  thing,  and  that  the  change  of 
organization  was  not  one  which  the  skilled  mechanics  of  the  particular  art 
could  have  suggested  and  introduced  without  the  exercise  of  inventive 
faculty.  This  evidence  is  supplied,  not  only  by  the  many  patents  for  improve- 
ments, which  fell  short  of  producing  the  simple,  compact,  less  expensive, 
and  more  efficient  bearings  of  the  patent,  but  by  the  sterility,  during  20 
years,  of  the  great  army  of  mechanics  employed  by  the  various  sewing 
machine  manufacturers.  The  complainant  itself,  from  1865  to  1879,  used  the 
overhung  stud,  and  for  several  years  of  that  period  its  machines  contained 
cross  braces  readily  adaptable  to  the  office  of  the  patented  brace.  It  em- 
ployed a  vast  number  of  skilled  workmen.  Yet  to  none  of  them  did  the 
suggestion  occur  which  is  embodied  in  the  new  organization  of  the  patentees. 
The  simple  change  made  by  the  patentees  has  proved  so  valuable  that  the 
complainant  has  adopted  it  in  more  than  9,000,000  sewing  machines.  The 
sewing  machine  company  whose  president  is  the  defendant  in  this  suit  has 
also  adopted  it.  No  one  can  examine  the  bearings  of  the  patent,  even  cursorily, 
and  compare  them  with  those  previously  in  use,  without  recognizing  the 
meritorious  improvements  which  they  embody.  We  agree  with  the  court 
below  that  these  improvements  were  invention,  and  not  merely  the  exercise 
of  mechanical  skill  and  adaptation.  —  Schenck  v.  Singer,  77  Fed.  841  \  23 
C.  C.  A.  494 

Whether  it  was  an  obvious  thing  or  not  is  a  question  of  fact;  and  if  it 
should  appear  upon  the  introduction  of  the  patented  article,  it  commended 


§  626  INVENTION  561 

itself  to  the  public,  and  was  accepted  as  supplying  what  had  long  been 
wanted,  and  obtained  an  extensive  sale  and  use,  these  facts  might  be  decisive. 
According  to  bill  of  complainant,  the  invention  has  been  introduced  in  public 
use,  articles  have  been  largely  introduced  embodying  the  invention  and  it  has 
made  practically  successful  the  use  of  asbestos  fire-proof  cloth  for  the  pur- 
poses suggested  in  the  patent.  —  Beer  v.  Walbridge,  100  Fed.  465;  40  C. 
C.  A.  496. 

Krementz  v.  Cottle,  148  U.  S.  556. 

About  thirty  millions  of  such  bottle  stoppers  were  put  upon  the  market 
by  the  complainant  company  alone  during  the  last  year,  and  the  fact  that, 
until  the  Painter  patents  were  issued,  no  other  bottle  stoppers  of  like  char- 
acter or  based  upon  like  principles,  were  ever  sold,  is  of  itself  strong  evidence 
of  the  individuality  of  the  Painter  devices.  —  Crown  v.  Aluminum,  108  Fed. 
845;  48  C.  C.  A.  72. 

Within  three  years  after  the  issuance  of  the  patent,  90  per  cent,  of  the 
existing  bowling  alleys  have  had  the  new  style  of  returnways.  In  the  face  of 
this  evidence,  we  cannot  hold  that  his  improvement  is  devoid  of  patentable 
invention.  —  Brunswick  v.  Thum,  111  Fed.  904;  50  C.  C.  A.  61. 

The  combination  had  great  utility.  It  went  into  immediate  and  general 
use.  While  this  fact  is  insufficient  in  itself  to  sustain  a  patent  where  the 
machine  or  combination  is  clearly  without  novelty,  yet  where  the  question 
of  novelty  is  fairly  open  under  the  law,  the  fact  that  a  patented  device  or 
combination  has  displaced  others  which  had  previously  been  used  to  perform 
its  function  and  has  gone  into  immediate  and  general  use,  is  pregnant  and 
persuasive  evidence  that  it  involved  invention.  —  Kinloch  v.  Western,  113 
Fed.  659;  51  C.  C.  A.  369. 

National  v.  Interchangeable,  106  Fed.  693;  Smith  v.  Vulcanite,  93  U.  S.  486; 
Loom  Co.  v.  Higgins,  105  U.  S.  580;  Mfg.  Co.  v.  Adams,  151  U.  S.  139;  Magowan 
v.  Packing,  141  U.  S.  332;  Graphophone  v.  Leeds,  87  Fed.  873;  Topliff  v.  Topliff, 
145  U.  S.  156. 

That  a  vital  demand,  a  successful  meeting  of  that  demand,  and  extensive 
use  is  sufficient  to  establish  invention  over  a  prior  unsuccessful  device,  see 
Dececo  v.  Gilchrist,  125  Fed.  293;  60  C.  C.  A.  207. 

It  is  urged  that  the  great  commercial  success  which  has  attended  the 
introduction  of  the  patented  cap  is  persuasive  that  it  supplied  a  long  felt  want, 
and  which  previous  inventors  had  not  been  able  to  meet,  and  is  therefore 
evidence  of  its  patentable  novelty.  Such  an  argument  is  always  legitimate, 
but  in  this  case  has  not  the  usual  force,  first,  because  the  caps  put  upon  the 
market  seem  to  have  been  made  according  to  the  earlier  patent ;  and,  secondly 
because  the  success  is  largely  attributable  to  the  machine  used  for  fastening 
the  caps  on  the  bottles,  and  which  enables  it  to  be  done  with  great  rapidity 
and  efficiency.  —  Crown  v.  Standard,  136  Fed.  841 ;  69  C.  C.  A.  200. 

The  disk  produced  by  the  patented  process  responds  to  the  test  of  success 
when  others  have  failed.  But  in  addition  to  the  inventive  success,  there  is 
also  a  commercial  success.  And  this  success  is  not  subject  to  the  criticism 
that  is  due  to  extensive  advertising,  or  the  attractive  manner  of  placing  the 
articles  before  the  public,  or  "  the  energy  with  which  they  were  forced  upon 
the  market."  McClain  v.  Ortmayer,  141  U.  S.  428.  Nor  is  the  disk  merely 
such  an  element  of  a  device  that  its  sales  may  be  ascribed  to  the  popularity 
of  the  elements  thereof,  or  of  the  entire  organism.  Doig  v.  Morgan,  122  Fed. 
460.  The  patentable  novelty  of  the  process  of  the  patent  is  not  only  indicated 


562  THE    FIXED    LAW    OF    PATENTS  §  627 

by  larger  sales,  but  also  by  the  unassailable  evidence  of  that  most  sincere 
form  of  flattering  recognition,  namely,  imitation  and  appropriation  by  rival 
manufacturers.  In  short,  it  has  so  far  supplanted  other  methods  previously 
used  that  apparently  all  disk  records  are  now  made  by  said  process.  The 
validity  of  the  patent  is  thus  established  by  commercial  success,  resultant 
solely  from  inventive  success,  and  such  extensive  public  use  as  to  supersede 
disks  made  by  other  processes,  which  is  "  pregnant  evidence  of  its  novelty, 
value  and  usefulness."  —  American  v.  Universal,  151  Fed.  595;  81  C.  C.  A. 
139. 
Magowan  v.  N.  Y.,  141  U.  S.  332. 

The  industry  of  manufacturing  mats  and  the  like  out  of  wild  marsh  grass 
or  sedge  is  due,  we  think,  rather  to  the  commercial  ability  and  financial 
resources  at  the  command  of  appellant  than  to  Lowry's  conception  of  making 
binder  twine  from  common  products.  But,  if  appellant's  assertion  were  to 
be  taken  as  true,  it  would  only  be  influential  in  resolving  a  doubt.  It  would 
not  also  serve  to  inject  a  doubt  into  an  otherwise  clear  case.  —  American  v. 
Choate,  159  Fed.  140;  86  C.  C.  A.  330. 

Apart  from  the  presumption  of  novelty  that  always  attends  the  grant 
of  a  patent,  the  law  is  that  where  it  is  shown  that  a  patented  device  has 
gone  into  general  use,  and  has  superseded  prior  devices  having  the  same 
purpose,  it  is  sufficient  evidence  of  invention  in  a  doubtful  case.  —  Morton  v. 
Llewellyn,  164  Fed.  693;   C.  C.  A. 

Barbed  Wire  Pat.  143  U.  S.  275;  Keystone  v.  Adams,  151  U.  S.  139;  Irwin  v. 
Hasselman,  97  Fed.  964;  Wilkins  v.  Webb,  89  Fed.  982;  National  v.  Interchange- 
able, 106  Fed.  693. 

§  627.     Evidence  of  —  Extensive  Use  —  When  Not. 

The  fact  that  plaintiffs  had  been  able  to  overcome  a  prejudice  against 
machine  made  articles,  and  established  a  trade  is  not  in  itself  evidence  of 
invention.  —  Butler  v.  Steckel,  137  U.  S.  21;  34  L.  Ed.  582;  11  S.  Ct.  25. 

The  application  of  the  rule  of  evidence  of  novelty,  the  success  and  general 
use  of  the  invention,  should  be  applied  with  caution  to  a  limited  class  of  cases. 
—  Consolidated  v.  Holtzer,  67  Fed.  907 ;  15  C.  C.  A.  63. 

Olin  v.  Timkin,  155  U.  S.  141;   De  Loriea  v.  Whitney,  63  Fed.  611. 

We  think  the  sudden  and  peculiar  demand  for  some  material  of  this  kind 
(fibre  chamois)  in  the  sheet  form  in  which  it  was  put  upon  the  market  in 
1894  explains  its  great  sale,  rather  than  any  marked  improvement  in  its  mode 
of  manufacture.  —  American  v.  Port  Huron,  72  Fed.  516;  18  C.  C.  A.  670. 

From  aught  that  appears,  it  may  have  come  from  his  superior  construction, 
or  the  other  claims  of  the  patent,  and  especially  from  the  fact  that  he  omitted 
all  adjusting  devices.  —  Kenney  v.  Bent,  97  Fed.  337;  38  C.  C.  A.  205. 

Public  use,  so  far  as  any  is  shown,  may  have  relation  to  other  elements  of 
their  device  than  those  covered  by  Claim  1 ;  and  as  it  relates  to  a  discrimi- 
nate use  rather  than  to  use  by  manufacturers  and  other  persons  engaged  in  the 
art,  it  can,  in  no  event,  be  that  kind  of  public  use  which  the  courts  regard  as 
of  especial  value  in  patent  suits.  —  Nutter  v.  Brown,  98  Fed.  892;  39  C.  C. 
A.  332. 

DeLoriea  v.  Whitney,  63  Fed.  611;  Mfg.  Co.  v.  Holtzer,  67  Fed.  907;  Bates 
v.  Keith,  84  Fed.  1014. 


§§  628-629  INVENTION  563 

Extensive  use  does  not  of  itself  conclusively  establish  either  novelty  or 
utility;  but  if,  upon  technical  grounds,  the  matter  is  doubtful,  it  is  per- 
suasive evidence  of  those  qualities,  unless  it  appears  that  such  commercial 
success  was  due  to  other  causes.  —  Dowagiac  v.  Superior,  115  Fed.  886; 
53  C.  C.  A.  36. 

Gandy  v.  Belting  Co.  143  U.  S.  587;   Lane  v.  Welds,  99  Fed.  286. 

That  the  large  demand  for  and  use  of  a  device,  in  and  of  itself  without 
other  evidence  of  invention,  is  not  evidence  sufficient  to  sustain  invention; 
especially  so  when  the  demand  may  have  arisen  from  other  conditions,  see 
Burns  v.  Mills,  143  Fed.  325;  74  C.  C.  A.  525. 

§  628.     Evidence  of  —  Obvious  Demand. 

It  appears  from  the  record  that  prior  to  the  granting  of  the  patent  in 
suit  there  had  been  manufactured  by  complainants  what  was  known  as  the 
four-section  track  scale,  which  might  be  varied  in  length  from  24  to  22  feet; 
that  there  was  a  large  and  growing  demand  for  a  longer  scale ;  and,  while  the 
complainants  had  one  upon  the  market,  it  was  not  satisfactory,  though,  with 
the  aid  of  experts  and  skilled  mechanics,  they  had  been  endeavoring  to  make 
it  so.  Under  these  circumstances  we  are  unable  to  conclude  that  the  result 
so  long  and  unsuccessfully  sought  for  was  apparent,  and  did  not  need  more 
than  mechanical  skill  to  construct.  —  Standard  v.  Fairbanks,  125  Fed.  4; 
60  C.  C.  A.  91. 

He  was  satisfied  that  such  a  machine  would  meet  with  a  market  and  he 
constructed  one.  As  soon  as  the  want  was  apparent,  he  supplied  that  obvious 
want  by  what  confessedly  amounted  only  to  the  ordinary  skill  of  a  mechanic. 
—  Fay  v.  Mason,  127  Fed.  325;  62  C.  C.  A.  159. 

Hollister  v.  Benedict,  113  U.  S.  59. 

Note:  The  evidence  showed  that  the  inventor  made  extended  inquiry 
as  to  an  existing  demand  for  the  machine.  He  found  such  demand  general. 
Extended  inquiry  among  the  several  manufacturers  of  laundry  machinery 
showed  that  no  one  had  in  any  way  met  the  demand.  Fay  met  it,  and  as 
soon  as  he  met  it  others  began  to  infringe.  This  decision  seems  a  perversion 
of  the  rule. 

§  629.     Evidence  of  —  Patent  Prima  Facie. 

Letters  patent  are  prima  facie  evidence  of  invention  and  of  the  regularity 
of  their  issuance.  —  Railroad  v.  Stimpson,  14  Pet.  448;  10  L.  Ed.  535. 

The  act  of  1790  made  the  patent  prima  facie  evidence  of  invention.  The 
act  of  1793  repealed  it.  With  the  organization  of  the  Patent  Office  under 
the  act  of  1836  the  prima  facie  was  restored  and  has  since  remained.  —  Corn- 
ing v.  Burden,  15  How.  252;   14  L.  Ed.  683. 

Letters  patent,  when  introduced  in  evidence,  are  prima  facie  evidence  of 
invention.  —  Blanchard  v.  Putnam,  75  U.  S.  420;  19  L.  Ed.  433. 
Curt.  Pat.  sec.  118;   Pitts  v.  Hall,  2  Blatchf.  229;  Cahoon  v.  Ring,  1  Cliff.  625. 

Letters  patent  are  prima  facie  evidence  of  invention,  unless  sufficient  evi- 
dence appears  to  overcome  the  presumption.  —  Mitchell  v.  Tilghman,  86 
U.  S.  287;   22  L.  Ed.  125. 

R.  R.  v.  Stimpson,  14  Pet.  458;   Curt.  Pat.  4  ed.  sec.  472. 


564  THE    FIXED    LAW    OF    PATENTS  §  629 

The  action  of  the  commissioner  of  patents  in  granting  a  patent  is  not  con- 
clusive either  as  to  novelty,  utility  or  prior  use.  —  Reckendorfer  v.  Faber, 
92  U.  S.  347;  23  L.  Ed.  719. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Stimpson  v.  Woodman,  10  Wall.  117; 
Hailes  v.  Van  Wormer,  20  Wall.  353;  Rubber  v.  Howard,  20  Wall.  498;  Smith  v. 
Nichols,  21  Wall.  115;  Hicks  v.  Kelsey,  18  Wall.  670;  Seymour  v.  Osborne,  11 
Wall.  516. 

The  patent  is  prima  facie  evidence  of  the  novelty  of  the  invention.  —  Smith 
v.  Goodyear,  93  U.  S.  486;  23  L.  Ed.  952. 

In  a  suit  where  no  proof  was  adduced  to  prove  want  of  novelty,  the  defense 
relying  upon  an  interference  adjudication  in  their  favor,  Held:  that  in  the 
absence  of  any  proof  the  decree  will  be  affirmed.  —  Garratt  v.  Siebert,  98 
U.  S.  75;  25  L.  Ed.  84. 

Power  to  grant  patents  is  conferred  upon  the  commissioner;  and  when  that 
power  has  been  duly  exercised,  it  is,  of  itself,  when  introduced  in  evidence  in 
cases  like  the  present,  prima  facie  evidence  that  the  patentee  is  the  original 
and  first  inventor  of  that  which  is  therein  described  as  his  invention.  Proof 
may  be  introduced  by  the  respondent  to  overcome  the  presumption  but  in 
the  absence  of  such  proof,  the  prima  facie  presumption  is  sufficient  to  enable 
the  party  instituting  the  suit  to  recover  for  the  alleged  violation  of  his  rights. 
—  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Blanchard  v.  Putnam,  8  Wall.  420;   Seymour  v.  Osborne,  11  Wall.  538. 

The  letters  patent  are  prima  facie  evidence  of  invention.  —  Parks  v. 
Booth,  102  U.  S.  96;  26  L.  Ed.  54. 

Are  prima  facie  evidence  of  their  novelty  and  utility.  —  Lehnbeuter  v. 
Holthaus,  105  U.  S.  94;  26  L.  Ed.  939. 
Whitney  v.  Mowry,  4  Fish.  207. 

The  patent  issued  by  the  Commissioner  to  the  defendant  as  assignee  is  only 
prima  facie  evidence  that  the  assignor  was  the  inventor  of  the  improvement 
patented.  —  Kennedy  v.  Hazelton,  128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct. 
202. 

Patent  prima  facie  evidence  of.  —  Gandy  v.  Main,  143  U.  S.  587 ;  36  L.  Ed. 
272;  12  S.  Ct.  598. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94. 

There  is  no  doubt  that  the  letters  patent  are  prima  facie  evidence  that  the 
device  was  patentable.  Still,  we  are  always  required,  with  this  presumption 
in  mind,  to  examine  the  question  of  invention  vel  non  upon  its  merits  in  each 
particular  case.  —  Palmer  v.  Corning,  156  U.  S.  342;  39  L.  Ed.  445;  15  S.  Ct. 
381. 

When  both  applications  were  pending  at  the  same  time,  and  no  interfer- 
ence was  declared,  the  issue  of  the  subsequent  patent  is  evidence  that  it  was 
distinguishable  from  the  former  patent.  —  Boyd  v.  Janesville,  158  U.  S.  260; 
39  L.  Ed.  973;  15  S.  Ct.  831. 

American  v.  Elizabeth,  4  Fish.  P.  C.  189;   Burns  v.  Meyer,  100  U.  S.  671. 

The  patent  was  prima  facie  evidence  of  its  own  validity,  and  the  burden  of 
proof  was  upon  the  defendant  to  establish  its  want  of  novelty.  —  Singer 
v.  Brill,  54  Fed.  380;  4  C.  C.  A.  374. 


§  629  INVENTION  565 

Cantrell  v.  Wallick,  117  U.  S.  690;  Smith  v.  Goodyear,  93  U.  S.  486;  Lehn- 
beuter  v.  Holthaus,  105  U.  S.  94. 

If  a  machine  has  not  been  constructed  and  put  into  practical  use,  it  may 
be  difficult  to  determine  whether  it  ever  can  be;  but  notwithstanding  this, 
the  grant  of  the  patent  makes  a  prima  facie  case  in  this  particular,  and  the 
court  may  not  be  able  to  find  in  the  record  proofs  to  overcome  this  presump- 
tion. When  such  is  the  fact,  and  when,  also,  the  device  is  of  such  a  character, 
or  relates  to  such  special  and  peculiar  subject  matter,  that  it  does  not  come 
within  the  range  of  common  experience  or  judicial  knowledge,  the  prima  facie 
showing  must  stand.  —  Packard  v.  Lacing,  70  Fed.  66;  16  C.  C.  A.  639. 

The  presumption  referred  to  is  sometimes  defined  to  mean  that  the  patent 
itself  is  prima  facie  evidence  of  novelty  and  of  invention,  but  the  presumption 
is  probably  a  mere  rule  of  evidence,  which  casts  the  burden  of  proof  upon 
the  alleged  infringer.  This  presumption  cannot  usurp  the  province  of  the 
court  to  declare  what  constitutes  novelty.  The  court  should  give  due  con- 
sideration to  the  action  of  the  patent  office,  but  should  not  permit  that  action 
to  control  its  deliberate  judgment  when  it  is  manifest  there  is  no  invention.  — 
Warren  v.  Rosenblatt,  80  Fed.  540;  25  C.  C.  A.  625. 

Hollister  v.  Mfg.  Co.  113  U.  S.  59. 

The  patent  is  prima  facie  evidence  that  the  invention  it  protects  was  not 
in  public  use  or  on  sale  for  more  than  two  years  prior  to  the  time  of  the 
application  on  which  it  was  based,  and  that  it  was  not  proved  to  be  aban- 
doned. On  the  other  hand,  the  application  for  the  patent  within  two  years 
after  the  invention  was  made,  was  presumptive  evidence  of  an  intention  not 
to  dedicate  it  to  the  public,  and  the  issue  of  the  patent  was  prima  facie  proof 
that  it  had  not  been  abandoned.  —  Mast  v.  Dempster,  82  Fed.  327 ;  27 
C.  C.  A.  191. 

The  line  of  demarkation  between  invention  and  mechanical  skill  is  not  well 
defined,  and  is  often,  especially  in  this  age  of  improvement,  difficult  to  follow. 
In  case  of  doubt  the  law  has  wisely  required  the  consideration  of  certain  facts 
outside  the  question  of  invention  or  mechanical  skill  to  resolve  the  doubt. 
The  patent  itself  is,  in  a  restricted  sense,  prima  facie  evidence  of  novelty  and 
invention.  —  Streator  v.  Wire-glass,  97  Fed.  950;  38  C.  C.  A.  573. 

Warren  v.  Rosenblatt,  80  Fed.  540. 

A  patent  carries  with  it  the  presumption  of  novelty,  and  the  trained  experts 
of  the  patent  office  have  decided  that  what  was  done  arose  to  the  dignity  of 
an  invention.  —  Beer  v.  Walbridge,  100  Fed.  465;  40  C.  C.  A.  496. 

The  patent  itself  is  prima  facie  evidence  of  the  novelty  of  his  combination, 
and  if  that  issue  was  doubtful  this  presumption  would  entitle  it  to  a  con- 
struction which  would  sustain,  in  preference  to  one  which  would  destroy, 
the  grant  it  evidences. —  National  v.  Interchangeable,  106  Fed.  693;  45 
C.  C.  A.  544. 

That  while  the  letters  patent  are  evidence  prima  facie  of  invention  the 
presumption  is  cancelled  by  the  fact  that  the  patentee  signed  as  a  witness 
the  prior  application  of  another  for  the  same  invention,  see  Barr  v .  Chicago, 
110  Fed.  972;  49  C.  C.  A.  194. 

There  is  in  every  case  a  prima  facie  presumption  in  favor  of  the  validity 
of  every  patent  issued  by  the  Patent  Office.  Due  heed  and  consideration 
must  always  be  given  by  the  court  or  jury  to  this  presumption,  but  the  real 


566  THE    FIXED    LAW    OF    PATENTS  §  630 

question  in  all  cases  is  whether  or  not  the  evidence  in  the  case  is  or  is  not  suffi- 
cient to  overcome  the  prima  facie  presumption  which  the  patent  affords.  — 
Los  Angeles  v.  iEolian,  143  Fed.  880;  75  C.  C.  A.  88. 

Hays  v.  Sulsor,  1  Fish.  P.  C.  532;  Corning  v.  Burden,  15  How.  252;  Recken- 
dorfer  v.  Faber,  92  U.  S.  347;  Bates  v.  Coe,  98  U.  S.  31;  Lehnbeuter  v.  Holthaus, 
105  U.  S.  94;  Miller  v.  Eagle,  151  U.  S.  186;  Boyd  v.  Janesville,  158  U.  S.  260; 
Ransome  v.  Hyatt,  69  Fed.  148;  Wilgus  v.  Germain,  72  Fed.  773. 

The  grant  of  a  patent  is  presumptive  evidence  that  the  patentee  is  entitled 
to  the  monopoly  fairly  covered  by  his  claims.  He  who  asserts  to  the  contrary 
must  prove  his  assertions.  —  American  v.  DeGrasse,  157  Fed.  660;  87  C. 
C.  A.  260. 

The  presumption  that  he  believed  himself  to  be  the  inventor  of  the  pave- 
ment for  which  he  was  given  a  patent  must  be  our  starting  point  in  deter- 
mining whether  his  patent  is  defeated  by  anticipation.  That  somebody  had, 
in  fact,  made  the  same  composition  before  he  did  does  not  necessarily 
defeat  his  patent.  In  one  sense  he  would  not  be  the  first  inventor  in  such  case. 
But  in  the  sense  of  the  patent  statute,  he  is  the  first  inventor  who,  by  his  own 
thought,  makes  an  article  or  material  and  first  perfects  and  adapts  his  dis- 
covery to  actual  use,  although  someone  may  have  previously  made  a  similar 
article  without  putting  it  to  practical  use  or  given  his  discovery  to  the  public 
in  any  way.  —  Warren  v.  City,  166  Fed.  309;  C.  C.  A. 

Gayler  v.  Wilder,  10  How.  477;  Seymour  v.  Osborne,  11  Wall.  517;  Albright  v. 
Celhdoid,  Fed.  Cas.  147;  Bullock  v.  Jones,  Fed.  Cas.  2132;  Agawam  v.  Jordan, 
7  Wall.  583;  Whiteley  v.  Swayne,  7  Wall.  685;  Deering  v.  Winona,  155  U.  S. 
286;  Corn  Planter  Pat.  23  Wall.  181;  Smith  v.  Goodyear,  93  U.  S.  486;  Game- 
well  v.  Municipal,  61  Fed.  948. 

§  630.  Evidence  of  —  Patent  Office  Action. 

It  is  significant  that  the  application  was  some  four  years  in  being  allowed, 
that  it  was  three  times  rejected,  and  that  it  was  finally  allowed  by  an 
examiner  who  had  not  previously  dealt  with  the  application.  —  Richmond 
v.  Atwood,  48  Fed.  910;  1  C.  C.  A.  144. 

The  action  of  the  patent  office,  taken  in  connection  with  other  matters,  is 
evidence  of  novelty.  —  Davis  v.  Parkman,  71  Fed.  961;  18  C.  C.  A.  398. 
Watson  v.  Stevens,  51  Fed.  757. 

In  view  of  the  fact  that  the  examiners-in-chief  seem  not  to  have  had  the 
remotest  conception  of  what  the  specifications  showed,  or  of  what  Fulton 
claimed,  the  presumption  in  this  case  of  patentability  arising  from  the  allow- 
ance of  the  application  by  the  patent  office  is  of  no  practical  value.  — 
Rogers  v.  Fitch,  81  Fed.  959;  27  C.  C.  A.  23. 

The  record  shows  that  the  complainant's  application  was  seven  times 
rejected  on  references  to  prior  patents,  and  was  finally  granted  on  an  amend- 
ment to  the  claim,  with  expressed  reluctance.  —  Smidth  v.  Bonneville,  114 
Fed.  262;  52  C.  C.  A.  148. 

The  officials  of  the  Patent  Office,  with  the  prior  art  before  them  so  found, 
and  granted  a  patent.  This  action  on  their  part  creates  a  presumption  of 
patentable  novelty,  which  presumption  can  be  overcome  only  by  clear  proof 
that  they  were  mistaken,  and  that  the  combination  lacks  patentable  novelty. 
—  Fairbanks  v.  Stickney,  123  Fed.  79;  59  C.  C.  A.  209. 

Cantrell  v.  Wallick,  117  U.  S.  689;  Coffin  v.  Ogden,  18  Wall.  120;  Streator  v. 
Wire,  97  Fed.  950;   Fraim  v.  Keen,  25  Fed.  820;   Osborne  v.  Glazier,  31  Fed.  402. 


§  631  INVENTION  567 

There  is  the  presumption  arising  from  the  granting  of  the  patent,  which, 
in  this  case,  was  issued,  as  the  proceedings  in  the  Patent  Office  show,  after 
full  and  critical  examination,  and  this  after  rejections  and  references  to 
previous  patents  of  a  character  very  similar  to  those  we  have  in  the  present 
record  —  indeed  some  of  them  are  the  same.  —  Canda  v.  Michigan,  124  Fed. 
486;  61  C.  C.  A.  194. 

We  do  not  agree  with  the  contention  that  the  fact  that  the  file  wrapper 
discloses  the  patent  to  have  been  granted  as  first  applied  for,  without  any 
references,  adds  any  force  to  the  presumption  of  novelty.  On  the  contrary, 
we  think  the  force  of  that  presumption  is  much  diminished,  if  not  destroyed, 
by  the  lack  of  any  reference  by  the  examiner  to,  or  consideration  of,  the 
"  Clark  "  patents.  —  American  v.  Sample,  130  Fed.  145;  64  C.  C.  A.  497. 

If  the  patent  relates  to  something  of  temporary  interest,  and  the  object 
sought  is  of  little  importance,  and  offers  but  slight  chance  of  profitable  use, 
it  may  receive  but  little  attention  in  the  Patent  Office,  and  the  presumption 
therefore  is  slight ;  but  where  the  problem  sought  to  be  solved  by  the  patent  is 
of  such  importance  that  the  solution  of  it  promises  great  pecuniary  returns, 
and  the  testimony  shows  that  all  the  claims  of  the  patent  were  subject  to 
critical  analysis  by  trained  experts  in  that  office,  resulting  in  amendments  and 
disclaimers  designed  to  distinguish  it  from  everything  in  the  prior  art,  and  the 
subject  appears  to  have  been  thoroughly  threshed  out,  the  presumption  in 
favor  of  novelty  is  greater  than  in  those  cases  where  the  patent  may  have 
passed  by  inadvertence.  —  Imperial  v.  Crown,  139  Fed.  312;  71  C.  C.  A.  442. 

Note:  The  first  part  of  this  holding  (Brawley,  J.)  will  hardly  square  with 
the  experience  of  those  who  have  done  patent  soliciting.  To  say  that  the 
thoroughness  with  which  the  examiners  examine  an  application  varies  with 
the  importance  of  the  invention  from  a  commercial  point  of  view  is  wide  of 
the  mark. 

Although  it  is  true  that  the  patentee  encountered  great  difficulty  in  the 
Patent  Office,  his  claims  being  rejected  over  and  over  again,  yet  we  are 
unable  to  see  that  the  proceedings  there  require  a  construction  of  the  claim 
which  will  enable  the  defendant  to  escape  the  charge  of  infringement.  — 
Good  Form  v.  White,  160  Fed.  661. 

§  631.     Evidence  of  —  Prior  Failures. 

The  very  fact  that  the  attempt  which  had  been  made  to  secure  uniformity 
of  product  seems  to  have  been  abandoned  after  the  Jones  invention  came  into 
popular  notice  is  strong  evidence  tending  to  show  that  the  patent  contains 
something  which  was  of  great  value  to  manufacturers  of  steel,  and  which 
entitled  Jones  to  the  reward  due  to  a  successful  inventor.  —  Carnegie  v. 
Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

The  probative  force  of  this  fact  (that  the  evil  which  the  complainant's 
invention  remedied  had  been  apparent  for  years),  added  to  the  presumption 
arising  from  the  letters  patent,  satisfies  us  of  the  novelty  and  patentability 
of  the  invention.  If  the  display  of  the  expected  skill  of  the  calling  or  the 
exercise  of  the  ordinary  faculties  of  reasoning  had  been  sufficient  to  discover 
and  put  in  practice  this  improvement,  some  bookkeeper  would  have  dis- 
played that  skill  or  exercised  those  faculties,  and  thus  obtained  this  result 
long  ago.  These  were  not  sufficient.  It  required  something  more  to  attain 
this  result;  it  required  the  exercise  of  "  that  intuitive  faculty  of  the  mind,  put 
forth  in  the  search  for  new  results  or  new  methods,  which  creates  what  had 
not  before  existed,  or  brings  to  light  what  lies  hidden."  This  faculty  the  com- 
plainant exercised,  and  the  result  is  this  invention,  —  an  invention,  it  is 


568  THE    FIXED    LAW    OF    PATENTS  §  631 

true,  that  now  seems  so  simple  that  we  marvel  that  it  did  not  before  occur  to 
every  bookkeeper.  —  Thomson  v.  Citizens  Nat.  Bk.,  53  Fed.  250;  3  C.  C. 
A.  518. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Consolidated  v.  Crosby,  113  U.  S.  157; 
Magowan  v.  Packing  Co.,  141  U.  S.  332;  Barbed  Wire  Pat.,  143  U.  S.  275. 

Distinguishing  Hollister  v.  Mfg.  Co.,  113  U.  S.  59. 

Various  expedients  for  switching  with  such  conductors  have  been  resorted 
to  by  experts  in  the  art.  The  fact  that  they  overlooked  devices  like  the 
patented  device,  and  resorted  to  clumsy  and  inconvenient  means,  cannot  be 
ignored.  It  was  not  a  great  invention,but  that  it  was  an  invention  requiring  a 
degree  of  ingenuity  somewhat  beyond  the  ordinary  skill  of  the  calling  we  are 
unable  to  doubt.  —  Thomson-Houston  v.  Elmira,  71  Fed.  396;  18  C.  C.  A.  145. 

Inventors  of  known  repute  and  genius  who  have  studied  the  subject,  and 
who  greatly  desired  to  promote  incandescent  lighting,  failed,  and  the  patentee 
succeeded  because  he  adopted  the  means  which  apparently  had  not  occurred 
to  them.  —  Maitland  v.  Goetz,  86  Fed.  124;  29  C.  C.  A.  607. 

The  fact  that  his  combination  had  not  suggested  itself  to  any  mechanic 
skilled  in  the  art  during  12  years  of  diligent  search  and  effort  for  improvement ; 
the  facility  and  rapidity  with  which  it  took  the  place  of  old  devices  and 
went  into  immediate  and  extensive  use  as  soon  as  it  was  disclosed,  —  all 
these  facts  converge  upon  the  mind  with  compelling  force  to  prove  that  the 
compelling  and  striking  improvement  he  made  was  the  production,  not  of  the 
skill  of  the  mechanic,  but  of  the  intuitive  genius  of  the  inventor.  —  National 
v.  Interchangeable,  106  Fed.  693;  45  C.  C.  A.  544. 

Thomson  v.  Bank,  53  Fed.  250;  Griswold  v.  Harker,  62  Fed.  389;  Loom  Co. 
v.  Higgins,  105  U.  S.  580;  Consolidated  v.  Crosby,  113  U.  S.  157;  Magowan  v. 
Packing  Co.,  141  U.  S.  332;   In  re  Barbed  Wire  Patent,  143  U.  S.  275. 

It  is  a  novel  contention  that  admitted  failures  during  the  preliminary 
stage  of  experiments  should  be  adduced  as  evidence  of  want  of  utility  in  the 
perfected  invention.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

It  aided  to  make  a  successful  machine ;  and  the  fact  that  Cushman  failed 
to  accomplish  that  result  notwithstanding  his  ingenuity,  weighs  strongly  in 
favor  of  the  patentability  of  complainant's  box  form,  simple  as  it  is.  — 
Hobbs  v.  Gooding,  111  Fed.  403;  49  C.  C.  A.  414. 

Watson  v.  Stevens,  51  Fed.  757. 

It  is  a  fact  entitled  to  serious  consideration  in  determining  whether 
Anderson's  improvement  was  so  obvious  as  to  be  one  which  would  occur  to 
a  mechanic  skilled  in  the  art  that  Van  Depeole,  with  his  conceded  skill,  did 
not  attain  the  desired  end.  His  change  seems  simple  enough  now,  but  it  was 
the  first  to  combine  comprehension  of  the  problem  to  be  solved  with  practical 
arrangement  of  parts  for  its  solution.  This  entitles  his  advance  to  the  merit 
of  invention.  —  Star  v.  General,  111  Fed.  398;  49  C.  C.  A.  409. 

The  fact  that,  in  such  circumstances,  no  one  accomplished  it,  is  cogent 
evidence  that  the  later  inventions  of  Tesla  were  beyond  the  compass  of  the 
ordinary  skill  of  the  profession  and  beyond  the  line  which  divides  the  products 
of  such  skill  from  invention.  —  Dayton  v.  Westinghouse,  118  Fed.  562;  55 
C.  C.  A.  390. 

Dowagiac  v.  Superior,  115  Fed.  886. 


§  631  INVENTION  569 

It  is  shown,  however,  that  not  only  the  skilled  workmen,  but  those  who 
were  giving  this  art  special  study  and  exploring  for  improvements  in  rotary 
disk  plows  for  several  years,  had  not  perceived  this  one,  although  the  need 
of  it  was  always  pressing.  This  is  no  new  suggestion,  but  it  has  no  special 
relevancy  when  a  series  of  improvements  has  culminated  in  one  which  con- 
tributes so  decisively  to  the  utility  of  a  machine  which  others  have  been  long 
trying  to  make  operative.  —  Sanders  v.  Hancock,  128  Fed.  424;  63  C.  C.  A. 
166. 

We  have  been  unable  to  find  in  the  prior  art  any  single  device,  or  any 
sufficiently  definite  suggestions  derivable  from  the  various  devices,  which 
sustain  the  contention  of  defendants  that  the  patented  improvement  is 
merely  the  result  of  mechanical  skill.  The  reasons  for  the  conclusion  that  the 
patented  device  involved  invention  sufficiently  appear  from  a  comparison  of 
its  construction,  adapted  to  attain  the  objects  stated  in  the  specification  and 
the  practical  results  thereby  secured,  with  the  impracticality  or  insufficiency 
of  the  devices  of  the  prior  art.  The  failure  of  defendants  to  avail  themselves 
of  said  earlier  devices  or  improve  them,  and  their  bodily  appropriation  of  the 
patented  construction,  is  most  persuasive  upon  the  question  of  invention.  — 
General  v.  Wagner,  130  Fed.  772;  66  C.  C.  A.  82. 

The  fact  of  discovery  is  often  ascertained  by  results,  and  while  it  may  be 
difficult  to  put  our  finger  upon  any  precise  thing  in  Painter's  device,  and  say 
that  Painter  invented  that,  we  find  in  the  results  a  substantial  addition  to  our 
stock  of  knowledge  —  a  mode  of  application  of  simple  forces  embodied  in  an 
instrumentality  so  simple  that  our  wonder  is  that  it  was  not  done  before.  Its 
very  simplicity  tends  to  raise  a  doubt  whether  the  inventive  faculty  was 
needed  to  produce  the  results  which  seem  so  obvious  that  we  are  prone  to 
think  that  any  mechanic  starting  where  Painter  did,  and  with  the  knowledge 
of  previous  inventions  which  he  had,  could  by  mere  mechanical  skill  accom- 
plish what  he  did.  The  fact  that  no  mechanic  did  accomplish  it,  although 
many  inventors  were  eagerly  trying  to  do  so,  and  the  world  was  eagerly  await- 
ing a  simple  and  cheap  bottle-stopper  device,  if  not  conclusive  proof,  is  very 
persuasive  evidence,  that  something  more  than  mechanical  skill  was  required; 
that  it  demanded  inventive  genius  or  faculty  to  bridge  the  chasm  which 
separated  the  bungling,  imperfect,  inoperative  devices  of  previous  inventors, 
and  the  simple,  economical,  and,  for  its  purpose,  perfect  device  which  Painter 
gave  to  the  world.  If  the  subject-matter  was  of  little  importance  and  of 
merely  transient  interest,  we  might  say  that  mechanical  skill  did  not  accom- 
plish it,  because  it  did  not  make  the  effort ;  but  if  it  was  a  matter  of  enduring 
importance,  and  promised  great  profit  if  the  problem  was  successfully  solved, 
it  is  safe  to  assume  that  there  was  great  likelihood  of  some  mechanic  applying 
his  skill,  if  success  could  have  been  readily  achieved  by  merely  mechanical 
means.  —  Imperial  v.  Crown,  139  Fed.  312;   71  C.  C.  A.  442. 

Crown  v.  Aluminum,  108  Fed.  863;    Farmers'  v.  Spruks,  127  Fed.  691. 

Twelve  earlier  patents  are  shown  in  the  record,  none  responds  in  any  way  to 
the  claims  in  suit.  If,  after  the  inventor  had  proven  the  advantages  of  his 
improvement,  the  skilled  mechanic  might  reasonably  have  been  expected  to 
produce  the  device  in  suit  by  combining  the  teachings  of  the  prior  patentees, 
it  is  remarkable  that  the  seven  patentees  during  the  succeeding  15  years 
should  have  reverted  to  the  old  type.  —  Mahony  v.  Malcom,  143  Fed.  124: 
74  C.  C.  A.  318. 

That  the  construction  of  a  machine  capable  of  producing  such  a  fabric  was 
not  obvious  appears  from  the  31  prior  patents  introduced  by  defendants,  no 
one  of  which  showed  a  solution  of  the  problem,  and  from  the  inability  of 


570  THE    FIXED    LAW    OF    PATENTS  §  631 

defendants'  experts  to  construct  from  the  prior  art  any  practical  device  or  to 
satisfactorily  indicate  how  the  prior  structures  could  be  so  adapted  without 
radical  and  substantial  modifications,  involving  the  exercise  of  invention.  — 
Scott  v.  Fisher,  145  Fed.  915;  76  C.  C.  A.  447. 

The  fact  that  some  manufacturers  did  not  know  how  to  do  it,  and  that 
successful  results  might  not  always  have  been  obtained,  even  when  the 
formulas  were  followed,  does  not  prove  that  it  could  not  be  done.  —  National 
v.  New  England,  151  Fed.  19;  80  C.  C.  A.  485. 

Indeed  its  inventive  character  is  evidenced  by  the  alleged  anticipatory 
uses  in  the  respondent's  works.  The  combined  use  of  a  pneumatic  hammer 
with  a  sieve  was  some  years  before  there  tried  and  abandoned.  The  evidence 
of  exact  practice  is  not  such  as  to  establish  an  anticipatory  use,  for  it  is  con- 
tradictory as  to  how  the  hammer  was  applied,  but  the  highly  significant  fact 
is  that,  even  with  the  thought  of  a  possible  combination  of  pneumatic  ham- 
mer and  sieve  suggested  to  men  skilled  in  that  art,  they  were  not  able  to 
mechanically  place  the  two  in  successful  operative  relation.  But  Arrott  did 
just  what  they  failed  to  do.  He  contributed  to  an  important  industry  a 
device,  labor-saving,  effective,  and  which,  in  relieving  to  a  degree  labor 
under  fierce  heat  conditions,  rose  to  the  plane  of  the  humane.  And  it  was 
these  results  which  the  respondent  failed  to  secure  that  made  Arrott's  work 
invention,  and  theirs  a  fruitless  and  abandoned  experiment.  —  Mott  v. 
Standard,  159  Fed.  135;  86  C.  C.  A.  325. 

That  these  defects  were  appreciated,  and  that  an  earnest  effort  was  made 
to  remedy  them  for  more  than  ten  years  prior  to  the  patent,  is  shown  by  the 
record.  Though  belonging  to  a  limited  field  and  dealing  with  subordinate 
improvements,  we  are  of  the  opinion  that  the  features  added  by  Davies  pro- 
duced an  advance  in  the  art  which  required  a  higher  grade  of  ability  than  can 
be  attributed  to  the  skill  of  the  calling.  —  Good  Form  v.  White,  160  Fed. 
661. 

Frost  v.  Cohn,  119  Fed.  505;  Young  v.  Wolfe,  120  Fed.  956;  Parramore  v. 
Taylor,  114  Fed.  97. 

It  is  always  hazardous  to  assert  the  obviousness  of  a  device  which  no  one, 
with  the  whole  art  before  him,  up  to  that  time  has  conceived.  Nor  were  the 
benefits  of  the  patented  structure  to  be  reasoned  out,  unaided.  To  deny  to 
its  successful  solution  the  merit  of  invention  upon  the  contrary  idea  is  to 
declare  that  these  efforts  were  needless,  and  that  there  was  already  disclosed 
in  the  art  an  easy  and  obvious  way  out,  which  ought  to  have  been,  but 
somehow  was  not,  seen.  —  Edison  v.  Novelty,  167  Fed.  977;  C.  C.  A. 

In  an  art  so  highly  advanced  as  the  pump  art,  where  all  the  elements 
which  enter  into  the  construction  may  be  said  to  be  old,  it  is  impossible, 
in  many  cases,  as  an  abstract  proposition,  to  draw  the  line  between  invention 
and  the  skill  of  the  designer.  There  is,  however,  strong  evidence  of  invention, 
where  we  have  presented  the  circumstances  such  as  exist  with  respect  to 
the  patents  in  suit,  namely,  a  demand  for  a  more  efficient  pump,  the  failure 
of  previous  efforts  to  meet  the  demand,  the  immediate  success  of  the  patented 
device,  and  its  great  utility.  Again,  it  may  be  said  that  these  patents  belong 
to  the  class  which  the  patent  law  was  designed  to  protect,  inasmuch  as  they 
cover  a  device  which  is  new  and  useful,  and  which  immediately  met  a  public 
want.  —  Warren  v.  Blake,  163  Fed.  263;  C.  C.  A. 


§§  632-633  INVENTION  571 

§  632.     Evidence  of  —  Simplicity. 

The  greater  simplicity  of  the  Boyden  patent  certainly  entitled  it  to  a 
favorable  consideration.  —  Westinghouse  v.  Boyden,  170  U.  S.  537;  42  L. 
Ed.  1136;   18  S.  Ct.  707. 

It  is  easy  after  the  event  to  see  how  simple  an  act  turned  failure  into  suc- 
cess; but  prior  to  the  time  of  Shuman  no  mechanical  skill  had  solved  the 
problem,  and,  if  we  may  credit  the  testimony  of  this  record,  those  engaged  in 
the  art  were  diligently  at  work  to  accomplish  that  which  only  Shuman 
effected.  He  has  given  to  the  world  a  new,  useful,  and  valuable  product.  He 
succeeded  where  others  failed.  —  Streator  v.  Wire  Glass,  97  Fed.  950;  38 
C.  C.  A.  573. 

Barbed  Wire  Patent,  143  U.  S.  275. 

The  fact  that  a  new  combination  or  device  may  be  simple  and  obvious  to 
the  ordinary  understanding,  when  once  produced  in  concrete  form,  is  not 
necessarily  proof  that  invention  was  not  involved.  This  is  almost  common- 
place in  the  jurisprudence  of  the  patent  law.  It  is  also  true  that  admitted 
benefits  resulting  from  the  combination  or  device,  and  widely  extended 
adoption,  are  facts  relevant  to  the  novelty  and  usefulness  of  the  alleged 
invention.  —  Buchanan  v.  Perkins,  135  Fed.  90;  67  C.  C.  A.  564. 

It  may  be  conceded  that  the  device  is  on  the  border  line  between  invention 
and  mechanical  skill.  But,  because  of  its  simplicity,  efficiency  and  cheapness 
and  the  persistency  with  which  the  defendant  insists  upon  using  it,  we  are 
inclined  to  resolve  the  doubt  in  favor  of  the  patent.  —  Yawman  v.  Vetter, 
159  Fed.  443;  86  C.  C.  A.  473. 

§  633.     Evidence  of  —  Turning  Failure  into  Success. 

It  is  true  that  many  valuable  inventions  seem  simple  when  accomplished, 
and  yet  are  entitled  to  protection.  The  books  abound  in  cases  showing 
inventions  involving  only  small  departure  from  former  means,  yet  making 
the  difference  between  a  defective  mechanism  and  a  practical  method  of 
accomplishing  results.  In  such  cases  a  decision  in  favor  of  invention  as  dis- 
tinguished from  mere  mechanical  improvement  has  not  infrequently  resulted, 
in  view  of  the  fact  that  the  device  has  made  the  difference  between  an  im- 
practicable machine  and  a  useful  improvement  displacing  others  theretofore 
occupying  the  field.  —  Computing  v.  Automatic,  204  U.  S.  609;  51  L.  Ed. 
645;  27  S.  Ct.  307. 

Krementz  v.  Cottle,  148  U.  S.  556;  Consolidated  v.  Detroit,  47  Fed.  894;  Star 
v.  General,  111  Fed.  398. 

The  first  to  make  such  an  improvement  is  not  in  fact  an  inventor,  and  to 
infer  invention  merely  because  it  had  not  been  produced  sooner,  would  be  to 
reach  a  false  conclusion  by  an  argument  neither  persuasive  nor  plausible.  — 
Stover  v.  Mast,  89  Fed.  333 ;  32  C.  C.  A.  231. 

Parlin  v.  Moline,  89  Fed.  329. 

Note:  This  is  a  ruling  by  Judge  Woods,  which  though  entirely  proper  when 
taken  with  the  facts  in  the  case,  is  not  capable  of  application  as  a  general 
rule. 

If  it  be  conceded  that  all  prior  machines  were  failures ;  that  the  machine 
of  the  patent  was  the  first  practical  and  commercially  successful  one ;  that  it 
was  accepted  by  the  art,  and  has  since  monopolized  the  field  —  nevertheless 
such  evidence  is  not  helpful  to  the  solution  of  the  question  presented  on  these 
two  claims.    There  is  nothing  to  show  that  this  minor  improvement  in  one 


572  THE    FIXED    LAW    OF    PATENTS  §  634 

part  of  the  machine  contributed  at  all  to  any  such  far-reaching  results.  — 
Doig  v.  Morgan,  122  Fed.  460;  59  C.  C.  A.  616. 

When  it  appears  that  the  improvement,  slight  though  it  was,  led  from 
failure  to  success;  that,  though  failure  was  appreciated  and  success  sought 
for  by  skilled  mechanics,  no  one  before  the  patentee  hit  on  this  way  to  secure 
it;  and  that,  when  the  improvement  was  made,  it  was  generally  accepted 
and  the  patent  for  it  respected  by  those  practising  the  art  —  courts  are  con- 
strained to  hold  that  the  simple  device  is  a  patentable  invention.  —  Doig 
v.  Morgan,  122  Fed.  460;  59  C.  C.  A.  616. 

Schenck  v.  Singer,  77  Fed.  841;   Brunswick  v.  Thum,  111  Fed.  904. 

Chambers  succeeded.  Eastman  failed.  The  one  produced  a  lamp  having 
both  these  characteristics.  The  other  a  lamp  having  but  one.  Instead  of 
anticipating  or  seriously  limiting  the  scope  of  the  patent,  Eastman  offers  mute 
but  persuasive  tribute  to  Chambers'  skill  and  ingenuity.  —  Eldred  v.  Kirk- 
land,  130  Fed.  342;  64  C.  C.  A.  588. 

§  634.     Evidence  of  —  Use  by  Defendant. 

If  the  infringer  claims  to  have  known  of  the  combination  and  to  have 
perfected  it,  why  did  he  not  put  it  into  general  use,  and  why  did  he  not 
apply  for  a  patent  upon  it?  He  was  already  a  patentee  of  a  different  and 
inferior  apparatus.  He  knew  all  about  the  method  of  going  about  to  get  a 
patent.  He  belonged  to  a  profession  which  is  generally  alive  to  the  advan- 
tages of  a  patent  right.  On  the  hypothesis  of  his  being  the  real  inventor  his 
conduct  is  inexplicable.  —  Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed. 
1177. 

Where  defendant  took  out  a  patent  after  commencement  of  suit  claiming 
the  main  element  of  the  patent  in  suit  to  a  new  use,  and  upon  hearing  stipu- 
lated that  a  decree  for  a  certain  royalty  might  be  entered  against  him,  is 
estopped  to  deny  the  utility  of  the  device  in  suit.  —  Western  v.  La  Rue, 
139  U.  S.  601;  35  L.  Ed.  295;  1  S.  Ct.  670. 

Walker  on  Pat.  sec.  85;  Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Morgan  v. 
Seaward,  1  Web.  P.  C.  170. 

Use  by  a  defendant  of  the  patented  process  or  article  is  evidence,  at  least 
against  that  defendant,  of  utility.  —  Gandy  v.  Main,  143  U.  S.  587 ;  36  L. 
Ed.  272;    12  S.  Ct.  598. 

For  the  reasons  stated  we  cannot  doubt  the  validity  of  the  patent.  The 
defendants  did  not  doubt  it,  but  admitted  it,  by  the  purchase  and  sale  of 
umbrellas  under  the  patent,  until  dissatisfaction  and  dispute  arose  respecting 
the  prices  they  should  pay.  The  admission  is  not,  of  course,  an  estoppel; 
but  in  view  of  the  defendants'  presumed  familiarity  with  the  art,  such  an 
expression  of  judgement  is  evidence,  and  worthy  probably  of  as  much  weight 
as  that  now  expressed  by  their  experts.  —  Rose  v.  Hirsch,  77  Fed.  469 ;  23 
C.  C.  A.  246. 

While  the  invention  displayed  is  of  a  low  order,  it  is  sufficient  to  support 
the  patent.  The  device  though  simple,  was  new  in  the  art,  and  was  cheap, 
convenient,  and  supplied  a  want  distinctly  felt.  Manufacturers  of  matches 
immediately  recognized  its  usefulness,  and  sought  the  privilege  of  making  it. 
The  defendants  were  among  the  first  to  do  so,  and  seemed  to  have  enter- 
tained no  doubt  respecting  the  validity  of  the  patent,  until  their  efforts  to 
obtain  such  privilege  on  their  own  terms  had  failed.  The  defendants  may  well 
be  regarded  as  experts  in  the  art,  and  their  conduct  was  an  unbiased  and 


§  634  INVENTION  573 

emphatic  expression  of  judgement  in  favor  of  the  patent;  their  present 
expression  and  that  of  their  experts  are  probably  entitled  to  less  weight.  — 
Schenck  v.  Diamond,  77  Fed.  208;  23  C.  C.  A.  122. 

It  is  improbable  that  men  will  render  themselves  liable  to  actions  for 
infringement  unless  infringement  be  useful.  And  the  fact  that  a  patent  has 
been  infringed  by  a  defendant  is,  as  against  such  infringer,  sufficient  to 
establish  its  utility.  —  Goss  v.  Scott,  108  Fed.  253;  47  C.  C.  A.  302. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  96;   Vance  v.  Campbell,  Fed.  Cas.  16,837. 

No  doubt  is  expressed  of  its  utility.  The  defendants  are  engaged  in  the 
business  of  manufacturing  and  selling  something  very  similar  to  it,  and  this 
must  be  accepted  as  very  cogent  evidence  for  the  purposes  of  this  case.  — 
Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Gandy  v.  Belting,  143  U.  S.  587;  Gibbs 
v.  Hoefner,  19  Fed.  323;  La  Rue  v.  Electric,  31  Fed.  82;  Seymour  v.  Osborne, 
11  Wall.  516. 

The  defendant  furnishes  strong  evidence  of  its  utility  by  persistent  adop- 
tion of  the  means  for  like  purpose.  —  Austin  v.  American,  121  Fed.  76;  57 
C.  C.  A.  330. 

And  having  regard  to  the  presumption  of  validity  arising  from  the  grant, 
the  success  which  it  has  attained,  the  nonexistence  of  any  anticipation,  and 
the  adoption  of  it  by  the  defendant  in  his  business,  with  express  notice  of  the 
patent,  and  with"  a  view  to  profit  by  it,  we  think  we  should  hold  the  com- 
bination of  claim  2  to  be  valid.  —  Sanders  v.  Hancock,  128  Fed.  424;  63 
C.  C.  A.  166. 

Lamb  v.  Lamb,  120  Fed.  267;  Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Kre- 
mentz  v.  Cottle,  148  U.  S.  556;   Streator  v.  Wire,  97  Fed.  950. 

The  proof  also  shows  that  it  met  with  considerable  public  favor,  and  what 
is  persuasive  evidence  of  its  advantages  over  those  of  the  constructions  the 
defendant  advances  as  anticipations,  the  latter  appropriates  Milner's  pro- 
duction as  the  foundation  of  his  own  business,  and  has  therewith  been 
successful.  —  Milner  v.  Yesbera,  133  Fed.  916;  67  C.  C.  A.  210. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Gandy  v.  Belting,  143  U.  S.  587;  Lamb 
v.  Lamb,  120  Fed.  267. 

At  the  time  he  obtained  this  patent  (the  defendant  and  his  patent  in 
infringement  of  the  patent  in  suit)  he  had  been  engaged  for  over  25  years  in 
the  manufacture  and  sale  of  rolling  metallic  shutters,  and  it  was  open  to  him 
to  adopt  the  joint  of  the  prior  art.  His  adoption  of  the  joint  of  the  patent  in 
suit  is  quite  persuasive  evidence  of  its  merit.  That  the  changes  of  form  were 
not  an  obvious  thing,  but  involved  invention,  is  shown  by  the  fact  that  for  a 
period  of  40  years  since  the  earlier  inventions  in  metallic  shutters  no  one 
seems  to  have  conceived  of  the  practicability  of  the  improvement.  —  Kinnear 
v.  Wilson,  142  Fed.  970;  74  C.  C.  A.  232. 

It  is  difficult  to  imagine  an  instance  where  a  patent  should  be  defeated  on 
the  ground  of  want  of  utility  at  the  instigation  of  one  who  is  himself  per- 
sistently using  the  very  thing  which  he  denounces  as  useless.  —  Hillard  v. 
Fisher,  159  Fed.  439 ;  86  C.  C.  A.  469. 

We  have  not  only  the  persistency  of  the  respondent  corporation  in  availing 
itself  of  the  complainant's  improvement,  but  also  a  mass  of  alleged  antici- 
patory patents  introduced  by  it,  both  of  which  indicate  the  desirability  of 


574  THE    FIXED    LAW    OF    PATENTS  §635 

something  better  than  the  prior  art.  —  Draper  v.  American,  161  Fed.  728; 
88  C.  C.  A.  588. 

§  635.     Evidence  of  —  Utility  —  When  Evidence. 

As  a  matter  of  law,  in  the  absence  of  evidence,  the  court  cannot  pass  upon 
the  efficiency  of  the  device  in  suit.  —  Eddy  v.  Dennis,  95  U.  S.  560;  24  L.  Ed. 
363. 

It  may  be  laid  down  as  a  general  rule,  though  perhaps  not  an  invariable 
one,  that  if  a  new  combination  and  arrangement  of  known  elements  produce 
a  new  and  beneficial  result,  never  attained  before,  it  is  evidence  of  invention. 

—  Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

We  think  from  the  evidence,  that  the  modifications  were  new  and  useful, 
and  sufficient  in  character  to  sustain  a  patent.  The  burner  in  the  form 
patented  by  Barker  appears  to  have  superseded  the  burner  in  the  form 
patented  by  Clough,  and,  after  Barker  had  introduced  his  burner  into  use, 
Clough  commenced  making  for  market  burners  in  the  same  form.  —  Clough 
v.  Gilbert,  106  U.  S.  178;  27  L.  Ed.  138;  1  S.  Ct.  198. 

Richardson's  invention  brought  to  success  what  prior  inventors  had  essayed 
and  partly  accomplished.  He  used  some  things  which  had  been  used  before, 
but  he  added  just  that  which  was  necessary  to  make  the  whole  a  practically 
valuable  and  economic  apparatus.  The  facts  that  the  known  valves  were  not 
used,  and  the  speedy  and  extensive  adoption  of  Richardson's  valve,  are  facts 
in  harmony  with  the  evidence  that  his  valve  contains  just  what  the  prior 
valves  lacked,  and  go  to  support  the  conclusion  at  which  we  have  arrived  on 
the  question  of  novelty.  When  the  ideas  necessary  to  success  are  made 
known,  and  a  structure  embodying  these  ideas  is  given  to  the  world,  it  is  easy 
for  the  skillful  mechanic  to  vary  the  form  by  mechanism  which  is  equivalent, 
and  is,  therefore,  in  a  case  of  this  kind  an  infringement.  —  Consolidated  v. 
Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct.  513. 

Where  the  question  before  the  court  was  upon  the  patentable  character, 
rather  than  the  novelty,  of  the  device,  the  court  did  not  err  in  refusing  to 
instruct  that  the  extensive  use  of  the  device  was  evidence  of  patentability. 

—  Adams  v.  Bellaire,  141  U.  S.  539;  35  L.  Ed.  849;   12  S.  Ct.  66. 

Utility  is  only  evidence,  not  proof  or  even  conclusive  evidence  of  novelty. 

—  McClain  v.  Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800;   12  S.  Ct.  76. 

Criteria  by  which  the  one  may  be  distinguished  from  the  other  in  McClain 
v.  Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800;   12  S.  Ct.  76. 

Where  the  progress  in  allied  arts  is  such  as  to  render  an  old  and  well 
known  process  of  utility,  where  the  utility  of  the  process  is  referable  to  the 
improvement  in  the  subject  matter  to  which  it  is  applied,  general  use  is  not 
evidence  of  invention.  —  Lovell  v.  Cary,  147  U.  S.  623;  37  L.  Ed.  307;  13 
S.  Ct.  472. 

McClain  v.  Ortmayer,  141  U.  S.  419. 

Utility  as  an  element  of  invention  may  be  considered.  Discriminating 
and  limiting  Gorham  v.  White,  81  U.  S.  511  (design  case).  —  Smith  v.  Whit- 
man, 148  U.  S.  674;  37  L.  Ed.  606;  13  S.  Ct.  768. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;  Northrup  v.  Adams,  2  B.  &  A.  567; 
Foster  v.  Crossin,  44  Fed.  62;  Jennings  v.  Keble,  10  Fed.  669;  Ripley  v.  Elson, 
49  Fed.  927. 


§  635  INVENTION  575 

Large  capacity  of  device  is  persuasive  but  by  no  means  conclusive  proof 
of  invention.  —  National  v.  Hedden,  148  U.  S.  482;  37  L.  Ed.  529;  13  S. 
Ct.  680. 

While  the  patented  article  may  have  been  popular  and  met  with  large 
sales,  that  fact  is  not  important  when  the  alleged  invention  is  without 
patentable  novelty.  —  Olin  v.  Timken,  155  U.  S.  141;  39  L.  Ed.  100;  15 
S.  Ct.  49. 

Duer  v.  Corbin,  149  U.  S.  216. 

In  passing  upon  the  question  of  novelty  we  feel  at  liberty  to  consider 
the  fact  that  the  Beach  machine  and  its  congeners  have  completely  sup- 
planted the  former  method ;  that  no  manufacturer  can  successfully  compete 
for  the  trade  without  adopting  such  machine ;  the  work  is  done  stronger  and 
cheaper,  cleaner  and  more  uniform ;  there  is  also  a  saving  of  material.  — 
Hobbs  v.  Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct.  409. 

We  conclude,  therefore,  that  in  applying  to  cases  of  doubt  the  primary 
rules  touching  what  constitutes  invention,  and  the  secondary  rules  touching 
what  is  a  "  new  and  useful  result,"  a  "  new  function,"  or  a  "  new  sphere  of 
action,"  we  may  be  influenced  by  the  facts  that  the  improvement  in  question, 
although  desired  for  years,  was  not  secured  until  brought  out  by  the  patentee; 
that  the  product  of  the  improved  machine  or  process  went  into  general  use 
by  the  manufacturer  for  whom  it  was  intended,  and  displaced  wholly  or  in  a 
very  large  degree  prior  products;  and  that,  while  prior  products  had  been 
unsuitable,  either  through  lack  of  cheapness  or  adaptation,  the  new  product 
answered  all  reasonable  requirements.  —  Watson  v.  Stevens,  51  Fed.  757; 
2  C.  C.  A.  500. 

Topliff  v.  Topliff,  145  U.  S.  156;  Adams  v.  Stamping  Co.,  141  U.  S.  539;  Wes- 
tern v.  La  Rue,  139  U.  S.  601;  Ansonia  v.  Electric,  144  U.  S.  11;  Locomotive 
Truck  Case,  110  U.  S.  490;  McClain  v.  Ortmayer,  141  U.  S.  419;  Loom  Co.  v. 
Higgins,  105  U.  S.  580;  Barbed  Wire  Patent,  143  U.  S.  275;  Magowan  v.  Belting 
Co.,  141  U.  S.  332;  Gandy  v.  Belting  Co.  143  U.  S.  587. 

The  fact  that  the  Edison  lamp  was  capable  of  use  by  the  public,  while  all 
prior  lamps  had  failed  in  practical  use  is  evidence  of  invention  and  novelty. 
—  Edison  v.  U.  S.  52  Fed.  300;  3  C.  C.  A.  83. 

There  was  evidence  that  the  plaintiffs'  machine  was  used  to  a  very  con- 
siderable extent  by  manufacturers;  that  the  plaintiff  sold  numerous  shop 
rights  for  its  use ;  and  that  he  manufactured  and  sold  a  number  of  his  wheels 
with  their  adjustable  bearings.  There  were  witnesses  who  testified  to  the 
novelty  and  utility  of  his  invention.  There  is  testimony  that  the  wheels  in 
use  prior  to  his  invention  were  unsatisfactory;  that  they  were  difficult  to 
operate  and  were  noisy  in  operation;  and  that  a  considerable  amount  of 
attention  was  bestowed  upon  the  question  of  their  improvement  during  a 
period  of  several  years  antedating  his  patent.  All  these  facts  may  be  taken 
into  consideration  in  a  doubtful  case.  —  Singer  Mfg.  Co.  v.  Brill,  54  Fed.  380; 
4  C.  C.  A.  374. 

Topliff  v.  Topliff,  145  U.  S.  164;  Loom  Co.  v.  Higgins,  105  IT.  S.  591;  Smith 
v.  Goodyear,  93  U.  S.  495. 

The  plaintiff's  machine,  here  involved,  was  devised  with  special  reference 
to  paring  peaches,  and  it  proved  that  it  was  the  first  machine  that  suc- 
cessfully did  the  work.  Before  it  was  put  upon  the  market,  peaches  were 
pared  by  hand.  Its  undoubted  utility  was  quickly  perceived  by  the  trade 
and  immediately  it  went  into  extensive  public  use.     This  last  mentioned 


576  THE   FIXED    LAW    OF   PATENTS  §  635 

fact,  of  itself,  it  is  well  settled,  is  evidence  of  patentable  novelty,  and  in  a 
doubtful  case  will  turn  the  scale  in  favor  of  the  patentee.  —  Sayre  v.  Scott, 
55  Fed.  971;  5  C.  C.  A.  366. 

Smith  v.  Vulcanite  Co.  93  U.  S.  486;  Magowan  v.  Belting  Co.  141  U.  S.  332; 
Topliff  v.  Topliff,  145  U.  S.  156;  Loom  Co.  v.  Higgins,  105  U.  S.  580;  Consoli- 
dated v.  Crosby,  113  U.  S.  157;  Barbed  Wire  Patent,  143  U.  S.  275;  Gandy  v. 
Belting  Co.  143  U.  S.  587. 

The  machine  with  this  improvement  was  accepted  as  perfected,  and  went 
into  extensive  general  use.  It  was  the  first  that  was  ever  so  accepted  and 
used,  and  no  machine  without  it  has  ever  been  commercially  used  since  that 
time.  We  are  of  the  opinion  that  the  discovery  by  these  patentees  of  the 
proper  means  for  remedying  the  fatal  defect  which  existed  in  all  prior 
machines  of  this  character,  simple  as  the  device  was,  amounted  to  something 
more  than  the  exercise  of  merely  ordinary  mechanical  skill,  and  reached  a 
higher  dominion  of  invention.  The  simplicity  of  the  device,  and  its  apparent 
obviousness  after  the  event,  ought  not  to  detract  from  its  meritoriousness. 
That  it  had  never  been  suggested  or  thought  of  before,  and  effectually  sup- 
plied the  one  thing  necessary  to  bring  success,  when  before  there  had  been 
nothing  but  failure,  is  sufficient  to  entitle  it  to  rank  as  a  new  and  useful 
improvement  in  the  mechanical  arts  within  the  meaning  of  the  patent  law.  — 
M'Kay  v.  Dizer,  61  Fed.  102;  9  C.  C.  A.  382. 

In  determining  the  question  of  invention  utility  plays  an  important  part. 
It  is  not,  however,  conclusive.  Combined  with  the  presumption  arising  from 
the  grant  of  letters  it  is  sufficient  to  sustain  a  patent  in  the  absence  of  evi- 
dence disproving  invention.  —  Ritchie  v.  Obdyke,  65  Fed.  224;  12  C.  C.  A. 
583. 

The  evidence  leaves  no  doubt  that  it  did  the  work  it  was  desired  to  do. 
Subsequent  improvements  made  it  do  that  work  better,  but  that  is  immaterial 
when  it  has  been  shown,  as  it  has  been  here,  that  machines  made  in  strict 
conformity  to  the  patent  have  been  used  by  manufacturers  for  years  in  doing 
this  very  work.  —  Inman  v.  Beach,  71  Fed.  420;  18  C.  C.  A.  165. 

» 

Where  the  question  of  novelty  is  in  doubt,  the  fact  that  the  device  has 
gone  into  general  use,  and  has  displaced  other  devices  previously  employed 
for  a  similar  purpose  is  sufficient  to  turn  the  scale  in  favor  of  the  inventor.  — 
Mast  v.  Dempster,  82  Fed.  327;  27  C.  C.  A.  191. 

Potts  v.  Creager,  155  U.  S.  357;  Smith  v.  Vulcanite,  93  U.  S.  486;  Magowan  v. 
Packing  Co.  141  U.  S.  332. 

After  careful  consideration,  we  are  of  the  opinion  that  the  complainant's 
patent  relates  to  an  article  of  substantial,  practical  merit,  which  excels  in 
operation  and  results  other  existing  appliances,  and  that  the  patent  is  valid. 
—  Diamond  v.  Goldie,  84  Fed.  972;  28  C.  C.  A.  589. 

Consolidated  v.  Detroit,  59  Fed.  902. 

As  shown  by  the  record  and  the  evidence,  persons  skilled  in  the  art  had 
previously  endeavored  to  accomplish  the  desired  result,  but  without  practi- 
cal avail,  and  until  McElroy  combined  the  known  electrical  energy  with  his 
happy  mechanism,  and  described  a  device  for  putting  the  heat  energy 
involved  in  electricity  into  practical  operation  for  this  purpose,  the  public 
had  continued  to  ride  in  the  cold.  All  agree  that  his  device  is  practical, 
useful,  and  a  decided  advance  upon  any  theretofore  described  or  known.  It 
does  the  work.  Looking  at  the  general  use  and  the  substantial  results 
accomplished  through  the  mechanical  arrangement  and  the  device  described, 


§  635  INVENTION  577 

with  the  practical  view  of  giving  the  inventor,  rather  than  with  the  view 
through  refining  processes  of  reasoning,  of  depriving  him  of,  what  fairly  be- 
longs to  him,  it  is  difficult  to  see  how  the  patentability  of  the  device  in  suit 
can  be  seriously  challenged.  —  Consolidated  v.  West  End,  85  Fed.  662;  29 
C.  C.  A.  386. 

He  created  a  device  —  a  composite  structure  —  by  which  all  need  of  the 
former  awkward  and  unhandy  makeshift  appliances  was  completely  obviated. 
It  may  be  upon  this  showing  Mr.  Philips  does  not  appear  to  have  been  a 
pioneer,  yet  the  fact  remains  that  the  device  which  he  gave  to  the  art  was,  in 
its  entirety,  new,  and  was  not  only  more  convenient  in  its  adaptation  for  use 
than  any  appliance  which  had  preceded  it,  but  also  performed  its  two-fold 
function,  so  as  in  both  respects  to  produce  much  better  results  than  had  ever 
before  been  attained.  Both  in  the  character  of  the  means  which  he  employed 
and  in  the  improvement  in  operation  which  he  achieved,  there  is  evidence  of 
origination ;  and  therefore  we  cannot  assent  to  the  suggestion  that  his  per- 
formance amounted  to  nothing  but  ingenious  aggregation  of  the  varied,  off- 
hand, and  inefficient  contrivances  which  it  was  his  declared  object  to  sup- 
plant. —  Clinton  v.  Hendrick,  86  Fed.  137;  29  C.  C.  A.  612. 

In  a  doubtful  case,  the  fact  that  the  patented  device  has  gone  into  general 
use,  and  superseded  other  devices,  may  be  sufficient  to  turn  the  scale.  — 
Stevenson  v.  McFassell,  90  Fed.  707;  33  C.  C.  A.  249. 

Smith  v.  Vulcanite  Co.  93  U.  S.  486. 

It  must  be  conceded  that  the  sales  were  phenomenally  large,  and  that  the 
evidence  shows  that  the  Christy  saddle  was  received  with  great  favor  by  those 
who  used  the  bicycle;  and  also,  it  may  be  admitted,  that  it  not  only  added 
to  their  comfort  but  contributed  to  their  safety.  But  still  we  do  not  think 
that  it  follows  that,  therefore,  that  invention  was  not  required  to  design  and 
construct  it.  —  Christy  v.  Hygeia,  93  Fed.  965;  36  C.  C.  A.  31. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Klein  v.  Seattle,  77  Fed.  200;  Grant  v. 
Walter,  148  U.  S.  547;   Aron  v.  Railway,  132  U.  S.  84. 

It  contains  much  which  requires  that  we  should  hold  that  the  invention 
consisted  in  producing  the  cap  from  a  single  blank,  so  as  to  be  of  the  nature 
of  the  invention  in  issue  in  Krementz  v.  Cottle,  148  U.  S.  556.  —  B.  &  S. 
Fastener  v.  Edgerton,  96  Fed.  489;  37  C.  C.  A.  523. 

When  the  question  of  invention  is  doubtful,  the  presumption  of  validity 
should  have  due  consideration.  In  such  case,  also,  the  success  which  has 
attended  the  patented  thing  ought  not  to  be  overlooked,  and  should  be  given 
due  weight.  It  is  true  that  the  success  may  have  resulted  in  large  measure 
from  the  exercise  of  business  energy  and  of  liberal  advertisement,  but  no 
enduring  success  could  be  attained  unless  the  thing  patented  had  merit.  — 
Streator  v.  Wire-glass,  97  Fed.  950;  38  C.  C.  A;  573. 

It  is  oftentimes  sufficient  to  say  that  a  thing  is  useful,  and  when  the 
new  scheme  for  arranging  old  elements  and  using  power  is  universally 
adopted  in  place  of  the  old,  it  is  somewhat  difficult  to  resist  the  conclusion 
that  the  new  is  a  substantial  improvement  upon  the  older  conditions.  It  is 
quite  possible  that  the  momentum  caused,  superadded  to  the  belt  power,  is 
a  more  valuable  element  in  the  combination  than  the  patentee  realized;  but 
this  is  hardly  a  reason  for  defeating  the  demonstrated  practical  usefulness  of 
such  superadded  power  as  an  element  in  the  combination.  —  Parsons  v. 
Seelye,  100  Fed.  455 ;  40  C.  C.  A.  486. 

Potts  v.  Creager,  155  U.  S.  597. 


578 


THE   FIXED   LAW   OF   PATENTS 


§635 


The  utility  of  a  machine,  article  of  manufacture,  process,  and  improvement 
thereof,  is  only  allowed  to  turn  the  scale  in  favor  of  its  patentability  in 
those  instances  where  the  question  whether  the  inventive  faculty  has  been 
exercised  is  balanced  in  doubt  and  uncertainty.  —  Falk  v.  Missouri,  103  Fed. 
295;  43  C.  C.  A.  240. 

Duer  v.  Lock  Co.  149  U.  S.  216;  McClain  v.  Ortmayer,  141  U.  S.  419;  Magowan 
v.  Packing  Co.  141  U.  S.  332;   Smith  v.  Vulcanite  Co.  93  U.  S.  486. 

These  facts  establish  neither  the  novelty  nor  the  patentability  of  his 
device,  but  they  certainly  challenge  admiration,  and  demand  that  the  pre- 
sumption of  validity  which  supports  his  patents  shall  not  be  stricken  down 
without  careful  consideration  and  cogent  and  convincing  proof.  The  keen, 
shrewd,  mercantile  spirit  of  this  age  is  seldom  deceived  into  the  purchase  and 
continued  use  of  worthless  improvements  in  mechanical  devices,  and,  when 
all  is  said,  success  is  by  no  means  the  poorest  criterion  by  which  to  judge  of 
the  acts  and  words  of  men.  —  National  v.  Interchangeable,  106  Fed.  693 ; 
45  C.  C.  A.  544. 

In  5  years  after  Hein  disclosed  his  invention  and  obtained  his  patent,  his 
brake  beam  was  in  use  on  85  per  cent,  of  the  railroads  controlling  80  per  cent. 
of  the  cars  using  iron  brake  beams  in  this  country,  and  in  1 1  years  from  the 
date  of  his  patent,  more  than  1,000,000  of  his  brake  beams  had  been  made 
and  sold.  But  where  the  question  of  novelty  is  fairly  open  for  consideration 
under  the  law,  the  fact  that  a  patented  device  or  combination  has  displaced 
others  which  had  previously  been  used  to  perform  its  function,  and  has  gone 
into  immediate  and  general  use,  is  pregnant  and  persuasive  evidence  that  it 
involves  invention.  —  National  v.  Interchangeable,  106  Fed.  693;  45  C. 
C.  A.  544. 

Smith  v.  Vulcanite  Co.  93  U.  S.  486;  Loom  Co.  v.  Higgins,  105  U.  S.  580; 
Mfg.  Co.  v.  Adams,  151  U.  S.  139;  Magowan  v.  Packing  Co.,  141  U.  S.  332;  Graph- 
ophone  Co.  v.  Leeds,  87  Fed.  873;  Topliff  v.  Topliff,  145  U.  S.  156. 

We  have  the  prima  facie  arising  from  the  grant.  We  have  the  fact  that  the 
device  has  gone  into  extensive  use,  —  an  element  entitled  to  regard.  It  is  to 
be  noted  that  printing-press  construction  is  mechanically  a  highly  developed 
industry.  The  complex  and  intricate  details  of  these  great  presses ;  the  calls 
upon  them  for  speed,  strength,  and  product;  the  constant  demand  upon 
builders  for  improvement ;  and  the  keen  rivalry  existing  among  such  builders 
and  the  users  of  the  presses,  —  are  factors  which  brought  the  art  to  this  high 
mechanical  standard.  The  very  fact  that,  with  all  these  stimulating  con- 
siderations, insuring  the  most  rapid  strides  in  mechanical  advance,  no  such 
step  as  Firm's  was  taken  in  duplex  presses,  shows  that  Firm's  change  was  not 
in  the  line  of  mechanical  progress,  but  in  the  original,  inventive  sphere.  — 
Goss  v.  Scott,  108  Fed.  253;  47  C.  C.  A.  302. 

Lehnbeuter  v.  Holthaus,  105  U.  S.  94;   Smith  v.  Vulcanite,  93  U.  S.  486. 

The  advance  over  Cushman  in  the  substitution  of  a  box  form  with  a  rear- 
ward opening  so  simplified  the  construction  as  for  that  reason  alone  to  be  of 
very  considerable  utility,  and  to  raise  a  very  strong  presumption  in  favor 
of  patentability.  —  Hobbs  v.  Gooding,  111  Fed.  403;  49  C.  C.  A.  414. 

It  may  be  true  that  Anderson  has  only  taken  the  familiar  contact  spring 
or  brush,  and  placed  it  in  a  protected  position,  but  this  change  seems  to 
have  made  the  difference  between  a  defective  mechanism  and  a  practical 
method  of  attaining  the  desired  result.  Where,  as  in  this  case,  the 
departure  from  former  means  is  only  small,  yet  the  change  is  import- 
ant,   the    doubt   as  to  whether    the  inventive  faculty    has    been    exer- 


§  635  INVENTION  579 

cised  is  to  be  weighed  in  view  of  the  fact  that  the  device  in  question  has 
displaced  others  which  had  previously  been  employed  for  analogous  uses, 
and  this  may  decide  the  issue  in  favor  of  invention.  —  Star  v.  General,  111 
Fed.  398;  49  C.  C.  A.  409. 
Krementz  v.  Cottle,  148  U.  S.  556;   Consolidated  v.  Detroit,  47  Fed.  894. 

As  organized,  the  heating  apparatus  supplied  a  practical  and  efficient 
adjunct  to  the  fire  engines,  and  its  value  is  shown  by  its  adoption  and  use 
by  the  officers  of  the  fire  department,  and  the  fact  that  after  it  was  intro- 
duced there  was  no  attempt  by  them  to  find  a  substitute  for  it,  or  to  improve 
it.  In  short,  it  fulfilled  the  requirements  of  the  service  for  which  it  was 
designed  with  a  degree  of  success  not  before  attained  or  subsequently  ex- 
ceeded. It  did  not  evince  a  high  order  of  inventive  talent  to  organize  and 
construct  it,  but  we  think  it  did  evince  enough  of  thought  and  creative 
faculty  to  support  a  patent,  and  re-inforce  the  presumption  arising  from 
the  grant.  —  Brickill  v.  Mayor,  112  Fed.  65;  50  C.  C.  A.  1. 

The  advance  seems  simple  enough.  One  wonders  why,  pending  its  adop- 
tion, twelve  years  went  by.  But  the  same  wonder  accompanies  every  step 
forward  in  the  useful  arts.  The  eye  that  sees  a  thing  already  embodied  in 
mechanical  form  gives  little  credit  to  the  eye  that  first  saw  it  in  imagination. 
But  the  difference  is  just  the  difference  between  what  is  common  observa- 
tion and  what  constitutes  an  act  of  creation.  The  one  is  the  eye  of  inventive 
genius ;  the  other  of  a  looker-on  after  the  fact.  Considering  the  utility  of  the 
new  knot,  and  the  unavailing  efforts  prior  to  the  patent  in  suit,  to  reach 
some  correction  of  the  existing  defects,  and  the  length  of  time  those  efforts 
went  on,  we  are  convinced  that  the  patent  under  consideration  evinces 
something  more  than  mere  mechanical  skill.  —  Faries  v.  Brown,  121  Fed. 
547;  57  C.  C.  A.  609. 

The  improvement  is  confessedly  novel.  Its  utility,  apparent  on  its  face, 
is  reaffirmed  by  its  great  success.  But  did  the  production  of  it  require  the 
exercise  of  the  inventive  faculty?  The  conjunction  of  its  being  a  true  mechani- 
cal combination,  its  novelty,  its  great  utility,  and  its  notable  commercial  suc- 
cess, is  persuasive  that  more  than  mechanical  skill  was  required  in  taking  this 
new  step  in  the  very,  very  ancient  art  of  supporting  and  adjusting  mirrors.  The 
device  seems  exceedingly  simple.  But  its  very  simplicity  in  such  an  old  field, 
should  be  a  warning  against  a  too  ready  acceptance  of  the  ex  post  facto 
wisdom  of  the  bystander.  —  Regent  v.  Penn,  121  Fed.  80;  57  C.  C.  A.  334. 

The  testimony  is  abundant  that  the  East  barrel  had  gone  into  general  use, 
that  the  public  had  attested  its  superior  utility  and  value  by  adopting  the 
same,  and  that  it  had  superseded  all  other  barrels  previously  used  for  like 
purposes.  The  fact  that  prior  devices,  such  as  the  Roberts  and  the  Georgia 
barrel,  had  not  been  successful,  and  that  the  East  barrel  secured  general 
acceptance  and  extensive  use,  and  was  a  commercial  success,  creates  a  strong 
and  almost  conclusive  presumption  that  the  East  barrel  was  the  product  of 
invention  and  had  patentable  merit,  and  that  something  more  than  mere 
application  of  mechanical  skill  was  involved  in  its  production.  —  Farmers' 
v.  Spruks,  127  Fed.  691 ;  62  C.  C.  A.  447. 

But  if  the  questions  of  novelty  and  merit  were  otherwise  left  in  doubt 
by  the  evidence,  they  would  have  to  be  resolved  in  favor  of  the  patent, 
because  of  the  immediate  and  general  use  into  which  the  device  is  shown  to 
have  gone  when  it  was  put  upon  the  market.  —  Heekin  v.  Baker,  138  Fed. 
63;  70  C.  C.  A.  559. 

Dowagiac  v.  Minnesota,  118  Fed.  136. 


580  THE   FIXED   LAW   OF    PATENTS  §  636 

The  device  in  suit  was  a  success  from  its  inception,  it  came  at  once  into 
general  use,  and  we  are  satisfied  is  of  manifest  novelty  and  great  utility. 
The  testimony  shows  that  it  practically  doubles  the  life  of  the  belt.  This 
consideration,  coupled  with  its  undoubted  commercial  success  from  the  out- 
set, would  be  entitled  to  turn  the  scales  in  favor  of  the  validity  of  the  patent, 
if  it  were  otherwise  in  doubt.  —  Robins  v.  American,  145  Fed.  923 ;  76  C.  C.  A. 
461. 

Reviewing:  Keystone  v.  Adams,  151  U.  S.  139;  Consolidated  v.  Detroit, 
47  Fed.  894;  Krementz  v.  Cottle  Co.  148  U.  S.  560. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Topliff  v.  Topliff,  146  U.  S.  156;  Con- 
solidated v.  Crosby,  113  U.  S.  157;  Magowan  v.  New  York,  141  U.  S.  332;  Barbed 
Wire  Patent,  143  U.  S.  275. 

There  is  also  evidence  of  more  or  less  cogency  that  the  device  has  superseded 
other  devices  in  the  few  cities  which  employ  scouring  and  flushing  machines 
in  use  upon  smooth  or  asphalt  streets.  These  facts  are  entitled  to  weight 
when  the  question  is  whether  the  machine  exhibits  patentable  invention. 
—  St.  Louis  v.  American,  156  Fed.  574;  84  C.  C.  A.  340. 

Keystone  v.  Adams,  151  U.  S.  139;  National  v.  Interchangeable,  106  Fed.  693; 
Kinloch  v.  Western,  113  Fed.  652;  id.  659;   Krementz  v.  Cottle,  148  U.  S.  556. 

Has  the  patentee  added  anything  of  value  to  the  sum  of  human  knowledge, 
has  he  made  the  world's  work  easier,  cheaper,  safer,  would  the  return  to 
the  prior  art  be  a  retrogression?  When  the  court  has  answered  this  question, 
or  these  questions,  in  the  affirmative,  the  effort  should  be  to  give  the  inventor 
the  just  reward  of  the  contribution  he  has  made.  The  effort  should  increase 
in  proportion  as  the  contribution  is  valuable.  Where  the  court  has  to  deal 
with  a  device  which  has  achieved  undisputed  success  and  accomplishes  a 
result  never  attained  before,  which  is  new,  useful  and  in  large  demand,  it 
is  generally  safe  to  conclude  that  the  man  who  made  it  is  an  inventor.  — 
O'Rourke  v.  McMullen,  160  Fed.  933;  88  C.  C.  A.  115. 

Hobbs  v.  Beach,  180  U.  S.  383;  Magowan  v.  N.  Y.  141  U.  S.  332;  Barbed  Wire 
Case,  143  U.  S.  275;  Potts  v.  Creager,  155  U.  S.  597;  Loom  Co.  v.  Higgins,  105 
U.  S.  590. 


§  636.     Evidence  of  —  Utility  —  When  Not. 

Although  the  invention  confessedly  has  been  of  great  utility,  as  proved 
abundantly,  in  the  absence  of  any  clear  and  positive  exercise  of  the  mind 
beyond  mere  mechanical  skill,  the  utility  of  the  device  does  not  establish 
patentable  novelty.  —  Hollister  v.  Benedict,  113  U.  S.  59;   28  L.  Ed.  901; 

5  S.  Ct.  717. 

An  invention  though  new  in  the  sense  that  it  had  not  been  anticipated 
by  any  previous  invention,  and  though  shown  to  have  superior  utility,  is  not 
necessarily  such  an  improvement  as  to  be  entitled  to  be  regarded  in  the 
patent  law  as  an  invention.  —  Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158; 

6  S.  Ct.  1027. 

The  fact  that  the  patented  process  involves  greater  care  and  higher  skill 
does  nor  effect  its  utility.  —  Lawther  v.  Hamilton,  124  U.S.  1 ;  31  L.  Ed. 
325;  8S.  Ct.  342. 

Cannot  be  made  to  control  the  language  of  the  statute  which  limits  the 
benefit  of  the  patent  laws  to  things  which  are  new  as  well  as  useful.  —  Grant 
v.  Walter,  148  U.  S.  547;  37  L.  Ed.  552;  13  S.  Ct.  699. 

McClain  v.  Ortmayer,  141  U.  S.  419. 


§  636  INVENTION  581 

Limitation  of  rule  with  reference  to  other  factors  which  may  enter  in  to 
produce  popularity  of  article.  —  Duer  v.  Corbin,  149  U.  S.  216;  37  L.  Ed. 
707;    13  S.  Ct.  850. 

It  is  true  that  such  extensive  public  use,  superseding  other  similar  devices, 
is  evidence  more  or  less  cogent  of  value  and  usefulness.  "  It  is  not  conclusive 
of  that;  much  less  of  its  patentable  novelty."  McClain  v.  Ortmayer,  141 
U.  S.  428.  Complainant  was  active  and  energetic  in  pursuing  the  sale  of 
his  machine  by  means  of  circulars  and  travelling  agents;  the  latter  drum- 
ming for  it  in  13  states.  Under  such  circumstances,  extensive  sales  consti- 
tute little  or  no  evidence  or  test  of  patentability.  —  Fox  v.  Perkins,  52  Fed. 
205;  3C.  C.  A.  32. 

Nor  do  we  find  in  the  record  sufficient  to  warrant  any  different  conclusion 
upon  the  theory  that  the  device  supplied  a  long  felt  want,  which  mechanics 
had  tried  to  supply  unsuccessfully,  nor  that  it  has  driven  other  competitors 
out  of  the  market  because  its  superior  merits  have  commended  it  to  the  public. 
There  is  nothing  to  show  to  what  extent,  price,  workmanship,  liberal  dis- 
counts to  dealers,  and  ingenious  and  extensive  advertising  may  have  con- 
tributed to  whatever  success  has  attended  the  effort  to  introduce  complain- 
ants' tool,  and,  in  the  absence  of  any  information  on  these  points,  there  is 
not,  in  the  circumstance  that  the  sales  of  this  tool  have  increased  from  3,926 
in  1885  to  10,727  in  1891,  sufficient  to  warrant  the  conclusion  that  there 
was  any  patentable  invention  in  devising  it,  in  view  of  the  state  of  the  art. 

—  Saunders  v.  Allen,  60  Fed.  610;  9  C.  C.  A.  157. 

McClain  v.  Ortmayer,  141  U.  S.  428;    Duer  v.  Corbin,  149  U.  S.  223. 

It  is  not  sufficient  that  the  patentee  may  have  produced  a  better  and  more 
marketable  article,  but  there  must  have  been  something  novel  in  the  means 
which  were  employed  in  its  production.  —  Andrews  v.  Thum,  67  Fed.  911; 
15  C.  C.  A.  67. 

Knapp  v.  Morss,  150  U.  S.  221. 

This  we  cannot  do,  to  the  extent  of  ascertaining  for  ourselves  that  the 
appellee's  device  does  not  represent  a  completed  and  useful  invention.  — 
Packard  v.  Lacing,  70  Fed.  66;   16  C.  C.  A.  639. 

The  authority  for  granting  a  patent  rests  exclusively  upon  statute,  and 
is  thereby  strictly  limited  to  the  invention  of  what  is  new  and  useful.  Mc- 
Clain v.  Ortmayer,  141  U.  S.  419.  It  is  not  therefore  sufficient  to  show 
the  utility  or  great  popularity  of  the  improvement,  as  strenuously  urged 
here  to  sustain  this  patent.  Id.  But  it  must  also  be  new,  in  the  sense  of 
patentable  diversity  from  prior  methods,  forms,  and  accomplishments,  as 
recognized  by  the  decisions.  —  Baldwin  v.  Kresl,  76  Fed.  823 ;  22  C.  C.  A. 
593. 

Utility  is  not  an  infallible  test  of  originality.  There  must  be  original 
thought  or  inventive  skill,  not  merely  mechanical  change  of  what  was  old. 

—  Olmsted  v.  Andrews,  77  Fed.  835;  23  C.  C.  A.  488. 

Ex  parte  Greeley,  Fed.  Cas.  5,745;  Hollister  v.  Mfg.  Co.  113  U.  S.  59; 
Thompson  v.  Boisselier,  114  U.  S.  1;  Holder  v.  Ferguson,  119  U.  S.  335;  Heating 
v.Burtis,  121  U.  S.  286;  Marchand  v.  Emken,  132  U.  S.  195;  McClain  v  Ortmayer, 
141  U.  S.  419;  Clothing  v.  Glover,  141  U.  S.  560;  Mfg.  Co.  v.  Cary,  147  U.  S.  623; 
Howard  v.  Stove,  150  U.  S.  164. 

It  is  undoubtedly  true,  that  the  utility  of  a  device  or  machine,  and  the 
fact  that  it  had  never  been  used  before,  is  sometimes  high  evidence  of  in- 


582  THE   FIXED   LAW   OF   PATENTS  §636 

vention,  and  in  cases  of  doubt  is  given  controlling  effect.  But  every  case 
depends  upon  the  state  of  the  art,  the  character  of  the  improvements,  the 
results  accomplished,  the  methods  used,  the  changes  made,  &c.  The  fact 
that  a  patented  device  has  gone  into  general  use,  and  has  displaced  other 
devices,  is  evidence  of  its  value  and  usefulness,  and  is  always  of  importance 
in  considering  the  question  whether  the  device  or  machine  is  patentable. 
But  the  fact  that  the  patented  device  has  gone  into  general  use,  while  evi- 
dence of  its  utility,  is  not  conclusive  evidence  of  its  patentable  novelty.  — 
Klein  v.  Seattle,  77  Fed.  200;  23  C.  C.  A.  114. 

Smith  v.  Vulcanite,  93  U.  S.  486;  Adams  v.  Stamping  Co.  141  U.  S.  539;  Mfg. 
Co.  v.  Adams,  151  U.  S.  139;  McClain  v.  Ortmayer,  141  U.  S.  419;  Mfg.  Co.  v. 
Cary,  147  U.  S.  623;  Grant  v.  Walter,  148  U.  S.  547. 

The  commercial  success  of  the  patented  article  is  only  one  element  to  be 
considered  where  patentability  is  otherwise  in  doubt.  —  Lane  v.  Welds,  99 
Fed.  286;  39  C.  C.  A.  528. 

Mfg.  Co.  v.  Robbins,  75  Fed.  17;  McClain  v.  Ortmayer,  141  U.  S.  419. 

It  is  true  that  the  extensive  use  of  a  machine  or  combination  which  is 
clearly  without  novelty,  does  not  dispense  with  that  statutory  requirement, 
and  that  it  will  not  alone  sustain  a  patent.  —  National  v.  Interchangeable, 
106  Fed.  693;  45  C.  C.  A.  544. 

McClain  v.  Ortmayer,  141  TJ.  S.  419;  Duer  v.  Lock  Co.  149  U.  S.  216;  Olin  v. 
Timken,  155  U.  S.  141;  Klein  v.  City  of  Seattle,  77  Fed.  200. 

Utility  being  one  of  the  qualities  necessary  to  patentability,  the  granting 
of  the  patent  is  prima  facie  evidence  of  it;  and  this  is  not  negatived  by  the 
fact  that  the  device  is  susceptible  of  improvement,  or  that  like  inventions  are 
so  far  superior  to  it  that  they  may  entirely  supersede  the  use  of  it.  Compara- 
tive utility  between  machines  or  processes  is  no  criterion  of  infringement, 
and  comparative  superiority  or  inferiority  does  not  necessarily  import 
noninfringement;  nor  does  it  tend  to  avoid  infringement  if  the  defendant's 
device  is  simpler  and  produces  better  results,  unless  the  cause  is  due  to  a 
difference  in  function  or  mode  of  operation  or  some  essential  change  in 
character.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

The  mere  fact  that  a  patented  device  or  an  article  meets  with  increasing 
sales  and  is  popular  is  wholly  unimportant  when  it  clearly  appears  that  the 
invention  is  without  patentable  novelty.  —  American  v.  Bullivant,  117 
Fed.  255;  54  C.  C.  A.  287. 

Duer  v.  Lock  Co.  149  TJ.  S.  216;  Printinc  Press  v.  Scott,  103  Fed.  650;  National 
v.  Interchangeable,  106  Fed.  693;  McClain  v.  Ortmayer,  141  U.  S.  419;  Klein 
v.  Seattle,  77  Fed.  200. 

The  fact  that  these  bookcases  have  gone  into  extensive  use  is  due,  as  we 
think,  to  the  elegant  workmanship  employed  in  their  manufacture,  and  the 
convenience  of  having  the  sections  separable,  aided  by  the  energy  with  which, 
as  the  bill  states,  they  were  pressed  upon  the  market.  —  Globe-Wernicke  v. 
Macy,  119  Fed.  696;  56  C.  C.  A.  304. 

It  sometimes  happens  that  an  improvement  in  a' machine  or  device,  which 
is  the  result  of  ordinary  mechanical  skill,  adds  much  to  the  utility  of  the  de- 
vice or  machine,  but  this  fact  does  not  render  it  patentable.  If  a  doubt  arises 
in  the  consideration  of  a  patented  article  or  device  whether  the  inventive 
faculty  has  been  exercised,  the  fact  that  the  article  in  question  has  gone  into 
general  use,  that  there  is  a  large  demand  for  it,  and  that  it  seems  to  possess 
great  utility,  is  entitled  to  great  weight;  but  when  it  is  apparent  that  the 


.§  637  INVENTION  583 

inventive  faculty  has  not  been  exercised,  and  that  nothing  more  has  been 
accomplished  by  the  alleged  inventor  than  what  might  have  been  done  by 
an  ordinary  workman  or  mechanic  acquainted  with  the  art,  if  his  attention 
had  been  directed  to  the  subject,  a  patent,  if  granted,  cannot  and  ought 
not  to  be  sustained.  —  Union  v.  Peters,  125  Fed.  601 ;  60  C.  C.  A.  337. 

McClain  v.  Ortmayer,  141  U.  S.  419;  Duer  v.  Corbin,  149  U.  S.  216;  Fox  v. 
Perkins,  52  Fed.  205;  Dueber  v.  Robbins,  75  Fed.  17;  Lovell  v.  Cary,  147  U.  S. 
623;   Falk  v.  Missouri,  103  Fed.  295;   Atlantic  v.  Brady,  107  U.  S.  192. 

A  large  part  of  the  success  of  complainant's  tiles  is  undoubtedly  due  to 
their  thickness  and  the  secret  composition  of  which  they  are  made.  — 
New  York  v.  Sierer,  158  Fed.  819;  86  C.  C.  A.  79. 

But  the  fact  that  the  Furness  patent  shows  a  new  and  useful  improvement 
does  not,  in  itself,  disclose  invention.  —  New  York  v.  Sierer,  158  Fed.  819; 
86  C.  C.  A.  79. 

Hollister  v.  Benedict,  113  U.  S.  59. 

It  is  true  that  the  Marshall  lining  possesses  the  advantages  of  utility  and 
cheapness,  and  that  it  has  nearly  supplanted  in  the  market  the  hard  fiber 
lining.  In  cases  where  the  question  of  patentability  is  involved  in  more  or 
less  doubt,  these  practical  considerations  are  entitled  to  much  weight,  and 
they  have  frequently  been  held  to  turn  the  scale  in  favor  of  sustaining  the 
patent.  They  cannot  avail,  however,  in  a  case  where  the  court  is  clearly 
satisfied  that  the  broad  conception  underlying  the  patent  did  not  involve 
inventive  thought.  —  Marshall  v.  Pettingell-Andrews,  164  Fed.  862;  C. 
C.  A. 


§  637.     Evidence  of  —  Want  of  Invention. 

An  analysis  of  this  patent  in  the  light  of  the  prior  art,  taken  in  connection 
with  the  circumstances  that  no  practical  commercial  machine  containing  this 
invention  has  ever  been  put  into  use,  forbids  us  from  holding  that  this 
is  a  pioneer  patent  which  marks  a  great  advance  in  the  art,  or  lies  at  the 
basis  of  a  new  art.  —  New  York  v.  Hollingsworth,  56  Fed.  224 ;  5  C.  C.  A. 
490. 

The  single  claim  of  the  patent  is  for  a  "  rectangular  terra-cotta  wire 
conduit  pipe,  having  rectangular  partitions,  all  of  uniform  thickness,  and 
made  in  one  integral  piece."  We  might  well  take  judicial  notice  of  the  fact, 
even  if  it  was  not  abundantly  proven  by  the  testimony,  that  the  art  of  mak- 
ing sewer  or  drain  pipe,  both  rectangular  and  cylindrical  in  form,  out  of 
clay,  is  very  old.  —  Browning  v.  Colorado,  61  Fed.  845;   10  C.  C.  A.  112. 

The  device  was  known  for  over  12  years  before  this  bill  was  filed;  and 
yet  during  the  whole  of  that  period  it  never  had  been  put  to  practical  use. 
If  the  case  had  been  otherwise,  the  practical  results  might  have  enabled  us 
to  give  the  patent  the  support  which  might  have  come  therefrom.  —  B.  &  S. 
Fastener  v.  Edgerton,  96  Fed.  489 ;  37  C.  C.  A.  523. 

Boston  v.  Bemis,  80  Fed.  287. 

The  Stonemetz  patent  did  not  go  into  use  at  all.  These  facts  would  not 
of  themselves  establish  that  the  inventions  were  not  novel  and  useful,  but 
such  circumstances,  unexplained,  give  additional  ground  for  the  belief  that 
no  very  substantial  improvement  in  the  art  was  made.  —  Campbell  v. 
Duplex,  101  Fed.  282;  41  C.  C.  A.  351. 


584  THE    FIXED    LAW    OF    PATENTS  §  638 

The  fact  that  the  two  devices  are  not  separately  claimed,  but  only  in 
combination,  would  indicate  that  the  patentee  regarded  the  elements  indi- 
vidually considered  as  old.  —  American  v.  Helmstetter,  142  Fed.  978 ;  74 
C.  C.  A.  240. 

§  638.     Evidence  of  —  Miscellaneous  Holdings. 

The  conversations  and  declarations  of  a  patentee  stating  that  he  had 
made  an  invention  and  describing  its  details  and  explaining  its  operation 
are  assertions  of  his  right  to  the  invention.  —  Railroad  v.  Stimpson,  14  Pet. 
448;    10  L.  Ed.  535. 

The  attempted  proof  that  the  plaintiff  invented  a  certain  device  over  thirty 
years  before,  made  and  secreted  a  model  of  it,  in  the  light  of  his  subsequent 
patent  which  did  not  disclose  it  and  which  was  claimed  only  in  a  reissue 
15  years  later,  such  evidence  is  not  impressive.  —  Johnson  v.  Flushing,  105 
U.  S.  539;  26  L.Ed.  1162. 

The  conduct  of  the  inventor  considered  as  evidence  as  to  whether  he  had 
or  had  not  invented  the  device  in  suit  at  the  time  alleged.  —  Atlantic  v.  Brady, 
107  U.  S.  192;  27  L.  Ed.  438;  2  S.  Ct.  225. 

The  fact  that  contemporary  publications  give  to  the  patentees  the  credit 
of  this  invention  considered  as  evidence  of  invention.  —  New  Process  v. 
Maus,  122  U.  S.  413 ;  30  L.  Ed.  1193 ;  7  S.  Ct.  1304. 

Where  licensee  gave  notice  to  licensor  that  the  licensed  device  was  in- 
operative and  then  continued  to  make  an  article  embodying  substantially 
the  same  device  indicates  that  the  notice  was  a  mere  pretence.  —  St.  Paul  v. 
Starling,  140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct.  803. 

The  fact  that  the  patentee  had  at  one  time  offered  to  sell  the  patent  for 
SI 5. 00  is  not  competent  evidence  of  want  of  novelty  and  was  properly  ex- 
cluded. —  Harper  v.  Wilgus,  56  Fed.  587;  6  C.  C.  A.  45. 

Complainant  patentee  had  suggested  the  idea  of  the  device  in  suit  to  an 
inventor  and  manufacturer,  who  adapted  a  prior  patented  device  to  complain- 
ant's needs,  made  and  sold  complainant  the  device  and  marked  it  patented 
under  his  former  patent.  Later  complainant  took  out  a  patent  on  the  device, 
removed  the  former  patent  mark  and  applied  his  own.  Upon  remonstrance 
by  the  manufacturer,  complainant  removed  his  mark.  Held:  That  in  connec- 
tion with  the  proofs  this  conduct  amounted  to  a  confession  of  invention  of 
the  prior  patentee  and  of  abandonment  by  complainant.  —  Forgie  v.  Oil 
Well,  58  Fed.  871 ;  7  C.  C.  A.  551. 

When  the  patentee  is  silent  as  to  the  details  of  a  particular  feature  it  is 
to  be  presumed  that  it  is  a  matter  of  common  knowledge  among  those  skilled 
in  the  art,  and  not  novel  with  the  patentee.  —  Westinghouse  v.  Edison,  63 
Fed.  588;  11  C.  C.  A.  342. 

The  complainant  has  pressed  upon  us  advertisements  and  other  public 
declarations  of  the  respondent  maintaining  the  patentability  of  devices  of 
the  general  character  of  the  one  in  issue.  In  that  class  of  litigation  in  which 
results  can  affect  no  interests  except  those  of  the  parties  to  it,  the  court 
may  well  give  weight  to  declarations  of  that  nature ;  but  with  reference  to 
a  patent  for  an  invention,  which  is  of  public  concern,  such  declarations  are 


§  639  INVENTION  585 

of  little  consequence,  and  neither  the  inventor  nor  the  alleged  infringer  can 
be  permitted  to  substitute  his  own  acts  or  opinions  for  the  judgment  of  the 
court.  —  Osgood  v.  Metropolitan,  75  Fed.  670;  21  C.  C.  A.  491. 

It  was  a  known  law  of  nature  when  the  early  dental  spittoons  were  de- 
vised; but  until  Hurlbut's  time,  it  was  not  thought  of  in  solving  the  problem 
of  a  sightly  and  sanitary  dental  basin.  Is  not  this  fact  significant?  Is  it 
not  persuasive  that  Hurlbut's  conception  was  invention  rather  than  mere 
skill  —  a  flash  of  the  intellect,  creative  and  helpful,  rather  than  the  plodding 
advance  of  the  mechanic.  —  Justi  v.  Clark,  108  Fed.  659;  47  C.  C.  A.  565. 

The  record  discloses  the  labor  and  experiments  required  to  produce  a 
patentable  supporter,  and  the  inventive  character  of  the  device  is  made 
apparent  despite  first  impressions  as  to  triviality.  Its  novelty  and  utility 
"in  its  limited  field"  are  manifest.  —  Parramore  v.  Taylor,  114  Fed.  97; 
52  C.  C.  A.  45. 

The  learned  judge  said:  "  The  case  is  a  close  one.  We  have  not  arrived  at 
our  conclusion  without  hesitation,  and  there  are  grounds  for  strongly  urging 
a  different  one."  But  we  think  that  the  doubt  which  he  seems  to  have  en- 
tertained should  have  been  resolved  in  support  of  the  patent.  —  Cleveland  v. 
Kauffman,  135  Fed.  360;  68  C.  C.  A.  658. 

Railroad  v.  Stimpson,  14  Pet.  459;  Lehnbeuter  v.  Holthaus,  105  U.  S.  96;  Can- 
trell  v.  Wallick,  117  U.  S.  695. 


§  639.     Force  of  Nature. 

An  exclusive  right  cannot  exist  to  a  new  power,  should  one  be  discovered. 
Through  the  agency  of  machinery  a  new  steam  power  may  be  said  to  have  been 
generated.  But  no  one  can  appropriate  this  power  exclusively  to  himself 
under  the  patent  laws.  The  same  may  be  said  of  electricity  and  of  any  other 
power  in  nature,  which  is  alike  open  to  all.  —  Le  Roy  v.  Tatham,  14  How. 
156;   14  L.  Ed.  367. 

A  force  of  nature  cannot  be  broadly  claimed  in  connection  with  an  act. 
—  O'Reilly  v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

If  this  claim  can  be  maintained,  it  matters  not  by  what  process  or  machinery 
the  result  is  accomplished.  For  ought  that  we  know  some  future  inventor, 
in  the  onward  march  of  science,  may  discover  a  mode  of  writing  or  printing 
at  a  distance  by  means  of  the  electric  or  galvanic  current,  without  using  any 
part  of  the  process  or  combination  set  forth  in  the  plaintiff's  specification. 
His  invention  may  be  less  complicated  —  less  liable  to  get  out  of  order  — 
less  expensive  in  construction,  and  in  operation.  But  yet  if  it  is  covered  by 
this  patent  the  inventor  could  not  use  it,  nor  the  public  have  the  benefit 
of  it  without  the  permission  of  the  patentee.  —  O'Reilly  v.  Morse,  15  How. 
62;   14  L.  Ed.  601. 

Note:  No  better  law  and  no  more  wonderful  prophecy  is  to  be  found  in 
the  books. 

As  it  was  held  in  O'Reilly  v.  Morse,  15  How.  62.  A  broad  claim  for  the 
motive  force  of  electricity  could  not  be  had,  but  a  claim  for  a  particular 
application  of  that  force  by  given  means  is  patentable.  —  Telephone  Cases, 
126  U.  S.  1 ;  31  L.  Ed.  863;  8  S.  Ct.  778. 

An  artificial  force  is  a  natural  force,  so  transformed  in  character  or  energies 
by  human  power  as  to  possess  new  capabilities  of  action.    This  transformation 


586  THE    FIXED    LAW    OF    PATENTS  §  640 

of  a  natural  force  into  a  force  practically  new  involves  a  true  inventive  art. 
—  Wall  v.  Leek,  66  Fed.  552;   13  C.  C.  A.  630. 

1  Rob.  Pat.  sees.  92-96-99-103;  Neilson  v.  Hartford,  1  Web.  P.  C.  295;  Law- 
ther  v.  Hamilton,  124  U.  S.  1;  McClurg  v.  Kingsland,  1  How.  202;  Burr  v.  Duryee, 
1  Wall.  568. 

Discoveries  of  natural  forces  or  of  their  laws  are  not  the  subjects  of  patents. 
It  is  only  the  employment  of  such  forces  by  invented  means,  for  useful 
purposes,  which  gives  the  inventor  any  standing  ground.  —  Cowles  v.  Lowrey, 
79  Fed.  331;  24  C.  C.  A.  616. 

O'Reilly  v.  Morse,  15  How.  62. 

That  a  claim  covering  the  utilization  of  an  article  in  a  way  to  get  the 
best  results  from  its  characteristics  (such  as  using  a  veneer  lumber  with  the 
dense  side  out  to  compensate  swelling  from  dampness)  is  not  patentable,  see 
Talbot  v.  Fear,  89  Fed.  197;  32  C.  C.  A.  186. 

Cameron  having  invented  the  tank  employed  and  having  denned  it  as  "  a 
septic  tank, "which  in  operation,  becomes  lined  with  a  coating  due  to  the  action 
of  bacteria  and  in  a  short  time  forms  its  own  air-excluding  cover  by 
bacteria  action ;  that  these  facts  do  not  entitle  him  to  a  claim  covering  his 
elements  and  the  elements  built  in  by  micro-organisms  as  constituting 
a  combination,  see  Cameron  v.  Saratoga,  159  Fed.  453;  86  C.  C.  A.  483. 

§  640.  Generic  —  Construction. 

If  one  inventor  precedes  all  the  rest  and  strikes  out  something  which  in- 
cludes and  underlies  all  that  they  produce,  he  acquires  a  monopoly  and  sub- 
jects them  to  tribute.  But  if  the  advance  towards  the  thing  desired  is  gradual, 
and  proceeds  step  by  step,  so  that  no  one  can  claim  the  complete  whole,  then 
each  is  entitled  only  to  the  specific  form  of  device  which  he  produces,  and 
every  other  inventor  is  entitled  to  his  own  specific  form,  so  long  as  it  differs 
from  those  of  his  competitors,  and  does  not  include  theirs.  —  Chicago  v. 
Sayles,  97  U.  S.  554;  24  L.  Ed.  1053. 

It  is  not  a  pioneer  patent,  and  is  not  entitled  to  that  liberality  of  construc- 
tion which  would  have  been  accorded  to  it  had  the  inventor  been  the  first 
to  devise  a  scheme  for  these  several  adjustments.  —  Consolidated  v.  Barnard, 
156  U.  S.  261;  39  L.  Ed.  417;  15  S.  Ct.  333. 

If  it  was  all  he  claimed  for  it,  it  first  supplied  the  efficient  means  of  reducing 
to  the  service  of  the  public  an  agency  of  great  power  and  value  in  a  highly 
important  industry.  To  such  an  invention  the  courts  will  give  precedence 
according  to  its  breadth,  and  will  treat  all  modifications  of  it  which  involve 
only  the  exercise  of  the  ordinary  skill  and  learning  of  that  art  as  compre- 
hended in  the  invention.  —  Cowles  v.  Lowrey,  79  Fed.  331 ;  24  C.  C.  A.  616. 

Tilghman  v.  Proctor,  102  U.  S.  707;  Eames  v.  Andrews,  122  U.  S.  40. 

Undoubtedly  Mr.  Edison,  by  utilizing  this  film  and  perfecting  the  first  ap- 
paratus for  using  it,  met  all  the  conditions  necessary  for  commercial  success. 
This,  however,  did  not  entitle  him,  under  the  patent  laws,  to  a  monopoly 
of  all  camera  apparatus  capable  of  utilizing  the  film.  Nor  did  it  entitle  him 
to  a  monopoly  of  all  apparatus  employing  a  single  camera.  —  Edison  v. 
American,  114  Fed.  926;  52  C.  C.  A.  546. 

This  discovery  was  important.  Tremaine  &  Paine  were  not  mere  improvers 
upon  a  prior  machine  which  was  capable  of  accomplishing  the  same  general 
result.     They  brought  to  success  what  prior  inventors  had  been  unable 


5  641  INVENTION  587 

to  accomplish.  It  was  difficult,  and  had  been  considered  impossible.  They 
adopted  some  devices  that  had  been  used  before,  combined  them  with  others 
that  had  not  been  used,  and  added  the  necessary  elements  to  make  a  practical 
operative  machine.  Their  invention  was  therefore  more  than  a  mere  improve- 
ment or  perfection  of  what  had  preceded  it.  It  was  of  such  novelty  and 
importance  as  to  constitute  a  distinct  step  in  the  progress  of  the  art,  and  the 
claims  of  their  patent  are  therefore  entitled  to  a  broad  and  liberal  construc- 
tion. —  Los  Angeles  v.  ^Eolian,  143  Fed.  880;  75  C.  C.  A.  88. 

Morley  v.  Lancaster,  129  U.  S.  263;    Letson  v.  Alaska,  130  Fed.  129;    Brown 
v.  Drohen,  140  Fed.  97;  Hobbs  v.  Beach,  180  U.  S.  383. 


§  641.     Generic  —  Definition. 

Doubtless  an  invention  may  be  good  though  the  subject  of  it  consists 
in  the  discovery  of  some  principle  of  science  or  property  of  matter,  never 
before  known  or  used,  by  which  some  new  and  useful  result  is  obtained, 
and  such  an  invention  or  discovery  may  be  the  subject  of  a  valid  patent 
without  including  in  the  claim  any  new  arrangement  of  machinery  to  accom- 
plish the  object,  provided  the  inventor  describes,  as  required  in  the  patent 
law,  the  method,  process  or  means  of  applying  the  invention  to  practical 
use  and  of  obtaining  the  new  and  useful  result.  —  Mitchell  v.  Tilghman,  86 
U.  S.  287;   22  L.  Ed.  125. 

Househill  v.  Neilson,  1  Web.  P.  C.  683;  Curt.  Pat.  4  ed.  279;  Foote  v.  Silsby, 
2  Blatchf.  260. 

This  word  ("  pioneer  ")  although  used  somewhat  loosely,  is  commonly 
understood  to  denote  a  patent  covering  a  function  never  before  performed, 
a  wholly  novel  device,  or  one  of  such  novelty  and  importance  as  to  mark  a 
distinct  step  in  the  progress  of  the  art,  as  distinguished  from  a  mere  improve- 
ment or  perfection  of  what  had  gone  before.  —  Westinghouse  v.  Boyden,  170 
U.  S.  537;  42  L.  Ed.  1136;  18  S.  Ct.  707. 

It  is  true  that,  when  an  invention  is  of  a  primary  character,  a  larger  lati- 
tude is  given  to  the  equivalents  which  the  patent  includes  than  if  the  invention 
were  a  modification  of  a  well-explored  art.  In  the  former  case,  devices  which 
operate  upon  the  same  principle  and  perform  the  same  functions  by  analo- 
gous means  are  held  to  be  infringements  (McCormick  v.  Talcott,  20  How. 
402)  and  it  is  also  true  that  when  mechanical  means  are  for  the  first  time 
invented,  which  enable  a  law  of  science  or  force  of  nature  to  be  used  so  as 
to  accomplish  a  practical  and  beneficial  result,  such  as  the  Bell  telephone, 
or  when  an  inventor  invents  mechanical  means  for  carrying  into  effect  a 
newly  discovered  and  useful  principle  of  operation,  like  the  double  carbon 
of  Brush,  the  inventor's  properly  drawn  patent  will  include  a  very  wide 
scope  of  analogous  mechanical  means  which  accomplish  the  same  result. 
But  this  invention,  though  it  may  be  called  a  primary  one,  is  not  of  the 
character  to  which  any  such  latitude  can  be  given.  Having  made  this 
improvement,  he  broadly  claims  in  his  patent  any  friction  plate  or  pressure 
contrivance,  and  desires  to  include  all  the  more  elaborate  and  ingenious 
methods  of  constructing  a  brake  which  may  be  introduced.  Such  a  con- 
struction is  inadmissible,  because  a  patented  invention  of  this  character 
which  with  difficulty  maintains  its  right  to  patentability,  belongs  to  a  differ- 
ent class  from  the  one  to  which  the  doctrine  in  McCormick  v.  Talcott  and 
kindred  cases,  applies  and  is  to  receive  a  narrow  construction.  —  Dederick  v. 
Seigmund,  51  Fed.  233;  2  C.  C.  A.  169. 

The  result  which  he  achieved  was  a  distinct  and  single  one,  which  had  not, 
by  any  means,  been  previously  attained.    He  entered  upon  a  barren  terri- 


588  THE    FIXED    LAW    OF    PATENTS  §§642-643 

tory  in  the  domain  of  invention,  and  was  the  first  to  occupy  and  appropriate 
it.    He  was  a  pioneer.  —  National  v.  American,  53  Fed.  367;  3  C.  C.  A.  559. 
Machine  Co.  v.  Lancaster,  129  U.  S.  263. 

The  Kitselman  invention,  for  the  first  time,  put  the  fence-builder  on  its 
feet  —  an  easy  going,  adaptable,  working  machine  of  the  highest  species. 
It  built,  for  the  first  time,  in  the  field,  a  wire  mesh  fence.  It  became  a  farm 
implement  —  an  implement  before  unknown  —  as  much  so  as  the  first 
harvester  or  the  first  stump  puller.  It  turned  over  to  the  farmer  in  the  field 
the  work  that  had  been  previously  done  by  the  wire  weaver  in  the  shop. 
Out  of  it  practically  came  a  new  product  —  a  product  as  common  now  as  the 
barbed  fence,  and  probably  much  more  useful.  Kitselman  disclosed  to  the 
world  for  the  first  time  a  practical  means  for  supplying  the  farmer  with  a 
highly  useful  fence.  He  has  set  forth  the  means  in  detail,  in  the  descriptive 
portion  of  his  patent,  and  has  framed  the  claims  mentioned  to  correctly 
embody  them  in  a  mechanical  unity.  His  work  is  the  work  of  a  primary 
inventor,  certainly  as  much  so  as  in  the  cases  presented  in  the  Corn  Planter 
Patent,  and  his  letters  patent  are  therefore  entitled  to  a  liberal  construction. 
—  Kitselman  v.  Kokomo,  108  Fed.  632;  47  C.  C.  A.  538. 

Corn  Planter  Patent,  23  Wall.  181;  Barbed  Wire  Patent,  143  U.  S.  275. 

Where  the  originator  has  boldly  struck  out  into  a  practical  application, 
and  stated  it,  though  only  in  general  terms,  he  has,  for  the  most  part,  made 
his  conception  clear  even  though  the  mechanical  details  have  not  been 
expressed  or  thought  out.  —  Westinghouse  v.  Stanley,  133  Fed.  167;  68 
C.  C.  A.  523. 

Telephone  Cases,  126  U.  S.  1. 

A  primary  invention  is  "  one  which  performs  a  function  never  performed 
by  an  earlier  invention."  A  secondary  invention  is  one  which  performs  a 
function  previously  performed,  but  in  a  substantially  different  way.  Walker 
on  Pat.  sees.  353,359.  This  word  (pioneer),  although  used  somewhat  loosely, 
is  commonly  understood  to  denote  a  patent  covering  a  function  never  before 
performed,  a  wholly  novel  device,  or  one  of  such  novelty  and  importance  as 
to  mark  a  distinct  step  in  the  progress  of  the  art,  as  distinguished  from  a  mere 
improvement  or  perfection  of  what  had  gone  before.  —  Western  v.  Robert- 
son, 142  Fed.  471;  73  C.  C.  A.  587. 

Westinghouse  v.  Boyden,  170  U.  S.  537. 

§  642.     Generic  —  Improvement. 

He  brought  to  success  what  prior  inventors  had  essayed,  and  but  very 
imperfectly  accomplished.  In  so  doing  he  adopted  some  devices  that  had 
been  used  before,  combined  them  with  others  that  had  not  been  used,  and 
added  the  necessary  elements  to  make  a  practical  and  successful  machine. 
His  combination  and  invention  was,  we  think,  more  than  a  mere  improve- 
ment or  perfection  of  what  had  preceded  it.  It  was  of  such  novelty  and 
importance  as  to  constitute  a  distinct  step  in  the  progress  of  the  art,  and  it 
went  into  immediate  and  extensive  use.  Its  claims  are  therefore  entitled 
to  a  fairly  liberal  construction.  —  Letson  v.  Alaska,  130  Fed.  129;  64  C.  C.  A. 
463. 

Machine  Co.  v.  Lancaster,  129  U.  S.  263. 

For  further  cases  on  this  subject  see  Improvement  —  Generic. 

§  643.     Generic  —  Scope  of. 

It  may  be  that  electricity  cannot  be  used  at  all  for  the  transmission  of 
speech  except  in  the  way  Bell  has  discovered,  and  that,  therefore,  practically, 


§  644  INVENTION  589 

his  patent  gives  him  his  exclusive  use  for  that  purpose,  but  that  does  not  make 
his  claim  one  for  the  use  of  electricity  distinct  from  the  particular  process 
with  which  it  is  connected  in  his  patent.  It  will,  if  true,  show  more  clearly 
the  great  importance  of  his  discovery,  but  it  will  not  invalidate  his  patent. 
—  Telephone  Cases,  126  U.S.I;  31  L.  Ed.  863 ;  8  S.  Ct.  778. 

Where  an  invention  is  one  of  a  primary  character,  and  the  mechanical 
functions  performed  by  the  machine  are,  as  a  whole,  entirely  new,  all  sub- 
sequent machines  which  employ  substantially  the  same  means  to  accomplish 
the  same  result  are  infringements,  although  the  subsequent  machine  may 
contain  improvements  in  the  separate  mechanisms  which  go  to  make  up 
the  machine.  —  Norton  v.  Jensen,  49  Fed.  859;  1  C.  C.  A.  452. 

Machine  Co.  v.  Lancaster,  129  U.  S.  273. 

We  find  that  the  complainant's  machine  is  a  special  one,  adapted  to  a 
special  purpose,  relating  to  an  art  entirely  different  from  that  of  ordinary 
shearing  knives.  We  fail  to  find  anything  which  leads  us  to  the  conclusion 
that  complainant's  invention  was  in  any  way  anticipated,  either  by  prior 
use  or  by  any  machine  possessing  its  functions.  —  Diamond  v.  Goldie,  84 
Fed.  972;  28  C.  C.  A.  589. 

§  644.     Generic  —  What  is. 

It  in  no  wise  detracts  from  the  merit  of  this  invention  that  later  devices 
have  been  adopted  which  render  its  practical  operation  more  efficient.  The 
very  term  "  pioneer  patent  "  signifies  that  the  invention  has  been  followed  by 
others.  A  pioneer  patent  does  not  shut  but  opens  the  door  for  subsequent 
invention.  —  (Dissenting  opinion  of  Mr.  Justice  Shiras  in)  Westinghouse  v. 
Boyden,  170  U.  S.  537;  42  L.  Ed.  1136;   18  S.  Ct.  707. 

It  appears  that  the  complainant,  although  the  owner  of  the  patent  in 
suit,  is  not  manufacturing  under  it  at  all,  but  continues  to  manufacture 
under  Young's  earlier  patent.  It  may,  then,  be  affirmed  confidently  that  the 
invention  of  the  patent  in  suit  is  not  one  of  primary  character.  —  Pittsburg 
v.  Pittsburg,  109  Fed.  644;  48  C.  C.  A.  580. 

It  was  more  than  an  advanced  step  in  an  old  art.  There  was  no  prior  art 
of  molding  tubes  or  cylinders  (of  this  character).  The  patent  was  in  a  certain 
sense  a  pioneer  patent.  To  produce  from  a  mold  a  tube  or  cylinder  of  in- 
sulating material,  cheaply  and  efficiently,  so  that  the  insulating  function 
of  the  cellular  structure  should  be  preserved  uniformly  throughout  the  sub- 
stance of  the  tube  or  cylinder,  was  not  an  obvious  suggestion  of  the  general 
molding  art.  —  Keasbey  v.  American,  143  Fed.  490;  74  C.  C.  A.  510. 

It  may,  therefore,  fairly  be  said  that  he  fulfilled  the  requirements  of  a 
generic  invention,  in  that  he  devised  a  machine  which  performed  the  func- 
tion of  looping  on  a  ribbed  fabric,  a  function  never  performed  thereon  by 
any  earlier  machine,  and  thereby  produced  a  result  never  before  produced, 
namely,  a  ribbed  fabric  capable  of  being  fleeced,  and  that  in  doing  this  he 
exercised  invention  of  a  high  order.  —  Scott  v.  Fisher,  145  Fed.  915;  76 
C.  C.  A.  447. 

The  contention  that  Gathright  is  entitled  to  the  rewards  of  a  pioneer 
inventor  cannot  be  maintained.  If  we  may  be  permitted  a  metaphor,  he  did 
not  discover  the  new  mine,  he  reached  it  by  following  trails  blazed  by  others 
through  the  wilderness;  but  once  arrived,  by  his  genius  and  energy,  he  con- 
verted a  non-producing  failure  into  a  busy,  prosperous  and  lucrative  enter- 


590  THE    FIXED   LAW   OF    PATENTS  §  645 

prise.    In  other  words,  he  developed  the  mine.  —  Wagner  v.  Wycoff,  151 
Fed.  585;  81  C.  C.  A.  129. 

{  645.     Immoral  Object. 

We  think  that  a  patent  cannot  be  lawfully  granted  when,  as  in  the  present 
case,  it  appears  that  the  claim  preferred  by  the  patentee  that  he  has  made 
a  discovery  of  a  new  fact  or  principle  in  medical  science,  and  of  a  new  mode 
of  operation  of  a  known  force  whereby  the  discovery  is  utilized,  rests  upon  no 
substantial  foundation,  and  is  at  best  an  imaginary  hypothesis,  and  was 
most  likely  put  forward  merely  to  obtain  a  patent  on  a  device  which  he 
proposes  to  make  and  sell  to  the  public  for  the  treatment  of  disease.  The 
granting  of  a  patent  under  the  circumstances  last  stated  would  give  to  the 
theories  enunciated  in  the  specification  an  appearance  of  authenticity,  and 
tend  to  mislead  and  deceive  the  public  if  the  theories  are  false.  —  Mahler  v. 
Animarium,  111  Fed.  530;  49  C.  C.  A.  431. 

If  the  device  here  in  question  should  be  found  insusceptible  of  other  use 
than  to  guard  gambling  machines  from  being  operated  by  means  of  bogus 
coins,  we  should  be  led  to  an  outlook  from  which  two  interesting  queries 
appear:  (1)  The  statutes  of  Illinois  prohibit  the  use  of  coin-operated  gam- 
bling machines,  but  not  the  manufacture  or  sale  thereof.  Should  a  circuit 
court  sitting  in  Illinois  hold  invalid  a  patent  on  such  a  machine  and  thereby 
destroy  the  monopoly  of  its  manufacture  and  sale,  because  its  use  is  forbid- 
den in  Illinois,  though  its  manufacture  and  sale  in  Illinois,  and  its  use  in 
certain  other  states  is  lawful?  (2)  If  the  federal  courts  may  properly  hold 
patents  on  gambling  machines  void  for  lack  of  utility,  because  immoral, 
though  countenanced  by  the  legislation  of  particular  states,  is  a  device  at- 
tached to  such  a  machine  likewise  inimical  to  good  morals,  which  prevents  a 
gambler  from  being  also  a  cheat?  It  seems  clear  that  one  who  practises  his 
invention  in  a  noxious  way  only  has  no  better  standing  in  equity  than  one 
who  declines  to  use  the  device  for  good  purposes  or  to  permit  others  to  use  it. 
And  in  Hoe  v.  Knapp,  27  Fed.  204,  there  is  a  statement  that "  under  a  patent 
which  gives  a  patentee  a  monopoly,  he  is  bound  to  use  the  patent  himself, 
or  allow  others  to  use  it  on  reasonable  terms."  But  this  doctrine  has  been 
vigorously  denied,  and  rightly,  we  think,  in  subsequent  cases.  Roller  v. 
Coombs,  39  Fed.  803;  Campbell  v.  Manhattan,  49  Fed.  935;  Heaton  v. 
Eureka,  77  Fed.  294;  Bement  v.  National,  186  U.  S.  70.  So  nonuse  is  not  a 
defense  in  equity.  Is  misuse?  Equity  is  not  concerned  with  the  general 
morals  of  a  complainant ;  the  taint  that  is  regarded  must  affect  the  particu- 
lar rights  asserted  in  his  suit.  Saddle  v.  Troxel,  98  Fed.  620;  Folding  v. 
Robertson,  99  Fed.  985.  A  complainant  asserts  the  validity  of  his  patent, 
infringement,  and  asks  an  injunction.  If  the  defendant  can  do  no  more  than 
show  that  the  complainant  has  committed  some  legal  or  moral  offense, 
which  affects  the  defendant  only  as  it  does  the  public  at  large,  the  court 
must  grant  the  equitable  remedy  and  leave  the  punishment  of  the  offender 
to  other  forums. 

But  another  consideration  leads  more  strongly  to  the  same  result.  The 
inventor's  right  to  make,  vend,  and  use  his  device  does  not  come  from  the 
patent  law;  it  is  his  natural  right.  The  government's  grant  to  the  patentee 
and  his  assigns  is  the  right  to  exclude  others  from  practising  the  invention. 
Bloomer  v.  McQuewan,  14  How.  539;  Patterson  v.  Kentucky,  97  U.  S.  501. 
If  the  complainant  in  a  patent  suit  is  seeking  merely  to  enforce  his  right  to 
exclude,  according  to  the  terms  of  the  government's  grant,  an  inquiry  into 
what  use  (or  lack  of  use)  the  inventor  is  making  of  his  natural  right  would 
seem  to  be  clearly  collateral  and  irrelevant. 

Judge  Grosscup,  dissenting,  says:  Non-use  and  pernicious  use  must  not 
be  confounded.    The  inventor  who  declines  to  put  his  patent  into  use  occu- 


§  646  INVENTION  591 

pies  toward  society  an  attitude  entirely  distinct  from  the  inventor  who  is 
using  his  invention  in  a  way  that  injuriously  affects  society.  Pernicious  use 
does  not  deny  simply  to  society  the  present  benefit  of  an  invention  —  it 
visits  upon  society  an  affirmative  moral  harm.  Pernicious  use  injures  where 
non-use  only  withholds;  wounds,  where  non-use  only  declines  to  help.  The 
court  should  stand  aloof  from  the  whole  transaction,  not  because  the  perni- 
cious use  is  a  defense  that  lies  in  appellee's  mouth,  but  because  it  is  a  consid- 
eration the  public  may  interpose,  and  because  to  issue  the  writ  under  such 
circumstances  would  be  to  pollute  the  writ  itself.  —  Fuller  v.  Berger,  120 
Fed.  274;  56  C.  C.  A.  288. 

§  646.     Improvement  —  Non- Patentable. 

Mere  improvement  in  material  or  quality  is  not  patentable.  —  Heald  v. 
Rice,  104  U.  S.  737;  26  L.  Ed.  910. 

Hotchkiss  v.  Greenwood,  11  How.  266;  Hicks  v.  Kelsey,  85  U.  S.  670;  Stow 
v.  Chicago,  104  U.  S.  547. 

A  mere  carrying  forward  of  an  original  conception  resulting  in  an  improve- 
ment in  degree  is  only  the  exercise  of  ordinary  mechanical  skill.  —  Con- 
solidated v.  Walker,  138  U.  S.  124;  34  L.  Ed.  920;  11  S.  Ct.  292. 

Burt  v.  Evory,  133  U.  S.  349;  Hollister  v.  Benedict,  113  U.  S.  59;  Thompson 
v.  Boisselier,  114  U.  S.  1;  Aron  v.  Manhattan,  132  U.  S.  84;  Hill  v.  Wooster,  132 
U.  S.  693;   Howe  v.  National,  134  U.  S.  388. 

With  all  due  respect  to  the  patent  office,  I  must  say  that  it  seems  to  me 
all  these  patents  in  suit,  as  well  as  others  in  this  record,  were  very  improvi- 
dently  issued.  They  may  cover  improvements  in  this  class  of  devices,  but 
all  improvements  do  not  involve  or  imply  invention.  —  Palmer  v.  McDer- 
maid,  54  Fed.  509;  4  C.  C.  A.  489. 

There  is  not  invention  merely  in  reducing  the  friction  of  a  device  by  adding 
antifriction  rollers,  a  method  well-known  in  the  art.  —  Barnes  v.  Walworth, 
60  Fed.  605;  9  C.  C.  A.  154. 

The  fact  alone  of  improvement  does  not  establish  invention.  Nor,  on  the 
other  hand,  can  it  be  denied  for  mere  simplicity,  which  may  be  the  feature  of 
special  merit.  For  the  improvement  claimed  in  this  patent,  however,  a 
test  is  furnished  under  the  rule  frequently  declared  by  the  Supreme  Court, 
that  "  a  change  only  in  form,  proportion  or  degree,  the  substitution  of  equiv- 
alents doing  substantially  the  same  thing  in  the  same  way,  by  substantially 
the  same  means,  with  better  results,  is  not  such  invention  as  will  sustain  a 
patent."  —  Baldwin  v.  Kresl,  76  Fed.  823;  22  C.  C.  A.  593. 

Smith  v.  Nichols,  21  Wall.  112;  Burt  v.  Evory,  133  U.  S.  349;  Cluett  v.  Claflin, 
140  U.  S.  180;  McCarty  v.  R.  R.  160  U.  S.  110;  Caverly's  v.  Deere,  66  Fed.  305; 
Griswold  v.  Wagner,  68  Fed.  494. 

We  are  constrained  to  conclude  that,  although  the  patentee  was  entitled 
to  the  credit  of  making  a  more  artistic  article  than  those  who  have  preceded 
him,  he  did  nothing  new  in  the  patentable  sense.  —  Janowitz  v.  Levison,  82 
Fed.  63;  27  C.  C.  A.  61. 

The  rule  in  Smith  v.  Nichols,  21  Wall.  112,  119,  has  been  since  so  many 
times  restated  and  applied  that  it  has  become  familiar  doctrine.  —  Soehner 
v.  Favorite,  84  Fed.  182;  28  C.  C.  A.  317. 

Fox  v.  Perkins,  52  Fed.  205;  Schreiber  v.  Grimm,  72  Fed.  671;  Clark  v.  Deere, 
80  Fed.  534. 


592  THE    FIXED    LAW    OF    PATENTS  §§  647-648 

The  coffee  may  look  better  or  more  attractive  in  the  package,  but  this 
does  not  involve  invention.  It  is  only  a  change  in  the  form  or  appearance  of 
a  well-known  article  of  merchandise  and  is  not  patentable.  —  Baker  v. 
Duncombe,  146  Fed.  744;   77  C.  C.  A.  234. 

Glue  Co.  v.  Upton,  97  U.  S.  3;  King  v.  Gallun,  109  U.  S.  99;  Cerealine  v.  Bates, 
101  Fed.  272;   Sanitas  v.  Voigt,  139  Fed.  551. 

§  647.     Improvement  —  Patentability. 

All  improvement  is  not  invention,  and  entitled  to  protection  as  such.  Thus 
to  entitle  it,  it  must  be  the  product  of  some  exercise  of  the  inventive  faculties, 
and  it  must  involve  something  more  than  what  is  obvious  to  a  person  skilled 
in  the  art  to  which  it  relates.  —  Pearce  v.  Mulford,  102  U.  S.  112;  26  L.  Ed. 
93. 

The  first  defense  is  based  on  the  theory  that  a  patent  cannot  be  valid 
unless  it  is  new  in  all  its  elements  as  well  as  in  the  combination.  But  this 
theory  can  not  be  maintained.  If  it  were  sound  no  patent  for  an  improve- 
ment on  a  known  contrivance  or  process  could  be  valid.  And  yet  the  great 
majority  of  patents  are  for  improvements  in  old  and  well  known  devices, 
or  on  patented  inventions.  Changes  in  the  construction  of  an  old  machine 
which  increases  its  usefulness  are  patentable.  —  Cantrell  v.  Wallick,  117 
U.  S.  689;  29  L.  Ed.  1017;  6  S.  Ct.  970. 

Seymour  v.  Osborne,  11  Wall.  516;  Loom  v.  Higgins,  105  U.  S.  580;  Hailes  v. 
Van  Wormer,  20  Wall.  353;   Star  v.  Crossman,  4  Cliff.  568. 

It  is  well  settled  that  not  every  improvement  in  an  article  is  patentable. 
The  test  is  that  the  improvement  must  be  the  product  of  an  original  con- 
ception. —  Burt  v.  Evory,  133  U.  S.  349;  33  L.  Ed.  647;  10  S.  Ct.  349. 

Pearce  v.  Mulford,  102  U.  S.  112;  Slawson  v.  Grand,  107  U.  S.  649;  Munson 
v.  N.  Y.  124  U.  S.  601;   Smith  v.  Nichols,  88  U.  S.  112. 

He  has  not  made  a  great  invention  or  a  "  pioneer  invention,"  if  that  much 
abused  expression  be  confined  to  its  legitimate  meaning,  but  he  has  produced 
a  novel  and  useful  device  which  is  far  removed  from  mechanical  skill.  His 
invention  belongs  to  that  vast  field  of  minor  achievement  which  has  given 
this  country  its  acknowledged  pre-eminence  and  which  it  is  the  policy  of 
the  patent  law  to  protect.  —  Eldred  v.  Kirkland,  130  Fed.  342;  64  C.  C.  A. 
588. 

§  648.     Improvement  —  Miscellaneous. 

These,  and  all  the  other  differences,  were  before  the  Patent  Office.  The 
granting  of  Volz's  claims  under  the  circumstances  was  a  virtual  finding  that 
Volz  was  an  independent  improver  in  an  open  field,  and  we  think  such  a 
finding  is  correct.  —  Loew  v.  Miller,  138  Fed.  886;  71  C.  C.  A.  266. 

Note:  This  is  a  loose  statement.  There  is  nothing  to  indicate  that  it  was 
an  "  open  field  "  so  far  as  the  Patent  Office  action  was  concerned. 

The  courts  have  generally  found  it  inadvisable  to  attempt  to  define  in- 
vention, and  concluding  that  there  are  no  affirmative  rules  by  which  to  de- 
termine its  presence  or  absence  in  every  case,  have  recognized  and  applied 
certain  negative  tests  to  establish  want  of  invention.  Walker  on  Pats.  sees. 
24,  29.  But  when,  upon  the  application  of  these  tests,  the  question  of  in- 
vention is  still  left  in  doubt,  such  doubts  may  be  resolved  in  favor  of  the 
patent  by  evidence  of  successful  results  when  others  have  tried  and  failed. 
—  American  v.  Universal,  151  Fed.  595;  81  C.  C.  A.  139. 


§  649  INVENTION  593 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Steel  Co.  v.  Cambria,  185  U.  S.  403;  Singer 
v.  Schenck,  77  Fed.  841;  Brunswick  v.  Thum,  111  Fed.  904;  Frost  Co.  v.  Conn, 
119  Fed.  505;  Rumford  v.  Baking  Co.  134  Fed.  385. 

When  an  existing  process  or  device  thus  discloses  what  appear  to  be  in- 
superable objections  to  practical  operation,  it  is  persuasive  evidence  of  in- 
vention that  an  improver  has  the  foresight  and  courage  to  break  away  from 
such  disclosures  and  conceive  of  some  new  method  involving  a  different 
principle,  but  it  is  also  evidence  of  invention  if  one,  by  taking  a  step  forward 
sees  that  what  appears  to  be  barriers  to  progress  are  mere  obstructions  to 
side  paths  and  byways,  and  that  the  road  to  a  practical  invention  lies  straight 
before  him.  —  American  v.  Universal,  151  Fed.  595;  81  C.  C.  A.  139. 

What  the  adaptation  does  in  practical  operation  upon  widely  used  machines 
in  cotton  spinning  and  twisting,  old  and  new  machines  alike,  as  compared 
with  the  older  adaptations,  goes  far  toward  demonstrating  the  fact  of  in- 
vention. Though  the  patent  is  for  an  improved  thread-guide  support,  rather 
than  for  a  new  and  original  discovery,  its  practical  success  is  such  as  to  en- 
title it  to  favorable  consideration,  and  to  relieve  it  in  a  measure  from  the 
operation  of  the  narrow  rules  of  construction  which  ordinarily  apply  to  pa- 
tents for  improvements  which  only  slightly  advance  the  art,  and  accomplish 
only  unimportant  and  inconsiderable  results.  —  Houghton  v.  Whitin,  153 
Fed.  740;  83  C.  C.  A.  84. 

§  649.     Manufacture. 

The  patent  covered  as  an  article  of  manufacture  a  rubber  tip  for  a  pencil 
—  not  in  combination  and  not  of  any  shape  or  design.  Held:  Void  as  there 
was  no  novelty  in  the  rubber  tip  independent  of  its  particular  shape  form 
and  use  in  combination,  none  of  which  were  claimed.  —  Rubber  Tip  v. 
Howard,  87  U.  S.  498;  22  L.  Ed.  410. 

A  claim  which  does  not  describe  an  article  differing  at  all  in  its  completed 
state  from  prior  articles  is  clearly  invalid.  —  Risdon  v.  Medart,  158  U.  S. 
68;  39  L.  Ed.  899;   15  S.  Ct.  745. 

It  is  not  enough  that  the  new  manufacture,  because  of  the  fitness  of  the 
material  to  the  purposes  of  the  article,  has  obviated  innumerable  objections 
inherent  in  prior  manufactures  and  superseded  them  in  the  trade.  It  must 
possess  an  advantage  and  novelty  in  form  or  construction  beyond  the  ability 
of  a  mechanic  of  ordinary  skill  and  intelligence,  or  be  the  result  of  means 
or  methods  devised  by  the  maker.  —  Kilbourne  v.  Bingham,  50  Fed.  697; 
1  C.  C.  A.  617. 

Hollister  v.  Mfg.  Co.  113  U.  S.  72;  Smith  v.  Elliott,  9  Blatchf.  403;  Morgan 
v.  Seward,  Web.  P.  C.  174;    Smith  v.  Vulcanite,  93  U.  S.  492. 

An  article  of  manufacture  which  differs  from  other  similar  articles  only 
in  degree  of  quality,  is  not  patentable  as  such.  —  Blumenthal  v.  Burrell, 
53  Fed.  105;  3  C.  C.  A.  462. 

Wood  Paper  Patent,  23  Wall.  566. 

A  mere  form  of  construction  which  affords  increased  beauty  may  enter 
into  a  design  patent  but  not  a  patent  for  a  structure.  —  Soehner  v.  Favorite, 
84  Fed.  182;  28  C.  C.  A.  317. 

There  is  no  clear  line  of  demarkation  between  what  may  be  called  a  new 
article  of  commerce,  not  patentable  though  useful,  and  new  articles  of  manu- 


594  THE   FIXED   LAW   OF   PATENTS  §§  650-651 

facture  patentable  as  such.  Each  instance  brought  the  attention  of  the  court 
must  be  determined  more  or  less  upon  the  situation  peculiar  to  itself.  We 
think  it  sufficient  to  say  that  no  result  of  a  machine  or  process  is  patentable 
independently,  where  it  is  apparent  that  such  result  is  a  degree  only  in  ad- 
vance, in  the  evolution  of  an  art  that  is  as  wide  as  the  manufacture  of 
cereal  foods  and  flour.  —  Cerealine  v.  Bates,  101  Fed.  272;  41  C.  C.  A.  341. 

That  where  the  patent  is  for  a  new  article  of  manufacture,  and  the  means 
for  producing  it  are  old,  and  the  article  itself  is  merely  the  result  of  trans- 
ferring such  means  from  an  analogous  art,  and  possesses  characteristics  similar 
to  those  of  the  articles  of  the  analogous  art,  the  patent  is  void,  see,  Weierman 
v.  Shaw,  157  Fed.  928;  85  C.  C.  A.  222. 

§  650.     Mathematical  Formula. 

But  when  the  patentee  in  his  claim  enumerates  as  one  element  of  his 
combination  a  wire  of  a  length  which  will  accomplish  the  result  sought  to 
be  achieved,  and  his  patent  discloses  a  method  for  determining  that  length 
with  mathematical  exactness,  his  claim  may  fairly  be  sustained  for  the  length 
thus  shown,  although  it  might  be  that  some  other  length  covered  by  the  lan- 
guage of  the  claim,  but  not  of  the  rule,  would  fall  outside  the  claim.  The 
"  length  of  wire  exposed,"  etc.,  "  operated  by,"  etc.,  "  substantially  as  set 
forth,"  is  the  length  of  wire  that  the  specification  shows  as  the  result  of  a 
given  formula.  The  so-called  "  Stanley  rule  "  is  therefore  a  part  of  the  in- 
vention disclosed  and  claimed  in  the  patent,  —  indeed,  it  would  seem  to  be 
the  main  part  of  the  invention,  —  and,  with  the  patent  thus  construed,  the 
citations  from  the  prior  art  show  neither  anticipation  nor  lack  of  invention. 
The  whole  argument  of  defendants  on  that  branch  of  the  case  is  so  inter- 
woven with  the  postulate  that  the  Stanley  rule  is  to  be  eliminated  from  the 
patent  that  when  the  postulate  is  not  granted  the  argument  becomes  wholly 
unpersuasive.  —  Westinghouse  v.  Saranac,  113  Fed.  884;  51  C.  C.  A.  514. 

§  651.  Means. 

The  invention  covered  must  consist  of  a  new  and  useful  means  of  obtaining 
the  end  sought.  In  other  words,  the  subject  of  a  patent  is  the  device  or 
mechanical  means  by  which  the  desired  result  is  to  be  secured.  —  Knapp  v. 
Morss,  150  U.  S.  221;  37  L.  Ed.  1059;  14  S.  Ct.  81. 

Carver  v.  Hyde,  41  U.  S.  519;  Leroy  v.  Tatham,  55  U.  S.  156;  Corning  v.  Bur- 
den, 56  U.  S.  252;  Burr  v.  Duryee,  68  U.  S.  531;   Fuller  v.  Yentzer,  94  U.  S.  288. 

Novelty  must  be  a  novelty  in  the  means  or  mechanical  device  and  not  in 
the  use  to  which  the  combination  is  put.  —  Wollensak  v.  Sargent,  151  U.  S. 
221;   38  L.  Ed.  137;    14  S.  Ct.  291.       ■ 

Knapp  v.  Morss,  150  U.  S.  221. 

Patents  cover  means  employed  to  effect  results.  —  Miller  v.  Eagle,  151 U.  S. 
186;  38  L.  Ed.  121 ;  14  S.  Ct.  310. 

Rubber  Tip  Pencil  Co.  v.  Howard,  87  U.  S.  507;  Fuller  v.  Yentzer,  94  U.  S. 
288;    Roberts  v.  Ryer,  91  U.  S.  150;   Stow  v.  Chicago,  104  U.  S.  547. 

In  such  case  any  appropriate  means  for  making  it  operative  will  be  under- 
stood. Otherwise  the  infringer  might  take  the  most  important  part  of  an 
invention  and,  by  changing  the  method  of  adapting  it  to  the  machine  to 
which  it  is  an  improvement,  avoid  the  charge  of  infringement.  The  invention 
of  a  needle  with  an  eye  near  the  point  is  the  basis  of  all  the  sewing  machines 
used;  but  the  methods  of  operating  such  a  needle  are  many,  and  if  Howe 
had  been  obliged  to  make  his  own  method  a  part  of  every  claim  in  which  the 


§  651  INVENTION  595 

needle  was  an  element,  his  patent  would  have  been  practically  worthless.  — 
Deering  v.  Winona,  155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

If  the  inventor  were  in  fact  the  first  to  invent  the  device  of  the  patent, 
he  is  entitled  to  a  patent  therefor,  though  the  infringer  may  make  use  of 
other  means  than  those  employed  by  him  to  operate  it.  —  Deering  v.  Winona, 
155  U.  S.  286;  39  L.  Ed.  153;  15  S.  Ct.  118. 

Webster  v.  Higgins,  105  U.  S.  580. 

The  results  attained  by  the  means  employed  by  the  patent  in  suit  are  not  in 
conflict  with  the  rule  of  Knapp  v.  Morss,  150  U.  S.  221 ;  and  Wollensak  v. 
Sargent,  151  U.  S.  227,  that  the  end  or  purpose  sought  to  be  accomplished 
by  a  device  is  not  the  subject  of  a  patent.  The  fallacy  of  defendant's  argu- 
ment lies  in  the  assumption  that  the  object  to  be  accomplished  was  the  mov- 
ing of  the  wing  instead  of  the  more  perfect  operation  of  the  rods.  —  National 
v.  Boston,  156  U.  S.  502 ;  39  L.  Ed.  51 1 ;  15  S.  Ct.  434. 

Brown  v.  Piper,  91  U.  S.  37;  Penna.  v.  Locomotive,  110  U.  S.  490;  Aron  v. 
Manhattan,  132  U.  S.  84;  Wollensak  v.  Sargent,  151  U.  S.  221;  Blake  v.  San 
■Francisco,  113  U.  S.  679;   St.  Germain  v.  Brunswick,  135  U.  S.  227. 

While  it  is  true  under  the  rule  of  Knapp  v.  Morss,  150  U.  S.  221 ;  Wollen- 
sak v.  Sargent,  151  U.  S.  227;  that  the  end  or  object  of  an  invention  is  not 
patentable,  that  the  means,  not  the  end,  is  the  patentable  subject  matter, 
and  while  it  is  also  true  in  view  of  Brown  v.  Piper,  91  U.  S.  37;  Penna.  v. 
Locomotive,  110  U.  S.  490;  Aron  v.  Manhattan,  132  U.  S.  84;  Wollensak  v. 
Sargent,  supra;  Blake  v.  San  Francisco,  113  U.  S.  679;  and  St.  Germain  v. 
Brunswick,  135  U.  S.  227;  that  the  employment  of  old  and  well  known 
means  to  a  new  and  analogous  use  is  not  patentable,  —  yet  in  a 
case  where  a  desired  function  is  accomplished  by  the  employment  of 
old  means  remotely  analogous,  such  a  degree  of  skill  may  be  required  as  to 
involve  the  inventive  faculty ;  and  in  that  case  it  is  the  idea  of  means,  though 
old,  that  is  patentable,  and  not  the  end  attained.  —  National  v.  Boston,  156 
U.  S.  502;  39  L.  Ed.  511 ;  15  S.  Ct.  434. 

It  is  the  character  of  the  means  employed,  and  not  the  inventions  or 
details  of  forms,  which  denote  the  substance  of  the  invention.  —  Union  v. 
Battle  Creek,  104  Fed.  337;  43  CCA.  560. 

Morey  v.  Lockwood,  8  Wall.  230;  Ives  v.  Hamilton,  92  U.  S.  431;  Elizabeth 
v.  Pavement  Co.  97  U.  S.  137. 

The  Knowles  &  Tatham  patent  is  merely  for  an  improved  form  of  means  for 
accomplishing  an  old  result.  It  does  not  employ  any  new  mechanical  principles 
or  any  essentially  new  mode  of  operation.  The  substance  of  the  invention 
resides  in  the  form  of  the  means.  It  is  a  case  where  form  and  substance  are 
inseparable.  —  Lowell  v.  Saco,  122  Fed.  632;  58  C  C  A.  324. 

Winans  v.  Denmead,  15  How.  330. 

In  our  opinion,  upon  full  consideration,  the  device  belongs  to  that  class  of 
inventions  in  which  the  invention  resides,  in  the  language  of  the  Supreme 
Court  in  Hobbs  v.  Beach,  180  U.  S.  383,  rather  in  "  the  idea  that  such  change 
could  be  made  than  in  making  the  necessary  mechanical  alterations."  Other 
inventors  had  been  engaged  in  perfecting  these  machines,  and  yet  it  never 
occurred  to  anyone  before  that  the  old,  cumbersome,  and  troublesome  method 
of  running  off  the  nines  could  be  obviated  by  this  simple  device.  —  Compto- 
graph  v.  Mechanical,  145  Fed.  331;  76  C  C.  A.  205. 


596  THE    FIXED   LAW   OF   PATENTS  §§652-654 

§  652.     Mechanical  Skill  —  Adaptation. 

Unless  more  ingenuity  and  skill  in  applying  the  old  method  of  fastening 
the  shank  and  the  knob  were  required  in  the  application  of  it  to  the  clay 
or  porcelain  knob  than  were  possessed  by  an  ordinary  mechanic  acquainted 
with  the  business,  there  was  an  absence  of  that  degree  of  skill  and  ingenuity 
which  constitute  essential  elements  of  every  invention.  In  other  words  the 
improvement  is  the  work  of  the  skillful  mechanic,  not  that  of  the  inventor.  — 
Hotchkiss  v.  Greenwood,  11  How.  248;  13  L.  Ed.  683. 

To  cut  the  material  so  as  to  get  the  grain  in  a  particular  way,  and  so  as  to 
avoid  waste,  requires  simple  mechanical  skill,  without  involving  invention. 
—  Brown  v.  D.  C.  130  U.  S.  87;  32  L.  Ed.  863;  9  S.  Ct.  437. 

It  does  not  involve  invention  to  place  the  gripping  device  of  a  cable  rail- 
way system  on  a  dummy  car  and  attaching  the  dummy  to  a  carrying  car 
calculated  to  be  used  also  upon  other  than  cable  systems.  —  Butte  City  v. 
Pacific,  60  Fed.  410;  9  C.  C.  A.  41. 

The  mere  adaptation  of  means  to  avoid  binding  or  friction,  as  changing 
the  point  of  application  of  a  force,  such  as  would  occur  to  any  mechanic  is 
not  invention.  —  Union  v.  Smith,  69  Fed.  827;  16  C.  C.  A.  451. 

Stirrat  v.  Mfg.  Co.  61  Fed.  980. 

The  adaptation  of  a  spring  in  form  and  location  merely  to  make  a  more 
effective  bicycle  brake  is  not  invention.  —  Gormully  v.  Western,  84  Fed. 
968;  28  C.  C.  A.  586. 

Invention  cannot  be  predicated  merely  on  making  holes  for  purposes  of 
ventilation.  —  Tileston  v.  Vaughan,  149  Fed.  999;  79  C.  C.  A.  509. 

§  653.     Mechanical  Skill  —  Aggregation. 

Mere  duplication  of  parts,  as  placing  two  panes  of  glass  where  there  was 
only  one  before,  is  not  invention,  but  ordinary  mechanical  skill.  —  Slawson  v. 
Grand,  107  U.  S.  649;  27  L.  Ed.  576;  2  S.  Ct.  663. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Phillips  v.  Paige,  24  How.  167;  Dunbar 
v.  Meyers,  94  U.  S.  187;  Stimpson  v.  Woodman,  10  Wall.  117;  Brown  v.  Piper, 
91  U.  S.  37;   Atlantic  v.  Brady,  107  U.  S.  192. 

Mere  aggregation  of  old  devices  and  elements,  though  useful,  is  not  in- 
vention. —  Watson  v.  Cincinnati,  132  U.  S.  161 ;  33  L.  Ed.  295 ;  10  S.  Ct.  45. 

§  654.     Mechanical  Skill  —  Carrying  Forward. 

The  general  rule  stated  in  terms  of  Smith  v.  Nichols,  88  U.  S.  112;  and 
Penna.  v.  Locomotive,  110  U.  S.  490.  —  Stephenson  v.  Brooklyn,  114  U.  S. 
149;  29  L.  Ed.  58;  5  S.  Ct.  777. 

Vinton  v.  Hamilton,  104  U.  S.  485;  Blake  v.  San  Francisco,  113  U.  S.  679. 

A  mere  carrying  forward  of  an  original  conception,  resulting  in  an  improve- 
ment in  degree,  is  only  the  exercise  of  ordinary  mechanical  skill.  —  Con- 
solidated v.  Walker,  138  U.  S.  124;  34  L.  Ed.  920;  11  S.  Ct.  292. 

Burt  v.  Evory,  133  U.  S.  349;  Hollister  v.  Benedict,  113  U.  S.  59;  Thompson 
v.  Boisselier,  114  U.  S.  1;  Aron  v.  Manhattan,  132  U.  S.  82;  Hill  v.  Wooster,  132 
U.  S.  693;   Howe  v.  National,  134  U.  S.  388. 

A  mere  carrying  forward,  or  new  or  more  extended  application  of  the 
original  thought,  a  change  only  in  form,  proportions  or  degree,  the  substi- 


§  655  INVENTION  597 

tution  of  equivalents  doing  substantially  the  same  thing  in  the  same  way  by 
substantially  the  same  means  with  better  results,  is  not  such  invention  as 
will  sustain  a  patent.  —  Ansonia  v.  Electrical,  144  U.  S.  11;  36  L.  Ed.  327; 
12  S.  Ct.  601. 

Smith  v.  Nichols,  88  U.  S.  112;  Morris  v.  McMillin,  112  U.  S.  244;  Busell  v. 
Stevens,  137  U.  S.  423. 

The  adaptation  of  the  process  of  tempering  clock  bells  to  that  of  helical 
coil  springs  held  to  be  a  mere  carrying  forward  of  an  old  process.  —  Lovell  v. 
Cary,  147  U.  S.  623 ;  37  L.  Ed.  307 ;  13  S.  Ct.  472. 

Hollister  v.  Benedict,  113  U.  S.  59. 

It  matters  not  that  the  means  might  have  been  so  feeble  or  inadequate 
as  to  only  imperfectly  perform  their  duty ;  the  mere  extension  of  those  means 
in  size  and  number,  or  change  of  form,  would  not,  in  the  absence  of  special 
circumstances,  make  the  improvement  produced  thereby  patentable.  "  It 
is  a  mere  difference  in  degree;  the  carrying  forward  of  an  old  idea;  a  result 
perhaps  more  perfect  than  had  heretofore  been  attained,  but  not  rising  to 
the  dignity  of  invention."  —  Wells  v.  Curtis,  66  Fed.  318;   13  C.  C.  A.  494. 

Wright  v.  Yuengling,  155  U.  S.  47. 

A  thing  or  a  combination  of  cooperating  parts  may  be  invented  and  the 
original  embodiment  of  it  will  be  shown  in  a  crude  and  imperfect  form.  The 
skill  of  the  trained  workman  will  develop  the  idea  of  the  inventor  in  more 
refined,  more  delicate  and  more  exactly  suitable  forms  than  the  original. 
He  may  cut  away  needless  bulk,  he  may  increase  the  size  of  parts,  he  may 
make  them  stronger,  if  need  be,  by  the  substitution  of  one  familiar  material 
for  another,  make  them  lighter  or  heavier,  he  may  divide  one  part  into  two, 
or  combine  two  in  one,  or  make  any  other  transformation  of  details,  so  long 
as  he  is  pursuing  and  working  out  the  original  discovery  or  invention  by 
the  exercise  of  the  insight,  good  judgment,  and  expertness  which  he  is  ex- 
pected to  possess  and  apply.  And  this  improvement  may  go  on  so  long  as 
any  improvement  in  bringing  the  means  already  supplied  to  greater  per- 
fection can  be  made,  and  yet  it  continues  to  be  only  an  embodiment  of  the 
primal  idea.  —  Bullock  v.  General,  149  Fed.  409;  79  C.  C.  A.  229. 

The  time  was  so  short  after  the  introduction  of  the  direct  current  dental 
motor  that  it  would  seem  the  alternating  current  motor  of  the  patent  was 
produced  as  a  development  due  to  the  gradual  extension  of  the  use  of  com- 
mercial alternating  currents.  The  record  does  not  make  out  a  case  "  where 
the  need  had  long  been  apparent  and  various  persons  had  vainly  sought  to 
accomplish  the  desired  result."  —  Pieper  v.  Electro-Dental,  160  Fed.  930; 
88  C.  C.  A.  112. 

Electric  v.  Jamaica,  61  Fed.  655. 

The  mere  bringing  together  of  old  elements  which  in  their  new  places  do 
no  more  than  their  original  work  and  do  not  co-operate  with  other  elements  in 
doing  something  new  and  useful  is  not  invention.  —  National  v.  Aiken,  163 
Fed.  254;  C.  C.  A. 

Thatcher  v.  Burtis,  121  U.  S.  286;  Richards  v.  Chase,  158  U.  S.  299;  Campbell 
v.  Duplex,  101  Fed.  282;  Goodyear  v.  Rubber,  116  Fed.  363;  Johnson  v.  Foos, 
141  Fed.  73. 

§  655.     Mechanical  Skill  —  Change  of  Form. 

Merely  to  change  the  form  of  a  machine  is  the  work  of  a  constructor,  not 
an  inventor.  Such  a  change  cannot  be  deemed  an  invention.  —  Winans  v. 
Denmead,  15  How.  330;  14  L.  Ed.  717. 


598  THE   FIXED   LAW   OF   PATENTS  §  655 

Change  of  form,  though  better,  is  not  invention.  —  Belding  v.  Challenge, 
152  U.  S.  100;  38  L.  Ed.  370;  14  S.  Ct.  492. 
Roberts  v.  Ryer,  91  U.  S.  150. 

A  mere  difference  or  change  in  the  mechanical  construction  in  the  size 
or  form  of  the  thing  used,  in  order  to  obviate  known  defects  existing  in  the 
previous  devices,  although  those  changes  are  highly  advantageous,  and  far 
better  and  more  efficacious  and  convenient,  does  not  make  the  improved 
device  patentable.  In  order  to  be  patentable,  it  must  embody  some  new  idea 
or  principle  not  before  known.  It  must,  as  before  stated,  be  a  discovery, 
as  distinguished  from  mere  mechanical  skill  or  knowledge.  Atlantic  v. 
Brady,  107  U.  S.  192;  HoUister  v.  Benedict,  113  U.  S.  59;  Thompson  v. 
Boisselier,  114  U.  S.  2;  Busell  v.  Stevens,  137  U.  S.  423;  Andrews  v.  Thum, 
67  Fed.  911.  Nor  does  the  fact  that  better  material  is  used  in  constructing 
the  device,  such  material  being  well  known  as  adapted  to  the  purpose  for 
which  it  is  used,  make  the  device  patentable. 

In  Hotchkiss  v.  Greenwood,  11  How.  248,  where  it  was  held  that  the  sub- 
stitution of  porcelain  for  metal  in  making  door  knobs  of  a  particular  con- 
struction was  not  patentable,  the  court  said:  "  No  one  will  pretend  that  a 
machine  made,  in  whole  or  in  part,  of  materials  better  adapted  to  the  pur- 
pose for  which  it  is  used  than  the  materials  of  which  the  old  one  is  con- 
structed, and  for  that  reason  better  and  cheaper,  can  be  distinguished  from 
the  old  one,  or,  in  the  sense  of  the  patent  law,  can  entitle  the  manufacturer 
to  a  patent.  It  may  afford  evidence  of  judgment  and  skill  in  the  selection 
and  adaptation  of  the  materials  in  the  manufacture  of  the  instrument  for 
the  purposes  intended,  but  nothing  more."  —  Klein  v.  Seattle,  77  Fed.  200; 
23  C.  C.  A.  114. 

See  also  Hicks  v.  Kelsey,  18  Wall.  670;  Dunbar  v.  Myers,  94  U.  S.  187; 
Florsheim  v.  Schilling,  137  U.  S.  64. 

A  mere  change  of  curvature,  or  of  form,  or  to  a  veneer  from  a  single  piece 
does  not  involve  invention.  —  Brunswick  v.  Phelan,  79  Fed.  85 ;  24  C.  C.  A.  451. 
Hicks  v.  Kelsey,  18  Wall.  670. 

Each  element,  taken  by  itself,  has  its  own  effect,  and  it  is  also  difficult  to 
understand  how  it  was  that  the  practised  eye  of  skilled  mechanics  did  not 
at  once  see  and  apply  the  necessary  remedy  to  the  troublesome  evil  which 
the  invention  removes.  The  fact  however,  that  such  an  evil  long  existed, 
and  that  no  mechanic  perceived  or  applied  the  remedy,  is  the  most  conclusive 
evidence  that  something  more  than  his  eyes  and  skill  were  required  to  dis- 
cover and  apply  the  requisite  device.  If  nought  but  the  skill  of  the  mechanic 
was  required  to  make  this  improvement  it  is  passing  strange  that  no  mechanic 
ever  made  it  until  after  Martin  discovered  and  described  it.  The  best  evi- 
dence that  the  application  of  the  internal-spur-wheel  of  the  new  use  of  pro- 
pelling the  machinery  of  a  windmill  would  not  occur  to  a  person  of  ordinary 
mechanical  skill,  is  that  it  did  not  occur  to  any  one  of  them  in  all  the  years 
in  which  windmills  had  been  in  use  before  Martin  discovered  and  applied  it. 
—  Mast  v.  Dempster,  82  Fed.  327;  27  C.  C.  A.  191. 

Electric  v.  LaRue,  139  U.  S.  601;  Crane  v.  Price,  Web.  Pat.  C.  409;  Potts  v. 
Creager,  155  U.  S.  597;  Thomson  v.  Bank,  53  Fed.  250;  Loom  Co.  v.  Higgins, 
105  U.  S.  580;  Consolidated  v.  Crosby,  113  U.  S.  157;  Magowan  v.  Packing  Co. 
141  U.  S.  332;   Barbed  Wire  Pat.  143  U.  S.  275. 

It  is  the  mere  adaptation  by  the  art  of  skill  already  possessed  to  the  me- 
chanical and  technical  solutions  of  a  new  draft  on  its  resources.  When  exist- 
ing skill  meets  such  demand,  there  is  no  exercise  of  the  higher  faculty  of  origi- 
nal, creative  invention.  —  Way  v.  McClarin,  96  Fed.  416;  37  C.  C.  A.  516. 

Hollister  v.  Mfg.  Co.  113  U.  S.  59. 


§  656  INVENTION  599 

§  656.     Mechanical    Skill  —  Definition      and    Distinction    from 
Invention. 

An  instrument  of  manufacture  which  is  the  result  of  mechanical  skill 
merely  is  not  patentable.  Mechanical  skill  is  one  thing;  invention  is  a  dif- 
ferent thing.  Perfection  of  workmanship,  however  much  it  may  increase 
the  convenience,  extend  the  use,  or  diminish  expense,  is  not  patentable. 
The  distinction  between  mechanical  skill,  with  its  conveniences  and  advan- 
tages and  inventive  genius,  is  recognized  in  all  the  cases.  —  Reckendorfer  v . 
Faber,  92  U.  S.  347;  23  L.  Ed.  719. 

Rubber  v.  Howard,  20  Wall.  498;   Curtis,  sec.  726. 

The  improvement  consists  in  simply  taking  a  material  well  known  and 
long  used,  and  constructing  a  pavement  in  a  method  well  known  and  long 
used.  It  is  plain  that  the  improvement  described  in  the  patent  was  within 
the  mental  reach  of  any  one  skilled  in  the  art  to  which  the  patent  relates, 
and  did  not  require  invention  to  devise  it,  but  only  the  use  of  ordinary  judg- 
ment and  mechanical  skill.  It  involves  merely  the  skill  of  a  workman  and 
not  the  genius  of  an  inventor.  —  Phillips  v.  Detroit,  111  U.  S.  604;  28  L.  Ed. 
532;  4  S.  Ct.  580. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Hailes  v.  Van  Wormer,  20  Wall.  353; 
Smith  v.  Nichols,  21  Wall.  112;  Reckendorfer  v.  Faber,  92  U.  S.  347;  Atlantic 
v.  Brady,  107  U.  S.  93;  Howe  v.  Abbott,  2  Story,  190;  Key  v.  Marshall,  8  Clark 
&  F.  245;  Stimpson  v.  Woodman,  10  Wall.  117;  Pencil  v.  Howard,  20  Wall.  498; 
Slawson  v.  R.  R.  107  U.  S.  649;   King  v.  Gallun,  109  U.  S.  99. 

Criteria  by  which  one  may  be  distinguished  from  the  other  in  McClain  v. 
Ortmayer,  141  U.  S.  419;  35  L.  Ed.  800;  12  S.  Ct.  76. 

It  is  not  easy  to  draw  a  line  that  separates  the  ordinary  skill  of  a  mechanic 
versed  in  his  art  from  the  exercise  of  patentable  invention,  and  the  difficulty 
is  especially  great  in  the  mechanic  arts,  where  the  successive  steps  in  improve- 
ments are  numerous,  and  where  the  changes  and  modifications  are  introduced 
by  practical  mechanics.  —  Krementz  v.  Cottle,  148  U.  S.  556;  37  L.  Ed.  558; 
13  S.  Ct.  719. 

The  task  of  distinguishing  between  invention  and  the  power  of  adaptation 
possessed  by  a  skillful  mechanic  is  not  always  an  easy  one,  nor  have  the 
courts  apparently  succeeded  in  formulating  a  proposition  to  cover  all  cases. 
While  the  statutes  require  that  a  patent,  to  be  valid,  must  disclose  invention 
and  novelty,  yet  the  degree  or  amount  of  invention  required  is  not  pre- 
scribed, and,  from  the  nature  of  the  case,  cannot  be.  —  Hillborn  v.  Hale,  69 
Fed.  958;  16  C.  C.  A.  569. 

It  is  true,  as  contended  by  counsel  for  the  appellants,  that  no  general  defini- 
tion has  been  found  which  clearly  marks  the  distinction  between  invention  and 
mechanical  skill,  and  it  is  always  difficult,  and  ofttimes  impossible,  to  de- 
termine with  certainty  that  the  conception  of  a  device  was  "  spontaneous, 
and  by  a  necessity  of  human  reasoning,"  and  that  any  doubt  in  that  regard 
should  then  be  resolved  in  favor  of  invention,  unless  it  is  clearly  placed  within 
the  domain  of  mere  mechanical  construction  bv  some  of  the  well  settled 
rules  of  the  patent  law.  —  Baldwin  v.  Kresl,  76  "Fed.  823;  22  C.  C.  A.  593. 

Long  practice  and  observation  naturally  lead  those  familiar  with  the  arts 
to  the  perception  of  new  adaptations.  Mechanical  education  and  skill, 
fostered  and  promoted  by  the  public,  are  rapidly  advancing  in  every  direc- 
tion, and  there  is  a  constant  and  universal  endeavor  in  handicraft  to  utilize 
that  which  is  known,  and  press  it  into  service  in  practical  arts.    But  the  steps 


600  THE    FIXED    LAW    OF    PATENTS  §  656 

of  this  normal  progress  and  improvement  are  not  invention,  nor  the  subject 
of  monopoly  to  one  who,  in  the  exercise  of  the  "  skill  of  his  calling,"  has  put 
an  old  thing  to  a  new  use.  —  Capital  v.  Kinnear,  87  Fed.  333;  31  C.  C.  A.  3. 

The  line  between  mechanical  ingenuity  and  invention  is  sometimes  very 
hard  to  draw.  It  is  a  question  of  fact,  and  one  upon  which  the  opinions  of 
men  differ.  In  the  present  case,  this  court  differs  from  the  court  below,  and 
holds  invention  to  be  present  in  the  Morrison  device.  —  Kisinger-Ison  v. 
Bradford,  97  Fed.  502;  38  C.  C.  A.  300. 

No  one  has  yet  been  able  to  formulate  a  test  whereby  a  line  of  demarkation 
between  the  products  of  the  inventor's  intuition  and  the  results  of  the  skill 
of  the  mechanic  may  be  surely  drawn  in  all  cases  as  they  arise.  That  ques- 
tion is  and  always  must  be  left  for  determination  by  a  careful  exercise  of  the 
judgment,  enlightened  by  a  knowledge  of  the  state  of  the  art  and  of  the  ad- 
vance in  it  which  the  device  in  question  makes,  and  guided  by  the  established 
rules  and  principles  of  the  law.  The  two  classes  of  cases  led  by  Atlantic 
Works  v.  Brady,  107  U.  S.  192,  and  Loom  Co.  v.  Higgins,  105  U.  S.  580,  have 
been  again  cited  and  reviewed  for  our  guidance.  —  Kinloch  v.  Western,  113 
Fed.  659;  51  C.  C.  A.  369. 

There  will  always  be  a  point  where  ordinary  mechanical  skill  and  invention 
are  so  closely  associated  as  to  make  it  difficult  to  say  upon  which  side  of  the 
fine  the  particular  matter  lies.  Where  this  is  the  case  the  doubt  should  be 
settled  in  favor  of  the  patent.  But  by  analogy  to  a  number  of  well-known 
precedents  we  have  no  trouble  in  holding  that  the  present  case  (the  use  of 
zinc  to  hold  a  frog-plate  in  place,  zinc  having  been  used  analogously)  is  not 
one  of  invention.  —  Johnson  v.  Toledo,  119  Fed.  885;  56  C.  C.  A.  415. 

Mfg.  Co.  v.  Cary,  147  U.  S.  623;  Penn.  v.  Locomotive,  110  U.  S.  490;  Mast  v. 
Stover,  177  U.  S.  485;  Stearns  v.  Russell,  85  Fed.  218;  Ansonia  v.  Electrical, 
144  U.  S.  11;  Schreiber  v.  Grimm,  72  Fed.  671;  Aron  v.  Railroad,  132  U.  S.  84; 
Brown  v.  Piper,  91  U.  S.  37;  Roberts  v.  Ryer,  91  U.  S.  150;  Griswold  v.  Wagner, 
68  Fed.  494. 

It  is  not  necessary  to  the  patentable  novelty  of  a  device,  which  consists 
in  employing  a  new  material  for  an  old  one  in  constructing  one  of  its  parts, 
that  the  substitution  should  involve  the  discovery  or  utilization  of  an  un- 
known or  unexpected  property  of  the  material.  This  is  one  of  the  tests  of 
patentable  novelty,  but  it  is  not  the  only  one.  Whether  the  feature  of  nov- 
elty is  the  employment  of  a  new  material,  or  a  change  of  adaptation  in  other 
respects,  the  inquiry  always  is  whether  what  was  done  involved  the  exercise 
of  inventive  faculty  as  distinguished  from  the  ordinary  skill  of  the  calling. 
When  the  substitution  has  accomplished  a  result  which  those  skilled  in  the 
art  had  long  and  vainly  sought  to  effect,  the  evidence  that  it  involved  some- 
thing beyond  the  skill  of  the  calling  is  so  persuasive  that  it  generally  re- 
solves the  inquiry  in  favor  of  patentable  novelty.  —  Frost  v.  Cohn,  119  Fed. 
505;  56  C.  C.  A.  185. 

The  law  does  not  allow  mere  mechanical  skill  to  usurp  the  place  of  in- 
vention, which  involves  higher  thought,  and  brings  different  faculties  into 
activity.  It  will  not  allow  one  to  take  from  the  public  that  which  the  public 
already  has,  or  grant  exclusive  privilege  which  the  patent  confers  without 
consideration.  It  therefore  is  the  duty  of  the  courts,  which,  in  the  last 
analysis,  are  the  guardians  of  the  public  interest,  to  scrutinize  with  care 
every  attempt  to  establish  the  monopoly  which  the  patent  gives,  to  examine 
the  state  of  the  art,  and  to  see  if  the  idea  expressed  in  the  invention  has  ever 
been  communicated  to  the  public,  and  was  in  such  a  stage  of  development 


§657  INVENTION  601 

in  a  prior  patent  that  a  skilled  mechanic  working  upon  the  plan  or  principle 
therein  suggested,  could  by  mechanical  means  attain  the  result  which  the 
patentee  attains.  To  constitute  anticipation  the  previous  patent  should  not 
only  suggest  the  idea,  but  indicate  the  means  and  essential  elements  so  dis- 
tinctly that  a  mechanic  versed  in  the  art,  in  the  light  of  the  patent  and  of 
the  state  of  the  art  at  the  time  the  same  was  granted,  and  not  in  the  light 
of  subsequent  discoveries,  could  make,  construct  and  practise  the  invention 
without  the  exercise  of  his  own  inventive  skill.  —  Imperial  v.  Crown,  139 
Fed.  312;  71  C.  C.  A.  442. 

For  a  long  and  labored  discussion  of  the  questions  of  mechanical  skill, 
invention,  utility  as  evidencing  invention,  and  prior  unsuccessful  attempts 
to  attain  an  end  as  evidence  of  invention,  see  Imperial  v.  Crown,  139  Fed. 
312;  71  C.  C.  A.  442. 

§  657.     Mechanical  Skill  —  Degree  of  Knowledge  and  Skill. 

The  improvement  consists  in  simply  taking  a  material  well  known  and 
long  used,  and  constructing  a  pavement  in  a  method  well  known  and  long 
used.  It  is  plain  that  the  improvement  described  in  the  patent  was  within 
the  mental  reach  of  any  one  skilled  in  the  art  to  which  the  patent  relates, 
and  did  not  require  invention  to  devise  it,  but  only  the  use  of  ordinary  judg- 
ment and  mechanical  skill.  It  involves  merely  the  skill  of  the  workman  and 
not  the  genius  of  the  inventor.  —  Phillips  v.  Detroit,  111  U.  S.  604;  28  L.  Ed. 
532;  4  S.  Ct.  580. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Hailes  v.  Van  Wormer,  20  Wall.  353; 
Smith  v.  Nichols,  21  Wall.  112;  Reckendorfer  v.  Faber,  92  U.  S.  347;  Atlantic 
v.  Brady,  107  U.  S.  193;  Howe  v.  Abbott,  2  Story,  190;  Key  v.  Marshall,  8  Clark 
&  F.  245;  Stimpson  v.  Woodman,  10  Wall.  117;  Pencil  v.  Howard,  20  Wall 
498;   Slawson  v.  R.  R.  107  U.  S.  649;   King  v.  Gallun,  109  U.  S.  99. 

As  soon  as  the  mischief  became  apparent,  and  the  remedy  was  seriously 
and  systematically  studied  by  those  competent  to  deal  with  the  subject, 
the  present  regulation  was  promptly  suggested  and  adopted,  just  as  a 
skilled  mechanic,  witnessing  the  performance  of  a  machine  inadequate 
by  reason  of  some  defect,  to  accomplish  the  object  for  which  it  had  been 
designed;  by  the  application  of  his  common  knowledge  and  experience, 
perceives  the  reason  of  the  failure  and  supplies  what  is  obviously  wanting. 
It  is  but  the  display  of  the  expected  skill  of  the  calling  and  involves  only  the 
exercise  of  the  ordinary  faculties  of  reasoning  upon  the  materials  supplied 
by  a  special  knowledge,  and  the  faculty  of  manipulation  which  results  from 
the  habitual  and  intelligent  practice ;  and  is  in  no  sense  the  creative  work  of 
the  inventive  faculty  which  it  is  the  purpose  of  the  Constitution  and  the 
patent  laws  to  encourage  and  reward.  —  Hollister  v.  Benedict,  113  U.  S.  59; 
28  L.  Ed.  901 ;  5  S.  Ct.  717. 

The  suggestion  of  such  a  change  as  would  occur  to  the  rudest  and  most 
unskilled  mechanic  could  not  be  called  invention,  and  ought  not  to  be  dig- 
nified by  letters  patent.  —  Yale  v.  Greenleaf,  117  U.  S.  554;  29  L.  Ed.  952; 
6  S.  Ct.  846. 

Atlantic  v.  Brady,  107  U.  S.  192;  Slawson  v.  Grand,  107  U.  S.  649;  Phillips 
v.  Detroit,  111  U.  S.  604. 

Given  a  disk-shaped  file  with  a  continuous  cutting  surface  that  clogs  and 
chatters  in  action,  and  the  plain  statements  of  the  patents  to  Keebles  and 
Prescott  which  declare  that  the  remedy  for  that  evil  is  a  broken  cutting  sur- 
face, and  the  problem  Wright  claims  to  have  solved  becomes  so  simple  that 
one  who  is  not  a  mechanic  could  hardly  fail  to  perceive  that  the  evil  would 


602  THE    FIXED   LAW   OF   PATENTS  §§658-659 

be  remedied  by  cutting  off  the  sides  of  the  disk.    This  was  all  that  Wright 
did.  —  Samson  v.  Donaldson,  69  Fed.  621 ;  16  C.  C.  A.  342. 

Stirrat  v.  Mfg.  Co.  61  Fed.  980;  Atlantic  v.  Brady,  107  U.  S.  192;  Vinton  v. 
Hamilton,  104  U.  S.  485;  Slawson  v.  Railroad,  107  U.  S.  649;  King  v.  Gallun, 
109  U.  S.  99;  Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  Estey  v.  Burdett, 
109  U.  S.  633;  Busey  v.  Mfg.  Co.  110  U.  S.  131;  Phillips  v.  Detroit,  111  U.  S. 
604;   Morris  v.  McMillin,  112  U.  S.  244. 

Although  his  pertinacity,  diligence,  money  and  skill  has  made  his  machine 
a  success,  his  improvements  are  not  thereby  taken  out  of  the  domain  of 
mechanical  skill.  —  Birmingham  v.  Gates,  78  Fed.  350;  24  C.  C.  A.  132. 

Atlantic  v.  Brady,  107  U.  S.  199. 

The  need,  such  as  it  was,  was  not  obscure ;  and  granting  that  the  remedy 
was  not  obvious  to  the  ordinary  mechanic,  possessed  of  only  the  common 
skill  and  learning  of  his  profession,  yet,  to  one  who  was  conversant,  as  Brown 
is  necessarily  presumed  to  have  been,  with  the  devices  which  scientific  learn- 
ing had  already  given  to  the  world  and  had  employed  in  this  very  art,  it 
was  not  far  to  seek,  and,  indeed,  was  manifest.  —  Brown  v.  King,  107  Fed. 
498;  46  C.  C.  A.  432. 

Note:  The  soundness  of  this  rule  is  seriously  questioned.  It  is  doubtful 
if  it  may  be  left  to  the  Chancellor,  to  determine  by  his  own  judgment,  the  par- 
ticular status  of  the  particular  engineer  to  whom  the  test  of  mechanical 
skill  is  to  be  applied.  If  this  already  shadowy  rule  may  be  made  further  ob- 
scure by  giving  the  Court  the  right  to  determine  the  degree  of  intelligence 
and  education  necessarily  possessed  by  the  inventor,  the  rule  would  seem 
to  be  so  vague  as  to  have  lost  all  of  its  usefulness. 

This  is  apparent  (that  it  was  mere  mechanical  skill)  from  the  fact  that 
Brown  and  Gilmour  each  left  this  to  the  judgment  of  the  workman  or  drafts- 
man whom  he  employed.  In  view  of  the  Little  patent  it  did  not  involve 
invention  to  supply  the  means.  They  were  at  hand  in  the  prior  art.  —  Lin- 
coln v.  McWhirter,  142  Fed.  967;  74  C.  C.  A.  229. 

Mast  v.  Stover,  177  U.  S.  493;  Aron  v.  Manhattan,  132  U.  S.  84. 

§  658.     Mechanical  Skill  —  Dividing  or  Uniting  Parts. 

The  prior  art  shows  and  the  patent  admits  that  such  a  thing  in  two  pieces 
was  old.  That  it  does  not  involve  invention  merely  to  make  such  a  lining 
in  one  piece  is  well  settled.  Howard  v.  Detroit,  150  U.  S.  164;  Standard  v. 
Caster,  113  Fed.  162.  Nor  would  the  mere  fact  that  the  one-piece  device  was 
cheaper  or  more  durable  constitute  invention  when  such  results  were  merely 
such  ordinary  consequences  of  dispensing  with  joints  as  would  naturally 
be  anticipated  by  the  workman.  Mfg.  Co.  v.  Holzer,  67  Fed.  907.  —  General 
v.  Yost,  139  Fed.  568;  71  C.  C.  A.  552. 

The  hopper  formed  of  two  annular  sections  does  not  alter  the  operation 
of  the  crusher.  Was  this  more  than  the  employment  of  obvious  mechanical 
expedients  which  would  naturally  occur  to  a  skilled  mechanic  or  engineer 
in  the  intelligent  practice  of  his  calling?  We  think  not.  To  divide  into  parts 
what  cannot  be  conveniently  handled  as  a  whole  is  elementary,  if  not  in- 
stinctive, and  to  make  the  division  of  circular  objects  along  circular  lines 
has  long  been  common.  —  Gates  v.  Overland,  .147  Fed.  700;  78  C.  C.  A.  88. 

Atlantic  v.  Brady,  107  U.  S.  192;   Hendy  v.  Miners',  127  U.  S.  370. 

§  659.     Mechanical  Skill  —  Improvement. 

The  plan  covered  by  the  claims  is  not  "  the  creative  work  of  that  inventive 
faculty  which  it  was  the  purpose  of  the  constitution  and  the  patent   laws 


§§  660-661  INVENTION  603 

to  encourage  and  reward."  To  sustain  these  claims  would  be  to  sanction 
a  monopoly  in  that  which  belongs  to  the  public.  —  Westinghouse  v.  Edison, 
63  Fed.  588;  11  CCA.  342. 

Hollister  v.  Mfg.  Co.  113  U.  S.  59;   Atlantic  v.  Brady,  107  U.  S.  192. 

A  mere  improvement  in  operation  by  the  employment  of  well  known  ele- 
ments and  combinations  in  a  well  known  art  with  no  change  of  result  is  not 
of  itself  necessarily  invention.  —  Excelsior  v.  Foote,  79  Fed.  442 ;  24  C  C  A. 
673. 

Indeed,  while  Scribner,  in  the  earlier  patent,  may  not  have  contributed 
to  electrical  knowledge  the  exact  concept  embodied  in  the  inner  combination 
of  the  patent  suit,  but  did  contribute  there  to  the  thought  that  led  up  to  his 
later  thought.  —  Western  v.  Galesburg,  144  Fed.  684;  75  C  C  A.  500. 

§  66o.     Mechanical  Skill  —  Increased  Efficiency. 

It  is  no  more  than  mechanical  skill  to  perform  with  increased  speed  a 
series  of  surgical  operations  old  in  themselves  and  in  the  order  in  which  they 
were  before  performed.  —  International  v.  Gaylord,  140  U.  S.  55;  35  L.  Ed. 
347;  11  S.  Ct.  716. 

A  more  thorough  doing  of  that  which  has  already  been  done  is  not  inven- 
tion. —  Ansonia  v.  Electrical,  144  U.  S.  11;  36  L.  Ed.  327;  12  S.  Ct.  601. 

§  66 1.     Mechanical  Skill  —  Old  Device,  Analogous  Use. 

The  mere  adaptation  of  an  old  device  to  an  analogous  use  to  produce  a 
known  result  with  no  other  change  than  the  substitution  of  a  figured  roller 
for  a  smooth  one  is  not  invention.  —  Stimpson  v.  Woodman,  77  U.  S.  117; 
19  L.  Ed.  866. 

The  adaptation  of  an  old  device  to  an  analogous  use  by  a  well  known 
means  of  application  does  not  involve  invention.  —  Bussey  v.  Excelsior, 
110  U.  S.  131 ;  28  L.  Ed.  95 ;  4  S.  Ct.  38. 

The  employment  of  a  device  which  would  naturally  suggest  itself  to  any 
mechanic,  used  within  the  range  of  common  knowledge  and  experience,  and 
used  here  to  perform  an  office  exactly  analogous  to  that  in  which  it  has  been 
frequently  formerly  used  is  not  invention.  —  Day  v.  Fair  Haven,  132  U.  S. 
98;  33  L.  Ed.  265;  10  S.  Ct.  11. 

Substituting  a  routing  machine  to  perform  that  which  was  formerly  done 
by  hand  to  accomplish  the  same  end  is  not  invention.  —  Corbin  v.  Eagle, 
150  U.  S.  38;  37  L.  Ed.  989;  14  S.  Ct.  28. 

The  devising  of  means  by  which  the  temperature  of  the  flowing  water  should 
be  varied  at  different  parts  of  the  column,  involved  nothing  but  mechanical 
skill,  and  was  plainly  disclosed  by  Richter's  patent.  The  question  where  the 
cooler  water  ought  to  be  introduced  and  what  the  variations  in  temperature 
ought  to  be,  were  questions  for  experiment,  and  are  not  answered  by  any- 
thing in  the  patent.  —  Solvay  v.  Michigan,  90  Fed.  818;  33  C  C.  A.  285. 

Stearns  v.  Russell,  83  Fed.  218;    Steiner  v.  Adrian,  59  Fed.  132. 

That  the  use  of  well-known  mechanical  means  or  well-known  mechanical 
methods  to  perform  known  functions,  where  the  result  is  merely  more  effec- 
tive, is  only  mechanical  skill,  see  U.  S.  Peg- Wood  v.  Sturtevant,  125  Fed. 
378;  60  C.  C  A.  244, 


604  THE   FIXED   LAW   OF   PATENTS  §§  662-663 

Bates  v.  Keith,  82  Fed.  100;  affd.  84  Fed.  1014;  Nutter  v.  Brown,  98  Fed.  892; 
Consolidated  v.  Holzer,  67  Fed.  907. 

Its  location  in  its  new  environment  evinced  merely  good  judgment,  and 
the  slight  changes  necessary  for  the  suitable  adaptation  of  the  associated 
parts  evinced  only  ordinary  mechanical  skill.  In  short,  the  patentee  invented 
no  new  device ;  he  used  it  for  no  new  purpose ;  he  applied  it  to  an  old  com- 
bination. All  he  did  was  to  apply  it  to  an  old  purpose  in  a  different,  but  old, 
combination.  This  does  not  rise  to  the  dignity  of  invention.  —  Bradley  v. 
Eccles,  143  Fed.  521 ;  74  C.  C.  A.  478. 

Mast  v.  Stover,  177  U.  S.  493. 

§  662.     Mechanical  Skill  —  Old  Device,  New  Use. 

That  mere  combination  of  old  devices  is  mechanical  skill,  see  Clark  v. 
Ferguson,  119  U.  S.  335;  30  L.  Ed.  406;  7  S.  Ct.  387. 

Vinton  v.  Hamilton,  104  U.  S.  485;  Hall  v.  Macneale,  107  U.  S.  90;  Atlantic  v. 
Brady,  107  U.  S.  192;  Slawson  v.  Grand,  107  U.  S.  649;  King  v.  Gallun,  109 
U.  S.  99;  Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  Esty  v.  Burdett,  109  U. 
S.  633;  Bussey  v.  Excelsior,  110  U.  S.  131;  Penna.  v.  Locomotive,  110  U.  S.  490; 
Phillips  v.  Detroit,  111  U.  S.  604;  Morris  v.  McMillin,  112  U.  S.  244;  Hollister 
v.  Benedict,  113  U.  S.  59;  Thompson  v.  Boissilier,  114  U.  S.  1;  Stephenson 
v.  Brooklyn,  114  U.  S.  149;  Yale  v.  Greenleaf,  117  U.  S.  554;  Gardner  v.  Herz, 
118  U.  S.  180. 

Adaptation  of  an  old  device  to  a  new  use  is  presumably  no  more  than 
mechanical  skill.  —  Knapp  v.  Morss,  150  U.  S.  221 ;  37  L.  Ed.  1059;  14  S.  Ct. 
81. 

Aron  v.  Manhattan,  132  U.  S.  85. 

The  mechanical  adaptation  of  a  machine  capable  of  large  general  use, 
such  as  the  Blanchard  former,  to  a  specific  use,  such  as  a  sole  rounder  in- 
volves only  mechanical  skill.  —  Gibbon  v.  Loewer,  79  Fed.  325;  24  C.  C.  A. 
612. 

Howe  v.  National,  134  U.  S.  383. 

As  the  inventor  of  a  machine  is  entitled  to  all  the  uses  to  which  it  may  be 
put  it  is  not  invention  to  apply  that  machine  to  a  specific  use  after  the  patent 
has  expired.  —  Gibbon  v.  Loewer,  79  Fed.  325;  24  C.  C.  A.  612. 

Ansonia  v.  Electrical,  144  U.  S.  11. 

§  663.     Mechanical  Skill  —  Old  Elements,  Old  Result. 

Combination  of  old  elements  which  perform  no  new  function  and  accom- 
plish no  new  result  does  not  involve  patentable  novelty.  —  Knapp  v.  Morss, 
150  U.  S.  221 ;  37  L.  Ed.  1059;  14  S.  Ct.  81. 

If  he  has  greatly  increased  the  effectiveness  of  the  mechanism  he  claims, 
his  patent  may  be  sustained,  although  his  elements  are  old  and  no  original 
result  is  accomplished,  under  the  principle  of  Loom  Co.  v.  Higgins,  105  U.  S. 
580.  —  Muller  v.  Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. 

Barbed  Wire  Patent,  143  U.  S.  275;   Topliff  v.  Topliff,  145  U.  S.  156. 

It  is  a  settled  rule  of  law  that  the  mere  combination  of  several  parts, 
chosen  from  old  machines  in  the  same  art,  to  perform  in  a  new  machine  the 
same  functions  which  they  performed  in  the  old  machines,  where  the  adapta- 
tions are  such  as  require  only  the  skill  of  a  mechanic  trained  in  the  art,  is 
not  patentable  as  an  invention.  —  Smith  v.  Ridgly,  103  Fed.  875;  43 
C.  C.  A.  365. 


§§  664-666         •  INVENTION  605 

§  664.     Mechanical  Skill  —  Portability. 

Merely  putting  rollers  under  an  article,  so  as  to  make  it  movable,  when, 
without  rollers,  it  would  not  be  movable,  does  not  involve  the  inventive 
faculty.  —  Hendy  v.  Golden,  127  U.  S.  370;  32  L.  Ed.  207;  8  S.  Ct.  1275. 

Atlantic  v.  Brady,  107  U.  S.  192;  Thompson  v.  Boissilier,  114  U.  S.  1;  Yale  t>. 
Greenleaf,  117  U.  S.  554;    Pomace  v.  Ferguson,  119  U.  S.  335. 

The  portability  of  a  device  is  not  patentable.  —  Black  Diamond  v.  Ex- 
celsior, 156  U.  S.  611 ;  39  L.  Ed.  553;  15  S.  Ct.  482. 
Hendy  v.  Golden,  127  U.  S.  370. 

§  665.     Mechanical  Skill  —  Strengthening  or  Increasing. 

What  is  sought  in  all  these  patents  is  strength  and  lightness,  together 
with  cheapness  and  durability,  but  they  are  simply  modes  of  construction. 
And  that  described  in  this  patent  embraces  nothing  that  is  not  old  and  really 
nothing  that  is  patentable,  that  is,  which  involves  invention  rather  than 
mechanical  skill.  —  Pattee  v.  Kingman,  129  U.  S.  294;  32  L.  Ed.  700;  9 
S.  Ct.  389. 

It  would  certainly  seem  that  the  proportioning  of  parts  was  the  work  of 
a  mechanic,  and  not  of  an  inventor.  —  American  v.  Driggs-Seabury,  109 
Fed.  83;  48  C.  C.  A.  241. 

That  strengthening  parts  by  ordinary  mechanical  devices  and  mechanical 
skill  does  not  constitute  invention,  see  American  v.  Wyeth,  139  Fed.  389; 
71  C.  C.  A.  485. 

Smith  v.  Nichols,  21  Wall.  112;  Galvin  v.  Grand  Rapids,  115  Fed.  511;  Eames 
v.  Worcester,  123  Fed.  67. 

It  was  a  mere  question  of  extent  or  degree,  of  an  increase  of  the  size  of 
an  existing  device  to  more  completely  fulfil  its  purpose.  —  Streit  v.  Kaiper, 
143  Fed.  981;  75  C.  C.  A.  167. 

Smith  v.  Nichols,  21  Wall.  112;  Burt  v.  Evory,  133  U.  S.  349;  Grant  v.  Walter, 
148  U.  S.  547;  Market  v.  Rowley,  155  U.  S.  621;  Fox  v.  Perkins,  52  Fed.  205; 
Galvin  v.  Grand  Rapids,  115  Fed.  511;   Eames  v.  Worcester,  123  Fed.  67. 

§  666.     Mechanical  Skill  —  Miscellaneous  Decisions. 

The  mere  addition  of  a  cinder  notch  to  a  blast  furnace,  to  perform  the 
same  function  it  had  performed  in  a  cupola  furnace  did  not  involve  inven- 
tion. —  Vinton  v.  Hamilton,  104  U.  S.  485;  26  L.  Ed.  807. 

The  suggestion  of  such  a  change  as  would  occur  to  the  rudest  and  most 
unskilled  mechanic  could  not  be  called  invention  and  ought  not  to  be  dig- 
nified by  letters  patent.  —  Yale  v.  Greenleaf,  117  U.  S.  554;  29  L.  Ed.  952; 
6  S.  Ct.  846. 

Atlantic  v.  Brady,  107  U.  S.  192;  Slawson  v.  Grand,  107  U.  S.  649;  Phillips 
v.  Detroit,  111  U.  S.  604. 

That  mechanical  skill  is  not  invention,  see  Ansonia  v.  Electrical,  144  U.  S. 
11;  36  L.  Ed.  327;  12S.Ct.601. 

Simply  to  do  by  a  steam  attachment,  without  novelty  of  application  or 
operation,  what  had  previously  been  done  by  hand  does  not  disclose  inven- 
tion. —  Stillwell-Bierce  v.  Eufaula,  117  Fed.  410;  54  C.  C.  A.  584. 

That  the  improvement  being  a  perfectly  self-evident  step  which  would 
occur  to  any  mechanic,  and  being  the  natural  and  only  change  that  could 


606  THE    FIXED    LAW    OF    PATENTS  §  667 

be  made  to  meet  the  demand  is  mere  mechanical  skill,  see  American  v. 
Morris,  142  Fed.  166;  73  C.  C.  A.  384. 

§  667.     Novelty  —  Definitions  and  Distinctions. 

It  is  an  elementary  proposition  in  patent  law,  that,  to  entitle  a  plaintiff 
to  recover  for  the  violation  of  a  patent,  he  must  be  the  original  inventor, 
not  only  in  relation  to  the  U.  S.  but  to  other  parts  of  the  world.  Even  if  the 
plaintiff  did  not  know  that  the  discovery  had  been  made  before,  still  he  cannot 
recover  if  it  had  been  in  use  or  described  in  public  prints,  and  if  he  be  not  in 
truth  the  original  inventor.  —  Sewall  v.  Jones,  91  U.  S.  171;  23  L.  Ed.  275. 

Dawson  v.  Follen,  2  Wash.  C.  C.  311;  Bedford  v.  Hunt,  1  Mas.  302. 

Hotchkiss  v.  Greenwood,  11  How.  248,  does  not  decide  that  no  use  of  one 
material  in  lieu  of  another  in  the  formation  of  a  manufacture  can,  in  any  case, 
amount  to  invention,  or  be  the  subject  of  a  patent.  If  such  a  substitution 
involves  a  new  mode  of  construction,  or  develops  new  uses  and  properties 
of  the  article  formed,  it  may  amount  to  invention.  The  substitution  may 
be  something  more  than  formal.  It  may  require  contrivance,  in  which  case 
the  mode  of  making  it  would  be  patentable ;  or  the  result  may  be  productive 
of  an  analogous  but  substantially  different  manufacture.  —  Smith  v.  Good- 
year, 93  U.  S.  486;  23  L.  Ed.  952. 

Hicks  v.  Kelsey,  18  Wall.  670;  Crane  v.  Price,  1  Web.  P.  C.  393;  Knease  v. 
Bk.  4  Wash.  C.  C.  9. 

The  degree  of  ability  necessary  to  constitute  patentable  invention  must 
be  beyond  ordinary  mechanical  skill.  —  Dunbar  v.  Meyers,  94  U.  S.  187; 
24  L.  Ed.  34. 

Hotchkiss  v.  Greenwood,  11  How.  267;  Phillips  v.  Paige,  24  How.  167;  Jones 
v  Morehead,  1  Wall.  162;  Stimpson  v.  Woodman,  10  Wall.  121;  Hicks  v.  Kelsey, 
18  Wall.  670;  Brown  v.  Piper,  91  U.  S.  38;  Smith  v.  Nichols,  21  Wall.  115;  Howe 
v.  Abbott,  2  Story,  194;  Bean  v.  Smallwood,  2  Story,  411;  Glue  v.  Upton,  6 
O.  G.  842,  7  O.  G.  648. 

Exclusive  rights  of  the  kind  are  granted  only  to  inventors  or  discoverers 
of  some  new  and  useful  art,  machine,  manufacture  or  composition  of  matter 
or  some  new  and  useful  improvement  thereof;  and  the  law  is  well  settled 
that  nothing  short  of  invention  or  discovery  will  support  a  patent  for  any 
such  alleged  new  and  useful  improvement.  Certain  other  important  condi- 
tions are  also  annexed  to  the  exercise  of  the  right  to  obtain  such  a  muniment 
of  title  for  such  an  invention  or  discovery ;  as,  for  example,  the  improvement 
must  not  only  be  new  and  useful,  but  it  must  be  one  not  known  or  used  by 
others  in  this  country  and  not  patented  or  described  before  the  invention 
or  discovery  in  any  printed  publication  in  this  or  any  foreign  country,  and 
must  not  have  been  in  public  use  or  on  sale  more  than  two  years  prior  to 
the  application  for  a  patent.  —  Roemer  v.  Simon,  95  U.  S.  214;  24  L.  Ed. 
384. 

Collar  v.  Van  Dusen,  23  Wall.  531;  Dunbar  v.  Meyers,  94  U.  S.  187. 

All  improvement  is  not  invention,  and  entitled  to  protection  as  such. 
Thus  to  entitle  it,  it  must  be  the  product  of  some  exercise  of  the  inventive 
faculties,  and  it  must  involve  something  more  than  what  is  obvious  to  per- 
sons skilled  in  the  art.  —  Packing  Company  Cases,  105  U.  S.  566;  26  L.  Ed. 
1172. 

Quoting  from  Pearce  v.  Mulford,  102  U.  S.  112. 

Rubber  Tip  v.  Howard,  87  U.  S.  498;  Hotchkiss  v.  Greenwood,  11  How.  248; 
Stimpson  v.  Woodman,  77  U.  S.  117. 


§  667  INVENTION  607 

In  passing  upon  the  novelty  of  the  alleged  improvement  covered  by  this 
patent  we  are  permitted  to  consider  matters  of  common  knowledge  or  things 
in  common  use.  —  Phillips  v.  Detroit,  111  U.  S.  604;  28  L.  Ed.  532;  4  S.  Ct. 
580. 

Brown  v.  Piper,  91  U.  S.  37;  Terhune  v.  Phillips,  99  U.  S.  592;  King  v.  Gallun, 
109  U.  S.  99;   Ah  Kow  v.  Nunen,  5  Sawy.  552. 

Novelty  and  utility  regardless  of  the  inventive  act  do  not  confer  patenta- 
bility. —  Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158;  6  S.  Ct.  1027. 
Thompson  v.  Boisselier,  114  U.  S.  1;    Yale  v.  Greenleaf,  117  U.  S.  554. 

What  constitutes,  see  Clark  v.  Ferguson,  119  U.  S.  335;  30  L.  Ed.  406; 
7  S.  Ct.  382. 

Vinton  v.  Hamilton,  104  U.  S.  485;  Hall  v.  Macneale,  107  U.  S.  90;  Atlantic 
v.  Brady,  107  U.  S.  192;  Slawson  v.  Grand,  107  U.  S.  649;  King  v.  Gallun,  109 
U.  S.  99;  Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  Esty  v.  Burdett,  109 
U.  S.  633;  Bussey  v.  Excelsior,  110  U.  S.  131;  Pemia.  v.  Locomotive,  110  U.  S. 
490;  Phillips  v.  Detroit,  111  U.  S.  604;  Morris  v.  McMillin,  112  U.  S.  244;  Hol- 
lister  v.  Benedict,  113  U.  S.  59;  Thompson  v.  Boisselier,  114  U.  S.  1;  Stephenson 
v.  Brooklyn,  114  U.  S.  149;  Yale  v.  Greenleaf,  117  U.  S.  554;  Gardner  v.  Herz, 
118  U.  S.  180. 

This  court  has  repeatedly  held  that,  under  the  Constitution  and  the  Acts 
of  Congress,  a  person,  to  be  entitled  to  a  patent,  must  have  invented  or  dis- 
covered some  new  and  useful  art,  machine,  or  some  new  and  useful  improve- 
ment thereof,  and  that  "it  is  not  enough  that  a  thing  shall  be  new  in  the 
sense  that  in  the  shape  or  form  in  which  it  is  produced  it  shall  not  have  been 
before  known,  and  that  it  shall  be  useful,"  but  it  must,  under  the  Constitu- 
tion and  the  Statute,  amount  to  an  invention  or  discovery.  —  Hill  v.  Woos- 
ter,  132  U.  S.  693;  33  L.  Ed.  502;  10  S.  Ct.  228. 

Thompson  v.  Boisselier,  114  U.  S.  1;  Stephenson  v.  Brooklyn,  114  U.  S.  149; 
Yale  v.  Greenleaf,  117  U.  S.  554;  Gardner  v.  Herz,  118  U.  S.  180;  Pomace  v. 
Ferguson,  119  U.  S.  335;  Hendy  v.  Golden,  127  U.  S.  370;  Holland  v.  Shipley, 
127  U.  S.  396;  Pattee  v.  Kingman,  129  U.  S.  294;  Brown  v.  D.  C.  130  U.  S.  87; 
Day  v.  Fair  Haven,  132  U.  S.  98;  Watson  v.  Cincinnati,  132  U.  S.  161;  Marchand 
v.  Emken,  132  U.  S.  195;    Royer  v.  Roth,  132  U.  S.  201. 

The  cheaper  article  is  not  always  the  better  one.  The  substitution  of 
one  material  for  another,  or  the  reduction  or  increase  in  size  or  weight,  is  not 
proof  of  invention.  Such  changes  result  from  observation  and  experience, 
and  most  frequently  are  only  the  carrying  forward  of  the  plans  and  sugges- 
tions which  have  been  already  made  by  others.  It  is  not  enough  that  a  thing 
shall  be  new  in  the  sense  that  in  the  shape  or  form  in  which  it  is  produced 
it  shall  not  have  been  known,  and  that  it  shall  be  useful,  but  it  must  amount 
to  an  invention  or  discovery.  —  Bonnell  v.  Stoll,  61  Fed.  767;   10  C.  C.  A.  48. 

Thompson  v.  Boisselier,  114  U.  S.  11;  Esty  v.  Burdett,  109  U.  S.  633;  Penna. 
v.  Locomotive,  110  U.  S.  490;  Hollister  v.  Mfg.  Co.  113  U.  S.  59;  Burt  v.  Evory, 
133  U.  S.  349;    French  v.  Carter,  137  U.  S.  239. 

Every  novelty,  in  some  sense,  brings  a  new  result,  but  whether  the  new 
result  is  such,  within  the  meaning  of  the  decisions,  is  a  very  different  ques- 
tion. These  words  are  very  far  from  furnishing  a  universal  solvent.  Some- 
times the  character  of  the  new  result  is  such  as  appeals  directly  to  the  trained 
mind,  as  well  as  to  the  ordinary  one.  But  usually  the  novelty  of  the  result 
is  only  one  fact  to  be  weighed  in  the  mass  with  others.  —  Consolidated  v. 
Holtzer,  67  Fed.  907;  15  C.  C.  A.  63. 

The  subject  (electricity)  is  one  of  the  most  abstruse  and  subtle  of  all  the 
practical  sciences,  and  its  pursuit  involves  the  exercise  of  the  keenest  in- 


608  THE    FIXED    LAW    OF    PATENTS  §  668 

telligence  and  most  patient  research  that  gifted  man  can  bestow  upon  it. 
We  ought,  therefore,  to  be  cautious,  when  a  distinct  and  practical  improve- 
ment is  made  in  so  useful  an  art,  in  denying  to  the  author  the  reward  which 
the  law  gives  to  meritorious  inventions.  —  Dayton  v.  Westinghouse,  118 
Fed.  562;   55  C.  C.  A.  390. 

But  the  fact  that  a  thing  is  new  does  not  prove  that  invention  was  present 
any  more  than  it  establishes  the  other  element  of  patentability  —  usefulness. 
—  American  v.  Choate,  159  Fed.  140;  86  C.  C.  A.  330. 

Morris  v.  McMillin,  112  U.  S.  244;   Underwood  v.  Gerber,  149  U.  S.  224. 

§  668.     Novelty  —  Evidence  of. 

The  fact  that  a  device  might,  by  modification  and  change,  be  made  to 
perform  a  new  and  useful  function  other  than  the  principal  purpose  of  the 
patent,  does  not  establish  novelty  or  utility.  —  Metropolitan  v.  Providence, 
87  U.  S.  342;  22  L.  Ed.  303. 

Where  prior  attempts  have  not  been  along  the  same  line  as  that  of  the 
patent  in  suit,  such  prior  unsuccessful  efforts  do  not  evidence  invention  in  the 
successful  device.  —  Butler  v.  Steckel,  137  U.  S.  21 ;  38  L.  Ed.  582;  11  S.  Ct. 
25. 

The  fact  that  the  change  made  was  one  which  would  have  occurred  only 
to  a  person  skilled  in  the  art,  and  to  him  only  after  bestowing  considerable 
thought  in  overcoming  difficulties,  evidences  the  exercise  of  the  inventive 
faculty.  —  Gandy  v.  Main,  143  U.  S.  587;  36  L.  Ed.  272;  12  S.  Ct.  598. 

The  question  is,  whether  a  contrivance  is  patentable  which  is  thus  novel 
in  structure  and  thus  novel  in  its  means  and  manner  of  using  chloride  of 
sodium  and  surprisingly  successful  beyond  example  in  accomplishing  its 
purposes.  The  use  of  ice  as  a  cooling  and  of  salt  as  a  preserving  agent  is 
as  old  as  human  knowledge ;  but  the  means  and  manner  of  employing  them 
in  these  functions  may  be  infinite,  opening  a  wide  field  for  experiment  and 
invention;  and  when  a  device  is  fallen  upon  which  produces  unprecedented 
and  unequalled  results  in  the  use  of  these  familiar  agents,  that  device  may 
possess  a  very  high  degree  of  patentable  merit.  Moreover,  the  device  itself 
may  be  a  combination  of  several  elementary  devices,  each  as  familiar  to 
the  public  as  the  letters  of  the  alphabet ;  yet  the  combination  of  them  may, 
as  whole,  possess  an  extraordinary  novelty  and  utility.  —  Haffcke  v.  Clark, 
50  Fed.  531 ;   ICC.  A.  570. 

Harrison  v.  Foundry,  1  App.  Cas.  574;  Murray  v.  Clayton,  7  Ch.  App.  577; 
Furbush  v.  Cook,  2  Fish.  P.  C.  668;  Ryan  v.  Goodwin,  3  Sumn.  514. 

We  conclude,  therefore,  that  in  applying  to  cases  of  doubt  the  primary 
rules  touching  what  constitutes  invention  and  the  secondary  rules  touching 
what  is  a  "  new  and  useful  result,"  a  "  new  function,"  or  a  "  new  sphere  of 
action,"  we  may  be  influenced  by  the  facts  that  the  improvement  in  question, 
although  desired  for  years,  was  not  secured  until  brought  out  by  the  patentee; 
that  the  product  of  the  improved  machine  or  process  went  into  general  use, 
and  displaced  whollv  or  in  a  very  large  degree,  prior  products.  —  Watson  v. 
Stevens,  51  Fed.  757;  2  C.  C.  A.  500. 

Novelty  of  combination  does  not  establish  invention.  —  Lamson  v.  Hill- 
man,  123  Fed.  416;  59  C.  C.  A.  510. 

Interior  v.  Perkins,  80  Fed.  528;  Kelly  v.  Clow,  89  Fed.  297;  Busell  v.  Stevens, 
137  U.  S.  423. 


§$  669-670  INVENTION  609 

This  precise  combination  in  its  entirety  was  novel;  but  mere  novelty  is 
not  invention,  when  the  teachings  of  the  art  would  naturally  lead  one  skilled 
therein  to  produce  such  a  combination  whenever  an  improvement  of  that 
sort  was  required.  —  Pieper  v.  Electro-Dental,  160  Fed.  930;  88  C.  C.  A.  112. 

§  669.     Novelty  —  Miscellaneous  Rules. 

The  combination  must  be  new;  and  if  productive  of  new  and  useful  re- 
sults and  not  a  mere  aggregation  of  results,  it  might  be  the  subject  of  a 
patent,  though  all  the  parts  were  used  before.  But  here  the  combinations 
patented  as  well  as  their  separate  elements,  had  been  anticipated.  —  Dane  v. 
Chicago,  131  U.  S.  cxxvi,  app. ;  23  L.  Ed.  82. 

Though  it  may  be  true  that  every  one  of  these  elements  had  been  employed 
before,  yet  they  had  never  been  used  in  the  same  combination  and  put  to- 
gether in  the  same  manner  as  the  inventor  combined  and  arranged  them, 
so  as  to  produce  a  result  like  his.  —  Elizabeth  v.  American,  97  U.  S.  126; 
24  L.  Ed.  1000. 

In  any  view  of  the  case,  the  specification  describes  nothing  that  the  pat- 
entee is  entitled  to  claim ;  but  only  what  every  one  had  a  right  to  use  with- 
out his  assistance.  To  sustain  this  patent  would  be  to  deprive  the  public 
of  the  right  to  arrange  and  use  a  well  known  apparatus  in  the  only  way  in 
which  its  purpose  can  be  beneficially  accomplished.  —  Preston  v.  Manard, 
116  U.  S.  661;  29  L.  Ed.  763;  6  S.  Ct.  695. 

Guidet  v.  Brooklyn,  105  U.  S.  550;  Flood  v.  Hicks,  2  Biss.  169;  4  Fish.  P.  C. 
156;  King  v.  Wheeler,  2  B.  &  A.  345;  Macnamara  v.  Hulse,  Car.  &  M.  4;  Kay  v. 
Marshall,  7  Scott,  548;  S.  C.  5  Bing.  N.  C.  492;  1  Beav.  535;  8  CI.  &  Fin.  245; 
West.  H.  L.  682;   2  Web.  P.  C.  34,  68,  75,  77,  82,  84. 

There  is  no  novelty  in  applying  an  old  device  used  for  heating  water  by  a 
steam  coil  to  a  similar  use  in  heating  wines  to  age  them.  —  Dreyfus  v.  Searle, 
124  U.  S.  60;  31  L.  Ed.  352;  8  S.  Ct.  390. 

When  an  element  in  the  combination  performs  no  function  and  has  no 
mechanical  effect  it  is  not  sufficient  to  constitute  novelty  in  combination. 
—  Fond  Du  Lac  v.  May,  137  U.  S.  395;  34  L.  Ed.  714;  11  S.  Ct.  98. 

Pickering  v.  McCullough,  104  U.  S.  310;  Double  Pointed  v.  Two  Rivers,  109 
U.  S.  117;  Stephenson  v.  Brooklyn,  114  U.  S.  149;  Hendy  v.  Golden,  127  U.  S. 
370;   Aron  v.  Manhattan,  132  U.  S.  84. 

The  question  of  novelty,  though  not  pleaded,  is  before  the  court.  —  Rich- 
ards v.  Chase,  158  U.  S.  299;  39  L.  Ed.  991 ;  15  S.  Ct.  831. 

Dunbar  v.  Myers,  94  U.  S.  187;  Slawson  v.  Grand,  107  U.  S.  649;  Brown  v. 
Piper,  91  U.  S.  37. 

§  670.     Old  Device,  New  Use  —  Aggregation. 

With  all  the  anticipatory  devices  before  us,  it  is  apparent  that  the  mere 
changes  in  the  shape  of  the  dies  was  a  minor  part  of  the  work  involved  in 
so  changing  the  machine  as  to  make  it  perform  a  wholly  different  function, 
the  invention  consisting  rather  in  the  idea  that  such  change  could  be  made, 
than  in  making  the  necessary  mechanical  alterations.  —  Hobbs  v.  Beach, 
180  U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct.  409. 

Beach  v.  American,  63  Fed.  597. 

It  is  not  invention  to  adapt  two  old  devices  to  analogous  uses  and  combin- 
ing them  into  one  machine,  where  each  performs  its  own  separate  function, 


610  THE    FIXED   LAW   OF    PATENTS  §  671 

the  result  being  the  sum  and  not  the  product  of  the  two  functions.  —  Apple- 
ton  v.  Star,  60  Fed.  411 ;  9  C.  C.  A.  42. 

Penna.  v.  Locomotive,  110  U.  S.  490;  Brown  v.  Piper,  91  U.  S.  37;  Howe  v. 
Abbott,  2  Story,  190;  Fuller  v.  Yentzer,  94  U.  S.  288;  Roberts  v.  Ryer,  91  U.  S. 
150;  Stow  v.  Chicago,  104  U.  S.  550;  Heald  v.  Rice,  104  U.  S.  755;  Stimpson 
v.  Woodman,  10  Wall.  117;  Tucker  v.  Spalding,  13  Wall.  453;  Grant  v.  Walter, 
148  U.  S.  547. 

§  671.     Old  Device,  New  Use  —  General  Rules. 

The  application  of  an  old  process  or  machine  to  a  similar  or  analogous 
subject,  with  no  change  in  the  manner  of  application,  and  no  result  sub- 
stantially distinct  in  its  nature,  will  not  sustain  a  patent,  even  if  the  new  form 
of  result  has  not  before  been  contemplated. 

The  leading  case,  most  frequently  cited,  giving  both  American  and  Eng- 
lish authorities.  —  Pennsylvania  v.  Locomotive,  110  U.  S.  490;  28  L.  Ed. 
222;  4  S.  Ct.  220. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Phillips  v.  Page,  24  How.  164;  Jones 
v.  Morehead,  1  Wall.  155;  Revg.  1  Fish.  P.  C.  521;  Hicks  v.  Kelsey,  18  Wall. 
670;  Smith  v.  Nichols,  21  Wall.  112;  Brown  v.  Piper,  91  U.  S.  37;  Roberts  v. 
Ryer,  91  U.  S.  150;  Bridge  v.  Iron,  95  U.  S.  274;  Planing  v:  Keith,  101  U.  S.  479; 
Pearce  v.  Mulford,  102  U.  S.  112;  Heald  v.  Rice,  104  U.  S.  737;  Atlantic  v.  Brady, 
107  U.  S.  192;  Crane  v.  Price,  4  Man.  &  G.  580;  5  Scott,  (N.  R.)  338;  1  Web. 
P.  C.  393;  Dobbs  v.  Penn.  5  Exch.  427;  Smith  v.  Dent.  Co.  93  U.  S.  486;  Dental 
v.  Davis,  102  U.  S.  222;  Bush  v.  Fox,  Macredy  P.  C.  152;  9  Exch.  651;  5  H.  L. 
Cas.  707;  Brook  v.  Aston,  27  L.  J.  (N.  S.)  Q.  B.  145;  8  El.  &  Bl.  478;  Envelope 
v.  Seymer,  28  L.  J.  (N.  S.)  C.  P.  22;  5  C.  B.  (N.  S.)  164;  Herwood  v.  G.  N.  R.  Co. 
11  H.  L.  Cas.  654. 

The  rule  in  Penna.  v.  Locomotive,  110  U.  S.  490,  quoted  and  followed.  — 
Blake  v.  San  Francisco,  113  U.  S.  679;  28  L.  Ed.  1070;  5  S.  Ct.  692. 

It  is  not  invention  to  adapt  an  old  device  used  at  sea  to  an  analogous 
use  on  land. —  Blake  v.  San  Francisco,  113  U.  S.  679;  28  L.  Ed.  1070;  5 
S.  Ct.  692. 

The  adaptation  of  an  old  device  to  a  new  and  analogous  use,  involving 
such  changes  only  as  would  occur  to  any  skilled  mechanic  is  not  invention. 
—  Peters  v.  Hanson,  129  U.  S.  541 ;  32  L.  Ed.  742;  9  S.  Ct.  393. 

Penna.  v.  Locomotive,  110  U.  S.  490. 

The  adaptation  of  an  old  device  to  a  new  and  analogous  use,  involving 
such  changes  as  would  occur  to  any  skilled  mechanic,  is  not  invention.  — 
Peters  v.  Active,  129  U.  S.  530;  32  L.  Ed.  738;  9  S.  Ct.  389. 

Penna.  v.  Locomotive,  110  U.  S.  490. 

Though  the  inventor  be  entitled  to  the  merit  of  being  the  first  to  employ 
an  old  combination  in  a  new  and  useful  way,  if  the  use  be'  analogous,  his  right 
to  a  patent  must  depend  upon  the  novelty  of  means  employed  and  not  the 
end  accomplished.  —  Aron  v.  Manhattan,  132  U.  S.  84;  33  L.  Ed.  272;  10 
S.  Ct.  24. 

If  the  adaptation  required  invention  it  was  patentable ;  but  if,  in  view  of 
the  state  of  the  art  it  involved  only  mechanical  skill  it  was  not  invention.  — 
Aron  v.  Manhattan,  132  U.  S.  84;  33  L.  Ed.  272;  10  S.  Ct.  24. 

Neither  is  it  invention  to  combine  old  devices  into  a  new  article  without 
producing  any  new  mode  of  operation.  —  Burt  v.  Evory,  133  U.  S.  349; 
33  L.  Ed.  647;  10  S.  Ct.  349. 


§671  INVENTION  611 

Stimpson  v.  Woodman,  77  U.  S.  117;  Heald  v.  Rice,  104  U.  S.  737;  Hall  y. 
Macneale,  107  U.  S.  90;   Hill  v.  Wooster,  132  U.  S.  693. 

The  application  of  an  old  process  or  machine  to  a  similar  or  analogous 
subject,  with  no  change  in  the  manner  of  applying  it,  and  no  result  substan- 
tially distinct  in  its  nature,  will  not  sustain  a  patent,  even  if  the  new  form 
of  result  has  not  before  been  contemplated.  —  Howe  v.  National,  134  U.  S. 
388;  33  L.  Ed.  963;  10  S.  Ct.  570. 

Penna.  v.  Locomotive,  110  U.  S.  490;  Thompson  v.  Boisselier,  114  U.  S.  1; 
Peters  v.  Active,  129  U.  S.  530;  Peters  v.  Hanson,  129  U.  S.  542;  Aron  v,  Manhat- 
tan, 132  U.  S.  84;   Watson  v.  Cincinnati,  132  U.  S.  161. 

Merely  putting  an  old  device  to  a  new  use  is  not  invention.  —  St.  Germain 
v.  Brunswick,  135  U.  S.  227;  34  L.  Ed.  122;  10  S.  Ct.  822. 

The  application  of  an  old  process,  machine  or  device  to  a  like  or  analogous 
use,  with  no  change  in  the  mode  of  application  and  no  result  substantially 
different  in  its  nature,  will  not  sustain  a  patent  even  if  the  new  form  of  result 
has  not  been  before  contemplated.  —  Consolidated  v.  Walker,  138  U.  S.  124; 
34  L.  Ed.  920;   11  S.  Ct.  292. 

Penna.  v.  Locomotive,  110  U.  S.  490;   Blake  v.  San  Francisco,  113  U.  S.  679. 

Nothing  is  better  settled  in  this  court  than  that  the  application  of  an  old 
process  to  a  new  and  analogous  purpose  does  not  involve  invention,  even  if  the 
new  result  had  not  been  before  contemplated.  It  is  no  new  invention  to  use 
an  old  machine  for  a  new  purpose.  The  inventor  of  a  machine  is  entitled  to 
all  the  uses  to  which  it  can  be  put,  no  matter  whether  he  had  conceived  the 
idea  of  the  use  or  not.  —  Ansonia  v.  Electrical,  144  U.  S.  11 ;  36  L.  Ed.  327; 
12  S.  Ct.  601. 

Gandy  v.  Main,  143  U.  S.  587;  Roberts  v.  Ryer,  91  U.  S.  150;  Pennsylvania 
v.  Safety  T.  110  TJ.  S.  490;  Miller  v.  Foree,  116  U.  S.  22;  Crandall  v.  Watters, 
20  Blatchf.  97;  Re  Arkell,  15  Blatchf.  437;  Blake  v.  San  Francisco,  113  U.  S. 
679;  Smith  v.  Elliott,  9  Blatchf.  400;  Western  Elec.  Co.  v.  Ansonia,  114  U.  S. 
447;  Spill  v.  Celluloid,  22  Blatchf.  441;  Sewall  v.  Jones,  91  U.  S.  171. 

It  is  not  a  patentable  invention  to  apply  old  and  well-known  devices  and 
processes  to  new  uses  in  other  and  analogous  arts.  —  Lovell  v.  Gary,  147 
U.  S.  623;  37  L.  Ed.  307;  13  S.  Ct.  472. 

Vinton  v.  Hamilton,  104  U.  S.  485;  Stow  v.  Chicago,  104  U.  S.  547;  Penna.  v. 
Locomotive,  110  U.  S.  490;  Blake  v.  San  Francisco,  113  U.  S.  679;  Thompson  v. 
Boisselier,  114  U.  S.  1;  Miller  v.  Foree,  116  U.  S.  22;  Dreyfus  v.  Searle,  124  U. 
S.  60;  Brown  v.  D.  C.  130  U.  S.  87;  Aron  v.  Manhattan,  132  U.  S.  82;  Watson  v. 
Cincinnati,  132  U.  S.  161;  Marchand  v.  Emken,  132  U.  S.  195;  Royer  v.  Roth, 
132  U.  S.  201;  Hill  v.  Wooster,  132  U.  S.  693;  Burt  v.  Evory,  133  U.  S.  349; 
Howe  v.  Needle  Co.  134  U.  S.  388;  Florsheifh  v.  Schilling,  137  U.  S.  64;  Con- 
solidated v.  Walker,  138  U.  S.  124;  Ansonia  v.  Electric,  144  U.  S.  11;  Ryan  v. 
Hard,  145  U.  S.  241. 

Compare  Cary  v.  Wolff,  24  Fed.  139;  Crane  v.  Price,  1  Web.  P.  C.  393; 
Smith  v.  Goodyear,  93  U.  S.  486;  Loom  Co.  v.  Higgins,  106  U.  S.  580. 

Where  the  alleged  novelty  consists  in  transferring  a  device  from  one 
branch  of  industry  to  another,  the  answer  depends  upon  a  variety  of  con- 
siderations. In  such  cases  we  are  bound  to  inquire  into  the  remoteness  of 
relationship  of  the  two  industries ;  what  alterations  were  necessary  to  adapt 
the  device  to  its  new  use,  and  what  the  value  of  such  adaptation  has  been 
to  the  new  industry.  If  the  new  use  be  analogous  to  the  former  one,  the 
court  will  undoubtedly  be  disposed  to  construe  the  patent  more  strictly, 
and  to  require  clear  proof  of  the  exercise  of  the  inventive  faculty  in  adapting 


612  THE    FIXED    LAW    OF    PATENTS  §671 

it  to  the  new  use  —  particularly  if  the  device  be  one  of  minor  importance 
in  its  new  field  of  usefulness.  On  the  other  hand,  if  the  transfer  be  to  a  branch 
of  industry  but  remotely  allied  to  the  other,  and  the  effect  of  such  transfer 
has  been  to  supersede  other  methods  of  doing  the  same  work,  the  court  will 
look  with  a  less  critical  eye  upon  the  means  employed  in  making  the  transfer. 
Doubtless  a  patentee  is  entitled  to  every  use  to  which  his  invention  is  sus- 
ceptible, whether  such  use  be  known  or  unknown  to  him;  but  the  person 
who  has  taken  his  device  and  by  improvements  thereon  has  adapted  it  to 
a  different  industry,  may  also  draw  to  himself  the  quality  of  inventor.  If, 
for  instance,  a  person  should  take  a  coffee  mill  and  patent  it  as  a  mill  for 
grinding  spices,  the  double  use  would  be  too  manifest  for  serious  argument. 
So,  too,  this  court  has  denied  invention  to  one  who  applied  the  principle 
of  an  ice  cream  freezer  to  the  preservation  of  fish  (Brown  v.  Piper,  91  U.  S.  37) ; 
to  another  who  changed  the  proportions  of  a  refrigerator  in  such  manner 
as  to  utilize  the  descending  instead  of  the  ascending  current  of  cold  air 
(Roberts  v.  Ryer,  91  U.  S.  150);  to  another  who  employed  an  old  and  well- 
known  method  of  attaching  car  trucks  to  the  forward  truck  of  a  locomotive 
engine  (Penna.  v.  Locomotive,  110  U.  S.  490);  and  to  still  another  who 
placed  a  dredging  screw  at  the  stem  instead  of  the  stern  of  a  steamboat 
(Atlantic  v.  Brady,  107  U.  S.  192).  In  Tucker  v.  Spalding,  80  U.  S.  453, 
the  patent  covered  the  use  of  movable  teeth  in  saws  and  saw  plates.  A  prior 
patent  exhibited  cutters  of  the  same  general  form  as  the  saw  teeth  of  the  other 
patent,  attachable  to  a  circular  disk,  and  removable  as  in  the  other,  the  pur- 
pose of  which  patent  was  for  cutting  of  tongues  and  grooves,  mortises,  etc. 
The  court  held  that  if  what  it  actually  did  was  in  its  nature  the  same  as 
sawing,  and  its  structure  and  action  suggested  to  the  mind  of  an  ordinary 
skilled  mechanic  this  double  use  to  which  it  could  be  adapted  without  material 
change,  that  such  adaptation  to  a  new  use  was  not  invention,  and  was  not 
patentable. 

Indeed  it  often  requires  as  acute  a  perception  of  the  relations  between 
cause  and  effect,  and  as  much  of  the  peculiar  intuitive  genius  which  is  charac- 
teristic of  great  inventors,  to  grasp  the  idea  that  a  device  used  in  one  art 
may  be  made  available  in  another  as  would  be  necessary  to  create  the  de- 
vice de  novo.  And  this  is  not  the  less  true  if,  after  the  thing  has  been  done, 
it  appears  to  the  ordinary  mind  so  simple  as  to  excite  wonder  that  it  was 
not  thought  of  before.  The  apparent  simplicity  of  a  new  device  often  leads 
an  inexperienced  person  to  think  that  it  would  have  occurred  to  anyone 
familiar  with  the  subject ;  but  the  decisive  answer  is  that  with  dozens  and 
perhaps  hundreds  of  others  laboring  in  the  same  field,  it  had  never  occurred 
to  anyone  before.  The  practised  eye  of  the  ordinary  mechanic  may  be 
safely  trusted  to  see  what  ought  to  be  apparent  to  anyone.  As  was  said  in 
Webster  v.  Higgins,  105  U.  S.  580,  "  now  that  it  has  succeeded,  it  may  seem 
very  plain  to  anyone  that  he  could  have  done  it  as  well.  This  is  often  the 
case  with  inventions  of  the  greatest  merit.  It  may  be  laid  down  as  a  general 
rule,  though  perhaps  not  an  invariable  one,  that  if  a  new  combination  and 
arrangement  of  known  elements  produce  a  new  and  beneficial  result  never 
attained  before,  it  is  evidence  of  invention." 

If  the  new  use  be  so  nearly  analogous  to  the  former  one,  that  the  applica- 
bility of  the  device  to  its  new  use  would  occur  to  a  person  of  ordinary  me- 
chanical skill,  it  is  only  a  case  of  double  use,  but  if  the  relations  between 
them  be  remote,  and  especially  if  the  use  of  the  old  device  produce  a  new  re- 
sult, it  may  at  least  involve  the  exercise  of  the  inventive  faculty.  —  Potts  v. 
Creager,  155  U.  S.  597;  39  L.  Ed.  275;  15  S.  Ct.  194. 

That  an  old  device  may  be  put  to  a  new  use,  though  the  result  itself  be  old, 
thus  involving  invention,  see  National  v.  Boston,  156  U.  S.  502;  39  L.  Ed. 
511;  15  S.  Ct.  434. 


§  671  INVENTION  613 

The  defense  of  noninvention  is,  in  this  case,  entirely  theoretical.  The 
question  relates  to  an  important  and  complex  art  in  which  experience  is 
both  valuable  and  is  at  hand;  but  experience  has  not  apparently  tested 
itself  on  the  subject.  The  assertion  is  that  inasmuch  as  the  motive  power 
of  steam  or  air  has  been  employed  in  many  engines,  and  the  means  of  such 
employment  have  been  shown  in  many  patents,  nothing  is  necessary  for 
the  application  of  such  power  to  produce  a  new  result,  but  to  select,  and 
perhaps  adapt,  old  and  well  known  appliances.  But  as  was  said  by  Judge 
Wheeler,  in  the  circuit  court,  with  respect  to  the  McCoy  and  Bates  tools,  "  the 
building,  adapting  in  size,  proportion  and  relation,  and  so  enclosing  such 
parts  as  to  form  a  tool  of  such  power,  capable  of  guidance  to  such  work  by 
hand,  would  seem  to  involve  high  and  most  useful  inventive  skill,  well 
worthy  of  a  patent  upon  the  tool  itself,  or  improvements  of  that  kind  upon 
it."  While  it  is  true  that  modern  scientific  skill  has  developed  an  exceedingly 
great  variety  of  ways  in  which  the  agency  of  steam  can  be  made  useful,  the 
element  of  novelty  is  generally  present  in  the  particular  means  which  pro- 
duce a  new  result.  And  it  is  not  reasonable  to  infer  from  the  variety  of  old  ap- 
pliances that  the  ascertainment  of  means  to  properly  move  and  control  the 
movement  of  a  new  tool  of  the  delicacy,  accuracy,  force  and  rate  of  speed 
required  for  such  an  instrument  as  a  dental  tool  demanded  no  invention, 
but  required  merely  a  selection  by  the  mechanic  from  the  types  of  engines 
at  hand  in  a  workshop,  or  in  a  volume  of  drawings.  In  addition,  the 
history  of  the  tool  of  this  patent  shows  that  the  ascertainment  of  the  ap- 
propriate means,  or  of  an  improvement  upon  existing  means,  which  should 
properly  move  a  hand  cutter  for  the  carving  of  marble,  also  called  for  an 
inventive  mind.  Though  marble  cutting  and  engine  building  were  each  old 
arts,  no  improvement  upon  the  mallet  and  chisel  appeared  until  the  tools 
of  McCoy  and  Bates  came  into  existence.  If  the  turning  of  a  rock  drill  into 
a  marble  or  granite  cutter  was  a  thing  to  be  had  for  the  asking,  it  would  seem 
that  the  transformation  would  have  been  more  promptly  made.  —  Fisher  v. 
American,  71  Fed.  523;  18  C.  C.  A.  235. 

There  may  be  invention  in  applying  a  device  which  is  either  simple  or 
old  where  it  is  used  in  a  new  way,  and  accomplishes  a  new  result ;  and  the 
rule  is  well  settled  in  cases  of  that  class  that  doubt  on  the  question  of  pa- 
tentable novelty  may  be  resolved  in  favor  of  the  patent  on  such  proof  of 
utility  and  popular  acceptance  as  shown  in  this  record.  —  Irwin  v.  Hassel- 
man,  97  Fed.  964;  38  C.  C.  A.  587. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Topliff  v.  Topliff,  145  U.  S.  156;  Kre- 
mentz  v.  Cottle,  148  U.  S.  556. 

It  is  only  when  the  new  use  is  so  recondite  and  remote  from  that  to 
which  the  old  device  has  been  applied,  or  for  which  it  was  conceived,  that  the 
application  to  the  new  use  would  not  occur  to  the  mind  of  the  ordinary 
mechanic,  skilled  in  the  art,  seeking  to  devise  means  to  perform  the  desired 
function,  with  the  old  machine  or  combination  present  before  him,  that  its 
conception  rises  to  the  dignity  of  invention.  —  Mallon  v.  Gregg,  137  Fed. 
68;  69  C.  C.  A.  48. 

Potts  v.  Creager,  155  U.  S.  597;  Hobbs  v.  Beach,  180  U.  S.  383;  Adams  v. 
Lindell,  77  Fed.  432;   National  v.  Interchangeable,  106  Fed.  693. 

The  rule  is  unquestionable  that  new  adaptation  of  old  means  may  consti- 
tute invention  —  that  the  test  may  reside  in  the  creative  thought,  rather 
than  the  mechanical  difficulties  overcome  —  but  it  is  equally  well  settled 
that  monopoly  cannot  be  granted  for  an  adaptation  which  is  merely  a  double 
use,  or  calls  only  for  the  exercise  of  ordinary  mechanical  skill.  The  line  of 
distinction  between  the  one  and  the  other  attribute  is  incapable  of  clear 


614  THE    FIXED    LAW    OF    PATENTS  §  672 

general  definition,  and  the  grant  of  a  patent  which  is  rightly  presumptive 
of  invention  should  not  be  defeated  as  wanting  in  that  quality,  unless  the 
prior  art  plainly  taught  such  adaptation.  But  when  analogous  use  is  well 
known  and  no  substantial  departure  appears  in  the  patentee's  adaptation, 
monopoly  cannot  be  authorized  within  the  policy  of  the  law.  —  Lowden  v. 
Janesville,  148  Fed.  686;  78  C.  C.  A.  548. 

§  672.     Old  Device,  New  Use  —  Non- Patentable. 

The  learned  judge,  by  interpolating  the  new  purpose  of  the  improvement, 
not  only  inserted  what  was  not  specified  in  the  claim;  but  if  it  had  been,  it 
would  not  have  helped  out  the  difficulty,  as  it  was  in  effect,  upon  the  con- 
struction given,  simply  applying  an  old  organization  to  a  new  use,  which  is 
not  a  patentable  object.  —  Phillips  v.  Page,  65  U.  S.  164;   16  L.  Ed.  639. 

The  elements  of  the  combination  were  old;  the  result  produced  was  old; 
the  combination  had  been  employed  for  analogous  uses.  The  principal 
change  was  the  substitution  of  a  figured  roller  for  pebbling  for  a  smooth 
roller  for  smoothing.  Held:  not  invention.  —  Stimpson  v.  Woodman,  77 
U.  S.  117;  19  L.  Ed.  866. 

The  idea  of  this  patentee  was  a  good  one,  but  his  device  to  give  it  effect, 
though  useful,  was  not  new.  Consequently  he  took  nothing  by  his  patent. 
—  Rubber  Tip  v.  Howard,  87  U.  S.  498;  22  L.  Ed.  410. 

It  is  no  new  invention  to  use  an  old  machine  for  a  new  purpose.  The  in- 
ventor of  a  machine  is  entitled  to  the  benefit  of  all  the  uses  to  which  it  can  be 
put,  no  matter  whether  he  had  conceived  the  idea  of  the  use  or  not.  —  Rob- 
erts v.  Ryer,  91  U.  S.  150;  23  L.  Ed.  267. 

It  would  seem,  that  if  all  the  elements  may  be  found  old,  and  that  if,  in 
the  opinion  of  the  Court  (Justice  Woods  writing  the  opinion)  the  combination 
did  not  produce  a  new  result  (although  an  old  result  was  produced  in  a  new 
way  by  the  combination  of  old  elements)  it  did  not  require  the  least  degree 
of  ingenuity,  and  cannot  be  called  invention.  —  Stephenson  v.  Brooklyn, 
114  U.  S.  149;  29  L.  Ed.  58;  5  S.  Ct.  777. . 

Hotchkiss  v.  Greenwood,  11  How.  248:  Stimpson  v.  Woodman,  10  Wall.  117; 
Atlantic  v.  Brady,  107  U.  S.  192;  Slawson  v.  R.  R.  107  U.  S.  649;  King  v.  Gallun, 
109  U.  S.  99;    PhiUips  v.  Detroit,  111  U.  S.  604. 

A  patent  cannot  be  taken  out  for  an  article  old  in  purpose  and  shape  and 
mode  of  use,  when  made  for  the  first  time  out  of  an  existing  material,  and 
with  accompaniments  before  applied  to  such  an  article,  merely  because  the 
idea  has  occurred  that  it  would  be  a  good  thing  to  make  the  article  out  of 
that  particular  old  material.  —  Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed. 
158;  6  S.  Ct.  1027. 

The  mere  adaptation  of  an  old  device  to  a  new  combination,  involving  no 
functional  change,  is  not  invention.  —  Royer  v.  Roth,  132  U.  S.  201 ;  33 
L.Ed.  322;  10  S.  Ct.  58. 

Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  Pomace  v.  Ferguson,  119  U.  S. 
335;  Dreyfus  v.  Searle,  124  U.  S.  60;  Hendy  v.  Golden,  127  U.  S.  370. 

The  adaptation  of  an  old  device  to  a  new  and  analogous  use  to  be  patentable 
must  show  noveltv  of  means.  —  Aron  v.  Manhattan,  132  U.  S.  84;  33  L. 
Ed.  272;  10  S.  Ct.  24. 


§  672  INVENTION  615 

It  is  not  invention  to  adapt  an  old  machine  designed  for  turning  wood 
to  an  analogous  use  in  turning  metal.  —  Howe  v.  National,  134  U.  S.  388; 
33  L.  Ed.  963;  10  S.  Ct.  570. 

To  make  a  combination  of  old  elements  patentable,  there  must  be  some  new 
result  accomplished,  and  as  the  result  in  this  case  is  a  mere  aggregation  of 
the  several  functions  of  the  different  elements  of  the  combination,  each  per- 
forming its  old  function  in  the  old  way,  we  see  nothing  upon  which  a  claim  to 
invention  can  be  based.  The  device  is  undoubtedly  a  convenient  one,  and 
appears  to  have  proven  profitable  to  the  patentee,  but  we  are  unanimously 
of  opinion  that  it  lacks  the  necessary  quality  of  invention.  —  Richards  v. 
Chase,  159  U.  S.  477;  40  L.  Ed.  225;  16  S.  Ct.  53. 

The  new  use  is  not  an  analogous  use.  It  is  the  same  use.  It  seems  clear 
to  us,  therefore,  that  it  did  not  involve  invention  to  take  the  hollow  reel  from 
the  ordinary  fire  engine  or  water  sprinkler,  and  put  it  on  a  chemical  engine. 
The  introduction  of  the  hollow  journaled  reel  in  the  chemical  fire  engine  was 
nothing  but  the  application  of  an  old  device  to  a  similar  subject,  with  little 
or  no  change  in  the  manner  of  application,  and  with  no  result  substantially 
distinct  in  its  nature.  The  hollow  journaled  reel  may  have  been  better 
adapted  to  the  use  in  the  chemical  engine  than  in  the  ordinary  steam  pressure 
pump  engine ;  but  this,  it  seems  to  us,  is  a  mere  difference  in  degree  of  the 
result,  and  did  not  involve,  in  bringing  it  about,  anything  but  what  would 
naturally  occur  to  one  skilled  in  the  art.  —  Steiner  v.  Adrian,  59  Fed.  132; 
8  C.  C.  A.  44. 

Roller  Mill  v.  Walker,  138  U.  S.  124;  Electric  v.  LaRue,  139  U.  S.  606;  Blake  v. 
San  Francisco,  113  U.  S.  679;  Penna.  v.  Locomotive,  110  U.  S.  490;  Preston  v. 
Manard,  116  U.  S.  661. 

All  the  advantages  ascribable  to  the  patented  combination  are  due  to  the 
assembling  together  of  an  old  elevator  and  an  old  cutter  adjusting  mechan- 
ism. This  could  be  effected  without  requiring  any  modification  of  the  parts, 
which  was  not  an  obvious  one  and  within  the  ordinary  skill  of  the  mechanic. 
The  application  of  an  old  organism  to  an  analogous  use  is  not  patentable. 
It  is  not  invention  to  use  an  old  combination  of  devices  in  a  new  location  to 
perform  the  same  operations,  when  no  change  or  modifications  are  required 
to  adapt  it  to  the  new  use,  or  when  only  such  are  required  as  can  be  made  by 
the  exercise  of  ordinary  mechanical  skill.  —  Briggs  v.  Central,  60  Fed.  87; 
8  C.  C.  A.  480. 

Blake  v.  San  Francisco,  113  U.  S.  679;  Penna.  v.  Locomotive,  110  U.  S.  490; 
Steiner  v.  Adrian,  59  Fed.  132;   Aron  v.  Railway,  132  U.  S.  84. 

The  entire  argument  of  the  appellants  proceeds  upon  the  erroneous  assump- 
tion that  a  machine  or  mechanical  combination  which  in  itself  contains  no 
novelty  amounting  to  invention  may  be  patentable  because  of  some  new  use 
or  result  which  is  accomplished ;  a  proposition  which,  as  we  have  seen,  leads 
to  the  inadmissible  conclusion  that  for  one  use  or  purpose  a  device  may  be 
public  property  and  for  another  use  may  be  the  subject  of  a  patent.  On  the 
contrary,  it  is  well  settled,  we  suppose,  "  that  a  patent  for  a  machine  covers 
its  use  for  all  purposes,  whether  anticipated  by  the  patentee  or  not,  and  that 
the  functions  or  methods  of  operation  of  mechanical  devices  are  not  patent- 
able." —  Gait  v.  Parlin,  60  Fed.  417;  9  C.  C.  A.  49. 

Appleton  v.  Star,  60  Fed.  411;  Western  v.  Sperry,  58  Fed.  186;  Temple  v. 
Goss,  58  Fed.  196;  Collar  Co.  v.  Van  Deusen,  23  Wall.  530;  Fuller  v.  Yentzer, 
94  U.  S.  288;  Burr  v.  Duryee,  1  Wall.  531;  Heald  v.  Rice,  104  U.  S.  755;  Stow 
v.  Chicago,  104  U.  S.  550;  Roberts  v.  Ryer,  91  U.  S.  150;  Stimpson  v.  Woodman, 
10  Wall.  117;  Tucker  v.  Spalding,  13  Wall.  453. 


616  THE   FIXED   LAW   OF   PATENTS  §  672 

If  the  alleged  new  article  of  manufacture  was  in  fact  an  old  article  at 
the  date  of  the  patent,  —  as  we  think  it  was,  —  then  it  goes  without  saying 
that  the  patentee  was  not  entitled  to  a  patent  merely  because  he  suggested 
the  idea  of  devoting  it  to  a  new  use.  —  Browning  v.  Colorado,  61  Fed.  845 ; 
10  C.  C.  A.  112. 

Brown  v.  Piper,  91  U.  S.  37;  Roberts  v.  Ryer,  91  U.  S.  150;  Knapp  v.  Morss, 
150  U.  S.  221;  Aron  v.  Railway,  132  U.  S.  84;  Ansonia  v.  Electrical,  144  U.  S.  11. 

In  the  case  at  bar  it  cannot  be  said  that  there  has  been  a  transfer  to  a 
"  branch  of  industry  remotely  allied,"  of  the  use  of  solid  in  lieu  of  jointed 
work,  because  this  substitution  has  been  practised  in  every  industry,  unless 
it  be  in  the  particular  one  at  bar;  and  it  cannot  be  said  that  the  latter  is 
remotely  allied  to  all  others,  though  it  may  be  to  some.  Whatever  has 
become  free  and  common  to  the  field  of  practical  arts,  as  a  whole,  must  be 
free  to  every  part  of  that  field,  except  under  extremely  exceptional  circum- 
stances. —  Consolidated  v.  Holtzer,  67  Fed.  907;  15  C.  C.  A.  63. 

Potts  v.  Creager,  155  U.  S.  597. 

If  it  is  of  importance  to  simultaneously  raise  two  disconnected  but  adjacent 
objects  of  comparatively  small  size,  which  can  be  accomplished  by  a  small 
expenditure  of  force,  it  would  seem  natural  to  connect  them  by  a  rod,  and  also 
that  the  experiment  would  be  within  the  ordinary  scope  of  the  mechanic 
who  is  in  charge  of  the  work  of  construction.  The  simplicity  of  the  device 
may  lead  us  to  disregard  the  inventive  skill  which  produced  it,  but  it  was,  in 
our  opinion,  an  ordinary  mechanical  experiment  appearing  in  a  new  place. 
When  it  is  enlarged  to  meet  the  needs  of  enlarged  train  service,  the  looped  wire 
becomes  a  series  of  levers,  but  the  improvement,  in  its  original  and  patented 
form,  was  an  obvious  and  natural  one.  —  Mayor  v.  American,  70  Fed.  853; 
17  C.  C.  A.  467. 

It  is  simply  the  case  of  an  employment  for  a  new  use,  and  nothing  more,  and 
falls  within  the  general  doctrine  of  those  cases  in  which  it  has  been  so  many 
times  held  that  the  mere  extension  of  a  well-known  device  into  another  field 
of  usefulness,  where  the  transfer  does  not  involve  the  faculty  of  inventive 
genius,  will  not  support  a  patent.  —  Schreiber  v.  Grimm,  72  Fed.  671 ;  19 
C.  C.  A.  67. 

'  Distinguishing,  Potts  v.  Creager,  155  U.  S.  597;  Electric  v.  LaRue,  139  U.  S. 
601-  Topliff  v.  Topliff,  145  U.  S.  156;  Barbed  Wire  Case,  143  U.  S.  275;  Sessions 
v.  Romadka,  145  U.  S.  29. 

Nor  is  it  invention  to  inclose  the  operative  mechanism  in  an  old  bicycle, 
double  dish  shell  when  used  for  a  bicycle  bell,  instead  of  mounting  it  upon  a 
standard,  for  a  call  bell;  affixing  it  to  a  door  jam  for  a  door  bell;  or  arranging 
it  to  engage  with  an  opening  window  sash  for  a  burglar  alarm.  —  New  De- 
parture v.  Bevin,  73  Fed.  469;  19  C.  C.  A.  534. 

That  the  mere  bringing  together,  in  a  new  combination,  of  old  devices 
or  elements,  especially  if  they  belong  to  the  same  art  or  to  arts  kindred  to 
that  to  which  the  combination  belongs,  does  not  constitute  invention  is  well 
settled.  "  It  is  not  enough  that  a  thing  shall  be  new,  in  the  sense  that  in 
the  shape  or  form  in  which  it  is  produced  it  shall  not  have  been  before  known 
and  that  it  shall  be  useful,  but  it  must,  under  the  constitution  and  the  statute, 
amount  to  an  invention  or  discovery."  —  Interior  v.  Perkins,  80  Fed.  528; 
25  C.  C.  A.  613. 

Thompson  v.  Boisselier,  114  U.  S.  1;  Hill  v.  Wooster,  132  U.  S.  693;  Burt 
v.  Evory,  133  U.  S.  349;    Pickering  v.  McCullough,  104  U.  S.  310;    Florsheim  v. 


§  672  INVENTION  617 

Schilling,  137  U.  S.  64;   Adams  v.  Stamping  Co.  141  U.  S.  539;    Deere  v.  Case, 
56  Fed.  841. 

The  adaptation  of  an  old  device  to  a  new  and  uncontemplated  use,  involving 
mere  change  of  detail  and  arrangement  is  not  invention.  —  Eastman  v.  Getz, 
84  Fed.  458;  28  C.  C.  A.  459. 

In  view  of  the  use  of  a  string  wrapper  in  the  form  of  an  envelope  for  letters, 
it  was  not  invention  to  apply  the  string  to  wrappers  or  envelopes  for  news- 
papers. —  Williams  v.  Wrapper,  84  Fed.  197;  28  C.  C.  A.  325. 

It  has  long  been  settled  that  a  mere  use  or  function  is  not  the  subject  of 
a  patent,  and  also  that  "  the  inventor  of  a  machine  is  entitled  to  the  benefit 
of  all  the  uses  to  which  it  can  be  put,  no  matter  whether  he  conceived  the 
idea  of  the  use  or  not."  Roberts  v.  Ryer,  91  U.  S.  150;  Goshen  v.  Bissell, 
72  Fed.  67.  It  would  seem  to  follow  as  a  corollary  to  these  two  propositions 
that,  where  it  requires  substantially  no  change  in  the  old  device  to  adapt  it 
to  the  new  use,  such  adaptation  cannot  be  the  subject  of  a  patent,  no  matter 
how  remote  and  unthought  of  the  use  may  be,  provided  no  new  force  or  mode 
of  application  be  necessary  in  carrying  on  such  use;  otherwise,  in  case  the 
device  has  been  patented,  the  right  of  monopoly  of  the  prior  patentee  is 
invaded  by  excluding  him  from  a  use  of  a  machine  which,  by  the  rule  stated 
and  the  authorities  cited  above,  he  is  entitled  exclusively  to  enjoy.  If,  how- 
ever, the  adaptation  of  the  old  machine  to  the  new  use  involves  a  change  in 
its  form  or  operation,  it  may,  by  the  changes  and  very  newness  of  the  use 
or  function,  become  either  a  new  machine  or  an  improvement  on  an  old 
machine,  and  be  patentable  as  such ;  or  the  new  use  of  the  old  machine  may 
result  in  a  new  product,  which  is  itself  patentable ;  or  the  use  may  be  a  step 
in  a  new  and  patentable  process.  — ■  Stearns  v.  Russell,  85  Fed.  218;  29  C. 
C.  A.  121. 

Penna.  v.  Locomotive,  110  U.  S.  490;  reviewing  Potts  v.  Creager,  155  U  S 
597;  Schreiber  v.  Grimm,  72  Fed.  671;  Electric  v.  La  Rue,  139  U.  S.  601;  Col- 
gate v.  Telegraph,  15  Blatch.  365;  Williames  v.  McNeeley,  64  Fed.  766;  Howe 
v.  Abbott,  2  Story,  190;  Bean  v.  Smallwood,  2  Story,  408;  Knapp  v.  Morss, 
150  U.  S.  221;  Aron  v.  Railroad,  132  U.  S.  85;  Ansonia  v.  Electrical,  144  U  S 
11;  Trimmer  v.  Stevens,  137  U.  S.  423;  Dunbar  v.  Tack  Co.  4  B.  &  A.  518; 
Moffitt  v.  Rogers,  8  Fed.  147;  Miller  v.  Foree,  116  U.  S.  22;  Manufacturing  Co. 
v.  Cary,  147  U.  S.  623;  Kay  v.  Marshall,  2  Web.  Pat.  Cas.  36;  Harwood  v.  Rail- 
way, 11  H.  L.  Cas.  654;  McClain  v.  Ortmayer,  141  U.  S.  419;  Knapp  v  Morss, 
150  U.  S.  221. 

Note:  This  holding  by  Judge  Taft,  undoubtedly  proper  as  applied  to  the 
case  in  hand,  is  believed  to  be  too  broad  a  statement  of  the  rule.  It  is  an 
attempt  to  draw  the  line  between  invention  and  double  use  or  mechanical 
skill ;  and  like  every  such  attempt  must  have  its  faults.  The  line  never  can 
be  drawn  in  advance  of  the  case  presented. 

The  arrangement  of  such  pipe  in  transverse  horizontal  series  with  pro- 
visions for  varying  the  heat  in  the  different  series,  is  shown  in  the  beer-cooler 
patent.  To  apply  the  apparatus  thus  disclosed  in  the  prior  art  to  the  Solvay 
column,  does  not  seem  to  us  to  have  required  any  invention  whatever.  — 
Solvay  v.  Michigan,  90  Fed.  818;  33  C.  C.  A.  285. 

Attention  is  called  to  the  circumstance  that,  when  the  former  opinion  of 
this  court  was  handed  down  (Feb.  27,  1894,  60  Fed.  87),  the  Supreme  Court 
had  not  decided  Potts  v.  Creager,  (1895)  155  U.  S.  597,  15  Sup.  Ct.  194.  It 
is  not  thought,  however,  that  that  case  lays  down  any  new  principle  of  law, 
nor  that  it  has  overruled  the  earlier  decisions  which  were  cited  in  Briggs  v. 


618  THE    FIXED    LAW    OF    PATENTS  §  672 

Ice  Co.  On  the  contrary,  it  indicates  quite  clearly  that  the  question  of  so- 
called  double  use  —  whether,  that  is  to  say,  the  new  use  is  so  nearty  analogous 
to  the  former  one  that  the  applicability  of  the  device  to  its  new  use  would 
occur  to  a  person  of  ordinary  mechanical  skill  —  is  one  dependent  upon  the 
peculiar  facts  of  each  case.  It  would  be  difficult  to  find  uses  more  analogous 
than  we  have  here.  If  the  apparatus  for  raising  and  lowering  had,  in  its 
earlier  use,  been  applied,  for  instance,  to  the  movements  of  ore  buckets  in  a 
shaft,  it  might,  perhaps,  be  urged  that  the  analogy  was  imperfect;  but  here 
in  both  applications  the  apparatus  moves  a  cutter  (which  is  itself  to  remove 
surplus  material)  to  the  place  where  the  operator  wishes  it  to  cut.  It 
would  seem  to  make  little  difference  that  the  workmen  who  plane  wood  do 
not  plane  ice.  In  Potts  v.  Creager,  the  Supreme  Court  approved  their  former 
decision  in  Brown  v.  Piper,  91  U.  S.  40,  where  a  patent  for  preserving  fish  for 
food  purposes  was  held  to  be  without  patentable  novelty,  in  view  of  an  earlier 
patent  for  a  "  corpse  preserver  "  used  in  the  undertaker's  art.  —  Briggs  v 
Duell,  93  Fed.  972;  36  C.  C.  A.  38. 

Stearns  v.  Russell,  85  Fed.  218;  Rogers  v.  Fitch,  81  Fed.  959. 

But  it  is  said  that  in  the  "  furniture  caster  art  "  such  a  spring  made 
integral  with  the  caster  socket  is  not  shown,  and  that  it  may  be  invention  to 
transfer  a  device  from  one  art  to  another.  Potts  v.  Creager,  155  U.  S.  597. 
But  the  transfer  has  plainly  been  made  from  arts  where  the  spring  was 
integral  with  the  socket,  and  where  its  purpose  and  function  was  precisely 
that  to  which  it  was  applied  in  Berkey's  device.  No  change  in  form  has  been 
made  to  adopt  (adapt)  the  device  to  a  new  application.  No  difficulties  of 
adaptation  have  had  to  be  cleared  away.  Such  a  change  from  even  a  non- 
analogous  art  cannot  be  regarded  as  involving  invention.  —  Standard  v. 
Caster,  113  Fed.  162;  51  C.  C.  A.  109. 

Schreiber  v.  Grimm,  72  Fed.  671. 

There  was  no  substantial  difference  in  the  method  or  purpose  in  using  zinc 
as  a  means  of  retaining  Moxham's  plate  in  its  pocket  over  its  former  well- 
known  use  in  other  branches  of  the  founder's  or  iron  worker's  art.  Its  use  by 
Moxham  was  plainly  analogous,  although  never  before  applied  in  railway 
structure.  It  is  merely  a  case  of  new  use  without  any  change  in  the  method 
of  using  the  old  element  to  adapt  it  to  the  new  use  or  any  new  mode  of 
application.  —  Johnson  v.  Toledo,  119  Fed.  885;  56  C.  C.  A.  415. 

Mfg.  Co.  v.  Cary,  147  TJ.  S.  623;   Potts  v.  Creager,  155  U.  S.  597. 

It  is  not  invention  to  combine  old  devices  into  a  new  article  without 
producing  any  new  mode  of  operation.  —  Greist  v.  Parsons,  125  Fed.  116; 
60  C.  C.  A.  34. 

Walker  Pat.  sec.  37;  Burt  v.  Evory,  133  U.  S.  349;  Florsheim  v.  Schilling, 
137  U.  S.  64;   Interior  v.  Perkins,  80  Fed.  528;   Kelly  v.  Clow,  89  Fed.  297. 

The  thought  that  a  machine  or  combination  which  is  discovered  in  a  remote 
art,  where  it  is  used  to  perform  another  function,  a  machine  or  combination 
which  was  never  designed  by  its  maker,  was  never  actually  used,  and  was  not 
apparently  suitable,  to  accomplish  the  desideratum  may  be  adopted 
to  perform  the  requisite  function,  may  be,  and  frequently  is,  with 
proper  mechanical  adaptation,  the  result  of  the  exercise  of  the  inventive 
faculty.  But  a  thought  which  would  naturally  occur  to  any  mechanic  familiar 
with  the  object  to  be  attained,  and  with  an  existing  machine  or  combination 
discovered  in  the  same  art  or  in  one  nearly  analogous  to  it,  designed,  suitable, 
and  used  to  perform  a  similar  function,  that  this  machine  or  combination 
can  be  used  or  adapted  to  perform  the  function  desired,  is  not  the  product  of 


§673  INVENTION  619 

inventive  genius,  but  the  mere  result  of  the  application  of  the  skill  of  the 
mechanic  to  the  subject  under  consideration.  The  application  of  an  old  device 
to  a  new  use  is  not  in  itself  an  invention  or  capable  of  protection  by  a  patent. 
A  prior  patentee  who  has  plainly  described  and  claimed  his  machine  or  com- 
bination has  the  right  to  every  use  to  which  his  device  can  be  applied,  and  to 
every  way  in  which  it  can  be  utilized  to  perform  its  function,  whether  he  was 
aware  of  all  these  uses  or  methods  of  use  when  he  claimed  and  secured  his 
monopoly  or  not.  —  Mallon  v.  Gregg,  137  Fed.  68;  69  C.  C.  A.  48. 

National  v.  Interchangeable,  106  Fed.  693;  Roberts  v.  Ryer,  91  U.  S.  150; 
Miller  v.  Mfg.  Co.  151  U.  S.  186;  Goshen  v.  Bissell,  72  Fed.  67;  Stearns  v.  Russell, 

85  Fed.  218;   Manufacturing  Co.  v.  Neal,  90  Fed.  725;  Tire  Co.  v.  Lozier,  90  Fed. 
732. 

That  the  mere  adaptation  of  an  elevator  with  closing  floors  to  use  in  a 
refrigerating  plant,  although  useful,  is  not  invention.  —  Wills  v.  Scranton, 
153  Fed.  181;  82  C.  C.  A.  355. 

Conceding  that  plaintiff  was  the  first  to  apply  these  old  interlocking 
systems  to  an  old  flat  mask  of  flexible  material,  we  discover  no  invention  in 
his  doing  so,  but  only  the  capacity  of  a  skilled  mechanic  addressing  himself 
to  the  particular  problem  in  question.  —  Merrill-Soule  v.  Star,  159  Fed.  142; 

86  C.  C.  A.  332. 

Surely  invention  cannot  be  claimed  in  the  appropriation  of  an  old  device 
by  reason  of  the  unthought  of  and  undisclosed  function  in  question  (dove- 
tail armature  lamina?).  —  Bullock  v.  General,  162  Fed.  28;  89  C.  C.  A.  68. 

§  673.     Old  Device,  New  Use  —  Patentable. 

Though  the  inventor  be  entitled  to  the  merit  of  being  the  first  to  employ 
an  old  combination  in  a  new  and  useful  way,  if  the  use  be  analogous,  his  right 
to  a  patent  must  depend  upon  the  novelty  of  means  employed  and  not  the 
end  accomplished.  —  Aron  v.  Manhattan,  132  U.  S.  84;  33  L.  Ed.  272; 
10  S.  Ct.  24. 

The  patent  for  the  adaptation  of  old  and  well  known  means  to  a  new  use 
with  new  material  if  sustainable  at  all  must  be  limited  specifically.  —  Wright 
v.  Clinton,  67  Fed.  790;  14  C.  C.  A.  646. 

Well-known  cases  are  cited  on  behalf  of  the  defendants,  in  which  it  has  been 
held  that  the  application  of  an  old  process  or  machine  to  a  similar  or  analo- 
gous subject,  with  no  change  in  the  manner  of  application,  and  no  result 
substantially  distinct  in  its  nature,  will  not  sustain  a  patent,  even  if  the  new 
form  of  result  had  not  before  been  contemplated.  Without  dissenting  the  least 
from  this  doctrine,  we  do  not  regard  it  as  applicable  to  the  present  case.  It  has 
never  been  held  that  where  the  structures  compared  belong  to  totally  dis- 
tinct departments  of  invention  —  to  practical  arts  that  have  no  connection 
with  or  similarity  to  each  other  —  the  subsequent  inventor  is  precluded  from 
using  well-known  mechanical  contrivances  or  devices  that  have  become  the 
common  stock  of  manufacturers.  Such  a  view  would,  in  the  mechanical  arts, 
restrict  the  operation  of  the  patent  statutes  to  the  first  and  most  striking 
efforts  of  invention,  and  leave  no  field  open  for  the  exercising  of  the  inventive 
power  in  devising  the  numerous  less  conspicuous  machines  and  apparatus 
that  do  so  much  to  promote  the  convenience  and  comfort  of  daily  life.  — 
Hillborn  v.  Hale,  69  Fed.  958;  16  C.  C.  A.  569. 

When  Beach  took  this  machine  from  another  art,  where  it  was  doing 
different  work,  and,  by  modification,  adapted  it  to  different  use  in  his  own 


620  THE    FIXED    LAW    OF    PATENTS  §  673 

art,  and  thereby  gave  to  his  own  art  the  first  machine  it  ever  had  which 
could  do  work  necessary  to  be  done,  and  always  theretofore  done  by  hand, 
he  made  an  invention  to  the  fruits  of  which  he  should  be  entitled.  —  Inman 
v.  Beach,  71  Fed.  420;  18  C.  C.  A.  165. 

Admitting  a  closer  resemblance  and  analogy  between  the  two  classes  of 
machines,  it  by  no  means  follows  that  the  device  in  suit  would  come  within 
the  rule  of  "  a  double  use,"  and  thus  fall  short  of  invention  and  patentability. 
—  Taylor  v.  Sawyer,  75  Fed.  301 ;  22  C.  C.  A.  203. 

Potts  v.  Creager,  155  U.  S.  607;  DuBois  v.  Kirk,  158  U.  S.  58;  Tamage  v.  Zahn, 
70  Fed.  1003;  Topliff  v.  Topliff,  145  U.  S.  156. 

Where  an  inventor  has  devised  a  machine  or  tool  for  doing  work  which 
previously  had  been  done  only  by  hand,  and  the  utility  of  the  device  is  at 
once  recognized  by  the  trade,  the  court  should  hesitate  to  declare  the  patent 
void  for  want  of  invention  simply  because  what  was  done  may  be  affected 
by  the  modification  of  an  old  structure,  used  for  a  different  purpose.  — 
Reynolds  v.  Buzzell,  96  Fed.  997;  37  C.  C.  A.  656. 

The  fact  that  this  conveyor  is  found  in  a  different  place  in  a  former 
combination  will  not  defeat  the  claim  for  invention,  if  the  new  location  is 
such  as  to  produce  a  new  and  useful  result.  —  Stillwell-Bierce  v.  Eufaula, 
117  Fed.  410;  54  C.  C.  A.  584. 

Star  v.  General,  111  Fed.  398;  Dowagiac  v.  Superior,  115  Fed.  886. 

It  is  true  that  East  has  not  discovered  any  new  elementary  material  for 
the  making  of  barrels,  and  the  elementary  principle  upon  which  barrels  are 
constructed  is  old;  but  he  has  adopted  a  new  form,  and  discovered  a  new 
combination,  a  diversity  of  method  and  a  diversity  of  effect,  a  new  modus 
operandi,  whereby  it  has  been  practically  demonstrated  that  cheaper  and 
better  results  are  obtained,  which  benefit  the  world;  and  therefore,  under 
the  principles  and  precedents,  he  has  become  entitled  to  that  protection 
which  the  patent  laws  are  intended  to  secure  for  "  any  new  and  useful  im- 
provement on  any  art,  machine,  manufacture,  or  composition  of  matter." 
Such  combination,  however  simple  and  obvious,  if  entirely  new,  is  patentable, 
and  not  the  less  so  because  up  to  a  certain  point  he  uses  old  methods  and  old 
materials.  —  Farmers'  v.  Spruks,  127  Fed.  691;  62  C.  C.  A.  447. 

It  performs  a  beneficial  function  for  which  the  device  of  the  prior  art 
was  not  designed,  adapted,  or  used.  We  are  of  opinion  that  this  creation 
involved  invention.  —  Cleveland  v.  Kauffman,  135  Fed.  360;  68  C.  C.  A.  658. 

Topliff  v.  Topliff,  145  U.  S.  161;  Clough  v.  Barker,  106  TJ.  S.  176;  Wickelman 
v.  Dick,  88  Fed.  266;   Boyer  v.  Keller,  127  Fed.  130. 

Felt  discovered  the  possibility  of  this  new  use  of  a  series  of  pivoted  levers 
in  performing  additive  subtraction,  and  he  adapted  them  to  this  new  use. 
Such  use  was  novel,  and  has  proved  of  great  utility.  These  circumstances 
negative  the  conclusion  that  the  step  taken  by  Felt  was  obvious  to  any  skilled 
mechanic.  —  Comptograph  v.  Mechanical,  145  Fed.  331 ;  76  C.  C.  A.  205. 

Hobbs  v.  Beach,  180  U.  S.  383;  Loom  Co.  v.  Higgins,  105  U.  S.  580;  Krementz 
v.  S.  Cottle  Co.  148  TJ.  S.  556;  Potts  v.  Creager,  155  U.  S.  597;  Dowagiac  v. 
Superior,  115  Fed.  886;  Brunswick  v.  Thum,  111  Fed.  904;  Schenck  v.  Singer, 
77  Fed.  841. 

All  of  the  elements  were  old,  and  if  Avery  made  merely  a  selection  and 
rearrangement  of  old  elements,  without  producing  any  new  result,  want  of 
invention  would  be  clear.    Geist  v.  Parsons,  125  Fed.  116.    Or  if  he  were  only 


§  674  INVENTION  621 

a  detail  improver,  he  could  not  exclude  others  from  gleaning  in  the  same  open 
fields.  Milwaukee  v.  Brunswick,  126  Fed.  171.  But,  though  old  elements 
were  used,  the  combination  was  not  merely  new  in  specific  construction, 
but  was  new  in  kind ;  and  in  this  very  ancient  and  familiar  art  we  do  not  see 
that  the  most  gifted  inventor  could  do  more  than  produce  a  new  result  by 
a  new  mode  of  operation  in  some  minor  adjunct  of  the  main  structure.  Inas- 
much as  Avery  did  this,  he  was  entitled  to  generic  as  well  as  specific  claims. 
Lamson  v.  Hillman,  123  Fed.  416;  Ries  v.  Barth,  136  Fed.  850.  —Avery 
v.  Case,  148  Fed.  214;  78  C.  C.  A.  110. 

If  the  Dodge  patent  (prior  and  mechanical)  was  of  such  a  nature  as  to  sug- 
gest a  transference,  by  appropriate  means,  from  the  purely  mechanical  to  the 
electric  art,  of  the  invention  embodied  in  the  Parcelle  (electrical)  patent, 
then  the  Parcelle  patent  contained  no  invention.  And  in  this  connection  it 
is  certainly  a  singular  thing  that  the  ten  patents  from  the  mechanical  art, 
to  which  we  have  referred,  should  have  been  in  existence  for  so  many  years 
without  ever  having  suggested  an  expedient,  like  the  Parcelle  patent,  for  the 
purpose  of  supplying  a  needed  want  in  the  electrical  art.  Obviously,  the 
relation  between  the  mechanical  and  electric  arts  was  not  so  close  and  ap- 
parent- that  it  would  follow  as  a  matter  of  course  that  the  invention  of  a 
method  of  bolting  a  bedstead  together,  or  of  securing  a  wooden  covering  on 
an  iron  pulley,  would,  of  itself,  furnish  a  suggestion  for  solving  the  problem  of 
detachably  fastening  the  laminated  pole  pieces  of  a  field  magnet  to  the  solid 
yoke  thereof.  —  General  v.  Bullock,  152  Fed.  427;  81  C.  C.  A.  569. 

Potts  v.  Creager,  155  U.  S.  597;   McClain  v.  Ortmayer,  141  U.  S.  419. 

To  accomplish  a  new  and  useful  result  within  the  meaning  of  the  patent 
law,  (R.  S.  4886),  it  is  not  necessary  that  a  result  before  unknown  should  be 
brought  about,  but  it  is  sufficient  if  an  old  result  is  accomplished  in  a  new  and 
more  effective  way.  If  the  value  and  effectiveness  of  a  machine  are  sub- 
stantially increased,  the  new  combination  of  old  elements  which  does  it  is 
patentable.  —  St.  Louis  v.  American,  156  Fed.  574;  84  C.  C.  A.  340. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Cantrell  v.  Wallick,  117  U.  S.  689;  Ander- 
son v.  Collins,  122  Fed.  451. 

Note:  This  rule  as  applied  in  this  case  is  correct ;  but  as  broadly  stated  it  is 
entirely  incorrect,  for  it  is  the  novelty  of  the  new  elements  in  combination 
and  not  the  effectiveness  of  the  result  wherein  the  patentability  resides. 

The  reference  to  sundry  sawmill  patents  showing  conveying  tables  and 
driven  chains  extending  between  them  for  transferring  logs  or  lumber  from 
one  table  to  the  other  do  not  show  anticipations.  There  is  little  analogy 
between  the  problem  involved  in  conveying  and  transferring  rigid,  cold 
bodies  from  one  conveying  table  to  another,  and  that  presented  when  the 
subject  is  long,  flexible  sheets  of  hot  metal,  which  must  be  cooled  uniformly 
and  without  warping  while  the  carrying  and  transferring  is  going  on.  We 
must  not  be  misled  by  the  apparent  resemblance  between  a  device  taken 
from  one  industry  and  applied  to  a  new  use  in  another  when  the  original 
inventor  never  designed  nor  actually  used  the  device  for  the  purpose  to  which 
it  has  been  put.  —  National  v.  Aiken,  163  Fed.  254 ;  C.  C.  A. 

Potts  v.  Creager,  155  U.  S.  597;  Western  v.  La  Rue,  139  U.  S.  601;  Stearns 
v.  Russell,  85  Fed.  218;  Heaton-Peninsular  v.  Elliott,  58  Fed.  220;  Topliff  v 
ToplifT,  145  U.  S.  156. 

§  674.     Old  Elements,  New  Result. 

Patented  inventions  are  also  made  which  embrace  both  a  new  ingredient 
and  a  combination  of  old  ingredients  embodied  in  the  same  machine.  Even 
more  particularity  of  description  is  required  in  such  a  case,  as  the  property 


622  THE    FIXED    LAW    OF    PATENTS  §  674 

of  the  patentee  consists  not  only  in  the  new  ingredient,  but  also  in  the  new 
combination,  and  it  is  essential  that  his  invention  shall  be  so  fully  described 
that  others  may  not  be  led  into  mistake,  as  no  other  person  can  lawfully 
make,  use  or  vend  a  machine  containing  such  new  ingredient  or  such  new 
combination.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Valid  letters  patent  may  be  granted  for  an  invention  which  consists 
entirely  in  a  new  combination  of  old  ingredients,  provided  it  appears  that  the 
new  combination  of  the  ingredients  produce  a  new  and  useful  result,  but  the 
rule  is  equally  well  settled,  in  such  a  case,  that  the  invention  consists  merely 
in  the  new  combination  of  the  ingredients,  and  that  a  suit  for  infringement 
cannot  be  maintained  against  a  party  who  constructs  or  uses  a  substan- 
tially different  combination,  even  though  it  includes  the  exact  same  in- 
gredients. —  Gill  v.  Wells,  89  U.  S.  1 ;  22  L.  Ed.  699. 

Gould  v.  Rees,  15  Wall.  194. 

The  combination  expressed  in  the  claim,  viewed  as  an  entirety  and  in 
reference  to  its  purposes  and  uses,  is  new,  and  produces  a  new  and  useful 
result.  And  it  is  no  objection  to  the  validity  of  a  patent  for  such  a  com- 
bination that  some  of  the  elements  of  which  it  is  composed  are  not  new.  — 
Brown  v.  Guild,  90  U.  S.  181;  23  L.  Ed.  161. 

The  combination  to  be  patentable  must  produce  a  different  force  or  effect, 
or  result  in  the  combined  forces  or  processes  from  that  given  by  their  separate 
parts.  There  must  be  a  new  result  produced  by  their  union;  if  not  so,  it 
is  only  an  aggrefation  of  separate  elements.  —  Reckendorfer  v.  Faber,  92 
U.  S.  347;  23  L.  Ed.  719. 

Every  element  found  in  complainant's  machine  is  found  in  a  prior  patent, 
and  was  well  known  to  the  art.  His  patent,  therefore,  must  be  treated  as  for 
a  combination  of  well-known  devices  and  elements.  —  Jones  v.  Munger,  49 
Fed.  61 ;  1  C.  C.  A.  158. 

No  pre-existing  machine  contained  the  specific  means  employed.  It  is  also 
reasonably  certain  from  the  history  of  the  machine  that  these  claims  describe 
combinations  which  are  practically  operative  and  successful,  and  a  manifest 
weakness  and  insecurity  characterize  the  defendant's  attempts  to  deny 
patentable  invention.  —  Bagley  v.  Empire,  58  Fed.  212;  7  C.  C.  A.  191. 

But  notwithstanding  the  fact  that  all  the  parts  are  old,  in  the  sense  that 
each  of  them  may  be  found  in  previous  patents,  the  combination  of  parts  in 
the  patent  in  suit  brings  about  a  new  result,  and  involves  patentable  inven- 
tion. —  Columbus  v.  Robbins,  64  Fed.  384;   12  C.  C.  A.  174. 

The  new  use  of  an  old  compound  has  been  held  to  be  patentable.  — 
Thomson-Houston  v.  National,  65  Fed.  427;   12  C.  C.  A.  671. 
Muntz  v.  Foster,  2  Web.  P.  C.  93;   Merwin,  306. 

Nor  is  the  complainants'  device  only  an  aggregation  of  old  parts.  The 
metal  and  the  rubber  do  not  act  independently,  but  co-operate  in  producing 
a  new  result,  and  this  constitutes  a  patentable  combination.  —  Thomson- 
Houston  v.  National,  65  Fed.  427;  12  C.  C.  A.  671. 

Reckendorfer  v.  Faber,  92  U.  S.  357;  Hailes  v.  Van  Wormer,  20  Wall.  353; 
Pickering  v.  McCullough,  104  U.  S.  310. 


§  674  INVENTION  623 

"  If  a  new  combination  and  arrangement  of  known  elements  produce  a  new 
and  beneficial  result,  never  obtained  before,  it  is  evidence  of  invention." — 
Muller  v.  Lodge,  77  Fed.  621 ;  23  C.  C.  A.  357. 

Quoting,  Loom  Co.  v.  Higgins,  105  U.  S.  580. 

All  the  mechanisms  which  formed  the  elements  of  his  combination,  were 
old.  His  patent  was  granted,  and  it  must  stand,  if  it  stand  at  all,  not  upon 
the  ground  that  he  invented  or  discovered  any  new  machine  or  mechanical 
device,  but  on  the  ground  that  he  organized  a  new  combination  of  old  and 
well-known  elements,  by  means  of  which  a  new  and  useful  result  was  obtained. 
—  Adams  v.  Lindell,  77  Fed.  432;  23  C.  C.  A.  223. 

Thompson  v.  Bank,  53  Fed.  250;  Seymour  v.  Osborne,  11  Wall.  516;  Gould  v. 
Rees,  15  Wall.  187. 

The  fact  that  each  and  every  element  of  the  combination  was  at  the  date 
of  his  patent,  old  and  well-known,  was  not  sufficient  to  deprive  the  inven- 
tion claimed  by  him  of  novelty,  for  most  of  the  inventions  of  the  present  day 
consist  of  the  utilization  and  adaptation  of  mechanical  appliances  that  are 
themselves  old  and  well-known.  Using  an  old  process  and  utilizing  a  well- 
known  device,  by  combinations  which  produce  results  not  theretofore  accom- 
plished by  the  said  process  or  device,  is  in  fact  invention.  —  American  v. 
Streat,  83  Fed.  700;  28  C.  C.  A.  18. 

The  new  result  of  a  patentable  combination  is  a  result  which  is  new  and 
distinguishable  as  compared  with  results  produced  by  the  elements  in  their 
separated  state,  or  as  assembled  in  a  mere  aggregation,  without  functional 
relations  to  each  other.  A  combination  is  not  unpatentable  merely  because  its 
results  may  also  have  been  produced  by  other  combinations.  —  Deere  v. 
Rock  Island,  84  Fed.  171 ;  28  C.  C.  A.  308. 

Rob.  Pat.  156,  n.;    Reckendorfer  v.  Faber,  92  U.  S.  357. 

It  is  a  familiar  rule  that  where  the  thing  patented  is  an  entirety,  the 
mere  fact  that  the  different  elements  are  taken  from  different  old  devices  or 
exhibits,  does  not  create  conclusion  of  non-invention.  —  National  v.  Elsas, 
86  Fed.  917;  30  CCA.  487. 

Imhauser  v.  Buerk,  101  U.  S.  647;  Dederick  v.  Cassell,  9  Fed.  306. 

But,  while  all  the  elements  of  appellant's  patent  may  be  found  singly  in 
the  ore  crushers  which  preceded  it,  the  appellee's  invention  was  in  its  combina- 
tion a  distinct  departure  in  the  art.  —  Trent  v.  Risdon,  102  Fed.  635 ;  42 
C  C  A.  529. 

The  device  was  no  mere  mechanical  device,  or  a  mere  juxtaposition  of  old 
elements,  which  only  continued  to  exercise  their  former  isolated  functions. 
In  their  new  relation,  the  three  elements  were  made  to  so  mutually  co-operate, 
co-act,  and  in  effect,  unify  with  each  other,  that  they  produced  a  new  unitary 
result.  —  Bliss  v.  Reed,  106  Fed.  314;  45  C  C  A.  304. 

A  new  combination  of  old  elements  whereby  a  new  and  useful  result  is  pro- 
duced, or  an  old  result  is  attained  in  a  more  facile,  economical  and  efficient 
way,  may  be  protected  by  patent  as  securely  as  a  new  machine  or  composi- 
tion of  matter.  —  National  v.  Interchangeable,  106  Fed.  693;  45  C  C.  A. 
544. 

Seymour  v.  Osborne,  11  Wall.  516;  Gould  v.  Rees,  15  Wall.  187;  Thompson  v. 
Bank,  53  Fed.  250. 


624  THE   FIXED   LAW   OF   PATENTS  §  674 

If  they  accomplished  it  in  a  new  way,  and  to  devise  them  involved  thought 
and  ingenuity  beyond  the  ordinary  skill  of  the  calling,  they  were  features  of 
patentable  novelty.  We  do  not  regard  the  prior  patents  for  improvements 
in  cheese-making  apparatus  as  sufficient  per  se  to  negative  invention  in 
introducing  and  adapting  these  appliances.  The  appliances  for  a  double  hot 
water  circulation  shown  in  those  patents  are  quite  dissimilar  in  details  of 
construction  and  arrangement  to  those  of  the  patent  in  suit,  and  it  is  doubtful 
whether  their  use  in  supplying  heated  water  to  control  the  temperature  of 
milk  during  the  process  of  cheese-making  can  be  regarded  as  a  cognate  case. 
—  Brickill  v.  Mayor,  112  Fed.  65;  50  C.  C.  A.  1. 

It  is  true  that  the  mere  bringing  together  of  old  elements  found  in  older 
machines  of  the  same  or  a  kindred  art  to  perform  the  same  functions  and  to 
effect  the  same  mechanical  result  does  not  constitute  patentable  invention. 
But  the  converse  of  the  proposition  is  equally  true,  —  that  if  a  new  organiza- 
tion of  old  elements  is  such  that  it  produces  a  new  mode  of  operation  and  a 
beneficial  result,  there  may  be  a  patentable  invention.  —  Dowagiac  v. 
Superior,  115  Fed.  886;  53  C.  C.  A.  36. 

Campbell  v.  Duplex,  101  Fed.  282;  Overweight  v.  Vogt,  102  Fed.  957;  Burn- 
ham  v.  Mfg.  Co.  110  Fed.  765;  Rob.  Pat.  sec.  155;   Star  v.  General,  111  Fed.  398. 

While  it  is  true  that  the  mere  bringing  together  of  old  elements  found  in 
older  machines  of  the  same  or  a  kindred  art,  to  perform  the  same  functions 
and  to  effect  the  same  mechanical  results,  does  not  constitute  patentable 
invention,  still,  where  a  new  organization  of  old  elements  is  such  that  it 
produces  a  new  mode  of  operation  and  a  beneficial  result,  there  may  be  a 
patentable  invention.  —  Dowagiac  v.  Minnesota,  118  Fed.  136;  55  C.  C. 
A.  86. 

Rob.  Pat.  sec.  155;   Dowagiac  v.  Superior,  115  Fed.  886. 

The  fact  that  the  machine  is  an  aggregation  of  known  devices  does  not 
show  that  it  is  lacking  in  novelty.  A  machine  of  necessity  is  made  of  known 
things.  —  American  v.  American,  128  Fed.  709;  63  C.  C.  A.  307. 

Note:  The  judge  making  this  statement  did  not  say  what  he  meant;  he 
did  not  mean  by  the  use  of  the  word  "  aggregation  "  what  that  word  usually 
stands  for  in  the  patent  law.  Moreover,  the  statement  that  a  machine  is  of 
necessity  made  of  known  things  is  generally,  but  not  always,  true. 

Ries  got  together  a  collection  of  old  elements.  Motors,  circuits,  switches 
to  close  the  circuits,  levers,  resistance  coils,  solenoids,  and  other  actuating 
mechanisms  for  moving  an  arm  over  contact  points,  dashpots,  and  adjustable 
dashpots  were  all  old.  The  prior  patents  prove  this.  They  show  the  elements 
severally,  and  some  in  combinations.  But  none  exhibits  Ries's  thought. 
That  is,  Ries  disclosed  to  the  world  a  new  desirable  result  to  be  attained,  and 
devised  a  new  means  by  which  the  new  idea  could  be  put  to  use.  Than  this, 
there  is  no  higher  quality  of  invention.  —  Ries  v.  Barth,  136  Fed.  850;  69 
C.  C.  A.  528. 

Morley  v.  Lancaster.  129  U.  S.  263. 

Strictly  speaking  the  combinations  are  not,  as  we  have  seen,  of  old  elements, 
but  conceding  that  the  elements  are  all  old,  it  cannot  be  denied,  we  think, 
that  the  combination  is  not  only  new  but  that  it  produces  a  new  result  or,  at 
least,  an  old  result  in  a  better  way  than  any  device  which  preceded  it.  The 
elements  of  the  combination  so  act  that  each  qualifies  every  other  and  the 
new  result  is  due  to  their  co-operative  action.  Remove  one  and  the  machine 
becomes  inoperative ;  it  fails  to  produce  the  desired  result.  —  International 
v.  Dey,  142  Fed.  736;  74  C.  C.  A.  68. 


§  675  INVENTION  625 

By  such  coaction  the  three  elements,  each  of  which,  in  itself,  we  may  as- 
sume was  old  —  effected  a  novel  and  highly  useful  advance  in  armature 
construction.  —  Prudential  v.  Westinghouse,  158  Fed.  985;  86  C.  C.  A.  189. 

§  675.     Old  Elements,  Old  Result. 

The  elements  of  the  claim  of  the  patent  in  suit  were  all  old;  the  result 
produced  was  well  known;  the  combination  of  the  elements  employed  had 
been  used  for  other  purposes.  Held:  void.  —  Stimpson  v.  Woodman,  77 
U.  S.  117;  19  L.  Ed.  866. 

It  was  well  known  that  the  points  of  a  staple  on  their  outer  sides  would 
force  the  points  together  in  use;  and  there  was  no  invention  in  beveling 
the  points  of  a  fastener  so  that  they  would  both  travel  in  the  same  direction. 

—  Double  Pointed  v.  Two  Rivers,  109  U.  S.  117;  27  L.  Ed.  877;  3  S.  Ct.  105. 

Obiter  dicta  on  the  English  law.     Quoting,  Saxby  v.  Gloucester,  7  Q.  B. 
Div.  305.  —  Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158;  6  S.  Ct.  1027. 
Penna.  v.  Locomotive,  110  U.  S.  490. 

While  a  combination  of  old  elements  producing  a  new  and  useful  result  will 
be  patentable,  yet  where  the  combination  is  merely  assembling  of  old  ele- 
ments producing  no  new  and  useful  result,  invention  is  not  shown.  —  Com- 
puting v.  Automatic,  204  U.  S.  609;  51  L.  Ed.  645;  27  S.  Ct.  307. 

Office  v.  Fenton,  174  U.  S.  492. 

The  mere  bringing  together  of  elements  selected  from  old  machines,  to 
perform  the  same  functions  which  they  severally  performed  in  the  machines 
from  which  they  were  taken,  and  producing  the  same  result,  is  not  invention. 

—  Campbell  v.  Duplex,  101  Fed.  282;  41  C.  C.  A.  351. 

Hailes  v.  Van  Wormer,  20  Wall.  350;  Royer  v.  Roth,  132  U.  S.  201;  Union  v. 
Keith,  139  U.  S.  530;   Wright  v.  Yuengling,  155  U.  S.  47. 

There  is  no  invention  in  merely  selecting  and  fitting  together  the  most 
desirable  parts  of  different  machines  in  the  same  art,  where  each  operates  in 
the  same  way  in  the  new  machine  that  it  did  in  the  old,  and  effects  the  same 
result.  —  Overweight  v.  Vogt,  102  Fed.  957;  43  C.  C.  A.  80. 

Hailes  v.  Van  Wormer,  21  Wall.  358;  Mfg.  Co.  v.  Robbins,  75  Fed.  17;  Stearns 
v.  Russell,  85  Fed.  218;   Campbell  v.  Duplex,  101  Fed.  282. 

The  mere  bringing  together  of  elements  selected  from  old  machines  to 
perform  the  same  functions  which  they  severally  performed  in  the  machines 
from  which  they  were  taken,  and  producing  the  same  results,  is  not  invention. 

—  Brown  v..  King,  107  Fed.  498;  46  C.  C.  A.  432. 

Union  v.  Keith,  139  U.  S.  530;  Campbell  v.  Duplex,  101  Fed.  282. 

The  application  of  an  old  structure  to  a  similar  use  is  not  invention.  (Thus 
was  the  application  of  ball-bearings  to  hair  clippers).  —  Coates  v.  Boker, 
119  Fed.  358;  56  C.  C.  A.  94. 

None  of  the  elements  was  new,  and  it  did  not  produce  a  new  result ;  but  we 
think  the  record  clearly  discloses  that  the  combination,  although  of  old 
elements,  was  new,  and  that  it  accomplished  an  old  result  in  a  more  facile, 
economical  and  efficient  way.  This  gave  it  patentable  novelty.  —  Heekin 
v.  Baker,  138  Fed.  63;  70  C.  C.  A.  559. 

National  v.  International,  106  Fed.  693. 


626  THE    FIXED  .  LAW    OF    PATENTS  §  676 

§  676.     Old  Process,  New  Use  —  Non-Patentable. 

The  adaptation  of  an  old  process  to  a  new  and  similar  use  is  not  invention ; 
and  judicial  notice  will  be  taken  of  such  common  use  in  determining  the 
question  of  invention.  —  Dunbar  v.  Myers,  94  U.  S.  187;  24  L.  Ed.  34. 

Brown  v.  Piper,  91  U.  S.  38. 

The  application  of  an  old  process  or  machine  to  a  similar  analogous  sub- 
ject, with  no  change  in  the  manner  of  application,  and  no  result  substantially 
distinct  in  its  nature',  will  not  sustain  a  patent,  even  if  the  new  form  of  result 
had  not  before  been  contemplated.  The  leading  case,  giving  American  and 
English  authorities.  —  Pennsylvania  v.  Locomotive,  110  U.  S.  490;  28  L.  Ed. 
222;  4S.  Ct.  220. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Phillips  v.  Page,  24  How.  164;  Jones 
v.  Morehead,  1  Wall.  155;  Revg.  1  Fish.  P.  C.  521;  Hicks  v.  Kelsey,  18  Wall.  670; 
Smith  v.  Nichols,  21  Wall.  112;  Brown  v.  Piper,  91  U.  S.  37;  Roberts  v.  Ryer, 
91  U.  S.  150;  Bridge  v.  Iron,  95  U.  S.  274;  Planing  v.  Keith,  101  U.  S.  479; 
Pearce  v.  Mulford,  102  U.  S.  112;  Heald  v.  Rice,  104  U.  S.  737;  Atlantic  v.  Brady, 
107  U.  S.  192;  Crane  v.  Price,  4  Man.  &  G.  580;  5  Scott  (N.  S.)  338;  1  Web. 
P.  C.  393;  Dobbs  v.  Perm.  3  Exch.  427;  Smith  v.  Dent.  Co.  93  U.  S.  486;  Dental 
v.  Davis,  102  U.  S.  222;  Bush  v.  Fox,  Macrery,  P.  C.  152;  9  Exch.  651;  5  H.  L. 
Cas.  707;  Brook  v.  Aston,  27  L.  J.  (N.  S.)  Q.  B.  145;  8  El.  &  Bl.  478;  Envelope 
v.  Seymer,  28  L.  J.  N.  S.  C.  P.  22;  5  C.  B.  (N.  S.)  164;  Harwood  v.  G.  N. 
R.  Co.  11  H.  L.  Cas.  654. 

The  patent  covers  an  old  process  applied  to  the  same  subject,  with  no 
change  in  the  manner  of  applying  it,  and  with  no  result  substantially  distinct 
in  its  nature.  It  cannot,  therefore,  be  a  valid  patent.  —  Western  v.  Ansonia, 
114  U.  S.  447;  29  L.  Ed.  210;  5  S.  Ct.  447. 

Penna.  v.  Locomotive,  110  U.  S.  490;   Vinton  v.  Hamilton,  104  U.  S.  485. 

The  application  of  an  old  process  or  machine  to  a  similar  or  analogous 
subject,  with  no  change  in  the  manner  of  applying  it  and  no  result  substan- 
tially distinct  in  its  nature  will  not  sustain  a  patent,  even  if  the  new  form  of 
result  had  not  before  been  contemplated.  —  Miller  v.  Foree,  116  U.  S.  22; 
29  L.  Ed.  552;  6  S.  Ct.  204. 

Penna.  v.  Locomotive,  110  U.  S.  490. 

The  adaptation  of  an  old  process  to  the  production  of  another  product  than 
contemplated  in  the  former  process,  with  only  mechanical  change,  is  not 
invention.  —  Eastman  v.  Getz,  84  Fed.  458;  28  C.  C.  A.  459. 

It  was  nothing  more  than  the  application  of  an  old  process  to  analogous 
matter,  producing  a  result  substantially  similar  in  its  nature,  and  was  there- 
fore entirely  lacking  in  invention.  —  De  Lamar  v.  De  Lamar,  117  Fed.  240; 
54  C.  C.  A.  272. 

Ansonia  v.  Electrical,  144  U.  S.  11;  Mfg.  Co.  v.  Cary,  147  U.  S.  623. 

It  is  a  familiar  proposition  of  law,  recognized  and  enforced  in  a  multitude 
of  cases,  "  that  the  application  of  an  old  process  or  machine  to  a  similar  or 
analogous  subject,  with  no  change  in  the  manner  of  application,  and  no  result 
substantially  distinct  in  its  nature,  will  not  sustain  a  patent,  even  if  the 
new  form  of  result  had  not  before  been  contemplated." — Neptune  v.  National, 
127  Fed.  563;  62  C.  C.  A.  345. 

Pennsylvania  v.  Locomotive,  110  U.  S.  490;  Morris  v.  McMillin,  112  U.  S.  244; 
Blake  v.  San  Francisco,  113  U.  S.  679;  St.  Germain  v.  Brunswick,  135  U.  S.  227; 
Gates  v.  Fraser,  153  U.  S.  332. 


§§  677-679  INVENTION  627 

The  mere  application  of  a  process  for  enameling  iron  to  the  enameling  of 
steel  involves  no  invention  if  the  same  result  is  obtained.  —  National  v. 
New  England,  151  Fed.  19;  80  C.  C.  A.  485. 

§  677.     Old  Process,  New  Use  —  Patentable. 

In  carrying  out  the  purpose  proposed,  the  materials  employed  were  all  old. 
It  is  also  true  that  the  steps  in  the  process  were  not  all  new.  But  the  process 
extended  beyond  the  use  of  known  materials  and  the  employment  of  the 
processes  mentioned.  A  new  product  was  the  result  differing  from  all  that 
had  preceded  it,  not  merely  in  degree  of  usefulness  and  excellence,  but 
differing  in  kind,  having  new  uses  and  properties.  We  cannot  resist  the  con- 
viction that  devising  and  forming  such  a  manufacture  by  such  a  process  and 
of  such  materials  was  invention.  —  Smith  v.  Goodyear,  93  U.  S.  486;  23 
L.  Ed.  952. 

§  678.     Omitting  Element. 

While  the  omission  of  an  element  in  a  combination  may  constitute  inven- 
tion, if  the  result  of  the  new  combination  be  the  same  as  before;  yet  if  the 
omission  of  an  element  is  attended  by  a  corresponding  omission  of  the  func- 
tion performed  by  that  element,  there  is  no  invention,  if  the  elements  retained 
perform  the  same  function  as  before.  —  Richards  v.  Chase,  159  U.  S.  477; 
40  L.  Ed.  225;  16  S.  Ct.  53. 

§  679.     Patentability  —  Definition. 

It  is  a  new  mode  of  operation,  by  means  of  which  a  new  result  is  obtained. 
It  is  this  new  mode  of  operation  which  gives  it  the  character  of  an  invention, 
and  entitles  the  inventor  to  a  patent ;  and  this  new  mode  of  operation  is,  in 
view  of  the  patent  law,  the  thing  entitled  to  protection.  The  patentee  may, 
and  should,  so  frame  his  specification  of  claim  as  to  cover  this  new  mode  of 
operation  which  he  has  invented.  —  Winans  v.  Denmead,  15  How.  330; 
14  L.  Ed.  717. 

Whoever  discovers  that  a  certain  useful  result  will  be  produced  in  any  art, 
machine,  manufacture  or  composition  of  matter  by  the  use  of  certain  means 
is  entitled  to  a  patent  for  his  invention,  provided  he  specifies  the  means  he 
uses  in  a  manner  so  full  and  exact  that  anyone  skilled  in  the  science  to  which 
it  appertains  can,  by  using  the  means  he  specifies,  without  any  addition  or 
subtraction  from  the  described  means,  produce  precisely  the  results  he 
describes.  Such  description  must  be  correct,  as  it  is  settled  law  that  the 
patent  is  void  if  the  described  result  cannot  be  obtained  by  the  described 
means.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

O'Reilly  v.  Morse,  15  How.  119. 

Invention  or  discovery  is  the  requirement  which  constitutes  the  founda- 
tion of  the  right  to  obtain  a  patent ;  and  it  was  decided  by  this  court,  more 
than  a  quarter  of  a  century  ago,  that  unless  more  ingenuity  and  skill  were 
required  in  making  or  applying  the  said  improvement  than  are  possessed  by 
an  ordinary  mechanic  acquainted  with  the  business,  there  is  an  absence  of 
that  degree  of  skill  and  ingenuity  which  constitute  the  essential  element  of 
every  invention.  —  Dunbar  v.  Meyers,  94  U.  S.  187;  24  L.  Ed.  34. 

Hotchkiss  v.  Greenwood,  11  How.  267;  Phillips  v.  Page,  24  How.  167;  Jones 
v.  Morehead,  1  Wall.  162;    Stimpson  v.  Woodman,  10  Wall.  121. 

Actual  invention  or  discovery  must  have  been  made,  and  the  English  courts 
apply  this  rule  more  readily  and  with  a  much  closer  scrutiny  than  is  done  in 
this  country.  —  Dunbar  v.  Meyers,  94  U.  S.  187;   24  L.  Ed.  34. 


628  THE    FIXED    LAW    OF    PATENTS  §  679 

^ 

Ralston  v.  Smith,  11  H.  L.  Cases,  223;  Harwood  v.  R.  R.  11  H.  L.  Cas.  654; 
Jordan  v.  Moore,  L.  R.  1  C.  P.  624;  Kay  v.  Marshall,  O.  &  F.  245;  Bush  v.  Fox, 
5  H.  L.  Cas.  707;  Tetley  v.  Easton,  2  C.  B.  (N.  S.)  70;  Horton  v.  Mabon,  12  C. 
B.  (N.  S.)  437;  Ormson  v.  Clarke,  4  C.  B.  (N.  S.)  475;  Parks  v.  Stevens,  L.  R. 
8  Eq.  358;  Envelope  v.  Seymer,  5  C.  B.  (N.  S.)  471;  Ormson  v.  Clarke,  13  C.  B. 
(N.  S.)  337;  Ralston  v.  Smith,  9  C.  B.  (N.  S.)  117;  Sanders  v.  Aston,  3  B.  &  A. 
881;   Seed  v.  Higgins,  8  El.  &  Bl.  755. 


The  process  of  development  in  manufactures  creates  a  constant  demand  for 
new  appliances,  which  the  skill  of  ordinary  head  workmen  and  engineers  is 
generally  adequate  to  devise,  and  which,  indeed,  are  the  natural  and  proper 
outgrowth  of  such  development.  Each  step  forward  prepares  the  way  for  the 
next,  and  each  is  usually  taken  by  spontaneous  trials  and  attempts  in  a 
hundred  different  places.  To  grant  to  a  single  party  a  monopoly  of  every 
slight  advance  made,  except  where  the  exercise  of  invention  somewhat  above 
ordinary  mechanical  or  engineering  skill  is  distinctly  shown,  is  unjust  in  prin- 
ciple and  injurious  in  its  consequences. 

The  design  of  the  patent  laws  is  to  reward  those  who  make  some  substantial 
discovery  or  invention,  which  adds  to  our  knowledge  and  makes  a  step  in 
advance  in  the  useful  arts.  Such  inventors  are  worthy  of  all  favor.  It  was 
never  the  object  of  those  laws  to  grant  a  monopoly  for  every  trifling  device, 
every  shadow  of  a  shade  of  an  idea,  which  would  naturally  and  spontaneously 
occur  to  any  skilled  mechanic  or  operator  in  the  ordinary  progress  of  manu- 
facture. Such  an  indiscriminate  creation  of  exclusive  privileges  tends  rather 
to  obstruct  than  to  stimulate  invention.  It  creates  a  class  of  speculative 
schemers  who  make  it  their  business  to  watch  the  advancing  wave  of  improve- 
ment, and  gather  its  foam  in  the  form  of  patented  monopolies,  which  enable 
them  to  lay  a  heavy  tax  upon  the  industry  of  the  country,  without  contrib- 
uting anything  to  the  real  advancement  of  the  arts.  It  embarrasses  the 
honest  pursuit  of  business  with  fears  and  apprehensions  of  concealed  liens 
and  unknown  liabilities,  to  law  suits,  and  vexatious  accountings  for  profits 
made  in  good  faith.  —  Atlantic  v.  Brady,  107  U.  S.  192;  27  L.  Ed.  438;  2 
S.  Ct.  225. 


The  provisions  of  the  Constitution  (Art.  1,  Sec.  8)  is  that  "  the  Congress 
shall  have  power  to  promote  the  progress  of  science  and  useful  arts,  by  secur- 
ing for  limited  times  to  authors  and  inventors  the  exclusive  right  to  their 
respective  writings  and  discoveries."  The  beneficiary  must  be  an  inventor 
and  he  must  have  made  a  discovery.  The  statute  has  always  carried  out  this 
idea.  Under  the  Act  of  July  4,  1836,  5  S.  at  L.  119,  36,  in  force  when  the 
patents  were  granted,  the  patentee  was  required  to  be  a  person  who  had 
"  discovered  or  invented  "  a  new  and  useful  art,  machine,  manufacture  or 
composition  of  matter.  "  In  the  Act  of  July  8,  1870,  16  S.  at  L.  201,  324,  the 
patentee  was  required  to  be  a  person  who  had  invented  or  discovered  any 
new  and  useful  art,  machine,  manufacture,  or  composition  of  matter,  or 
any  new  and  useful  improvement  thereof;  "  and  that  language  is  repro- 
duced in  Sec.  4886  of  the  R.  S.  So  it  is  not  enough  that  a  thing  shall  be  new, 
in  the  sense  that  in  the  shape  or  form  in  which  it  is  produced  it  shall  not  have 
been  before  known,  and  that  it  shall  be  useful,  but  it  must,  under  the  con- 
stitution and  the  statute,  amount  to  an  invention  or  a  discovery.  —  Thomp- 
son v.  Boisselier,  114  U.  S.  1 ;  29  L.  Ed.  76;  5  S.  Ct.  1042. 

Vinton  v.  Hamilton,  104  U.  S.  485;  Hall  v.  McNeal,  107  U.  S.  90;  Atlantic  v. 
Brady,  107  U.  S.  192;  Slawson  v.  R.  R.  107  U.  S.  649;  King  v.  Gallun,  109  U.  S. 
99;  Tuck  v.  Mfg.  Co.  109  U.  S.  117;  Esty  v.  Burdett,  109  U.  S.  633;  Bussey  v. 
Mfg.  Co.  110  U.  S.  131;  R.  R.  v.  Truck  Co.  110  U.  S.  490;  Phillips  v.  Detroit, 
111  U.  S.  604;  Morris  v.  McMillin,  112  U.  S.244;  Hollister  v.  Mfg.  Co.  113  U.  S.  59. 


§  680  INVENTION  629 

But  the  object  of  an  invention  is  a  very  different  thing  from  the  invention 
itself.  The  object  may  be  accomplished  in  many  ways ;  the  invention  shows 
one  way.  —  White  v.  Dunbar,  119  U.  S.  47;  30  L.  Ed.  303;  7  S.  Ct.  72. 

Patents  cover  the  means  employed  to  effect  results.  Neither  an  idea  nor 
a  function,  nor  any  other  abstraction,  is  patentable  in  a  machine  patent.  — 
Goshen  v.  Bissell,  72  Fed.  67;  19  C.  C.  A.  13. 

Burr  v.  Duryee,  1  Wall.  570;  Fuller  v.  Yentzer,  94  U.  S.  288;  Eames  v.  Andrews, 
122  U.  S.  40;  Roberts  v.  Ryer,  91  U.  S.  150;  McCormick  v.  Aultman,  69  Fed. 
371;    Pfeifer  v.  Dixon,  55  Fed.  390. 

The  invention  resides  in  the  conception  and  its  embodiment.  —  Rose  v. 
Hirsh,  77  Fed.  469;  23  C.  C.  A.  246. 

A  patent  must  combine  utility,  novelty,  and  invention.  It  may,  in  fact, 
embrace  utility  and  novelty  in  a  high  degree,  and  still  be  only  the  result  of 
mechanical  skill,  as  distinguished  from  invention.  A  person,  to  be  entitled 
to  a  patent,  must  have  invented  or  discovered  some  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  some  new  and  useful 
improvement  thereof.    In  the  language  of  the  Supreme  Court : 

"  It  is  not  enough  that  a  thing  shall  be  new,  in  the  sense  that,  in  the  shape 
or  form  in  which  it  is  produced,  it  shall  not  have  been  before  known,  and  that 
it  shall  be  useful,  but  it  must,  under  the  constitution  and  statute,  amount  to 
an  invention  or  discovery."  Hill  v.  Wooster,  132  U.  S.  701,  and  authorities 
there  cited.  —  Klein  v.  Seattle,  77  Fed.  200;  23  C.  C.  A.  114. 

If  the  fact  that  an  improvement  was  found  to  be  novel  and  useful  should 
inevitably  establish  that  the  improvement  came  from  an  inventor,  the  skilled 
mechanic  would  be  eliminated  from  the  dramatis  personae,  and  his  part 
utterly  delected  from  the  play  of  progress.  —  Seiler  v.  Fuller,  121  Fed.  85; 
57  C.  C.  A.  339. 

Patents  are  granted  for  advances  in  the  useful  arts,  nor  for  increments  of 
knowledge.  —  Diamond  v.  Westinghouse,  152  Fed.  704;  81  C.  C.  A.  630. 

§  68o.     Patentability  —  Patentable  Difference. 

The  fact  that  the  patent  in  suit  was  pending  before  the  Department  with 
another  application  owned  by  the  plaintiff  set  up  by  the  defense  is  strong 
evidence  the  plaintiff  did  not  consider  them  competitive  inventions.  — 
Pope  v.  Gormully,  144  U.  S.  248;  36  L.  Ed.  420;  12  S.  Ct.  637. 

Issue  of  another  patent  prima  facie  evidence.  —  Miller  v.  Eagle,  151  U.  S. 
186;  38  L.  Ed.  121;  14  S.  Ct.  310. 
Corning  v.  Burden,  56  U.  S.  252;   Duff  v.  Sterling,  107  U.  S.  636. 

As  both  applications  were  pending  in  the  Patent  Office  at  the  same  time, 
and  as  the  respective  letters  were  granted,  it  is  obvious  that  it  must  have  been 
the  judgment  of  the  officials  that  there  was  no  occasion  for  an  interference 
and  that  there  were  features  which  distinguished  the  one  from  the  other.  — 
Boyd  v.  Janesville,  158  U.  S.  260;  39  L.  Ed.  973;   15  S.  Ct.  837. 

American  v.  Elizabeth,  4  Fish.  P.  C.  189;   Burns  v.  Myer,  100  U.  S.  671. 

The  presumption  from  the  grant  of  the  letters  patent  is  that  there  was  a 
substantial  difference  between  the  inventions.  —  Kokomo  v.  Kitselman,  189 
U.  S.  8;  47  L.  Ed.  689;  23  S.  Ct.  521. 


630 


THE    FIXED    LAW    OF    PATENTS 


§681 


The  issue  of  a  subsequent  patent  relating  to  the  same  art  is  evidence 
presumptive  of  patentable  difference  although  the  two  patents  were  not  in 
interference  nor  concurrently  before  the  patent  office.  —  Ney  v.  Ney,  69  Fed. 
405;   16  C.  C.  A.  293. 

Boyd  v.  Tool  Co.  158  U.  S.  260. 

In  Corning  v.  Burden,  15  How.  265,  the  Supreme  Court,  after  referring  to 
the  presumption  which  attends  the  fact  that,  after  an  examination  of  the 
records  of  the  patent  office,  a  patent  has  been  issued  for  the  plaintiff's  in- 
vention, said: 

"  It  is  not  easy  to  perceive  why  the  defendant  who  uses  a  patented  machine 
should  not  have  the  benefit  of  a  like  presumption  in  his  favor,  arising  from 
a  like  investigation  of  the  originality  of  his  invention,  and  the  judgment  of 
the  public  officers  that  his  machine  is  new,  and  not  of  the  patent  previously 
granted  to  the  plaintiff." 

The  case  of  Blanchard  v.  Putnam,  8  Wall.  420,  overruled  this  holding  of  the 
court  and  decided  that  evidence  of  the  defendant's  patent  is  not  admissible. 

The  decision  in  Blanchard  v.  Putnam  was  followed  in  the  trial  of  this  case 
and  also  that  of  Norton  v.  Can  Co,  59  Fed.  137  where  it  was  said: 

"  Abstractly,  it  would  seem  that,  if  the  plaintiff's  patent  was  prima  facie 
evidence  of  novelty  (difference  from  things  before  it);  a  subsequent  patent  to 
the  defendant,  or  for  a  device  used  by  the  defendant,  would  be  prima  facie 
evidence  of  novelty  (difference  from  all  things  before  it,  and  hence  from  the 
plaintiff's  device)  and  hence  would  be  admissible  in  evidence  on  the  issue  of 
infringement,  and  its  use  would  be  innocent,  and  it  was  so  held  in  Corning  v. 
Burden,  15  How.  271.  But  this  case  was  overruled  in  Blanchard  v.  Putnam, 
8  Wall.  420." 

The  recent  cases,  however,  of  Miller  v.  Mfg.  Co.  151  U.  S.  208,  and  Boyd 
v.  Tool  Co.  158  U.  S.  260,  citing  Pavement  Co.  v.  Elizabeth,  4  Fish.  P.  C. 
189,  expressly  affirms  the  doctrine  of  Corning  v.  Burden,  and  held  that  the 
issuance  of  the  defendant's  patent  creates  a  prima  facie  presumption  of  a 
patentable  difference  from  the  prior  patent  of  the  plaintiff.  The  plaintiff 
in  error  was  entitled,  therefore,  to  an  instruction  which  would  permit  the  jury 
to  consider  the  presumption  that  the  law  creates  from  the  fact  that  a  patent 
has  issued  in  any  case.  —  Ransome  v.  Hyatt,  69  Fed.  148;  16  C.  C.  A.  185. 

That  Lorraine  and  Aubin  were  granted  a  patent  for  their  combination 
affords  a  presumption  that  there  is  a  patentable  difference  between  their 
device  and  those  of  Janey  or  any  of  the  many  improvers  who  obtained 
patents  between  Janey  and  the  application  of  Lorraine  and  Aubin.  —  St. 
Louis  v.  National,  87  Fed.  885;  31  C.  C.  A.  265. 

Boyd  v.  Tool  Co   158  U.  S.  250. 

The  rule  is  well  settled  that  the  grant  of  a  subsequent  patent  raises  a 
legal  presumption  of  patentable  difference  from  the  earlier  invention.  — 
Milwaukee  v.  Brunswick-Balke,  126  Fed.  171 ;  61  C.  C.  A.  175. 

Miller  v.  Eagle,  151  U.  S.  186;  Kokomo  v.  Kitselman,  189  U.  S.  8. 

That  the  grant  of  a  subsequent  patent  covering  the  device  alleged  to 
infringe  is  evidence  of  patentable  difference  see  Union  v.  Diamond,  162  Fed. 
148;  89  C.  C.  A.  172. 

Boyd  v.  Janesville,  158  U.  S.  260;  Kokomo  v.  Kitselman,  189  U.  S.  8. 


§  68 1.     Patentability  —  Duty  of  Court. 

It  is  a  thoroughly  settled  rule  that,  as  to  patentability  and  the  range 
of  the  claims  in  a  patent,  inasmuch  as  these  matters  concern  the  public  at 


§682  INVENTION  631 

large,  the  court  will  not  allow  parties  to  frame  their  issues  in  such  a  way 
as  to  take  from  it  the  scrutiny  of  all  the  questions  which  may  be  involved. 
—  Millard  v.  Chase,  108  Fed.  399;  47  C.  C.  A.  429. 

Note:  This  is  a  sound  rule.  It  is  one  which  should  be  followed,  and  which 
is  not  followed  to  any  extent  whatever.  It  should  be  the  duty  of  the  court 
when  it  has  a  patent  before  it  so  narrow  or  so  weak  that  infringement  cannot 
be  established,  instead  of  following  the  line  of  least  resistance  and  disposing 
of  the  case  on  noninfringement,  to  perform  its  duty  by  the  public  as  well  as 
by  the  parties,  and,  if  on  investigation  the  patent  is  found  wanting  in  patent- 
able novelty,  to  destroy  then  and  there  the  monopoly  improperly  granted. 

The  judge  who  heard  the  case  in  the  court  below,  apparently  for  a  kindly 
desire  to  save  the  patent  from  extinction,  contented  himself  with  giving  it 
a  construction  so  narrow  that  it  would  not  include  defendant's  tube.  In 
affirming  the  decree  of  the  court  below  we  are  constrained  to  base  our  de- 
cision upon  the  invalidity  of  the  patent.  —  Hurlbut  v.  U.  S.  124  Fed.  66 ; 
59  C.  C.  A.  626. 

§  682.     Patentability  —  Mental  Conception. 

The  complainant's  claim  to  be  enrolled  upon  the  list  of  inventors  is  based 
upon  propositions  too  theoretical  and  visionary  for  acceptance.  —  Marchand 
v.  Emken,  132  U.  S.  195;  33  L.  Ed.  332;  10  S.  Ct.  65. 

Dreyfus  v.  Searle,  124  U.  S.  60;  Crescent  v.  Gottfried,  128  U.  S.  158;  Hollister 
v.  Benedict,  113  U.  S.  59. 

Mere  conception  is  not  invention.  It  is  the  crystallizing  of  that  conception 
into  the  invention  itself,  operative  and  practical,  that  entitled  the  inventor 
to  the  protection  of  letters  patent.  —  Forgie  v.  Oil  Well,  58  Fed.  871 ;  7 
C.  C.  A.  551. 

The  mere  existence  of  an  intellectual  notion  that  a  certain  thing  could  be 
done,  and,  if  done,  might  be  of  practical  utility,  does  not  furnish  a  basis  for 
a  patent,  or  estop  others  from  developing  practically  the  same  idea.  — 
Standard  v.  Peters,  77  Fed.  630;  23  C.  C.  A.  367. 

Agawam  v.  Jordan,  7  Wall.  583;   Cristie  v.  Seybold,  55  Fed.  69. 

And  here  we  may  observe  that  a  mere  mental  conception,  not  tested  or 
reduced  to  practice,  nor  followed  by  any  embodiment  of  the  idea,  is  not  in- 
vention. —  Mississippi  v.  Franzen,  143  Fed.  501 ;  74  C.  C.  A.  135. 

This  was  the  patent  on  expanded  metal  —  the  well-known  article  which 
consists  in  slitting  sheet  metal  and  stretching  the  intervening  strips  of  metal. 
Held:  We  have  been  obliged  to  come  to  the  conclusion  that  the  so-called 
invention  was  not  really  an  invention  at  all  within  the  meaning  of  the  patent 
laws.  As  we  regard  the  application,  it  was  no  more  than  the  announcement 
by  Golding  of  a  happy  thought,  unaccompanied  by  any  sufficient  description 
of  the  means  by  which  his  thought  might  be  realized.  Indeed  it  does  not  seem 
unfair  to  add,  that  the  applicant  himself  was  in  such  doubt  about  the  validity 
of  the  patent  that  he  hastened  to  take  out  a  patent  for  a  machine  by  which  the 
desired  result  could  be  accomplished.  The  applicant  is  asking  for  a  patent 
upon  what  may  have  been  a  valuable  idea,  but  was  after  all  no  more  than 
this.  —  Bradford  v.  Expanded,  146  Fed.  984;  77  C.  C  A.  230. 

Rob.  on  Pat.  509;    Risdon  v.  Medart,  158  U.  S.  68. 

Note:  This  a  wrong  application  of  the  rule  stated  by  Robinson.  If  the 
inventor  did,  as  a  matter  of  fact,  even  as  a  "  happy  thought,"  hit  upon  a 


632  THE    FIXED   LAW   OF   PATENTS  §683 

new  article  of  manufacture  which  possessed  utility  as  well  as  novelty,  he  was 
entitled  to  a  patent.  Put  to  the  test  of  novelty  and  utility,  and  surviving  both 
tests,  the  court  should  have  held  the  patent  good.  Such  course  would  have 
conformed  to  good  judgment,  whether  it  squared  with  academic  reasoning 
or  not. 

§  683.     Patentability  —  Scientific  Principles  and  Ideas. 

A  principle,  in  the  abstract,  is  a  fundamental  truth;  an  original  cause; 
a  motive;  these  cannot  be  patented  as  no  one  can  claim  in  either  of  them  an 
exclusive  right.  —  Le  Roy  v.  Tatham,  14  How.  156;  14  L.  Ed.  367. 

The  discovery  of  a  principle  in  natural  philosophy  or  physical  science  is  not 
patentable.  —  O'Reilly  v.  Morse,  15  How.  62;   14  L.  Ed.  601. 

We  find  no  authority  to  grant  a  patent  for  a  "  principle  "  or  a  "  mode  of 
operation  "  or  an  idea  or  any  other  abstraction.  —  Burr  v.  Duryee,  68 
U.S.  531;  17  L.  Ed.  750. 

An  idea  of  itself  is  not  patentable,  but  a  new  device  by  which  it  may  be 
made  practically  useful  is.  —  Rubber  Tip  v.  Howard,  87  U.  S.  498;  22  L.  Ed. 
410. 

A  principle  or  an  idea  is  not  patentable.  —  Fuller  v.  Yentzer,  94  U.  S.  288; 
24  L.  Ed.  103. 

Burr  v.  Duryee,  1  Wall.  531. 

Their  discovery,  which  is  conceded  to  be  valuable  and  of  great  benefit,  was 
that  the  old  process  of  fumigating  trees  by  means  of  an  oiled  tent  and  hydro- 
cyanic acid  gas,  both  of  which  were  old  and  free  to  the  public,  could  be  made 
successful  "  provided  the  fumigation  is  done  at  night."  Such  a  discovery, 
however  new  and  valuable  it  may  be,  is  not  within  the  pale  of  patentable 
inventions.  It  does  not  come  within  any  of  the  principles  of  the  patent  law, 
or  any  of  the  provisions  of  the  statute  relating  to  patents.  A  mere  naked 
principle,  a  law  of  nature  or  property  of  matter  cannot  be  patented.  So  long 
as  the  principle  is  a  mere  item  of  knowledge,  and  sometimes  from  its  nature 
it  must  always  remain  such,  no  patent  can  be  held  valid,  however  brilliant 
and  useful  the  discovery  may  be.  —  Wall  v.  Leek,  66  Fed.  552;  13  C.  C.  A. 
630. 

Merw.  Pat.  Inv.  4,  73,  529;  1  Rob.  Pat.  sec.  140;  LeRoy  v.  Tatham,  14  How. 
156;   Morton  v.  Infirmary,  2  Fish.  P.  C.  320. 

A  principle,  considered  as  a  natural  physical  force,  is  not  the  product  of 
inventive  skill.  It  is  the  common  property  of  all  mankind.  It  exists  in  nature 
independently  of  human  effort,  and  can  neither  be  diminished  nor  increased 
by  human  power.  Man  can  discover  and  employ  it,  but  his  employment  of  it 
in  the  modes  or  through  the  instrumentalities  by  which  it  is  applied  in  nature 
is  a  mere  imitation  of  what  every  man  is  able  to  perceive  and  reproduce  as 
well  as  he.  All  endeavors  to  confine  it  to  himself  are  at  once  futile  and  unjust. 
It  exists  for  all  men,  as  well  after  his  discovery  as  before.  The  laws  neces- 
sarily recognize  and  protect  his  right,  and  do  not  permit  any  man  to  ex- 
clusively use  the  conditions  which  are  the  gifts  of  nature,  simply  because  he 
was  the  first  one  to  discover  its  value.  Not  until  some  new  instrument  or 
method  is  contrived  for  its  direction  towards  ends  which  it  cannot  naturally 
accomplish  does  his  creative  genius  manifest  itself.  —  Wall  v.  Leek,  66  Fed. 
552;   13  C.  C.  A.  630. 

1  Rob.  Pat.  sec.  136  et  seq.;  Detmold  v.  Reeves,  1  Fish.  P.  C.  131;  Morton  v. 
Infirmary,  2  Fish.  P.  C.  320;    Morton's  Patent,  8  Op.  Attys.  Gen.  269. 


§§  684-685  INVENTION  633 

The  magnetic  current  is  not  itself  a  part  of  the  device  or  invention  any- 
more than  a  current  of  water  is  an  element  of  a  water  wheel.  —  Thomson- 
Houston  v.  Western,  70  Fed.  69;   16  C.  C.  A.  642. 

But  it  does  not  follow  that  a  conception  is  patentable  merely  because  it  is 
first  in  time.  Concept  alone  is  not  patentable.  Concept  must  be  accompanied 
by  mechanical  embodiment;  and,  as  the  law  now  stands,  must  itself  be 
unanticipated.  —  Voightmann  v.  Perkinson,  138  Fed.  56;  70  C.  C.  A.  482. 

§  684.  Patentability  —  Miscellaneous  Rules. 

It  would  seem  that  an  architectural  design,  such  as  an  improvement  in  the 
construction  of  jails,  is  not  patentable.  —  Jacobs  v.  Baker,  74  U.  S.  295; 
19  L.  Ed.  200. 

Whether  an  invention  covering  an  "  improvement  in  the  constructions  and 
operation  of  prisons  "  comes  within  any  of  the  classes  of  patentable  inven- 
tions doubted  in  Fond  du  Lac  v.  May,  137  U.  S.  395;  34  L.  Ed.  714;  11  S.  Ct. 
98. 

Jacobs  v.  Baker,  74  U.  S.  295. 

An  invention  made  principally  to  forestall  competition  in  trade  rather  than 
to  obtain  the  just  reward  of  invention  will  not  be  looked  upon  favorably.  — 
Pope  v.  Gormully,  144  U.  S.  254;  36  L.  Ed.  426;  12  S.  Ct.  643. 

Complainant  consulted  an  inventor  and  manufacturer  of  machinery 
owning  a  patent  upon  a  certain  device  as  to  devising  improved  means  for  per- 
forming an  operation  in  complainant's  business.  The  inventor  consulted,  at 
complainant's  suggestion,  made  an  adaptation  of  his  patented  device  and  con- 
structed a  device  for  complainant's  use.  Complainant  bought  and  used  the 
device  and  others;  and  a  year  later,  took  out  a  patent  thereon  in  his  own 
name.  Held:  That  the  suggestions  of  complainant  did  not  amount  to  in- 
vention and  that  the  manufacturer  was  the  true  inventor.  —  Forgie  v.  Oil 
Well,  58  Fed.  871 ;  7  C.  C.  A.  551. 

If  such  a  movement  is  patentable,  evidently  it  must  be  because  in  itself, 
and  apart  from  any  mechanism,  it  constitutes  "  a  new  and  useful  art." 
R.  S.  4886.  There  seems  to  be  no  controlling  reason  against  considering  the 
claims  as  if  for  mechanisms.  —  Campbell  v.  Miehle,  102  Fed.  159;  42  C.  C. 
A.  235. 

§  685.     Process  —  Definition. 

The  processes  used  to  extract,  modify  and  concentrate  natural  agencies, 
constitute  invention.  The  elements  of  the  power  exist ;  the  invention  is  not 
in  discovering  them  but  in  applying  them  to  useful  objects.  Whether  the 
machinery  used  be  novel,  or  consist  of  a  new  combination  of  parts  known,  the 
right  of  the  inventor  is  secured  against  all  who  use  the  same  mechanical 
power,  or  one  that  shall  be  substantially  the  same.  —  Le  Roy  v.  Tatham,  14 
How.  156;  14  L.  Ed.  367. 

A  process  which  attains  a  new  and  previously  unknown  result  is  novel  and 
patentable,  though  the  elements  of  the  process  are  not  novel.  —  Mowry  v. 
Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

In  this  case  the  inventor  had  a  patent  upon  a  process  for  preparing  raw 
hides  for  belting,  etc.  In  his  claim  he  uses  the  words  "  prepared  raw  hide." 
The  specification  describes  the  entire  several  processes  including  that  of 


634  THE    FIXED    LAW    OF    PATENTS  §  686 

removing  the  hair  and  producing  a  "  prepared  raw-hide."  Effort  was  made  to 
limit  the  extent  of  the  process  to  the  several  steps  subsequent  to  those  of 
preparing  the  hide.  Held,  that  as  these  first  steps  were  made  an  essential 
part  of  the  specification  and  were  fully  described  and  the  advantages  set  out, 
he  is  not  at  liberty  to  construe  his  invention  by  curtailment  of  the  steps 
involved  so  as  to  place  in  infringement  another  using  the  subsequent  steps 
of  the  process.  —  Royer  v.  Coupe,  146  U.  S.  524;  36  L.  Ed.  1073;  13  S.  Ct. 
166. 

The  familiar  doctrine  was  not  overlooked,  though  not  restated,  that  a 
process  consisting  of  different  steps,  like  a  combination  of  different  mechan- 
ical elements,  may  be  new  and  patentable  though  every  step  by  itself  be  old. 
But  when  a  process  has  no  novelty  unless  it  can  be  found  in  a  particular 
step,  and  it  proves  to  be  wanting  there,  the  entire  process  necessarily  lacks 
patentability.  —  Evans  v.  Suess,  86  Fed.  779;  30  C.  C.  A.  367. 

This  patent  cannot  be  sustained  on  the  ground  merely  that  the  production 
of  a  pyroxyline  compound  in  imitation  of  onyx  or  its  production  in  the  man- 
ner described  in  the  specification  was  novel.  It  is  necessary  that  such  pro- 
duction should  also  have  involved  invention.  —  Arlington  v.  Celluloid,  97 
Fed.  91;  38  C.  C.  A.  60. 

§  686.     Process  —  Mechanic  al. 

The  case  of  Westinghouse  v.  Boyden,  170  U.  S.  537,  absolutely  unsettles  the 
question  of  the  patentability  of  a  mechanical  process.  The  invention  in 
question  is  the  discovery  by  Westinghouse  of  the  accomplishment  of  a  new 
function,  viz.,  sending  the  train-pipe  air,  in  emergency,  along  with  the  reser- 
voir air  to  produce  a  quick  or  emergency  action.  Westinghouse  clearly  was 
the  first  to  perform  this  function,  and  he  disclosed  in  his  patent  mechanical 
means  for  carrying  out  his  discovery.  Boyden  invented  mechanical  means  for 
performing  the  same  function,  and  apparently  as  good  or  better  means.  It 
is  not  denied  that  the  utilization  of  this  function  or  process  was  well-nigh 
as  great  a  discovery  as  that  of  the  original  air-brake  by  Westinghouse  — 
it  is  even  so  admitted  in  the  opinion  of  Mr.  Justice  Brown.  But  the  court  held 
by  a  bare  majority  of  one  (Justices  Shiras,  Brewer,  Gray  and  McKenna  dis- 
senting) that  although  Westinghouse  was  unquestionably  the  discoverer 
of  the  function  and  the  patentee  of  the  process,  the  patent  (although  a 
pioneer)  must  be  limited  to  the  mechanical  combination  of  the  patent  or 
absolute  equivalents. 

In  order  to  show  the  unsettled  holding,  the  following  extracts  are  given 
from  the  opinion  of  Mr.  Justice  Brown  and  the  dissenting  opinion  of  Mr. 
Justice  Shiras  in  which  Mr.  Justice  Brewer  concurred,  Justices  Gray  and 
McKenna  generally  dissenting  from  the  opinion  and  decision  of  the  court. 

Opinion  of  Court  Dissenting  Opinion 

The  difficulty  we  have  found  in  It  in  no  wise  detracts  from  the 
this  claim  is  this:  That,  if  it  be  in-  merit  of  this  invention  that  later 
terpreted  simply  as  a  claim  for  the  devices  have  been  adopted  which 
function  of  admitting  air  to  the  under  its  practical  operation  are 
brake  cylinder  directly  from  the  more  efficient.  The  very  term 
train-pipe,  it  is  open  to  the  objection  "  pioneer  patent  "  signifies  that  the 
(held  in  several  cases  to  be  fatal)  invention  has  been  followed  by 
that  the  mere  function  of  a  machine  others.  A  pioneer  patent  does  not 
cannot  be  patented  (Corning  v.  Bur-  shut,  but  opens,  the  door  for  subse- 
den,  15  How.  252;  Burr  v.  Duryea,  1  quent  invention.  Being  of  the  char- 
Wall.  531 ;  Fuller  v.  Yentzer,  94  U.  acter  as  described  as  a  pioneer,  the 
S.  288;   Locomotive  v.  Medart,  158  patent  in  suit  is  entitled  to  a  broad 


686 


INVENTION 


635 


U.  S.  68;  Wick  v.  Ostrum,  103  U.  S. 
461;  Paper  Bag  Case,  30  Fed.  63; 
Machine  Co.  v.  Waterbury,  39  Fed. 
771). 

This  rule  was  clearly  laid  down  in 
the  leading  case  of  Corning  v.  Bur- 
den, 15  How.  252,  in  which  Mr. 
Justice  Grier,  delivering  the  opinion 
of  the  court,  drew  the  distinction 
between  such  processes  as  were  the 
result  or  effect  of  "  chemical  action, 
by  the  operation  or  application  of 
some  element  or  power  of  nature,  or 
of  one  substance  to  another  "  and 
the  mere  result  of  the  operation  of  a 
machine.  .  .  .  We  have  no  desire  to 
qualify  the  repeated  expressions  of 
this  court  to  the  effect  that,  when  the 
invention  is  functional  and  the  de- 
fendant's device  differs  from  that  of 
the  patentee  only  in  form  or  in  a  rear- 
rangement of  the  same  elements  of 
the  combination,  he  would  be  ad- 
judged an  infringer,  even  if,  in  cer- 
tain particulars,  his  device  be  an 
improvement  upon  that  of  the 
patentee.  But  after  all,  even  if  the 
patent  for  a  machine  be  a  pioneer, 
the  alleged  infringer  must  have  done 
something  more  than  reach  the  same 
result.  He  must  have  reached  it  by 
substantially  the  same  or  similar 
means,  or  the  rule  that  the  function 
of  a  machine  cannot  be  patented  is 
of  no  practical  value.  To  say  that 
the  patentee  of  a  pioneer  invention 
for  a  new  mechanism  is  entitled  to 
every  mechanical  device  which  pro- 
duces the  same  result  is  to  hold  in 
other  language,  that  he  is  entitled  to 
a  patent  for  his  function.  Mere 
variations  of  form  may  be  disre- 
garded, but  the  substance  of  the  in- 
vention must  be  there.  ..."  That 
two  machines  produce  the  same 
effect  will  not  justify  the  asser- 
tion that  they  are  substantially  the 
same,  or  that  the  devices  used  are 
therefore  mere  equivalents  for  those 
of  the  other." 


Westinghouse  v.  Boyden,  170  U. 


or  liberal  construction.  In  other 
words,  the  invention  is  not  to  be 
restricted  narrowly  to  the  mere  de- 
tails of  mechanism  described  as  a 
means  of  carrying  the  invention  into 
practical  operation. 

I  cannot  assent  to  what  is  perhaps 
rather  intimated  than  decided  in  the 
opinion  of  the  court,  —  that  what 
is  called  a  "  process,"  in  order  to  be 
patentable,  must  involve  a  chemical 
or  other  similar  elemental  action." 
The  term  "  process  or  method  "  as 
describing  the  subject  of  a  patent,  is 
not  found  in  the  statutes.  No  reason 
is  given  in  the  authorities,  and  I  can 
think  of  none  in  the  nature  of  things, 
why  a  new  process  or  method  may 
not  be  patentable,  even  though  a 
mechanical  device  or  a  mechanical 
combination  may  be  necessary  to 
render  the  new  process  practicable. 
It  seems  to  be  used  by  the  courts 
as  descriptive  of  an  invention  which, 
from  its  novelty  and  priority  in  the 
art  to  which  it  belongs,  is  not  to  be 
construed  as  inhering  only  in  the 
particular  means  described  in  the 
letters  patent  as  sufficient  to  exem- 
plify the  invention  and  bring  it  into 
practical  use. 

Winans  v.  Denmead,  15  How.  330; 
McCormickv.  Talcott,  20  How.  402; 
Machine  Co.  v.  Lancaster,  129  U.  S. 
263 ;  Proctor  v.  Bennis,  36  Ch.  Div. 
740;  Neilson's  Pat.  Web.  P.  C.  275; 
715;  Tilghman  v.  Proctor,  102  U.  S. 
767;  O'Reilly  v.  Morse,  15  How.  62; 
Telephone  Cases,  126  U.  S.  1.  .  .  . 

The  conclusion  justified  by  the 
authorities  is  that  whether  you  call 
Westinghouse's  discovery,  that 
"  quick  action  "  may  be  accom- 
plished by  the  co-operation  of  the 
main  pipe  air  and  that  from  the 
reservoir,  a  '*  process  "  or  a  "  mode  of 
operation,"  yet  if  he  was  the  first  to 
declare  it,  and  to  describe  a  mechani- 
cal means  to  give  practical  effect  to 
the  invention,  he  must  be  regarded 
as  a  pioneer  inventor,  and  as  en- 
titled to  protection  against  those 
who,  availing  themselves  of  the  dis- 
covery, seek  to  justify  themselves  by 
pointing  to  mere  differences  in 
mechanical  form  in  the  mechanical 
devices  used. 
S.  537;  42  L.  Ed.  1136;  18  S.  Ct.  707. 


636 


THE   FIXED   LAW   OF   PATENTS 


687-688 


Note:  It  is  perfectly  clear  that  this  dire  confusion  of  a  principle  of  law 
could  have  been  avoided  and  the  proper  award  made  Westinghouse  for  his 
great  invention,  rather  than  leaving  him  with  the  empty  compliment  of 
being  a  "  pioneer,"  if  the  court  had  held  to  a  broad,  sane  application  of  the 
doctrine  of  equivalents;  but  this  the  court  did  not  do,  and  to  what  extent 
the  next  great  "  pioneer  "  will  be  shorn  of  the  fruits  of  his  genius  by  this 
narrow  American  rule,  no  one  can  surmise.  With  Germany  holding  "  func- 
tional "  claims  the  proper  form,  and  England  recognizing  generic  mechan- 
isms capable  of  protection  by  functional  claims,  it  seems  to  us  Mr.  Justice 
Shiras  has  the  better  of  the  argument. 

When  he  disclosed  his  process,  he  disclosed  enough  to  enable  any  mechanic 
familiar  with  the  art  or  industry  to  which  this  discovery  belonged  to  construct 
the  apparatus  essential  to  the  employment  of  the  patented  process  (the  proc- 
ess of  separating  cotton  hulls  and  lint).  —  Johnson  v.  Foos,  141  Fed.  73; 
72  C.  C.  A.  105. 

Whether  a  mechanical  process  is  patentable,  see  Daylight  v.  American, 
142  Fed.  454;  73  C.  C.  A.  570. 

§  687.     Process  —  Non- Patentable. 

This  was  simply  the  application  by  the  patentee  of  an  old  process  to  a  new 
subject,  without  any  exercise  of  the  inventive  faculty  and  without  the 
development  of  any  idea  which  can  be  deemed  new  or  original  in  the  sense  of 
the  patent  law.  The  thing  was  within  the  circle  of  what  was  well  known 
before,  and  belonged  to  the  public.  No  one  could  lawfully  appropriate  it  to 
himself  and  exclude  others  from  using  it  in  any  usual  way  for  any  purpose  to 
which  it  may  be  desired  to  apply  it.  —  Brown  v.  Piper,  91  U.  S.  37 ;  23  L. 
Ed.  200. 

Ames  v.  Howard,  1  Sumn.  487;  Howe  v.  Abbott,  2  Story,  194;  Bean  v.  Small- 
wood,  2  Story,  411;  Winans  v.  R.  R.  2  Story,  412;  Hotchkiss  v.  Greenwood, 
11  How.  248. 

A  mere  difference  in  degree  or  thoroughness  of  a  process  resulting  in  the 
same  but  more  advantageous  product  is  mechanical  skill,  not  invention.  — ■ 
Commercial  v.  Fairbank,  135  U.  S.  176;  34  L.  Ed.  88;  10  S.  Ct.  972. 

The  complainants  do  nothing  more  than  apply  the  lumps  or  cartridges  to 
beer  instead  of  to  water,  and  thus  adopt  an  old  form  or  method  of  applying 
the  alkali,  without  any  novelty  in  the  mode  of  application;  and  this,  it  has 
been  frequently  decided,  will  not  sustain  a  patent  even  if  the  new  form  of 
result  had  not  been  before  contemplated.  —  Zinsser  v.  Krueger,  48  Fed.  296; 
1  C.  C.  A.  73. 

Railroad  v.  Locomotive,  110  U.  S.  490. 

A  mere  intellectual  process,  such  as  "  means  for  securing  against  excessive 
losses  of  bad  debts  "  is  not  patentable.  —  U.  S.  Credit  v.  American,  59  Fed. 
139;  8  C.  C.  A.  49. 


§  688.     Process  —  Process  and  Machine. 

Where  the  patentee  has  produced  a  better,  though  not  novel,  article  of 
manufacture,  and  described  and  claimed  his  invention  in  the  terms  of  his 
process,  it  was  held,  that  all  he  invented  was  a  machine  for  the  more  perfect 
manufacture,  but  that  the  operation  or  function  of  such  machine  was  not 
patentable.  —  Risdon  v.  Medart,  158  U.  S.  68;  39  L.  Ed.  899;  15  S.  Ct.  745. 


§§  689-690  INVENTION  637 

Neilson  v.  Harford,  1  Web.  P.  C.  331;  O'Reilly  v.  Morse,  50  U.  S.  62,  115; 
Househill  v.  Neilson,  1  Web.  P.  C.  673;  Tilghman  v.  Proctor,  102  U.  S.  708; 
Mowry  v.  Whitney,  81  U.  S.  620;  Cochrane  v.  Deener,  94  U.  S.  780;  New  Process 
v.  Maus,  122  U.  S.  413;  Telephone  Cases,  126  U.  S.  1;  Bell  Tel.  v.  Dolbear,  15 
Fed.  488;  Wyeth  v.  Stone,  1  Story,  273;  Corning  v.  Burden,  56  U.  S.  252;  Mc- 
Kay v.  Jackman,  12  Fed.  615;  Brainard  v.  Cramme,  12  Fed.  621;  Gage  v.  Kel- 
logg, 23  Fed.  891;  Hatch  v.  Moffat,  15  Fed.  252;  Sickles  v.  Falls,  4  Blatchf. 
518;    Excelsior  v.  Union,  32  Fed.  221. 

(The  patent  contained  both  machine  and  process  claims).  The  defense 
therefore  is  not  the  press  upon  the  process.  It  is  the  other  way,  the  process 
upon  the  press;  for  it  is  impossible  to  consider  the  5th  claim  as  describing 
anything  but  the  operation  and  effect  of  the  press.  What,  indeed,  is  the 
process —  what  is  the  force  at  work?  And  the  inquiry  is  entirely  independent 
of  the  questions  as  to  what  constitutes  a  patentable  process  discussed  by  this 
court  in  Risdon  v.  Medart,  158  U.  S.  69;  and  in  Westinghouse  v.  Boyden, 
170  U.  S.  537.  What  then,  is  the  force  at  work  and  how  is  it  applied?  It 
is  force  (pressure)  applied  to  sheets  of  paper  placed  between  "  compressing 
heads."  In  other  words,  a  special  application  of  pressure  began  in  the  press 
and  continued  in  the  bundle  by  means  of  strings  and  cords.  This,  however, 
is  the  operation  and  effect  of  the  machine,  and  it  is  none  the  less  so  because  the 
pressure  is  held  indefinitely.  Its  existence  in  the  bundle  is  not  independent 
of  the  press.  The  pressure  is  as  much  an  effect  in  the  bundle  as  when  first 
applied.  The  pressure  is  applied  by  the  press.  —  Busch  v.  Jones,  184  U.  S. 
598;  46  L.  Ed.  707;  22  S.  Ct.  511. 

It  is  established  by  authority  that  an  inventor  may  be  entitled  to  a  patent 
for  the  method  or  process  for  producing  new  and  useful  results,  and  also 
for  the  means  by  which  it  is  produced,  when  the  method  or  process  is  suscep- 
tible of  being  performed  by  known  means,  and  the  means  invented  are  of 
such  a  character  as  to  merit  a  patent.  —  Dayton  v.  Westinghouse,  118  Fed. 
562;  55  C.  C.  A.  390. 

Merrill  v.  Yeomans,  94  U.  S.  568. 

§  689.     Property  of  Matter. 

A  new  property  discovered  in  matter,  when  practically  applied,  in  the 
construction  of  a  useful  article  of  commerce  or  manufacture,  is  patentable.  — 
Le  Roy  v.  Tatham,  14  How.  156;  14  L.  Ed.  367. 

Househill  v.  Nelson,  Web.  P.  C.  683;  See,  Le  Roy  v.  Tatham  (S.  C.)  22  How. 
132. 

He  had  discovered  a  new  property  or  force  in  matter,  and  had  made 
practical  application  of  such  newly  discovered  force  to  an  object.  This  was 
patentable.  —  American  v.  Howland,  80  Fed.  395;   25  C.  C.  A.  500. 

Poillon  v.  Shmidt,  Fed.  Cas.  11,241;  Smith  v.  Ely,  Fed.  Cas.  13,043;  Parker 
v.  Hulme,  Fed.  Cas.  10,740;  LeRoy  v.  Tatham,  14  How.  156;  Collar  Co.  v.  White, 
Fed.  Cas.  14,396;   Ansonia  v.  Electrical,  144  U.  S.  11;    Rob.  Pat.  sec.  101. 

§  690.     Result  or  Function. 

A  patent  is  not  good  for  an  effect,  or  the  result  of  a  certain  process,  as 
that  would  prohibit  all  other  persons  from  making  the  same  thing  by  any 
means  whatsoever.  This,  by  creating  monopolies,  would  discourage  arts  and 
manufactures  against  the  avowed  policy  of  the  patent  laws.  —  Le  Roy  v. 
Tatham,  14  How.  156;   14  L.  Ed.  367. 

He  claims  a  patent  for  an  effect  produced  by  the  use  of  electro-magnetism, 
distinct  from  the  process  or  machinery  necessary  to  produce  it.    No  patent 


638  THE    FIXED    LAW    OF    PATENTS  §690 

can  lawfully  issue  for  such  a  claim.  —  O'Reilly  v.  Morse,  15  How.  62;  14  L. 
Ed.  601. 

It  is  for  the  discovery  or  invention  of  some  practical  method  or  means  of 
producing  a  beneficial  result  or  effect,  that  a  patent  is  granted,  and  not  for 
the  result  or  effect  itself.  —  Corning  v.  Burden,  15  How.  252;  14  L.  Ed.  683. 

The  result  produced  by  a  machine  or  combination  is  not  patentable.  — 
Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

The  prior  structures  never  effected  the  kind  of  result  attained  by  Richard- 
son's apparatus,  because  they  lacked  the  thing  which  gave  success.  — 
Consolidated  v.  Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct.  513. 

The  plaintiff  may  or  may  not  have  been  entitled  to  a  patent  for  the  ma- 
chinery employed  in  the  manufacture  of  the  article  in  question ;  but  he  cer- 
tainly was  not  entitled  to  a  patent  for  the  function  of  such  machine,  nor  to 
the  completed  article  which  differs  from  the  prior  ones  only  in  its  superior 
workmanship.  —  Risdon  v.  Medart,  158  U.  S.  68;  39  L.  Ed.  899;  15  S.  Ct. 
745. 

The  distinction  between  the  object  of  an  invention  and  the  means  con- 
trived for  its  accomplishment  should  not  be  forgotten.  The  object  to  be 
achieved  is  not  patentable ;  the  means  may  be.  —  Brush  v.  Western,  76  Fed. 
761;  22  C.  C.  A.  543. 

That  an  unexpected  function  develops  in  actual  use,  which  cannot  be 
referred  to  the  combination  described  and  claimed,  if  the  combination 
described  and  claimed  is  anticipated  by  a  prior  patent,  such  new  function 
is  not  sufficient  to  distinguish  the  invention  from  the  anticipation.  —  Magic 
v.  Economy,  97  Fed.  87;  38  C.  C.  A.  56. 

Corning  v.  Burden,  15  How.  252;  Westinghouse  v.  Power  Brake  Co.,  170  U.  S. 
537. 

The  mere  end  and  purpose  sought  to  be  accomplished  by  a  device  is  not  the 
subject  of  a  patent,  but  only  the  new  and  useful  means  for  obtaining  that 
end.  —  Hickory  v.  Frazier,  100  Fed.  99;  40  C.  C.  A.  296. 

Knapp  v.  Morss,  150  U.  S.  221;   Wollensak  v.  Sargent,  151  U.  S.  227. 

While  mere  results  are  not  ordinarily  patentable,  many  constructions, 
and  many  processes,  —  simple  and  obvious  enough  when  looked  at  after  the 
occurrence,  —  have  been  held  to  be  patentable  inventions,  not  so  much 
because  the  patentee  exerted  inventive  thought  in  his  immediate  work  of 
construction,  as  because  the  step  taken  lay  toward  the  creation  of  some 
new  aid  to  the  convenience  of  mankind  —  some  distinct  addition  to  the 
equipment  of  civilized  classes.  —  Indiana  v.  Crocker,  103  Fed.  496;  43  C.  C. 
A.  287. 

Note:  Certainly  this  is  a  remarkable  holding ;  for  nowhere  else  in  the  books 
do  I  know  of  a  case  which  has  for  one  moment  maintained  that  a  result  could 
be  made  the  subject  of  a  claim.  While  it  is  true  that,  in  a  sense,  a  process  and 
a  product  are  both  patentable  and  in  that  sense,  the  result  may  be  patented, 
there  is  no  authority  for  the  suggestion  that  "  mere  result  "  might  possibly  be 
patentable. 

These  ways  of  varying  resistance,  and  the  difference  between  them,  have 
been  brought  out  and  emphasized  by  the  learned  and  skilled  experts.  These 
ways  are  simply  the  different  modes  of  operation  of  the  material  which  com- 


§  691  INVENTION  639 

pose  the  electrodes.  They  certainly  cannot  form  the  basis  for  any  method 
patent  covering  all  materials  whose  mode  of  operation  is  the  same,  because 
there  is  nothing  in  the  so-called  area  varying  method,  or  density  varying 
method,  or  intimacy  of  contact  method,  considered  by  themselves  and  apart 
from  the  discovery  of  microphonic  action,  or  the  special  properties  of  some 
material  like  carbon,  which  has  ever  contributed  anything  to  the  progress  of 
the  telephonic  art.  —  American  v.  National,  119  Fed.  893;  56  C.  C.  A.  423. 

Where  a  new  result  has  been  attained  by  some  patentable  mode  of  opera- 
tion, the  patentee  cannot  have  a  monopoly  of  the  new  result.  It  is  open  for 
any  one  to  devise  and  patent  a  new  means  of  producing  the  same  result  — 
a  means  that  has  a  different  principle  of  operation  —  and  one  who  succeeds 
in  doing  this  is  not  an  infringer  of  the  older  patent.  —  Ries  v.  Barth,  136  Fed. 
850;  69  C.  C.  A.  528. 

i 
§  691.  Scientific  Principles  and  Laws. 

Imparting  to  matter  a  peculiar  motion  in  rotation  according  to  the  natural 
laws  of  fluids  for  the  purpose  of  assisting  a  chemical  process,  the  means 
employed  being  old,  is  not  patentable.  —  Marchand  v.  Emken,  132  U.  S. 
195;  33  L.  Ed.  332;   10  S.  Ct.  65. 

The  inventor  need  not  understand  the  philosophic  principle  embodied  in 
his  invention.  —  Cowles  v.  Lowrey,  79  Fed.  331 ;  24  C.  C.  A.  616. 
Eames  v.  Andrews,  122  U.  S.  40. 

That  while  a  physical  law  or  law  of  nature,  like  centrifugal  action,  is  not 
patentable,  the  means  of  employing  the  same  to  effect  a  definite  result  may 
be  patentable ;  but  such  patent  will  not  cover  other  means  for  effecting  the 
same  result,  see  Whitaker  v.  Huntington,  95  Fed.  471 ;  37  C.  C.  A.  151. 

He  describes  the  process,  the  mode  of  operation  and  the  result,  and  the 
means  for  obtaining  it.  The  scientific  principle  is  not  part  of  the  process, 
is  not  patentable,  and  need  not  be  set  forth.  —  Emerson  v.  Nimocks,  99  Fed. 
737;  40  C.  C.  A.  87. 

Eames  v.  Andrews,  122  U.  S.  40. 

While  a  law  of  nature  —  the  mere  principle  —  is  not  patentable,  the 
inventor  of  means  by  which  the  principle  can  be  utilized  may  be  entitled 
to  a  patent.  The  new  application  of  the  law  by  the  described  mechanical 
means  to  a  new  purpose,  which  affords  a  new  and  useful  practical  result,  is 
patentable.  —  Thomson-Houston  v.  Nassau,  107  Fed.  277;  46  C.  C.  A.  263. 

Nor  can  the  Bardsley  patent  be  construed  to  rightfully  exclude  others 
from  using  a  jet  of  water,  tangentially  applied  to  the  inner  surface  of  a  bowl, 
to  revolve  the  bowl.  This  was  a  law  of  nature,  well  known  before  the  Bardsley 
device.  —  Johnson  v.  McCurdy,  108  Fed.  671 ;  47  C.  C.  A.  577. 

The  motor  only  utilized  a  well-known  law  of  nature  —  that  a  jet  of  water, 
applied  tangentially  to  the  inner  surface  of  a  basin  nicely  pivoted,  would  tend 
to  revolve  it.  This  had  been  partially  exemplified  for  many  years  in  pre- 
ceding water  motors.  —  Justi  v.  Clark,  108  Fed.  659;  47  C.  C.  A.  565. 

It  was  not,  in  any  just  sense,  an  independent  discovery  in  nature,  subse- 
quently utilized  in  one  of  the  arts;  for,  in  substance,  it  was  nothing  but  a 
chemical  search  into  a  chalk  already  in  the  art,  for  the  ingredients  which 


640  THE   FIXED   LAW   OF    PATENTS  §  692 

gave  to  such  chalk  its  excellence.     It  was  research,  but  not  patentable 
discovery.  —  Hoskins  v.  Matthes,  108  Fed.  404;  47  C.  C.  A.  434. 

When,  under  special  circumstances,  a  particular  practical  application  of  a 
known  principle  proves  to  be  of  advantage  in  the  arts,  and  yet  the  thought  of 
making  it  has  not  occurred  to  those  expert  therein,  such  application,  at  times, 
involves  invention.  —  Westinghouse  v.  Stanley,  133  Fed.  167;  68  C.  C.  A. 
523. 

Watson  v.  Stevens,  51  Fed.  757;  Heap  v.  Tremont,  82  Fed.  449;  Western  v. 
La  Rue,  139  U.  S.  601;  National  v.  Boston,  156  U.  S.  502;  DuBois  v.  Kirk,  158 
U.  S.  58. 

We  do  not  understand  that  this  ignorance  of  the  patentee,  or  the  knowledge 
subsequently  gained  from  the  prior  art,  affects  the  status  of  the  invention  in 
suit.  The  fact  that  the  patentee  did  not  fully  understand  the  principle  upon 
which  his  invention  operated,  or  that  his  instructions  were  capable  of  a  con- 
struction which  would  render  the  patent  impracticable  and  defeat  its  pur- 
poses, should  not  deprive  him  of  the  benefit  of  a  meritorious  invention,  pro- 
vided it  appears,  as  is  found  in  this  case,  that  the  patent  sufficiently  disclosed 
to  those  skilled  in  the  art  the  cause  of  previous  defects  and  a  new  and  useful 
discovery  and  invention  by  means  of  which  they  might  be  successfully  over- 
come. He  is  not  to  be  deprived  of  the  benefit  of  his  invention  because  he 
may  have  been  mistaken  in  his  statement  of  the  reasons  why  the  result  was 
secured,  or  may  have  failed  to  correctly  state  the  theory  of  their  operation.  — 
Westinghouse  v.  Montgomery,  153  Fed.  890;  82  C.  C.  A.  636. 

Dixon  v.  Pfeifer,  55  Fed.  390. 

§  692.     Simplicity  —  Does  not  Negative  Invention. 

The  simplicity  of  an  invention,  or  the  fact  that  it  might  have  occurred  to 
anyone,  does  not  negative  invention.  Citing  Loom  Co.  v.  Higgins,  105  U.  S. 
591.  —  Pittsburgh  v.  Roberts,  71  Fed.  706;  18  C.  C.  A.  302. 

To  obtain  absolute  simplicity  is  the  highest  trait  of  genius.  —  Dececo  v. 
Gilchrist,  125  Fed.  293;  60  C.  C.  A.  207. 

It  cannot  be  denied  that  a  mere  simplification  of  a  very  substantial  char- 
acter, disposing  of  parts  which  have  long  been  in  use,  expensive  and  burden- 
some in  their  nature,  and  which  the  trade  has  found  no  method  of  dispensing 
with,  may  amount  to  patentable  invention.  To  obtain  absolute  simplicity 
is  the  highest  trait  of  genius.  —  Dececo  v.  Gilchrist,  125  Fed.  293;  60  C.  C. 
A.  207. 

Hobbs  v.  Goodling,  111  Fed.  403;  discussing  Richards  v.  Chase,  159  U.  S.  477; 
159  U.  S.  54;  National  v.  Hedden,  148  U.  S.  482;  Lawther  v.  Hamilton,  124  U. 
S.  1;  Crescent  v.  Gottfried,  128  U.  S.  158. 

The  simplicity  and  obvious  nature  of  East's  device  seem  to  be  the  chief 
argument  against  its  patentability,  but  the  books  are  full  of  cases  where 
patents  have  been  sustained  for  changes  in  methods  which  seem  equally 
simple.  —  Farmers'  v.  Spruks,  127  Fed.  691 ;  62  C.  C.  A.  447. 

Barbed  Wire  Pat.  143  U.  S.  275;  Keystone  v.  Adams,  151  U.  S.  144;  Smith  v. 
Goodyear,  93  U.  S.  498;  Topliff  v.  Topliff,  145  U.  S.  156;  Crown  v.  Aluminum, 
108  Fed.  845. 

The  device  of  the  claim  when  completed  is  so  diminutive  in  size  and 
simple  in  construction  that,  unless  care  is  taken,  the  assertion  that  there 
is  no  room  for  invention  in  so  small  a  structure  may  receive  greater  con- 
sideration than  is  warranted.    This  court  has  repeatedly  upheld  patents  for 


§  693  INVENTION  641 

similar  improvements,  the  test  being  not  the  simplicity  of  the  device,  but  the 
difficulties  overcome  and  the  result  accomplished.  —  U.  S.  Fastener  v. 
Bradley,  149  Fed.  222;  79  C.  C.  A.  180. 

Fastener  v.  Littauer,  84  Fed.  164;  Kent  v.  Simons,  39  Fed.  606;  Fastener  v. 
Hays,  100  Fed.  984;   Consolidated  v.  Fastener,  79  Fed.  795. 

§  693.     Simplicity  —  Ex  post  facto  Judgment. 

It  should  be  borne  in  mind  that  this  process  was  not  one  accidentally  dis- 
covered, but  was  the  result  of  a  long  search  for  the  very  purpose.  The  sur- 
prise is  that  the  manufacturers  of  steel,  having  felt  the  want  for  so  many 
years,  should  have  never  discovered  from  the  multiplicity  of  patents  and  of 
processes  introduced  into  this  suit,  and  well  known  to  the  manufacturers  of 
steel,  that  it  was  but  a  step  from  what  they  already  knew  to  that  which  they 
had  spent  years  in  endeavoring  to  find  out.  It  only  remains  now  for  the 
wisdom  which  comes  after  the  fact  to  teach  us  that  Jones  (the  inventor) 
discovered  nothing,  invented  nothing,  accomplished  nothing.  —  Carnegie 
v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

Loom  Co.  v.  Higgins,  105  U.  S.  591. 

It  is  true  the  Jones  patent  is  a  simple  one,  and  in  the  light  of  present 
experience  it  seems  strange  that  none  of  the  expert  steel  makers,  who  ap- 
proached so  near  the  consummation  of  their  devices,  should  have  failed  to 
take  the  final  step  which  was  needed  to  convert  their  experiments  into  an 
assured  success.  This,  however,  is  but  the  common  history  of  important 
inventions,  the  simplicity  of  which  seems  to  the  ordinary  observer  to  preclude 
the  possibility  of  their  involving  an  exercise  of  the  inventive  faculty.  — 
Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

Its  very  simplicity  in  such  an  old  field  should  be  a  warning  against  a 
too  ready  acceptance  of  the  ex  post  facto  wisdom  of  the  bystander.  — 
Regent  v.  Penn,  121  Fed.  80;  57  C.  C.  A.  334. 

It  is  difficult  to  draw  the  line  between  mechanical  skill  and  patentable 
invention,  and  now  that  East  has  succeeded  in  producing  a  barrel  of  great 
commercial  use,  out  of  simple  and  inexpensive  material,  by  what  seems  a 
trivial  modification  of  previously  known  devices,  it  is  easy  to  say  that  any 
mechanic  skilled  in  the  art,  having  before  him  the  previous  invention  of 
Roberts,  could  readily  have  accomplished  the  same  object  by  ordinary 
mechanical  skill,  but  the  fact  remains  that,  notwithstanding  the  great 
demand  and  imperative  need  of  the  very  thing  that  East  produced,  no  other 
mechanic  or  barrel  maker  had  ever  produced  such  a  barrel  previous  to  East's 
patent.  Simple  as  the  device  is,  others  failed  to  see  it,  or  to  estimate  its 
value,  or  to  bring  it  to  the  public  notice.  —  Farmers'  v.  Spruks,  127  Fed. 
691;  62  C.  C.  A.  447. 

The  fact  that  a  new  combination  or  device  may  be  simple  and  obvious  to 
the  ordinary  understanding,  when  once  produced  in  concrete  form,  is  not 
necessarily  proof  that  invention  was  not  involved.  This  is  almost  a  common- 
place in  the  jurisprudence  of  patent  law.  —  Buchanan  v.  Perkins,  135  Fed. 
90;  67  C.  C.  A.  564. 

It  is  easy  now  to  minimize  its  importance  and  say  it  consisted  simply 
in  applying  a  pneumatic  hammer  to  a  sieve,  but  the  fact  remains  that,  with 
the  difficulty  of  enameling  keenly  recognized  in  the  art,  no  one  made  such  a 
combination.  —  Mott  v.  Standard,  159  Fed.  135;  86  C.  C.  A.  325. 


642 


THE    FIXED    LAW   OF    PATENTS 


§§  694-696 


§  694.     Simplification. 

Under  some  circumstances  it  may  happen  that  there  is  invention  in  sub- 
stituting for  a  complex  or  expensive  form  something  simple  or  inexpensive. 
If,  therefore,  the  concave-convex  form  had  been  a  long  time  in  use,  and  the 
patentee  had  discovered  that  the  convex-flat  form  was  less  expensive,  and 
more  simple,  and  yet  would  answer  the  purpose,  and  if  he  had  been  the  first 
to  put  that  discovery  into  practice,  there  might  be  invention  in  so  doing, 
notwithstanding  he  had  made  a  mistaken  claim  that  his  construction  had 
other  advantages ;  but  the  case  does  not  show  such  a  condition  of  things.  — 
Kenney  v.  Bent,  97  Fed.  337;  38  C.  C.  A.  205. 

While  it  is  perhaps  true  that  sometimes  the  mere  simplification  of  mechan- 
ism by  omitting  parts  may  amount  to  patentable  invention,  yet  this  is  only 
under  exceptional  circumstances.  —  U.  S.  Peg- Wood  v.  Sturtevant,  125  Fed. 
378;  60  C.  C.  A.  244. 

Patentable  novelty  may  be  found  in  an  improvement  which  simplifies  a 
complicated  train  of  mechanism  by  eliminating  some  of  its  elements,  with  the 
result  that  the  defects  due  to  the  presence  of  these  elements  are  done  away 
with.  —  Brown  v.  Huntington,  134  Fed.  735;  67  C.  C.  A.  639. 

§  695.     Substitution  —  Elements. 

There  would  be  no  invention  in  changing  one  of  the  elements  of  the  Covel 
patent  by  bringing  into  it  a  feature  of  the  Wilkin  patent.  —  Rich  v.  Baldwin, 
133  Fed.  920;  66  C.  C.  A.  464. 

Overweight  v.  Vogt,  120  Fed.  957. 

The  evidence,  we  think,  fairly  leads  to  the  conclusion  that  the  patentee 
took  the  combination  of  Thyng's  patent,  but  instead  of  using  the  form  of 
link  of  that  patent,  substituted  therefor  another  old  form  of  link  which 
had  been  commonly  used  for  the  same  or  analogous  purposes.  This  sub- 
stitution may  have  secured  better  results,  but  it  did  not  involve  invention.  — 
North  Jersey  v.  Brill,  134  Fed.  580;  67  C.  C.  A.  380. 

Stimpson  v.  Woodman,  10  Wall.  117;  Smith  v.  Nichols,  21  Wall.  112;  Pennsyl- 
vania v.  Locomotive,  110  U.  S.  490;   Office  Specialty  v.  Fenton,  174  U.  S.  492. 

§  696.     Substitution  —  New  Material  —  Non-Patentable. 

But  superiority  of  material  of  itself  can  never  be  the  subject  of  a  patent. 
No  one  will  pretend  that  a  machine  made  in  whole  or  in  part  of  materials 
better  adapted  to  the  purpose  for  which  it  is  used  can  be  distinguished  from  the 
old  one,  or,  in  the  sense  of  the  patent  law,  can  entitle  the  manufacturer  to  a 
patent.  —  Hotchkiss  v.  Greenwood,  11  How.  248;  13  L.  Ed.  683. 

A  mere  substitution  for  an  element  in  a  combination  producing  no  change 
except  a  better  result  is  not  patentable.  —  Hotchkiss  v.  Greenwood,  11 
How.  248;  13  L.  Ed.  683. 

Mere  change  of  material  is  not  sufficient  to  constitute  invention,  the 
purpose  and  the  means  being  the  same.  —  Hicks  v.  Kelsey,  85  U.  S.,  670; 
21  L.  Ed.  852. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Crane  v.  Price,  Web.  P.  C.  409;  Curt. 
Pat.  sees.  70-73. 

Mere  change  in  a  machine,  of  one  material  for  another,  as  wood  or  wood 
strengthened  with  iron  for  iron  alone,  is  not  invention.  —  Dunbar  v.  Meyers, 
94  U.  S.  187;  24  L.  Ed.  34. 

Hicks  v.  Kelsey,  18  Wall.  670. 


§  696  INVENTION  643 

The  substitution  of  metal  for  wood  was  destitute  both  of  patentable 
invention  and  utility.  —  Terhune  v.  Phillips,  99  U.  S.  592;  25  L.  Ed.  293. 

The  substitution  of  one  material  for  another  without  involving  a  new  mode 
of  construction,  or  developing  anything  substantially  new  is  not  invention. 
—  Brown  v.  D.  C.  130  U.  S.  87;  32  L.  Ed.  863;  9  S.  Ct.  437. 

Hotchkiss  v.  Greenwood,  52  U.  S.  248;  Hicks  v.  Kelsey,  85  U.  S.  670;  Smith 
V.  Goodyear,  93  U.  S.  486;    Phillips  v.  Detroit,  111  U.  S.  604. 

The  substitution  of  one  material  for  another  which  does  not  involve  change 
of  method  nor  develop  novelty  of  use,  even  though  it  may  result  in  a  superior 
article,  is  not  necessarily  a  patentable  invention.  —  Florsheim  v.  Schilling, 
137  U.  S.  64;  34  L.  Ed.  574;  11  S.  Ct.  20. 

Hotchkiss  v.  Greenwood,  52  U.  S.  248;  Hicks  v.  Kelsey,  85  U.  S.  670;  Ter- 
hune v.  Phillips,  99  U.  S.  592;  Brown  v.  D.  C.  130  U.  S.  87. 

The  substitution  of  one  material  for  another  in  the  employment  of  an  old 
method  of  manufacture  is  not  invention.  —  Hoff  v.  Iron  Clad,  139  U.  S.  326; 
35  L.  Ed.  179;   11  S.  Ct.  580. 

Substitution  of  one  well  known  material  for  another  such  as  would  occur  to 
any  mechanic  who  had  skill  enough  to  adapt  a  cumbersome  device  to  new 
circumstances  is  not  invention.  —  Ryan  v.  Hard,  145  U.  S.  241 ;  36  L.  Ed. 
691;  12  S.  Ct.  919. 

Mere  change  of  material  is  not  invention.  —  Potts  v.  Creager,  155  U.  S. 
597;  39  L.  Ed.  275;  15  S.  Ct.  194. 

Hotchkiss  p.  Greenwood,  52  U.  S.  248;  Hicks  v.  Kelsey,  85  U.  S.  670;  Ter- 
hune v.  Phillips,  99  U.  S.  592;   Brown  v.  D.  C.  130  U.  S.  87. 

But  when  the  substitution  was  for  a  purpose  wholly  different  from  that  for 
which  they  had  been  employed,  under  such  circumstances  we  have  repeatedly 
held  that  a  change  of  material  was  invention.  —  Potts  v.  Creager,  supra. 

Smith  v.  Goodyear,  93  U.  S.  486;   Goodyear  v.  Davis,  102  U.  S.  222. 

The  specification  of  material  in  the  patent  is  nothing  more  than  a  selec- 
tion, for  it  is  stated  that  it  is  preferably  though  not  necessarily,  of  wood.  — 
National  v.  Merrill,  49  Fed.  157;  1  C.  C.  A.  214. 

The  use  of  wrought  steel  or  iron  in  lieu  of  cast  metal  is  mere  substitution 
of  materials,  which,  whatever  the  degree  of  superiority  given  to  the  manu- 
facture thereby,  is  not  patentable.  —  Kilbourne  v.  Bingham,  50  Fed.  697; 
1  C.  C.  A.  617. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Hicks  v.  Kelsev,  18  Wall.  670;  Phillips 
v.  Detroit,  111  U.  S.  604;  Gardner  v.  Herz,  118  U.  S.  180;  Brown  v.  D.  C.  130 
U.  S.  87;    Florsheim  v.  Schilling,  137  U.  S.  64. 

That  the  substitution  of  one  material  for  another,  even  when  the  sub- 
stitution produces  a  beneficial  result,  where  the  material  substituted  was 
known,  is  not  invention,  see  —  Interior  v.  Perkins,  80  Fed.  528 ;  25  C.  C.  A.  613. 

The  substitution  of  one  kind  of  material  for  another,  especially  of  kinds 
so  intimately  allied  as  those  of  cast  or  wrought  or  malleable  iron  or  steel, 
is  not  of  the  character  of  invention,  nor  are  the  products  thereof  patentable, 
for  the  reason  that  one  may  possess  greater  advantages  than  another.  No 
doubt  there  are  exceptions  to  the  general  rule,  but  they  depend  upon  especial 
facts,  indicating  the  presence  of  more  genius  or  invention  than  is  exercised 


644  THE   FIXED   LAW   OF   PATENTS  §  697 

by  the  ordinary  skill  and  knowledge  of  those  familiar  with  the  qualities  of 
materials  and  their  various  adaptations  to  the  useful  arts.  —  Strom  v.  Weir, 
83  Fed.  170;  27  C.  C.  A.  502. 

Kilboume  v.  Bingham,  50  Fed.  697;  Hoff  v.  Mfg.  Co.  139  U.  S.  326;  Potts  v. 
Creager,  155  U.  S.  597. 

It  is  conceded  that  the  patent  cannot  be  sustained  upon  the  theory  that 
Shaw  substituted  electric  power  instead  of  steam  or  hydraulic  power  in  such 
machines.  —  Shaw  v.  Shriver,  86  Fed.  466 ;  30  C.  C.  A.  196. 

That  the  mere  substitution  of  electric  or  magnetic  energy  for  mechanical 
energy  is  not  invention,  see  Bradford  v.  Belknap,  115  Fed.  711;  53  C.  C.  A. 
293. 

It  is  elemental  in  the  patent  law  that  the  mere  substitution  of  steel  or 
wrought  iron  for  cast  iron  is  not  invention.  The  advantages  and  differences 
of  the  two  forms  of  iron  are  too  well  known  to  require  the  skill  of  an  inventor 
to  displace  one  for  the  other,  where  the  conditions  are  such  as  to  make  one 
preferable  to  the  other.  —  Drake  v.  Brownell,  123  Fed.  86;  59  C.  C.  A.  216. 

Kilboume  v.  Bingham,  50  Fed.  697;  Strom  v.  Weir,  83  Fed.  170;  Union  v. 
Selchow,  112  Fed.  1006;  Florsheim  v.  Schilling,  137  U.  S.  64;  Hicks  v.  Kelsey, 
18  Wall.  670. 

The  new  thing  done  was  to  substitute  paper  for  tin  or  other  metal,  as 
material  for  the  dome-shaped  cap.  A  mere  substitution  of  one  material  for 
another  does  not  constitute  invention.  —  Lafferty  v.  Acme,  138  Fed.  729; 
71  C.  C.  A.  285. 

Florsheim  v.  Schilling,  137  U.  S.  64;  Gardner  v.  Herz,  118  U.  S.  180;  Cellu- 
loid v.  Tower,  26  Fed.  451. 

The  rubber  is  fastened  to  the  metal  more  securely  than  before,  but  that 
is  all.  If  this  be  invention,  it  must  follow  that  one  who  substitutes  some  other 
material  —  glass  or  porcelain,  for  instance  —  and  fastens  the  rubber  block 
to  this  handle  by  some  well-known  mechanical  device  which  he  substitutes 
for  the  gripping  flanges  of  the  patent  in  suit,  will  be  entitled  to  a  patent, 
and  so  on  until  all  available  fastening  devices  are  exhausted.  We  are  clearly 
of  the  opinion  that  the  patent  discloses  nothing  which  does  not  belong  to 
the  skill  of  the  calling.  —  Kuhn  v.  Lock-Stub,  165  Fed.  445;  C.  C.  A. 

Rubber-Tip  v.  Howard,  20  Wall.  498;    Reckendorfer  v.  Faber,  92  U.  S.  347. 

§  697.     Substitution  —  New  Material  —  Patentable. 

Although  carbon  conductors  had  been  used  previously,  it  was  invention  to 
select  a  material  capable  of  subdivision  or  filamentation  to  produce  the 
Edison  lamp.  —  Edison  v.  U.  S.  52  Fed.  300;  3  C.  C.  A.  83. 

Even  if  what  he  did  was  merely  to  employ  a  basic  material  differing  in  the 
degree  of  porosity  and  toughness,  and  a  coating  differing  in  the  degree  of 
softness  from  that  which  had  been  previously  used,  (using  the  "  yoshino  " 
paper  and  a  soft  wax  to  make  a  mimograph  stencil)  he  accomplished  thereby 
a  new  result.  Each  of  these  modifications  was  necessary  to  successfully 
introduce  the  new  principle,  which  differentiated  his  production  from  the 
stencil  sheets  of  the  prior  art.  —  Wickelman  v.  Dick,  88  Fed.  264;  31  C.  C. 
A.  530. 

That  its  selection  (rubber  for  a  button  for  a  hose-supporter)  was  not  an 
obvious  thing  is  persuasively  and  cogently  shown  by  the  fact  that  during 
many  years  numerous  inventors  were  trying  to  remedy  the  defects  in  the  old 


1 698  INVENTION  645 

device,  and  it  did  not  occur  to  them  how  simply  and  satisfactorily  this  could 
be  done  by  making  the  button  of  rubber  or  some  other  elastic  or  yielding 
material.  Its  employment  in  the  device  was  a  new  use,  and  imparted  to  the 
device  a  remarkable  efficiency,  as  compared  with  the  best  type  of  former 
devices.  —  Frost  v.  Cohn,  119  Fed.  505;  56  C.  C.  A.  185. 

To  sustain  a  patent  based  upon  a  change  of  material,  it  must  be  shown 
that  some  new  and  useful  result  has  been  accomplished;  for  it  is  only  then 
that  the  substitution  of  one  material  for  another  can  attain  the  dignity  of 
invention.  —  Drake  v.  Brownell,  123  Fed.  86;  59  C.  C.  A.  216. 

Hotchkiss  v.  Greenwood,  11  How.  248;  Union  v.  Selchow,  112  Fed.  1006; 
Frost  v.  Cohn,  119  Fed.  505. 

Quite  likely  the  substitution  alone  of  one  material  for  another  would  not 
amount  to  invention,  but  the  successful  adaptation  of  the  metal  finger- 
head  which  made  the  use  of  highly  tempered  thread  guides  possible  is  some- 
thing to  be  considered  in  connection  with  the  other  elements  of  the  combina- 
tion upon  the  question  as  to  whether  what  he  did  amounted  to  invention.  — 
Houghton  v.  Whitin,  153  Fed.  740;  83  C.  C.  A.  84. 

In  solving  that  problem,  he,  in  common  with  the  plumber's  art,  was 
aware  that  brass  and  iron  in  contact  will  not  rust ;  and  that  iron  being  harder 
than  brass,  sealing  surfaces  of  those  metals  grind  and  seal  into  each  other. 
In  the  face  of  these  facts  long  and  well  known  to  the  plumber's  art,  it  is 
remarkable  that  no  one  took  advantage  of  them  to  make  a  brass-to-iron 
contact  in  the  simple  and  effective  way  Hewlitt  did  to  produce  a  union  for 
common  plumbing  use.  There  are  instances  where  an  iron  nut  was  used  to 
screw  on  to  brass  whereby  a  rustless  joint  was  secured ;  there  are  instances 
where  sealing  faces  of  brass  and  iron  were  used,  but  even  these  uses  and  others 
we  might  add  of  even  greater  suggestiveness,  led  no  one  prior  to  Hewlitt  to 
utilize  these  known  facts  to  devise  a  common,  cheap,  and  rustless  plumber's 
union  which  could  be  repeatedly  uncoupled  and  recoupled  without  injury.  — 
Rainear  v.  Western,  159  Fed.  431 ;  86  C.  C.  A.  411. 

§  698.     Systems  and  Arrangements. 

There  is  nothing  peculiar  or  novel  in  preparing  a  sheet  of  paper  with  head- 
ings generally  appropriate  to  classes  of  facts  to  be  recorded,  and  whatever 
peculiarity  there  may  be  about  the  headings  in  this  case,  is  a  peculiarity 
resulting  from  the  transactions  themselves.  —  U.  S.  Credit  v.  American,  59 
Fed.  139;  8C.  C.  A.  49. 

Whether  a  new  method  of  conducting  a  business  such  as  insurance,  is  or 
is  not  patentable,  and  whether  "  forms  of  contract  "  by  which  improved 
methods  in  conducting  such  business  are  made  effective  are  or  are  not  patent- 
able, are  questions  which  were  discussed  at  length  upon  the  argument,  but 
which  need  not  be  decided  upon  this  appeal.  They  do  not  arise  under  the 
patent.  —  U.  S.  Credit  v.  American,  59  Fed.  139;  8  C.  C.  A.  49. 

In  view  of  the  art,  the  arrangement  of  figures  to  operate  as  a  safety  check, 
as  used  in  postal  orders  does  not  involve  invention.  —  Berry  v.  Wynkoop, 
84  Fed.  646;  28  C.  C.  A.  505. 

The  patent  describes  a  new  plan  for  handling  the  large  number  of  passen- 
gers who  patronize  the  public  vehicles  provided  for  rapid  transit  in  large 
cities.  It  is  argued  that  this  is  patentable  as  a  "  machine  "  under  the  language 
of  the  statute.  If  a  scheme  for  handling  the  traveling  public  in  congested 
districts  can,  for  patent  purposes,  be  regarded  as  a  machine,  it  is  by  no  means 


646  THE   FIXED   LAW   OF   PATENTS  §  699 

easy  to  perceive  why  a  new  plan  for  reorganizing  the  police  force,  or  mobiliz- 
ing the  army  or  manipulating  the  guests  at  crowded  public  functions,  may  not 
also  be  aptly  described  as  a  machine  and  patented  as  such.  —  Fowler  v. 
City  of  N.  Y.  121  Fed.  747;  58  C.  C.  A.  113. 

The  patent  purports  to  disclose  an  improved  method  of  preventing  and 
rectifying  mistakes  in  railroad  shipping.  The  patentee  has  provided  a 
box  in  which  the  truckman  is  to  deposit  the  voucher  instead  of  returning  it 
to  the  shipping  clerk,  and  has  located  it  at  the  most  convenient  place,  and 
where  there  is  the  least  likelihood  of  his  making  the  mistake  of  depositing  the 
voucher  in  the  wrong  one.  All  this  evidences  good  judgment  upon  the  part 
of  one  who  is  experienced  in  the  particular  business,  but  it  does  not  rise  to 
the  level  of  invention.  —  Hocke  v.  N.  Y.  Central,  122  Fed.  467;  58  C.  C.  A. 
627. 

This  "  system  "  is  brought  about  by  a  rearrangement  of  old  parts,  and 
in  the  literature  of  the  art  these  parts  had  already  been  brought  together  in 
such  a  variety  of  ways,  and  there  had  been  so  many  substitutions  of  one  device 
for  another,  so  many  methods  shown  of  controlling  one  current  by  another 
and  of  displaying  and  obscuring  signals,  such  a  transposition  of  parts  and 
shifting  of  currents  that  it  seems  to  us  entirely  clear  that  the  rearrangement  of 
the  patentees,  clever  though  it  may  have  been  and  in  its  details  perhaps 
novel,  was  nevertheless  one  of  those  minor  improvements  which  was  easily 
within  the  ordinary  skill  of  the  telephone  engineer.  The  case  seems  to  come 
within  the  views  expressed  in  Atlantic  v.  Brady,  107  U.  S.  199,  and  peculiarly 
within  those  expressed  in  Thomson-Houston  v.  Western,  65  Fed.  619.  — 
Western  v.  Rochester,  145  Fed.  41 ;  75  C.  C.  A.  313. 

That  an  invention  cannot  be  founded  merely  upon  an  arrangement  of  color 
signals,  see  Library  Bureau  v.  Macey,  148  Fed.  380;  78  C.  C.  A.  194. 

That  an  indexing  system  may  be  narrowly  patentable,  see  Library  Bureau 
v.  Macey,  148  Fed.  380;  78  C.  C.  A.  194. 

Note:  As  a  matter  of  fact,  in  its  last  analysis,  what  is  held  to  be  patentable 
in  this  case  is  an  article  of  manufacture  or  an  implement,  rather  than  a 
system.  This  I  believe  to  be  the  test  of  invention  in  such  cases.  The  inven- 
tion must  reside  in  the  novel  article  or  implement  which  makes  the  system 
possible. 

If  at  the  time  of  Hicks'  application,  there  had  been  no  system  of  book- 
keeping of  any  kind  in  restaurants,  we  should  be  confronted  with  the  question 
whether  a  new  and  useful  system  of  cash-registering  and  account-checking 
in  such  an  art  is  patentable  under  the  statute.  This  question  seems  never  to 
have  been  decided  by  a  controlling  authority  and  its  decision  is  not  neces- 
sary now  unless  we  find  that  Hicks  has  made  a  contribution  to  the  art 
which  is  new  and  useful.  We  are  decidedly  of  the  opinion  that  he  has  not,  the 
overwhelming  weight  of  authority  being  that  claims  granted  for  such  im- 
provements as  he  has  made  are  invalid  for  lack  of  patentability.  —  Hotel 
v.  Lorraine,  160  Fed.  467;  87  C  C.  A.  451. 

Hocke  v.  N.  Y.  Central,  122  Fed.  467;   U.  S.  Credit  v.  American,  59  Fed.  139. 


§  699.    Tests  of  —  Last  Step  Rule. 

Sutton  has  taken  the  step  which  marks  the  difference  between  a  success- 
fully operating  machine  and  one  which  stops  short  at  that  point,  and  that 
advance  entitles  him  to  the  protection  of  a  patent.  —  Cimiotti  v.  American, 
198  U.  S.  399;  49  L.  Ed.  1100;  25  S.  Ct.  697. 


§  700  INVENTION  647 

It  is  true  that  it  has  been  said  upon  high  authority  that  in  the  law  of 
patents  it  is  the  last  step  that  wins,  but  this  stride  must  be  made  by  the 
inventor,  who  originates,  and  not  by  the  mechanic,  who  merely  improves. 
It  is  also  true  that  the  cases  recognize  the  fact  that  an  improvement  when 
made  is  not  to  be  deprived  of  the  protection  of  the  law  because  it  seems  simple 
after  it  is  accomplished.  There  are  cases  where  many  have  been  striving  to 
reach  a  given  result  without  success,  when  there  comes  upon  the  scene  the 
inventor  who  solves  the  difficulty  in  a  manner  which  makes  strange  the  want 
of  earlier  discovery  of  a  thing  so  simple,  but  who  is,  nevertheless,  entitled 
to  the  protection  of  the  patent  law.  —  Galvin  v.  City,  115  Fed.  511 ;  53  C. 
C.  A.  165. 

It  was  this  last  step  which  has  turned  previous  failures  into  a  success, 
and  we  are  therefore  of  opinion  that  the  East  patent  is  valid.  —  Farmers'  v. 
Spruks,  127  Fed.  691 ;  62  C.  C.  A.  447. 

If  it  be  true  that  Boxley  (the  inventor  of  the  alleged  anticipating  device), 
even  though  ignorant  of  the  fact,  had  previously  made  a  machine  capable  of 
doing  the  work  of  the  Pine  device  (patent  in  suit)  in  the  same  way,  the  patent 
of  the  latter  cannot  be  sustained.  But,  on  the  other  hand,  if  Boxley  intending 
to  accomplish  a  different  result  ignorantly  stumbled  upon  a  structure  which, 
in  the  light  of  Pine's  achievement,  can  be  distorted  into  a  temporary  and 
inefficient  substitute  for  the  successful  machine,  quite  a  different  proposi- 
tion is  presented.  If  Pine  did  nothing  more  than  take  an  old  abandoned 
failure  and,  by  the  introduction  of  new  and  ingenious  features,  no  matter  how 
simple  they  may  be,  convert  the  rustic  relic  into  a  living  machine  which  does 
the  required  work  better,  faster,  cheaper  than  it  was  ever  done  before,  he 
is  entitled  to  the  protection  which  his  patent  is  intended  to  give.  —  United 
v.  Beattie,  149  Fed.  736;  79  C.  C.  A.  442. 

Potts  v.  Creager,  155  U.  S.  597;   Clough  v.  Barker,  106  U.  S.  166. 

§  700.     Tests  of  —  Miscellaneous. 

In  determining  the  question  of  invention  each  case  must  depend  upon  its 
own  facts,  the  inquiry  always  being  whether  what  has  been  done  required  the 
exercise  of  the  inventive  faculties.  Has  a  new  or  better  result  been  obtained? 
Is  it  cheaper  and  more  durable?  Has  it  new  capabilities?  Does  it  perform 
new  functions?  —  Rumford  v.  New  York,  134  Fed.  385;  67  C.  C.  A.  367. 

Smith  v.  Vulcanite  Co.  93  U.  S.  486;  Loom  Co.  v.  Higgins,  105  U.  S.  580; 
King  v.  Anderson,  90  Fed.  500. 

,  The  number  of  patents  relating  to  this  subject  which  had  been  taken  out 
is  strong  evidence  that  the  results  which  had  already  been  reached  had 
already  exhausted  the  common  skill  and  learning  of  the  craft.  —  Western  v. 
North,  135  Fed.  79;  67  C.  C.  A.  553. 

While  it  might  be  possible  for  a  skilled  mechanic  with  the  prior  art  and  the 
present  object  both  before  him  to  construct  the  device  of  the  patent;  Held: 
To  conceive  the  idea  and  then  embody  it  in  a  combination  which  produces  a 
machine  which  for  accuracy,  convenience,  celerity  and  fairness  to  employer 
and  employed  shows  marked  improvement  over  anything  preceding  it, 
required  the  exercise  of  the  inventive  faculty,  though  not,  perhaps,  of  the 
highest  order.  —  International  v.  Dey,  142  Fed.  736;  74  C.  C.  A.  68. 

Hobbs  v.  Beach,  180  U.  S.  383;  Loom  Co.  v.  Higgins,  105  U.  S.  580;  Cimiotti 
v.  Fur.  Co.  198  U.  S.  399;  Topliff  v.  Topliff,  145  U.  S.  156. 

The  practically  abandoned  experimental  models  made  by  the  Brill  Com- 
pany, the  real  defendant  in  interest  herein,  the  fact  that  it  never  made  any 


648  THE   FIXED   LAW   OF   PATENTS  §§  701-702 

construction  like  the  alleged  infringement  until  after  O'Leary  had  obtained  his 
patent  and  shown  it  to  the  president  of  said  company,  the  cogent  and  per- 
suasive fact  that  in  the  Brill  model  illustrating  the  use  of  the  inflexible  and 
flexible  sashes,  its  constructors  showed  their  inability  to  adapt  their  methods 
to  the  storage  of  an  inflexible  sash  overhead,  and  were  obliged  to  arrange  it 
so  as  to  slide  downwards,  the  state  of  the  prior  art,  and  the  fact  that  with  a 
great  body  of  would-be  inventors  in  the  field,  O'Leary  was  the  first  to  show 
in  a  car  a  method  of  storage  in  an  overhead  chamber  of  inflexible  panels 
arranged  to  slide  abreast  instead  of  tandem ;  the  absence  from  the  hansom 
cab  structure  of  the  merging  and  widening  grooves,  and  the  impossibility  of 
adapting  its  construction  to  the  roof  of  a  car  without  substantial  and  radical 
modifications;  the  obviation  by  O'Leary  of  all  overhead  obstructions  or 
interference,  and  the  adoption  by  the  Brill  Company  of  a  modified  form 
of  the  patented  car,  considered  together,  show  a  compliance  with  the  most 
rigid  requirements  of  the  tests  of  invention  and  demonstrate  patentable  novelty 
beyond  question.  —  O'Leary  v.  Utica,  144  Fed.  399;  75  C.  C.  A.  377. 

§  701.     Transposition  of  Parts. 

It  is  true  that  where  a  mechanical  result  is  obtained,  by  the  movement  of  one 
element  upon  another  element  of  a  combination,  it  does  not  usually  involve 
invention  merely  to  reverse  the  operation,  and  secure  the  same  result  by 
making  the  first  element  stationary  and  the  second  movable.  And  so,  where 
result  of  motion  is  secured  by  a  stationary  cam  guiding  a  tool,  it  may  often 
be  an  obvious  change  to  reverse  the  parts  by  making  the  cam  movable  and 
the  tool  stationary.  But  the  question  whether  it  is  obvious  is  to  be  deter- 
mined by  examination  of  the  particular  machines  in  which  the  change  is 
made.  —  Penfield  v.  Chambers,  92  Fed.  630;  34  C.  C.  A.  579. 

In  the  Jennings  case,  the  circuit  court  indicated  that  the  proper  limit  of 
the  width  of  such  strip  should  be  not  to  exceed  the  depth  of  the  teeth,  to 
wit:  —  one-thirty-second  of  an  inch.     We  concur  in  this  conclusion. 

Wallace,  C.  J.  dissenting.  When  it  becomes  necessary  to  discrimi- 
nate between  a  temper  line  which  is  within  or  beyond  one  thirty-second 
of  an  inch  from  the  base  of  the  teeth,  and  make  the  validity  of  the  patent  and 
the  question  of  infringement  depend  upon  that  test,  this  seems  to  me  to  be 
splitting  hairs,  and,  in  view  of  the  prior  art,  to  be  sustaining  a  patent  for  a 
mere  change  of  degree,  and  utterly  unwarranted.  —  Thompson  v.  Bushnell, 
96  Fed.  238;  37  C.  C.  A.  456. 

That  the  mere  transposition  of  parts,  performing  the  same  functions, 
is  not  invention,  see  Excelsior  v.  Morse-Keefer,  101  Fed.  448;  41  C.  C.  A. 
448. 

Fastener  Co.  v.  Hays,  100  Fed.  984. 

§  702.    Utility. 

Inventions,  in  order  that  they  may  be  the  proper  subjects  of  letters 
patent,  must  be  new  and  useful.  Utility  in  most  cases  is  a  question  of  fact, 
as  it  usually  depends  upon  the  evidence  resulting  from  an  actual  experiment. 
—  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

Patent  laws  have  for  their  leading  purpose  the  encouragement  of  useful 
inventions.  Practical  utility  is  their  object,  and  it  would  be  strange  if,  with 
such  object  in  view,  the  law  should  consider  two  things  substantially  the 
same  which,  practically  and  in  reference  to  their  utility,  are  substantially 
different.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed.  125. 

Curt.  Pat.  sec.  331. 


§  703  INVENTOR  649 

Neither  an  invention  which  will  not  enable  the  operator  to  accomplish 
the  desired  result,  nor  one  which  constantly  exposes  the  operator  to  the  loss 
of  his  life  or  to  great  bodily  harm  can  be  regarded  as  being  useful  within  the 
meaning  of  the  patent  law.  —  Mitchell  v.  Tilghman,  86  U.  S.  287;  22  L.  Ed. 
125. 

The  patent  was  for  a  process  for  spotting  the  leaves  of  tobacco  to  give 
them  the  appearance  of  the  real  Sumatra  leaf.  Held:  In  authorizing  patents 
to  the  authors  of  real  and  useful  discoveries  and  inventions,  Congress  did  not 
intend  to  extend  protection  to  those  which  confer  no  other  benefit  upon  the 
public  than  the  opportunity  of  profiting  by  deception  and  fraud.  To  warrant 
a  patent,  the  invention  must  be  useful;  that  is,  capable  of  some  beneficial 
use  as  distinguished  from  a  pernicious  use.  —  Rickard  v.  DuBon,  103  Fed. 
868;  43  C.  C.  A.  360. 

We  cannot  think  that  a  decision  adverse  to  the  utility  and  operativeness 
of  this  invention  could  safely  rest  on  the  ill  success  of  experiments  made  by 
those  who  were  not  specially  desirous  of  making  their  experiments  succeed. 
—  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

The  evidence  showed  that  the  device  of  the  patent  was  not  a  success 
and  that  the  patent  did  not  disclose  means  for  obviating  the  difficulties  in 
adapting  such  apparatus  to  the  needs  of  the  art.  Held:  Taking  this  as  the 
strongest  answer  that  can  be  made  (that  experiment  would  be  necessary 
to  reduce  the  invention  to  actual  practice)  of  the  statutory  requirement 
that  the  patentee  shall  make  a  written  description  of  his  invention  or  dis- 
covery, "  in  such  full,  clear  and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  to  make,  construct  and  use  the  same,"  we  are  of  opinion,  in  the 
face  of  strong  and  uncontradicted  proof  of  those  skilled  in  the  art,  that  the 
problem  of  roll  contour  has  not  been  solved  —  that  the  disclosures  of  this 
patent  are  not  of  the  practical  and  useful  character  the  law  makes  the  con- 
sideration for  the  grant  of  a  patent  monopoly.  The  evidence  satisfies  us 
the  problem  of  continuous  sheet-rolling  was  neither  solved  nor  disclosed  by 
this  patent,  and  that  to  sustain  this  patent  would  not  be  to  reward  invention, 
but  to  block  further  experiment  and  development.  —  Donner  v.  American, 
165  Fed.  199;  CCA. 

Deering  v.  Harvester  Works,  155  U.  S.  286. 


INVENTOR. 

Statute  and  General  Statement  §  703 
See  —  Administrator  §  38;  Assign- 
ment   §  149  ;     Copartnership   §  270; 


Death  of  Applicant  §  300;  Employer 
and  Employee  §  364;  Joint  Inventions 
§  704;   License  §  749 


§  703.     Statute  and  General  Statement. 

Any  person  who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new  and  useful 
improvements  thereof  *  *  *  R.  S.  4886. 

Any  person  having  the  maturity  and  mentality  to  understand  the  nature 
of  an  oath  may  make  application  for  a  patent.  By  the  terms  of  Sec.  4896, 
as  enacted  3  March,  1871,  an  executor  or  administrator  of  a  deceased  in- 
ventor may  make  application  for  a  patent  upon  an  invention  of  a  deceased 
person ;  and  since  the  amendment  of  May  23,  1908,  to  that  section,  the  legal 
representative  of  an  insane  person  may,  in  like  manner,  make  or  prosecute 
an  application  for  patent.  Thus  there  are  no  restrictions  as  to  sex,  race  or 
citizenship,  and  the  full  enjoyment  of  the  right  of  patent  is  open  to  all  who  are 
able  to  establish  the  statutory  prerequisites  to  the  grant. 


650  THE    FIXED   LAW   OF   PATENTS  §  704 

A  party  seeking  a  right  under  the  patent  statutes  may  avail  himself  of  all 
their  provisions,  and  the  court  may  not  deny  him  the  benefit  of  a  single  one. 
—  United  States  v.  Am.  Bell.  167  U.  S.  224;  42  L.  Ed.  144;  17  S.  Ct.  809. 


JOINT  INVENTIONS. 

General  Statement  and  Rules  §  704  |       See  —  Letters  Patent  §  738 

§  704.     General  Statement  and  Rules. 

The  rights  of  joint  inventors  have  been  recognized  from  the  earliest  times, 
and  but  few  questions  of  joint  inventorship  have  reached  the  appellate  courts. 
Moreover,  the  few  rules  which  are  given  below  are  not  altogether  universal 
in  their  application.  The  rule  in  Welsbach  v.  Cosmopolitan,  for  example, 
in  that  particular  case  was  undoubtedly  correct;  but  it  is  not  difficult  to 
conceive  of  a  case  where  an  invention  consisting  of  a  "  single  thought  " 
might  be  the  product  of  collaboration  of  two  minds  working  toward  and 
finally  reaching  the  single,  decisive  step  and  taking  it  in  step,  so  to  speak, 
in  such  unity  and  simultaneousness  that  neither  of  the  two  could  declare 
under  oath  which  actually  produced  the  "  single  thought."  On  the  other 
hand,  the  rule  in  Quincy  v.  Krause  must  be  qualified.  Many  cases  exist  where 
the  invention  consists  of  a  series  of  sub-combinations  which  go  to  make  up  a 
machine,  the  machine  itself  as  an  entirety  being  non-patentable;  and  in 
many  such  cases  two  or  more  engineers  are  at  work  improving  the  machine 
or  apparatus  or  system  generally;  and  it  is  evident  that  a  joint  patent  of  such 
a  series  of  improvements  would  be  improper,  and  yet  would  be  within  the 
strict  terms  of  the  rule  of  that  case. 

There  is  no  statutory  provision  as  to  joint  inventorship;  and  it  is  well 
there  is  not,  for  any  attempt  to  delimit  joint  inventorship  from  sole  inventor- 
ship must  be  unsatisfactory. 

Roper  having  with  Spencer  invented  and  constructed  a  machine  which 
contains  a  certain  useful  combination,  thereafter  takes  out  a  patent  in  his 
own  name  covering  this  very  combination.  If  the  prior  machine  produced 
by  both  men,  and  known  to  both,  does  not  disentitle  Roper  to  cover  such 
combination  in  his  patent,  it  would  not  disentitle  Spencer  to  cover  the  same 
combination  in  a  patent  to  himself;  and  we  should  have  two  joint  inventors, 
each  rightfully  holding  a  separate  patent  for  the  same  invention,  which  is 
absurd.  —  Bannerman  v.  Sanford,  99  Fed.  294;  39  C.  C.  A.  534. 

The  patent  contains  two  claims,  the  first  is  for  a  single  thought,  —  the 
described  improvement  in  strengthening  incandescent  mantles,  consisting 
in  coating  a  completed  mantle  with  paraffine  or  other  suitable  material. 
It  is  difficult  to  apprehend  how  two  could  have  shared  in  the  conception.  — 
Welsbach  v.  Cosmopolitan,  104  Fed.  83;  43  C.  C.  A.  418. 

At  the  time  the  application  was  made  they  were  going  into  a  partnership, 
and  it  appears  most  probable  that  they  conceived  the  idea  of  having  the 
patent  vest  a  joint  interest  to  conform  to  their  interest  in  the  business.  If 
these  are  the  facts,  the  patent  was  not  properly  issued  to  them  jointly.  — 
Standard  v.  Computing,  126  Fed.  639;  61  C.  C.  A.  541. 

The  co-owners  of  the  invention  were  foreigners  and  made  joint  application 
in  the  United  States  after  one  of  them  had  obtained  sole  foreign  patents.  The 
invention  was  clearly  that  of  one,  while  minor  adaptations  were  joint.  Held: 
Invalid.  —  De  Laval  v.  Vermont,  135  Fed.  772;  68  C.  C.  A.  474. 


§§  705-706  JUDICIAL   NOTICE  651 

"  Every  machine  before  it  can  be  used  must  be  constructed  as  well  as 
invented.  If  one  man  does  all  the  inventing  and  another  does  all  the  con- 
structing, the  first  is  the  sole  inventor."  —  United  v.  Beattie,  149  Fed.  736; 
79  C.  C.  A.  442. 

Agawam  v.  Jordan,  7  Wall.  583. 

When  a  claim  covers  a  series  of  steps  or  a  number  of  elements  in  combina- 
tion, the  invention  may  well  be  joint,  though  some  of  the  steps  or  some  of 
the  elements  may  have  come  as  the  thought  of  but  one.  —  Quincy  v.  Krause, 
151  Fed.  1012;  81  C.  C.  A.  290. 

Welsbach  v.  Cosmopolitan,  104  Fed.  83. 


JUDICIAL  NOTICE. 

General  Statement  §  705 
Common  Knowledge  §  706 
Novelty  §  707 
Patentability  §  708 
Prior  Art  §  709 


Public  Use  §  710 
Records  §  711 
Miscellaneous  §  712 
See  —  Demurrer  §  324 


§  705.    General  Statement. 

The  exercise  of  this  prerogative  has  occurred,  perhaps,  more  frequently 
in  connection  with  demurrer  raising  the  question  of  the  validity  of  the  patent 
in  suit.  See  title  Demurrer.  It  is  thought  that  there  is  a  growing  tendency 
to  exercise  this  right  in  connection  with  injunctions.  Properly  exercised  the 
effect  is  salutary.    The  First  Circuit  has  said: 

It  is  a  thoroughly  settled  rule  that,  as  to  patentability  and  the  range  of 
the  claims  in  a  patent,  inasmuch  as  these  matters  concern  the  public  at 
large,  the  court  will  not  allow  parties  to  frame  their  issues  in  such  a 
way 'as  to  take  from  it  the  scrutiny  of  all  the  questions  which  may  be  involved. 
Millard  v.  Chase,  108  Fed.  399  (§  681).  And  it  is  believed  that  the  courts 
must,  in  the  future,  recognize  their  duty  to  the  public  more  fully  than  they 
have  done  in  the  past,  and  with  the  scientific  knowledge  possessed  by  our 
courts,  the  range  of  judicial  notice  should  be  extended. 

§  706.     Common  Knowledge. 

Courts  will  take  notice  of  whatever  is  generally  known  within  the  limits 
of  their  jurisdiction;  and  if  the  judge's  memory  is  at  fault,  he  may  refresh  it 
by  resorting  to  any  means  for  that  purpose  which  he  may  deem  safe  and 
proper.  This  extends  to  such  matters  of  science  as  are  brought  before 
him.  —  Brown  v.  Piper,  91  U.  S.  37;  23  L.  Ed.  200. 

Greenleaf,  Ev.  11;  Gres.  Eq.  Ev.  294;  Taylor  Ev.  4;  Hoare  v.  Silverlock,  12 
Ad.  &  Ell.  (N.  S.)  624. 

The  court  will  take  judicial  notice  of  matters  of  common  knowledge  and 
use.  —  Dunbar  v.  Meyers,  94  U.  S.  187;  24  L.  Ed.  34. 
Brown  v.  Piper,  91  U.  S.  38. 

It  has  always  been  done,  and  we  are  not  required  to  shut  our  eyes  to  the 
fact  that  with  this  object,  among  others,  the  sheer  and  flare  of  vessels  of  all 
classes  have  been  almost  infinitely  varied.  —  Boynton  v.  Morris,  87  Fed. 
225;  30  C.  C.  A.  617. 

King  v.  Gallun,  109  U.  S.  99. 

There  are  some  elementary  details  of  everyday  domestic  mechanics  of 
which  a  court  will  take  judicial  notice.    No  sworn  testimony  is  needed  to 


652  THE   FIXED   LAW   OF   PATENTS  §§  707-708 

inform  it  that  the  use  of  leather  washers  to  relieve  friction,  prevent  rattling, 
secure  even  pressure  and  avoid  wear  and  tear  between  metal  surfaces,  has 
been  the  common  property  not  only  of  mechanics  but  of  all  persons  possess- 
ing ordinary  intelligence,  for  many  generations.  —  Bradley  v.  Eccles,  139 
Fed.  447;   71  C.  C.  A.  291. 

It  is  only  when  the  court  by  bringing  to  its  aid  matters  of  common  knowl- 
edge, is  convinced,  that  the  patent  is  void  on  its  face,  that  such  proofs  can 
be  dispensed  with.  —  American  v.  DeGrasse,  157  Fed.  660;  87  C.  C.  A.  260. 

§  707.    Novelty. 

In  passing  upon  the  novelty  of  the  alleged  improvement,  we  are  permitted 
to  consider  matters  of  common  knowledge  or  things  in  common  use.  — 
Phillips  v.  Detroit,  111  U.  S.  604;  28  L.  Ed.  532;  4  S.  Ct.  580. 

Brown  v.  Piper,  91  U.  S.  37;  Terhune  v.  Phillips,  99  U.  S.  592;  King  v.  Galium 
109  U.  S.  99;  Ah  Know  v.  Nunen,  5  Sawy,  552. 

Whether  or  not  the  design  is  new  is  a  question  of  fact,  which,  whatever  our 
impressions  may  be,  we  do  not  think  it  proper  to  determine  by  taking  judicial 
notice  of  the  various  designs  which  may  have  come  under  our  observation. 
It  is  a  question  which  may  and  should  be  raised  by  answer  and  settled  by 
proper  proofs.  —  New  York  v.  New  Jersey,  137  U.  S.  445;  34  L.  Ed.  741; 
11  S.  Ct.  193. 

The  court  will  take  judicial  notice  of  devices  which  are  common.  — 
Black  Diamond  v.  Excelsior,  156  U.  S.  611;  39  L.  Ed.  553;  15  S.  Ct.  482. 

Brown  v.  Piper,  91  U.  S.  37;  Terhune  v.  Phillips,  99  U.  S.  592;  King  v.  Gallun, 
109  U.  S.  99;   Phillips  v.  Detroit,  111  U.  S.  604. 

It  is  a  thoroughly  well  settled  principle  of  patent  law  that  in  clear  cases 
the  court  may,  of  its  own  motion,  adjudge  a  patent  invalid,  even  if  its 
validity  is  not  set  up  by  the  alleged  infringer.  —  Osgood  v.  Metropolitan, 
75  Fed.  670;  21  C.  C.  A.  491. 

That  the  court  will  take  judicial  notice  of  palpable  want  of  novelty,  even 
if  the  answer  contains  only  a  general  denial  and  no  notice  of  the  prior  art, 
see  Baker  v.  Duncombe,  146  Fed.  744;  77  C.  C.  A.  234. 

Black  Diamond  v.  Excelsior,  156  U.  S.  611;  Brown  v.  Piper,  91  U.  S.  37;  Rich- 
ards v.  Chase,  158  U.  S.  299;  Specialty  v.  Fenton,  174  U.  S.492;  Fond  Du  Lac  v- 
May,  137  U.  S.  406;  Mahler  v.  Animarium,  111  Fed.  530;  Westinghouse  v.  Union, 
117  Fed.  495;  Appleton  v.  Star,  60  Fed.  411;   Beer  v.  Walbridge,  100  Fed.  465. 

§  708.     Patentability. 

We  think  the  practice  thus  sanctioned  is  not  unfair  or  unjust  to  com- 
plainants in  suits  brought  on  letters  patent.  If  letters  patent  are  void  because 
the  device  or  contrivance  described  therein  is  not  patentable,  it  is  the  duty 
of  the  court  to  dismiss  the  cause  on  that  ground,  whether  the  defense  is  made 
or  not.  It  would  ill  become  a  court  of  equity  to  render  money  decrees  in 
favor  of  a  complainant  for  the  infringement  of  a  patent  which  the  court 
could  see  was  void  on  its  face  for  want  of  invention.  Every  suitor  in  a  cause 
founded  on  letters  patent  should,  therefore,  understand  that  the  question 
whether  his  invention  is  patentable  or  not  is  always  open  to  the  considera- 
tion of  the  court,  whether  the  point  is  raised  by  the  answer  or  not.  —  Slawson 
v.  Grand,  107  U.  S.  649;  27  L.  Ed.  576;  2  S.  Ct.  663. 

Dunbar  v.  Myers,  94  U.  S.  187;    Brown  v.  Piper,  91  U.  S.  44. 


§§  709-710  JUDICIAL   NOTICE  653 

In  deciding  whether  the  patent  covers  an  article,  the  making  of  which 
requires  invention,  we  are  not  required  to  shut  our  eyes  to  matters  of  common 
knowledge  or  things  in  common.  —  King  v.  Gallun,  109  U.  S.  99;  27  L.  Ed. 
870;   3  S.  Ct.  202. 

Brown  v.  Piper,  91  U.  S.  43;  Terhune  v.  Phillips,  99  U.  S.  592;  Ah  Know  v. 
Nunan,  5  Sawy,  552. 

Where  the  combination,  or  the  elements  described  are  well  known,  the  court 
is  at  liberty  to  judge  whether  there  be  any  invention  in  using  them  in  the 
combination  claimed.  —  Richards  v.  Chase,  158  U.  S.  299;  39  L.  Ed.  991; 
15  S.  Ct.  831. 


§  709.     Prior  Art. 

The  state  of  the  art,  under  many  circumstances,  is  a  matter  of  which  the 
court  can  take  judicial  notice,  especially  in  equity  suits,  where  the  court 
exercises  the  privileges  to  a  jury  as  well  as  of  judges  sitting  to  determine 
questions  of  law.  It  is  also  true  there  may  be,  with  reference  to  a  particular 
subject  matter,  such  a  mass  of  patents  covering  so  long  a  period,  that  they 
may  be  taken  to  have  become  part  of  the  common  knowledge  which  the 
court  shares.  So  also,  a  mass  of  patents  continued  for  a  long  period,  may  so 
clearly  indicate  such  a  state  of  the  art  as  to  be  sufficient  to  invalidate  a  patent, 
precisely  as  the  common  state  of  the  practical  art  existing  throughout  the  com- 
munity may  invalidate  it.  Of  course,  under  such  circumstances,  in  neither 
the  one  case  nor  the  other  need  the  defense  be  specially  pleaded  under  the 
statute. 

This  court  has  several  times  said  that  it  cannot  assume  to  take  notice  of 
special  facts,  within  a  limited  and  peculiar  field,  like  that  which  the  appellee 
seeks  to  bring  to  our  attention.  It  is  plain  that  the  state  of  the  art  of  which 
the  court  may  take  judicial  notice,  and  as  to  which  it  can  be  assisted  by 
the  statements  of  the  parties  or  their  counsel,  without  proofs  furnished  in 
accordance  with  the  rules  of  law,  is  matter  of  general  knowledge,  and  such 
judicial  notice  cannot  extend  to  a  single  patent,  relating  to  a  particular  fact 
in  a  limited  art.  —  Parsons  v.  Seelye,  100  Fed.  452;  40  C.  C.  A.  484. 

Potts  v.  Creager,  155  U.  S.  597;  Locomotive  v.  Medart,  158  U.  S.  68;  Rich- 
ards v.  Elevator,  158  U.  S.  299;  Office  Specialty  Co.  v.  Fenton,  174  U.  S.  492; 
N.  Y.  v.  New  Jersey,  137  U.  S.  445;   American  v.  Buckskin,  72  Fed.  508. 

The  courts  will  take  judicial  notice  of  facts  which  are  within  common 
knowledge,  including  those  relating  to  the  arts  and  industries  and  matters  of 
science,  and  may  refer  to  the  dictionaries  and  encyclopedias  for  informa- 
tion when  necessary  to  go  outside  the  records.  —  Beer  v.  Walbridge,  100 
Fed.  465;  40  C.  C.  A.  496. 

Brown  v.  Piper,  91  U.  S.  37. 


§  710.     Public  Use. 

The  determination  of  this  case  is  controlled  by  Brown  v.  Piper,  91  U.  S, 
37.  We  cannot  fail  to  take  judicial  notice  that  the  thing  patented  was  known 
and  in  general  use  long  before  the  issuing  of  the  patent.  —  Terhune  v. 
Phillips,  99  U.  S.  592;  25  L.  Ed.  293. 

Such  a  familiar  device  the  court  may  properly  take  judicial  notice  of.  — 
Office  v.  Fenton,  174  U.  S.  492;  43  L.  Ed.  1058;  19  S.  Ct.  641. 

Brown  v.  Piper,  91  U.  S.  37;  Terhune  v.  Phillips.  99  U.  S.  592;  King  v. 
Gallun,  109  U.  S.  99;    Phillips  v.  Detroit,  111  U.  S.  604. 


654  THE    FIXED   LAW   OF   PATENTS  §§  711-713 

§  711.     Records. 

For  the  purpose  of  ascertaining  the  state  of  the  art,  when  it  concerns  a 
matter  of  general  interest,  as  it  does  in  the  determination  of  the  construction 
of  this  class  of  letters  patent,  we  are  certainly  authorized  to  take  notice  of 
our  own  records,  and  perhaps  we  may  always  do  so.  —  Cushman  v.  Goddard, 
95  Fed.  664;  37  C.  C.  A.  221. 

Butler  v.  Eaton,  141  U.  S.  240;  Smelting  Co.  v.  Billings,  150  U.  S.  31;  Creamer 
v.  Washington,  168  U.  S.  124;    In  re  Boardman,  169  U.  S.  39. 

If  there  were  any  doubt  as  to  what  those  questions  are,  we  could  take 
judicial  notice  of  the  records  of  our  own  court  for  the  purpose  of  informing 
ourselves.  —  Rumford  v.  Hygienic,  159  Fed.  436;  86  C.  C.  A.  416. 

§  712.     Miscellaneous. 

Where  the  bill  did  not  allege  the  signature  of  the  acting  commissioner  of 
patents,  the  court  will  take  judicial  notice  of  such  officer  whether  of  a  per- 
manent or  transient  character.  —  Railroad  v.  Winans,  58  U.  S.  31 ;  25  L. 
Ed.  1009. 

Wilson  v.  Rousseau,  4  How.  686. 

Of  private  and  special  facts,  in  trials  in  equity  and  at  law,  the  court  or 
jury  is  bound  carefully  to  exclude  the  influence  of  all  previous  knowledge.  — 
Brown  v.  Piper,  91  U.  S.  37;  23  L.  Ed.  200. 

That  the  same  rule  as  to  judicial  notice  applies  in  design  patents  as  is 
the  rule  with  mechanical  patents,  see  Roberts  v.  Bennett,  136  Fed.  193; 
69  C.  C.  A.  533. 

Black  Diamond  v.  Excelsior,  156  U.  S.  611;  Market  v.  Rowley,  155  U.  S.  621. 


JURISDICTION. 

The  Statute  §  713 

Contracts  §  714 

Court  of  Claims  §  715  (see  §  428) 

District  Judge  §  716 

Equity  (see  §  370) 

Expiration    of    Patent    Pendente 
Lite  §  717 
Rule  §  718 

For  Determining  Profits  or  Assess- 
ing Damages  Only  §  719 


Miscellaneous  §  720 
Infringement  §  721  (see  §  445) 
Licensor  and    Licensee     §  722    (see 
§765) 

Residence  §  723 
State  Court  §  724  (see  §  920) 
Supreme  Court  §  725 
See  —  Appeals  §  130;  Decrees  §  301; 
Equity  §  370;  Pleading  §  788 


§  713.     The  Statute. 

The  circuit  courts  shall  have  original  jurisdiction  as  follows: 


Ninth.  Of  all  suits  at  law  or  in  equity  arising  under  the  patent  or  copy- 
right laws  of  the  United  States.    R.  S.  629. 

The  jurisdiction  vested  in  the  courts  of  the  United  States  in  the  cases 
and  proceedings  hereinafter  mentioned,  shall  be  exclusive  of  the  courts  of 
the  several  States: 


Fifth.     Of  all  cases  arising  under  the  patent-right  or  copyright  laws  of 
the  United  States.    R.  S.  711. 


§  714  JURISDICTION  655 

By  the  Act  of  Mar.  3,  1897,  the  following  provision  was  made  as  to  juris- 
diction and  service  of  process: 

That  in  suits  brought  for  the  infringement  of  letters  patent  the  circuit 
courts  of  the  United  States  shall  have  jurisdiction  in  law  or  in  equity,  in  the 
district  of  which  the  defendant  is  an  inhabitant,  or  in  any  district  in  which 
the  defendant,  whether  a  person,  partnership,  or  corporation,  shall  have 
committed  acts  of  infringement  and  have  a  regular  and  established  place  of 
business.  If  such  suit  is  brought  in  a  district  of  which  the  defendant  is  not 
an  inhabitant,  but  in  which  such  defendant  has  a  regular  and  established 
place  of  business,  service  of  process,  summons,  or  subpoena  upon  the  de- 
fendant may  be  made  by  service  upon  the  agent  or  agents  engaged  in  con- 
ducting such  business  in  the  district  in  which  the  suit  is  brought.  R.  S. 
sub.  629. 

The  subject  of  appellate  jurisdiction,  so  far  as  the  statute  is  concerned, 
need  not  be  recited  here,  as  it  has  been  fully  set  out  under  Appeals. 

§  714.     Contracts. 

The  object  of  the  bill  was  to  set  aside  a  contract  licensing  the  use  of  a 
patented  machine.  The  dispute  does  not  arise  under  any  act  of  Congress, 
nor  does  the  decision  depend  upon  the  construction  of  any  law  in  relation  to 
patents.  It  arises  out  of  the  contract  stated  in  the  bill ;  and  there  is  no  act 
of  Congress  providing  for  or  regulating  contracts  of  this  kind.  The  rights  of 
the  parties  depend  altogether  upon  common  law  and  equity  principles. 
The  injunction  asked  is  to  be  the  consequence  of  the  decree  of  the  court 
sanctioning  the  forfeiture.  And  if  the  case  made  in  the  bill  was  a  fit  one  for 
relief  in  equity,  it  is  very  clear  that  whether  the  contract  ought  to  be  declared 
forfeited  or  not  in  a  court  of  chancery  depended  wholly  upon  the  rules  and 
principles  of  equity  and  in  no  degree  whatever  upon  any  act  of  Congress.  — 
Wilson  v.  Sanford,  10  How.  99;  13  L.  Ed.  344. 

Complainant  and  defendant  had  made  a  contract  (verbal)  and  defendant 
had  entered  upon  the  use  of  the  patent  under  such  agreement.  Plaintiff  then 
presented  a  written  contract  embodying  the  terms  (and  others)  of  the  agree- 
ment. Defendant  refused  to  sign,  and  complainant  brought  action  for 
infringement  upon  the  failure  of  defendant  to  pay  royalties.  Both  were 
citizens  of  the  same  state. 

If  either  party  disregards  it,  it  can  be  specifically  enforced  against  him, 
or  damages  can  be  recovered  for  its  violation.  But  until  so  rescinded  or  set 
aside  it  is  a  subsisting  agreement,  which,  whatever  it  is,  or  may  be  shown  to 
be,  must  govern  the  rights  of  these  parties  in  the  use  of  complainant's  process, 
and  must  be  the  foundation  of  any  relief  given  to  a  court  of  equity.  Such  a 
case  is  not  cognizable  in  a  court  of  the  United  States,  by  reason  of  its  subject- 
matter,  and  as  the  parties  could  not  sustain  such  a  suit  in  the  circuit  court 
by  reason  of  citizenship,  this  bill  should  have  been  dismissed.  —  Hartell  v. 
Tilghman,  99  U.  S.  547;  25  L.  Ed.  357. 

Reviewing:  Burr  v.  Gregory,  2  Paine,  426;  Littlefield  v.  Perry,  21  Wall.  205; 
Meserole  v.  Paper.  6  Blatchf.  356;  Blanchard  v.  Sprague,  1  Cliff.  288;  Hill  v. 
Whitcomb,  1  Holmes,  317;  Brooks  v.  Stolley,  3  McLean,  523;  Goodyear  v. 
Rubber  Co.,  4  Blatchf.  63. 

The  controversy  as  stated  by  the  appellants  is  whether  certain  goods 
manufactured  by  them  embody  the  invention  covered  by  the  appellees' 
patents.  Both  parties  may  agree  as  to  what  the  patented  invention  is,  and 
yet  disagree  on  the  question  whether  the  invention  is  employed  in  the  manu- 
facture of  certain  specified  goods.  The  controversy  between  the  parties  in 
this  case  is  clearly  of  the  latter  kind  and  cannot  be  said  to  be  one  which  grows 


656 


THE    FIXED   LAW   OF   PATENTS 


§714 


out  of  the  legislation  of  Congress.  —  Albright  v.  Teas,  106  U.  S.  613;  27  L. 
Ed.  295;   1  S.  Ct.  550. 

Wilson  v.  Sanford,  10  How.  99;  Hartell  v.  Tilghman,  99  U.  S.  547;  Goodyear  v. 
Rubber,  4  Blatchf.  63;  Meserole  v.  Paper,  6  Blatchf.  355;  Blanchard  v.  Sprague, 
1  Cliff.  288;   Hill  v.  Whitcomb,  1  Holmes,  317. 

While  in  actions  for  infringement,  in  which  the  validity  of  the  patent  is 
put  at  issue  under  R.  S.  4920,  the  circuit  courts  have  exclusive  jurisdiction, 
actions  founded  on  contracts  for  the  use  of  patented  inventions  may  be 
maintained  elsewhere.  —  U.  S.  v.  Palmer,  128  U.  S.  262;  32  L.  Ed.  442; 
9  S.  Ct.  104. 

U.  S.  v.  Burns,  79  U.  S.  246;  Wilson  v.  Sanford,  51  U.  S.  99;  Hartell  v.  Tilgh- 
man, 99  U.  S.  547;  Albright  v.  Teas,  106  U.  S.  613;  Dale  v.  Hyatt,  125  U.  S.  46. 

But  the  same  does  not  hold  good  with  reference  to  the  licensee.  There 
were  practically  but  two  ways  in  which  the  patentee  could  impair  the  grant 
he  made  to  the  licensee,  and  those  were  by  a  revocation  of  the  license  by  a  bill 
in  equity,  or  by  treating  it  as  abandoned  and  revoked,  and  granting  a  license 
to  another  party.  He  elected  the  latter  remedy  and  made  a  contract  with 
the  Pacific  Bridge  Co.  to  make  and  sell  wooden  pipe  within  the  same  terri- 
tory. A  suit  in  a  state  court  would  either  be  inadequate  or  would  involve 
questions  under  the  patent  law.  If  the  licensee  sued  at  law  he  would  be 
obliged  to  establish  the  fact  that  the  patent  had  been  infringed  which  the 
patentee  might  have  denied  and  in  any  case  could  only  recover  damages  for 
past  infringement.  If  he  sued  in  equity  he  could  only  pray  an  injunction 
against  future  infringements;  but  this  is  exactly  what  he  prays  in  this  case, 
and  thereby  raises  a  question  under  the  patent  laws.  In  either  case  the 
patentee  could  defeat  the  action  by  showing  that  he  did  not  infringe,  —  in 
either  case  the  defendant  could  so  frame  his  answer  as  to  put  in  issue  the 
title,  the  validity,  or  the  infringement  of  the  patent.  The  natural  and 
practically  the  only  remedy,  as  it  seems  to  us,  was  for  the  plaintiff  to  assert 
his  title  under  the  license,  and  to  prosecute  the  defendants  as  infringers. 
In  doing  this  he  does  what  every  plaintiff  is  bound  to  do,  namely,  set  forth 
his  title  either  as  patentee,  assignee,  or  licensee,  and  thereby  put  that  title 
in  issue.  The  defendant  is  at  liberty  in  such  a  case  to  deny  the  title  of  the 
plaintiff  by  declaring  that  the  license  no  longer  exists,  but  in  our  opinion 
this  does  not  make  it  a  suit  upon  the  license  or  contract,  but  it  still  remains 
a  suit  for  the  infringement  of  a  patent,  the  only  question  being  as  to  the 
validity  of  plaintiff's  title.  There  can  be  no  doubt  whatever  that  if  the 
plaintiff  sued  some  third  person  for  an  infringement  of  his  patent,  the  de- 
fendant might  attack  the  validity  of  his  license  in  the  same  way,  but  it  would 
not  oust  the  jurisdiction  of  the  court.  Why  should  it  do  so  in  this  case?  — 
Excelsior  v.  Pacific,  185  U.  S.  282;  46  L.  Ed.  910;  22  S.  Ct.  681. 

Hartell  v  Tilghman,  99  U.  S.  547;  Littlefield  v.  Perry,  21  Wall.  205;  Atherton 
v.  Atwood-Morrison,  102  Fed.  949;    White  v.  Rankin,  144  U.  S.  628. 

An  oral  agreement  existed  between  the  parties  whereby  the  defendants 
were  to  perform  certain  acts  in  the  exploitation  of  the  invention,  but  by  which 
they  acquired  no  legal  or  equitable  interest  in  the  patent.  A  subsequent 
written  agreement  existed,  the  contents  and  intent  of  which  was  seriously 
disputed,  by  which,  apparently,  the  defendants  acquired  some  legal  interest 
in  the  title.  The  defendants  failed  to  perform  and  the  action  was  for  specific 
performance  under  the  oral  contract  and  also  for  cancellation  of  the  alleged 
written  assignment.  Held:  Cases  are  not  infrequent  where,  upon  the  facts, 
it  is  somewhat  difficult  to  draw  the  jurisdictional  line.  The  case  in  hand, 
however,  presents  no  difficulty.  It  is  perfectly  apparent  that  the  case  is  one 
which  arises  entirely  under  the  contract  as  set  out  in  the  bill,  and  for  the  tort 


§  714  JURISDICTION  657 

involved  in  the  alleged  fraudulent  or  forged  assignment,  and  not  in  any  wise 
under  the  patent  laws  or  laws  of  the  United  States.  —  Kurtz  v.  Straus,  106 
Fed.  414;  45  C.  C.  A.  366. 
Atherton  v.  Atwood,  102  Fed.  949. 

Under  this  contract  the  complainant  claims  that  it  had  the  exclusive 
right  to  use,  and  to  let  to  others  to  use  and  sell  and  deal  in  within  the  states 
of  Maryland  and  Delaware  and  the  District  of  Columbia.  The  jurisdiction 
of  the  court  therefore  rests  altogether  on  the  diverse  citizenship  of  the  parties. 
—  Rahley  v.  Columbia,  122  Fed.  623;  58  C.  C.  A.  639. 

Excelsior  v.  Pacific,  185  U.  S.  282. 

When  a  contract  is  made  respecting  a  right  under  a  patent,  and  the  par- 
ties get  into  litigation,  confusion  sometimes  arises  over  the  question  whether 
the  cause  of  action  originates  in  the  contract  or  in  the  patent  laws.  The  test 
is  this:  If  the  plaintiff  is  seeking  a  judgment  for  debt  or  damages,  or  a 
decree  for  cancellation  or  specific  performance,  on  account  of  the  defendant's 
breach  of  his  covenants,  the  cause  of  action  arises  out  of  the  contract;  and, 
though  the  determination  of  the  issue  of  breach  or  no  breach  may  involve 
the  interpretation  of  the  patent  and  of  the  prior  art,  the  insistence  of  the 
defendant  that  his  device,  according  to  the  true  construction  of  the  patent 
and  the  prior  art,  is  not  within  the  patent  right  granted  him  in  the  contract, 
cannot  change  the  nature  of  the  action.  Standard  v.  Leslie,  118  Fed.  557. 
On  the  other  hand,  if  the  plaintiff  is  seeking  a  judgment  for  damages,  or  a 
decree  for  an  injunction  and  an  accounting,  on  account  of  defendant's  un- 
authorized use  of  the  patent  right  in  making  or  using  or  selling  the  device 
without  license,  the  cause  of  action  arises  out  of  the  patent  laws ;  and,  though 
the  determination  of  the  issue  of  infringement  or  no  infringement  may  involve 
the  interpretation  of  the  contract,  the  insistence  of  the  defendant  that  his 
act  was  within  his  rights  under  the  contract,  if  properly  construed,  cannot 
change  the  nature  of  the  action.  —  Victor  v.  The  Fair,  123  Fed.  424;  61  C. 
C.  A.  58. 

Wilson  v.  Sanford,  10  How.  99;  Littlefield  v.  Perry,  21  Wall.  205;  Excelsior  v. 
Pacific,  185  U.  S.  282;  Atherton  v.  Atwood,  102  Fed.  949;  Ball  v.  Ball,  58  Fed. 
818;   Siebert  v.  Manning,  32  Fed.  625. 

An  action  which  raises  a  question  of  infringement  is  an  action  arising 
under  the  patent  law.  That  the  patentee  may  have  a  remedy  for  breach 
of  contract  also  does  not  defeat  the  jurisdiction.  —  Rupp  v.  Elliott,  131  Fed. 
730;  65  C.  C.  A.  544. 

Heaton-Peninsular  v.  Eureka,  77  Fed.  288;   Victor  v.  The  Fair,  123  Fed.  424. 

When  a  patentee  imposes  such  restrictions,  they  may  likewise  constitute  a 
contract  between  the  patentee  and  his  direct  vendee  or  licensee.  In  such 
case  the  patentee  would  have  a  double  remedy  —  an  action  in  tort  for  in- 
fringement, or  an  action  for  the  breach  of  the  contract.  —  Park  v.  Hartman, 
153  Fed.  24;  82  C.  C.  A.  158. 

Heaton  v.  Eureka,  77  Fed.  288;  Victor  v.  The  Fair,  123  Fed.  424;  Bement  v. 
National,  186  U.  S.  70;    National  v.  Schlegel,  128  Fed.  733. 

As  is  well  known,  a  suit  for  injunctive  relief  against  the  infringement  of  a 
patent,  and  incidentally  for  the  recovery  of  damages  arising  therefrom,  is 
one  arising  under  the  patent  laws  of  the  United  States,  and  may  be  main- 
tained in  the  courts  of  the  United  States ;  but  it  is  firmly  settled  that,  in  the 
absence  of  diversity  of  citizenship  of  the  parties,  a  suit  on  a  private  con- 
tract between  the  parties  fixing  and  governing  their  rights  to  use  a  patented 
device,  or  a  suit  for  the  specific  performance  or  rescission  of  a  contract  for 


658  THE    FIXED    LAW   OF   PATENTS  §§  715-717 

the  use  or  sale  of  a  patent,  is  not  maintainable  in  those  courts.  —  St.  Louis 
v.  Sanitary,  161  Fed.  725 ;  88  C.  C.  A.  585. 

Wilson  v.  Sanford,  10  How.  99;  Brown  v.  Shannon,  20  How.  55;  Dale  v.  Hyatt, 
125  U.  S.  46;  Albright  v.  Teas,  106  U.  S.  613;  Pratt  v.  Paris,  168  U.  S.  255. 

§  715.     Court  of  Claims. 

It  would  seem  that  an  action  for  infringement  against  the  U.  S.  would  be 
properly  brought  in  the  Court  of  Claims.  —  James  v.  Campbell,  104  U.  S. 
356;  26  L.  Ed.  786. 

Carr  v.  U.  S.  98  U.  S.  433. 

It  would  seem  that  the  use  of  an  invention  by  a  government  official  in  the 
discharge  of  his  duties  would  be  an  exercise  of  the  right  of  eminent  domain, 
and  that  action  would  lie  in  the  Court  of  Claims.  —  Hollister  v.  Benedict, 
113  U.  S.  59;  28  L.  Ed.  901;  5  S.  Ct.  717. 

U.  S.  v.  Mfg.  Co.  112  U.  S.  645. 

The  court  of  claims  has  jurisdiction  to  award  royalties  arising  under  an 
implied  contract.  —  U.  S.  v.  Palmer,  128  U.  S.  262;  32  L.  Ed.  442;  9  S.  Ct. 
104. 

Distinguishing:    Pitcher's  Case,  1  Ct.  CI.  7. 

The  Court  of  Claims  has  no  jurisdiction  of  an  action  for  tort  in  infringe- 
ment, —  U.  S.  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530;  15  S.  Ct.  420. 

Gibbons  v.  U.  S.  75  U.  S.  269;  Morgan  v.  U.  S.  81  U.  S.  531;  Hill  v.  U.  S.  149 
U.  S.  593;  Schillinger  v.  U.  S.  155  U.  S.  162;   U.  S.  v.  Palmer,  128  U.  S.  262. 

§  716.    District  Judge. 

The  fourth  objection  is  based  upon  the  provisions  of  section  719  of  the 
Revised  Statutes  of  the  United  States,  relating  to  the  issuing  of  an  injunction 
by  a  district  judge.  But  that  section  does  not  apply  to  this  case.  Vulcanite 
Co.  v.  Folsom,  3  Fed.  509.  The  injunction  here  was  not  issued  by  the  district 
judge  under  section  719.  When  the  case  was  heard  below,  and  the  injunction 
was  granted,  the  district  judge  was  holding  the  circuit  court,  under  section 
609,  Rev.  St.  U.  S.;  and  his  authority  was  co-extensive  with  that  of  any  other 
judge  sitting  in  the  same  court.  Robinson  v.  Satterlee,  Fed.  Cas.  No.  11,967. 
Therefore  his  action  in  granting  the  injunction  had  the  same  force  and  effect 
as  if  the  court  had  been  held  by  the  circuit  justice,  or  a  circuit  judge,  or  by 
a  full  bench.  Industrial  v.  Electrical,  58  Fed.  732.  The  decree  appealed  from 
is  the  decree  of  the  circuit  court.  —  McDowell  v.  Kurtz,  77  Fed.  206;  23 
C.  C.  A.  119. 

§  717.     Equity  —  Expiration  of  Patent  Pendente  Lite. 

The  bill  was  filed  15  days  before  the  expiration  of  the  patent.  The  general 
allegations  of  the  bill  were  sufficiently  comprehensive  to  meet  such  a  case. 
But  even  without  that,  if  the  case  was  one  for  equitable  relief  when  the  suit 
was  instituted,  the  mere  fact  that  the  ground  for  such  relief  expired  by  the 
expiration  of  the  patent  would  not  take  away  the  jurisdiction  and  preclude 
the  court  from  proceedings  to  grant  the  incidental  relief  which  belongs  to 
cases  of  that  sort,  This  has  often  been  done  in  patent  causes,  and  a  large 
number  of  cases  may  be  cited  to  that  effect ;  and  there  is  nothing  in  Root  v. 
Railwav,  105  U.  S.  189  to  the  contrary.  —  Clark  v.  Wooster,  119  U.  S.  322; 
30  L.  Ed.  392;  7  S.  Ct,  217. 

Cotton  v.  Simmons,  106  U.  S.  89;  R.  R.  Co.  v.  Car  Brake,  110  U.  S.  229;  Con- 
solidated v.  Crosby,  113  U.  S.  157;   Thomson  v.  Wooster,  114  U.  S.  104. 


§  717  JURISDICTION  659 

As  the  patent  was  in  force  at  the  time  the  bill  was  filed,  and  as  the  com- 
plainants were  entitled  to  a  preliminary  injunction  at  that  time,  the  juris- 
diction of  the  court  is  not  defeated  by  the  expiration  of  the  patent  by  lapse 
of  time  before  final  decree.  There  is  nothing  in  the  case  of  Root  v.  Railway, 
105  U.  S.  189,  to  sustain  the  objection  made  by  the  appellant  on  this  account. 
See  also  Clark  v.  Wooster,  119  U.  S.  322  and  cases  there  cited.  —  Beedle  v. 
Bennett,  122  U.  S.  71;  30  L.  Ed.  1074;  7  S.  Ct.  1090. 

This  seeks  to  determine  jurisdiction  of  the  court  by  conditions  which 
came  into  existence  after  the  commencement  of  the  suit,  not  upon  those 
which  existed  at  the  time  the  bill  was  filed.  Appellee's  contention  as  to  the 
jurisdiction  is,  therefore,  not  justified,  and  a  discussion  of  the  reasons  for 
this  conclusion  is  not  necessary.  —  Busch  v.  Jones,  184  U.  S.  598;  46  L.  Ed. 
707;  22  S.  Ct.  511. 

Clark  v.  Wooster,  119  U.  S.  322;    Beedle  v.  Bennett,  122  U.  S.  71. 

When  this  suit  was  commenced  the  patent  had  two  months  and  22  days  to 
run.  It  was  therefore  clearly  within  the  power  of  the  court  to  grant  a  tem- 
porary injunction,  if  not  to  enter  a  final  decree,  before  the  patent  should 
expire;  and  though  no  restraining  order  was  issued  or  perhaps  could  have 
been  after  the  patent  had  expired,  jurisdiction  of  the  case  was  not  lost  on 
that  account.  —  Ross  v.  Ft.  Wayne,  63  Fed.  466;  11  C.  C.  A.  288. 

Clark  v.  Wooster,  119  U.  S.  322;  Beedle  v.  Bennett,  122  U.  S.  71;  American  v. 
Brown,  58  Fed.  409;   American  v.  Weston,  58  Fed.  410. 

The  patents  bearing  numbers  below  164,050  all  expired  before  the  suit  was 
commenced,  and,  therefore,  as  the  circuit  court  held,  afforded  no  basis  for 
equitable  relief.  No.  164,050  expired  just  after  the  filing  of  the  original  bill, 
but  before  the  return  day  of  the  subpoena;  and  the  bill  in  respect  to  that 
patent  was  within  the  discretion  of  the  court  to  dismiss  the  bill  in  respect  to 
that  patent  for  want  of  equity.  —  Russell  v.  Kern,  69  Fed.  94;  16  C.  C.  A. 
154. 

Keyes  v.  Mining  Co.  15  Sup.  Ct.  772. 

It  is  well  settled  that  the  expiration  of  a  patent  pending  suit  for  infringe- 
ment does  not  defeat  the  jurisdiction  of  a  court  of  equity,  although  it  is  a 
reason  for  denying  an  injunction  which  was  the  basis  of  equity  jurisdiction. 
—  Reedy  v.  Western,  83  Fed.  709;  28  C.  C.  A.  27. 

Beedle  v.  Bennett,  122  U.  S.  71;   Clark  v.  Wooster,  119  U.  S.  322. 

The  bill  was  filed  nearly  three  months  before  the  expiration  of  the  patent, 
and  contained  prayers  for  a  preliminary  and  a  perpetual  injunction.  The 
patent  had  yet  a  month  to  run  after  the  defendant  was  required  to  answer 
under  the  rules.  It  was  therefore  clearly  within  the  power  of  the  court, 
when  the  suit  was  begun,  not  only,  upon  proper  proof,  to  grant  a  preliminary 
injunction,  but,  either  by  a  decree  pro  confesso,  in  case  of  default,  or  upon 
the  bill  and  answer,  if  an  answer  should  be  filed  within  the  rules,  to  dispose 
of  the  case  finally,  by  awarding  a  permanent  injunction,  before  the  expira- 
tion of  the  patent.  The  conditions  at  the  time  the  bill  was  filed  thus  availing 
to  give  the  court  jurisdiction,  both  for  the  purpose  of  a  preliminary  injunc- 
tion and  a  permanent  decree,  during  the  life  of  the  patent,  such  jurisdiction 
could  not  be  defeated  by  subsequent  happenings,  whether  due  to  the  delay 
of  the  defendant  or  the  contingencies  of  litigation.  —  U.  S.  Mitis  v.  Detroit, 
122  Fed.  863;  59  C.  C.  A.  589. 

New  York  v.  Peoria,  21  Fed.  878;  Brooks  v.  Miller,  28  Fed.  615;  Singer  v. 
Wilson,  38  Fed.  586;  American  v.  Chicago,  41  Fed.  522;  Keyes  v.  Mfg  Co  45 
Fed.  199;   Ross  v.  City,  63  Fed.  466;   Chinnock  v.  Paterson,  110  Fed.  199;   Clark 


660  THE   FIXED   LAW   OF   PATENTS  §  718 

v.  Wooster,  119  U.  S.  322;   Beedle  v.  Bennett,  122  U.  S.  71;   Busch  v.  Jones,  184 
U.  S.  598. 

The  court  below  took  the  view  that  its  jurisdiction  in  equity  was  de- 
pendent upon  the  right  of  the  complainant  to  a  preliminary  injunction  upon 
the  bill  as  filed,  and  therefore  held  the  verification  upon  information  and  belief 
insufficient.  But  there  was  no  attempt  to  use  the  bill  as  evidence  to  secure 
an  injunction  pendente  lite.  Nor  was  there  any  need  to  do  so,  in  order  to 
sustain  the  jurisdiction  of  the  court.  The  bill  was  filed  Apr.  10.  The  patent 
did  not  expire  until  July  8.  Under  the  rules  the  answer  of  the  defendant 
was  due  June  5,  more  than  a  month  before  the  patent  expired.  The  bill, 
after  describing  the  patent,  averring  its  ownership  by  the  complainant,  and 
setting  forth  the  adjudication  sustaining  it,  charged  the  defendant  with 
infringement,  and  called  for  answers  to  certain  interrogatories  calculated  to 
clear  up  any  doubt  upon  the  point  of  infringement.  If  the  defendant  had 
answered  upon  the  rule  day,  June  5,  admitting  the  use  of  the  patented  process, 
or  if  it  had  failed  to  plead,  and  allowed  the  bill  to  be  taken  pro  confesso,  in 
either  event  the  complainant  would  have  been  entitled  to  a  permanent 
injunction  a  month  before  the  expiration  of  the  patent.  The  fact  that  the 
defendant  failed  to  comply  with  the  rules  cannot  prejudice  the  complainant. 
The  complainant  had  reason  to  expect  the  answer  on  the  rule  day,  and  on  each 
day  thereafter  until  the  defendant  filed  its  pleading.  For  these  reasons  it  was 
not  necessary  to  verify  the  bill  in  positive  terms.  —  U.  S.  Mitis  v.  Detroit, 
122  Fed.  863;  59  C.  C.  A.  589. 

Hughes  v.  Northern,  18  Fed.  106;  Black  v.  Allen,  42  Fed.  618;  Burns  v.  Lynde, 
6  Allen,  305;  More  v.  Cheeseman,  23  Mich.  290;  Hawkins  v.  Hunt,  14  111.  42; 
Sand  Creek  v.  Robbins,  41  Ind.  79. 

The  bill  was  filed  Mar.  12,  1906.  The  patent  expired  June  3,  1906.  The 
bill  was  for  a  preliminary  and  permanent  injunction  and  an  accounting. 
No  motion  for  a  preliminary  injunction  was  made.  Demurrer  was  filed 
challenging  jurisdiction.  Held:  The  suit  was  then  one  of  equitable  juris- 
diction when  instituted,  and  under  the  rules  of  practice  in  equity  there  can 
be  no  doubt  there  was  ample  time  to  award  a  preliminary  injunction  before 
the  patent  expired.  These  facts,  we  think,  conferred  jurisdiction  for  all 
purposes,  not  only  for  the  preliminary  injunctive  relief,  but  also  for  the 
incidental  accounting.  —  Carnegie  v.  Colorado,  165  Fed.  195;    C.  C.  A. 

Root  v.  Railway,  106  U.  S.  189;  Keyes  v.  Eureka,  158  U.  S.  150;  Deere  v. 
Dowagiac,  153  Fed.  177;  Clark  v.  Wooster,  119  U.  S.  322;  Beedle  v.  Bennett, 
122  U.  S.  71;  Busch  v.  Jones,  184  U.  S.  598;  Ross  v.  Fort  Wayne,  63  Fed.  466; 
Chinnock  v.  Paterson,  112  Fed.  531;   U.  S.  Mitis  v.  Detroit,  122  Fed.  863. 

§  718.     Equity  —  Rule. 

The  plain  and  obvious  purpose  of  this  provision  (the  Act  of  1870)  is,  to 
furnish  appropriate  modes  in  equity  pleading  for  the  trial  of  all  issues,  both 
of  fact  and  law,  relating  both  to  the  alleged  infringement  and  the  validity  of 
the  patent,  without  the  necessity  of  framing  special  issues  out  of  chancery 
for  trial  by  jury,  or  sending  the  parties  to  a  court  of  law  for  the  trial  of  an 
action  in  that  forum,  in  order  to  determine  their  legal  right.  It  proceeds  upon 
the  idea  that  the  court  of  equity  having  acquired  jurisdiction,  for  the  purpose 
of  administering  the  equitable  relief  sought  by  the  bill,  may  determine 
directly  and  for  itself,  in  the  same  proceeding,  all  questions  incidental  to 
the  exercise  of  its  jurisdiction,  notwithstanding  they  may  be  questions 
affecting  legal  rights  and  legal  titles.  —  Root  v.  Ry.,  105  U.  S.  189 ;  26  L. 
Ed.  975. 

The  difficulty  with  the  defendant's  position  in  the  case  under  consideration 
is  that  it  apparently  leaves  the  plaintiff  without  an  adequate  remedy.    De- 


§  719  JURISDICTION  661 

fendant  has  broken  no  express  covenant  of  the  contract,  since  it  has  made 
no  covenant.  It  has  simply  ignored  the  existence  of  the  contract  and  granted 
a  license  to  another  party.  It  is  difficult  to  see  what  remedy  is  available 
to  the  plaintiff  in  a  state  court  that  would  not  involve  the  right  of  the  de- 
fendant to  use  the  patent.  In  other  words,  it  would  be  an  ordinary  suit  for 
infringement  in  which  the  federal  courts  alone  would  have  jurisdiction. 
Whether  it  sued  at  law,  or  in  equity,  its  damages  would  be  such  as  are  usual 
in  cases  of  infringement,  and  the  only  injunction  it  could  obtain  would  be 
against  the  further  use  of  the  invention.  —  Excelsior  v.  Pacific,  185  U.  S. 
282;  46  L.  Ed.  910;  22  S.  Ct.  681. 
Pratt  v.  Paris,  168  U.  S.  255. 

It  is  not  denied  in  this  case  (Root  v.  Railway)  but  that  there  may  be  other 
grounds  for  equitable  relief  than  the  right  to  an  injunction  which  would 
justify  a  circuit  court,  sitting  as  a  court  in  equity,  in  trying  a  patent  case, 
and,  as  an  incident  to  the  equitable  matters  presented  in  the  bill,  take  an 
accounting  of  the  profits  and  revenues  of  which  the  patentee  may  have  been 
deprived  by  the  infringement  of  his  patent,  and  also  the  validity  of  the  patent, 
and  the  fact  of  infringement.  Before  any  of  these  matters  however,  can 
be  considered,  the  bill  must  clearly  present  some  ground  for  the  interposition 
of  a  court  of  equity.  —  Germain  v.  Wilgus,  67  Fed.  597;   14  C.  C.  A.  561. 

Root  v.  Railway,  105  U.  S.  189;  Smith  v.  Sands,  24  Fed.  470;  Adams  v.  Iron, 
26  Fed.  324;   Brooks  v.  Miller,  28  Fed.  615;   Clark  v.  Wooster,  119  U.  S.  323. 

§  719.     Equity  —  For  Determining  Profits  or  Assessing  Damages 
Only. 

The  objection  that  there  is  a  remedy  at  law  is  only  available  when  such 
remedy  is  as  plain,  adequate  and  effectual  as  the  remedy  in  equity.  Here,  if 
the  complainants  could  recover  the  moneys  claimed,  they  would  be  entitled 
also  to  discovery  and  account.  —  Sullivan  v.  Railroad,  94  U.  S.  806 ;  24 
L.  Ed.  324. 

Boyce  v.  Grundy,  3  Pet.  215. 

The  prayers  of  the  bill  are  sufficient  in  either  aspect,  as  they  include  dis- 
covery and  an  account,  a  decree  for  payment,  injunctions  to  prevent  the  vio- 
lation of  the  provisions  of  the  agreement,  "  and  such  other  relief  as  the  equity 
of  the  case  may  require."  So  far  as  the  relief  desired  is  a  mere  account  of 
stipulated  royalties,  counsel  are  not  able  to  point  out  any  decision  of  the 
Supreme  Court  clearly  sustaining  the  bill.  On  the  other  hand,  it  is  claimed 
that  Root  v.  Railway,  105  U.  S.  189,  defeats  jurisdiction  in  the  case  at  bar. 
But  that  was  a  case  of  a  mere  tortious  infringement  of  a  patent  expired 
before  the  bill  was  brought,  while  this  suit,  in  our  view,  relates  to  patents 
still  in  life,  and,  in  another,  to  agreed  royalties.  —  B.  &  S.  Fastener  v.  B.  G. 
Fastener,  58  Fed.  818;  7  C.  C.  A.  498. 

The  ground  upon  which  a  court  of  equity  will  take  cognizance  of  a  suit  for 
an  infringement  of  a  patent  is  the  relief  through  an  injunction.  There  is 
nothing  so  peculiar  to  a  suit  for  damages  and  profits  for  infringement  of  a 
patent  as  will,  independently  of  some  recognized  ground  of  equitable  juris- 
diction, justify  a  court  of  chancery  in  assuming  jurisdiction.  It  must  ap- 
pear that  the  legal  remedy  at  law  is  inadequate,  and  if  the  case  is  one  in 
which  equitable  relief  by  injunction  is  inappropriate,  as  when  the  patent 
has  expired,  or  when  the  circumstances  are  such  as  to  justify  a  court  in 
refusing  equitable  relief,  the  suit  will  not  be  entertained  for  the  mere 
purpose  of  an  account  of  past  damages  and  profits.  —  Woodmansee  v 
Williams,  68  Fed.  489;  15  C.  C.  A.  520. 


662  THE    FIXED    LAW    OF    PATENTS  §  720 

Root  v.  Railway,  105  U.  S.  189;  McLaughlin  v.  Railway,  21  Fed.  574;  Clark  v, 
Wooster,  119  U.  S.  325. 

It  is  doubtless  true,  as  contended,  aside  from  any  right  to  an  injunction, 
that  there  may  be  ground  for  jurisdiction  in  equity  in  the  nature  and  cir- 
cumstances of  the  account,  and  in  the  necessity  for  discovery,  but  in  respect 
to  the  expired  patents,  which  are  here  assumed  to  be  valid,  it  is  not  shown 
that  the  remedy  at  law  would  be  inadequate.  —  Russell  v.  Kern,  69  Fed. 
94;  16  C.  C.  A.  154. 

Equity  will  not  entertain  a  suit  which  simply  involves  the  ascertainment 
of  damages  and  profits  for  past  infringement.  —  Truman  v.  Holmes,  87  Fed. 
742;  31  C.  C.  A.  215. 

Root  v.  Railway,  105  U.  S.  189;  Hayward  v.  Andrews,  106  U.  S.  672;  Cary  v. 
Wooster,  119  U.  S.  325;  Rob.  Pat.  sec.  1086;  Walk.  Pat.  sec.  572. 

§  720.    Equity  —  Miscellaneous. 

The  single  question  remains  whether  the  assignee  of  a  chose  in  action  may 
proceed  by  bill  in  equity  to  enforce  for  his  own  use  the  legal  right  of  his 
assignor,  merely  because  he  cannot  sue  at  law  in  his  own  name.  If  the 
assignee  of  the  chose  in  action  is  unable  to  assert  in  a  court  of  law  the  legal 
right  of  the  assignor,  which  in  equity  is  vested  in  him,  then  the  jurisdiction  of 
a  court  of  chancery  may  be  invoked  because  it  is  the  proper  forum  for  the 
enforcement  of  equitable  interests  and  because  there  is  no  adequate  remedy 
at  law;  but  when,  on  the  other  hand,  the  equitable  title  is  not  involved  in 
the  litigation,  and  the  remedy  is  sought  merely  for  the  purpose  of  enforcing 
the  legal  right  of  his  assignor,  there  is  no  ground  for  an  appeal  to  equity 
because,  by  an  action  at  law  in  the  name  of  the  assignor,  the  disputed  right 
may  be  perfectly  indicated  and  the  wrong  done  by  the  denial  of  it  fully  re- 
dressed. To  hold  otherwise  would  be  to  enlarge  the  jurisdiction  of  courts  of 
equity  to  an  extent  the  limits  of  which  could  not  be  recognized;  and  that, 
in  cases  where  the  only  matters  in  controversy  would  be  purely  legal  rights. 
—  Hayward  v.  Andrews,  106  U.  S.  672;  27  L.  Ed.  271;   1  S.  Ct.  544. 

Explaining,  Root  v.  Ry.  105  U.  S.  189;  Hammond  v.  Messenger,  9  Sim. 
327. 

Walker  v.  Brooks,  125  Mass.  241;  Dhegetaft  v.  London,  4  Bro.  P.  C.  2nd  ed. 
436;  Motteux  v.  Insurance,  1  Atk.  545;  Cator  v.  Burke,  1  Bro.  Ch.  434;  Hunt  v. 
Hollingsworth,  100  U.  S.  103;  Van  Norden  v.  Merton,  99  U.  S.  380;  Rose  v. 
Clark,  1  Yew.  &  C.  Ch.  534;  Carter  v.  Ins.  Co.  1  Johns,  Ch.  463;  Bank  v.  Mumford, 
2  Barb.  Ch.  596;  Riddell  v.  Mandevill,  5  Cranch,  322;  Lenox  v.  Roberts,  2 
Wheat.  373;   Thompson  v.  R.  R.  6  Wall.  134;  Walker  v.  Derville,  12  Wall.  442. 

Where  plaintiff's  damages  were  measurable  in  terms  of  royalties  estab- 
lished, there  being  no  other  ground  for  equity  jurisdiction,  the  remedy  is 
complete  at  law.  —  Keyes  v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;   15  S. 

Ct.  772. 

The  respondent  having  made  a  full  appearance  and  pleaded  to  the  merits  of 
the  bill,  has  waived  the  objection  that  as  the  suit  was  begun  it  was  against 
another  party  on  account  of  an  erroneous  statement  as  to  county  location, 
and  also  the  objection  that  the  original  complainant  had  an  adequate  remedy 
at  law.  — Ross  v.  Ft.  Wayne,  63  Fed.  466;    11  C.  C.  A.  288. 

Kilborn  v.  Sunderland,  130  U.  S.  509. 

A  complainant  in  equity  may  transfer  to  another  his  interest  in  the  subject- 
matter  of  the  contest,  and  confer  upon  the  assignee  the  right  to  prosecute 


§  720  JURISDICTION  663 

the  suit  to  a  decree  upon  the  merits,  notwithstanding  by  reason  of  events 
subsequent  to  the  bringing  of  the  suit  the  controversy  has  so  changed  as  to 
be  the  subject  only  of  an  action  at  law;  and  such  new  party  may  be  sub- 
stituted by  filing  an  original  bill  in  the  nature  of  a  supplemental  bill.  — 
Ross  v.  Ft.  Wayne,  63  Fed.  466;  11  C.  C.  A.  288. 

In  this  case  the  appellee  had  sued  appellant  at  law  for  infringement  of  a 
subsequent  patent.  This  bill  is  for  infringement  of  a  prior  patent  owned  by 
appellant  and  for  an  injunction  to  restrain  appellee  from  prosecuting  his 
action  at  law  on  the  subsequent  patent.  Held:  That  ground  for  equitable 
relief  was  not  shown.  —  Germain  v.  Wilgus,  67  Fed.  597;   14  C.  C.  A.  561. 

Note:  While  it  would  seem  that  the  ruling  in  this  case  upon  this  point  is. 
acceptable,  the  doctrine  set  forth  by  Knowles,  D.  J.  of  equity  jurisdiction  is 
open  to  grave  doubt. 

The  suggestion  has  been  made  that,  although  defendants  may  be  guilty  of 
infringement,  complainant's  remedy  at  law  is  adequate,  and,  under  the  cir- 
cumstances of  the  case,  equity  ought  not  to  accord  to  the  patentee  the 
equitable  relief  of  injunction.  As  to  this  aspect  of  the  case,  it  would  seem  clear 
that,  if  complainant  has  imposed  a  legal  restriction  upon  the  use  of  the 
invention  embodied  in  the  structures  made  and  sold  by  it,  the  remedy  at 
law  is  wholly  inadequate,  and  relief  by  injunction  should  be  awarded  upon  the 
case  stated  in  the  bill.  If  the  complainant  has  a  right  to  reserve  a  control 
over  the  use  in  the  manner  stated  in  its  bill,  then  its  machines,  to  the  extent 
it  has  reserved  such  control,  are  within  the  monopoly  of  the  patent.  If  its 
licenses  do  not  infringe  public  policy,  but  are  within  the  purposes  awarded 
by  the  patent,  then  it  must  follow  that  the  case  presented  should  be  accorded 
relief  by  injunction  restraining  the  acts  complained  of.  A  court  of  equity  has 
the  power,  independently  of  any  other  relief,  to  restrain  the  continuing  in- 
fringement of  a  patent.  —  Heaton  v.  Eureka,  77  Fed.  288;  25  C.  C.  A.  267. 

Supply  Co.  v.  McCready,  Fed.  Cas.  295. 

The  bill  was  upon  the  Gray  patent,  but  the  infringement  was  of  the  Hahl 
patent  which  complainant  owned  but  did  not  sue  on.  Defendant  failed  to 
answer  and  the  decree  was  pro  confesso.  On  the  accounting,  the  Hahl  patent 
having  expired  pendente  lite,  defendant  came  in  and  claimed  want  of  juris- 
diction, as  the  remedy  should  be  at  law,  and  that  the  infringement  was,  if 
any,  of  the  Hahl  patent.  Held:  We  think  the  argument  for  the  appellant 
overlooks  the  distinction  between  the  facts  which  show  that  the  merits  of 
the  case  are  against  the  plaintiff,  and  facts  which  establish  that  the  court  is 
without  jurisdiction  to  determine  the  merits  of  the  case.  It  is  also  very  clear 
that  the  facts  which  the  appellant's  counsel  says  show  that  the  plaintiff's 
remedy  is  at  law  really  in  their  effect  establish  that  the  plaintiff  is  without  any 
right  to  recover  either  at  law  or  in  equity,  for,  if  the  device  were  made  under 
the  Hahl  patent,  it  is  clear  that  the  plaintiff  could  not  recover  in  an  action 
at  law  any  more  than  by  a  suit  in  equity,  the  suit  being  upon  the  Gray 
patent  only.  If  the  defendant  had  regularly  filed  answer  and  made  an  issue 
on  the  facts  stated  in  the  bill,  and  had  on  hearing  disproved  the  allegations 
of  the  bill,  it  would  certainly  not  be  insisted  that  this  defeated  the  juris- 
diction of  the  court.  —  Reedy  v.  Western,  83  Fed.  709;  28  C.  C.  A.  27. 

That  after  a  circuit  court  has  obtained  jurisdiction  in  the  premises  by 
the  issuance  of  a  subpoena,  that  jurisdiction  will  not  be  ousted  by  the  hard 
and  fast  rules  of  the  Patent  Office,  see  —  Lobel  v.  Cossey,  157  Fed.  664 ;  85 
C.  C.  A.  142. 

We  are  content  to  rest  affirmance  of  the  court  below  with  the  remark  upon 
the  case  of  Kessler  v.  Eldred,  206  U.  S.  285,  decided  since  the  hearing  below,  as 


664  THE    FIXED   LAW   OF    PATENTS  §  721 

plainly  upholding  jurisdiction  in  equity  for  like  relief,  in  favor  of  the  manu- 
facturer, primarily  sued  for  infringement,  to  prevent  complication  and  injury 
in  further  suits  against  purchasers  from  him  of  the  alleged  infringing  article. 
Whether  the  injunction  should  issue  depends  upon  the  equities  presented.  — 
Commercial  v.  Avery,  159  Fed.  935;  87  C.  C.  A.  206. 

§  721.     Infringement. 

An  action  which  raises  a  question  of  infringement  is  an  action  arising 
"under  the  patent  law,"  and  one  who  has  the  right  to  sue  for  the  infringement 
may  sue  in  the  circuit  court.  Such  a  suit  may  involve  the  construction  of  a 
contract  as  well  as  the  patent,  but  that  will  not  oust  the  court  of  its  jurisdic- 
tion. If  the  patent  is  involved  it  carries  with  it  the  whole  case.  —  Littlefield  v. 
Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

It  would  seem  that  an  action  for  infringement  against  the  U.  S.  would  be 
properly  brought  in  the  Court  of  Claims.  —  James  v.  Campbell,  104  U.  S. 
356;  26  L.  Ed.  786. 

Carr  v.  U.  S:  98  U.  S.  433. 

Where  the  validity  of  the  patent  was  admitted  and  there  was  an  established 
license  fee,  the  remedy  at  law  was  complete  and  adequate  at  law.  —  Keyes 
v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;  15  S.  Ct.  772. 

The  act  of  Congress  of  1870,  as  embodied  in  Section  629  of  the  Revised 
Statutes,  provides  that  the  "  circuit  courts  shall  have  original  jurisdiction 
as  follows :  ...  of  all  suits  at  law  or  in  equity,  arising  under  the  patent  or 
copyright  laws  of  the  United  States."  The  jurisdiction  thus  conferred  is 
exclusive.  All  questions,  therefore,  which  concern  the  infringement  or 
validity  of,  and  the  title  to,  patents  granted  under  the  patent  laws  of  the 
United  States,  must  be  litigated  in  the  circuit  courts  of  the  United  States. 
"  It  is  perfectly  well  settled,"  however,  "  that  where  a  suit  is  brought  on  a 
contract,  of  which  a  patent  is  the  subject-matter,  either  to  enforce  such  con- 
tract or  to  annul  it,  the  case  arises  on  the  contract  or  out  of  the  contract, 
and  not  under  the  patent  laws."  Where  a  bill  in  equity  states  a  contract 
between  complainant  and  defendant,  and  which  it  seeks  to  have  set  aside 
in  order  to  pursue  the  defendant, as  an  infringer,  or  where  the  bill  states  a 
contract  between  complainant  and  defendant,  which  it  seeks  to  enforce,  as 
giving  complainant  title  to  the  patent,  the  case  cannot  be  said  to  arise  under 
the  patent  laws.  In  either  case  the  court  is  called  upon  to  administer  the  law 
of  the  contract,  and  not  the  patent  laws  of  the  United  States,  or  rights  claimed 
under  them.  But,  where  the  contract  set  up  or  stated  is  not  between  the 
parties  to  the  suit,  it  is  collateral  thereto  and  cannot,  therefore,  give  character 
to  the  case  as  being  on  the  contract,  and  not  one  arising  under  the  patent 
laws.  In  the  case  before  us  the  action  was  not  brought  to  enforce  a  contract 
or  to  set  aside  a  contract  between  defendant  and  complainant.  In  other 
words,  it  was  not  a  suit  upon  a  contract  between  the  parties  to  the  suit,  within 
the  scope  of  the  decisions  referred  to.  The  appellee  is  mistaken  in  its  conten- 
tion that  questions  of  title  to  patents,  such  as  are  raised  in  this  case,  cannot 
be  questions  arising  under  the  patent  laws  of  the  United  States,  because  they 
involve  the  derivation  of  title  from  a  contract.  The  complainant  in  this  case^ 
has  stated  in  its  bill  that  it  is  the  owner  of  the  patent  in  suit,  and  derives  title' 
through  an  assignment  from  the  patentee.  —  Atherton  v.  Atwood-Morrison, 
102  Fed.  949;  43  CCA.  72. 

That  one  who  manufactures,  filling  a  specific  order  for  a  dealer  according 
to  the  terms  of  the  order,  without  intent  to  infringe,  and  after  discontinu- 


§  722  JURISDICTION  665 

ance  of  such  infringement,  and  with  no  evidence  of  threatened  continuance  of 
infringement,  cannot  be  sued  in  equity,  there  being  adequate  remedy  at  law 
for  past  acts,  see  —  Globe-Wernicke  v.  Brown,  121  Fed.  90;  57  C.  C.  A.  344. 

Although  both  the  parties  are  citizens  of  New  York,  as  the  action  was  for 
the  infringement  of  a  patent,  and  was  so  tried  and  decided  in  the  courts 
below,  this  court  has  jurisdiction,  notwithstanding  that  one  of  the  defenses 
depends  upon  the  construction  of  a  contract  of  license.  We  do  not  think  that 
the  decision  in  Hartell  v.  Tilghman,  99  U.  S.  547,  implies.  —  Clancy  v.  Troy, 
157  Fed.  554;  85  C.  C.  A.  314. 

Complainant's  counsel  contends  before  this  court  that  the  defendants  by 
filing  a  general  appearance  in  the  cause  without  objection  to  the  jurisdiction 
of  the  court,  waived  their  right  to  object  to  being  sued  in  the  Eastern  Dis- 
trict of  Pa.,  and  hence  that,  as  the  action  is  within  the  general  jurisdiction 
of  the  circuit  court,  the  complainant,  because  of  such  waiver,  may  show  in 
support  of  his  bill  acts  of  infringement  committed  outside  of  such  district. 
If  that  be  admitted,  however,  as  a  general  proposition,  it  does  not  relieve  the 
complainant  in  this  case  of  the  burden  of  proving  that  the  defendants  have 
committed  infringing  acts  within  said  district,  since  that  was  substantially 
the  issue  tendered  by  the  bill,  denied  by  the  answer,  and  to  the  maintenance 
of  which  the  proofs  were  directed.  —  Gray  v.  Grinberg,  159  Fed.  138;  86 
C.  C.  A.  328. 

§  722.    Licensor  and  Licensee. 

A  mere  licensee  cannot  sue  strangers  who  infringe.  In  such  cases  redress 
is  obtained  through  or  in  the  name  of  the  patentee  or  his  assignee.  Here, 
however,  the  patentee  is  the  infringer,  and  as  he  cannot  sue  himself,  the 
licensee  is  powerless  so  far  as  the  courts  of  the  United  States  are  concerned 
unless  he  can  sue  in  his  own  name.  A  court  of  equity  looks  to  substance 
rather  than  form.  When  it  has  jurisdiction  of  parties  it  grants  the  appropriate 
relief  without  regard  to  whether  they  come  in  as  plaintiff  or  defendant.  In 
this  case  the  person  who  should  have  protected  the  plaintiff  against  all  infringe- 
ments has  become  himself  the  infringer.  He  held  the  legal  title  to  his  patent 
in  trust  for  his  licensees.  He  has  been  faithless  to  his  trust,  and  courts  of 
equity  are  always  open  for  the  redress  of  such  a  wrong.  This  wrong  is  an 
infringement.  Its  redress  involves  a  suit,  therefore,  arising  under  the  patent 
laws,  and  of  that  suit  the  circuit  court  has  jurisdiction.  —  Littlefield  v. 
Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

While  we  do  not  allow  the  jurisdiction  of  the  federal  courts  to  be  invoked 
primarily  for  the  determination  of  the  respective  rights  of  parties  to  a  con- 
tract concerning  patents,  yet  when  the  bill  is  an  ordinary  one  for  infringement, 
and  the  answer  puts  in  issue  the  title  of  the  plaintiff  to  sue,  we  think  the 
jurisdiction  is  not  ousted  by  the  mere  allegation  that  the  license  has  been 
revoked,  and  that  the  court  is  at  liberty  to  go  on  and  determine  that  fact.  — 
Excelsior  v.  Pacific,  185  U.  S.  282;  46  L.  Ed.  910;  22  S.  Ct.  681. 

Littlefield  v.  Perry,  21  Wall.  205;   White  v.  Rankin,  144  U.  S.  628. 

The  bill  in  this  case  is  in  the  customary  form  for  infringement  of  letters 
patent,  and  the  proposition  contended  for  necessarily  implies  that  the  juris- 
diction invoked  by  the  filing  of  such  a  bill  may  be  defeated  by  a  plea  of 
license  which  admits  the  use  and  validity  of  the  patent  sued  on.  If  the 
decision  of  Hartell  v. Tilghman, 99  U.S.  547,  ever  meant  that  much,  it  has  been 
explained  and  limited  by  later  decisions,  which  leave  no  doubt  of  the  federal 
jurisdiction  in  cases  like  the  present.  —  Elgin  v.  Nichols,  65  Fed.  215;  12 
C.  C.  A.  578. 


666  THE    FIXED   LAW   OF   PATENTS  §§  723-724 

White  v.  Rankin,  144  U.  S.  628;  Mfg.  Co.  v.  Hyatt,  125  U.  S.  46;  Marsh  v. 
Nichols,  140  U.  S.  344. 

The  validity  of  the  under-license  or  contract  and  the  right  of  the  licensee 
to  restrain  future  sale  in  violation  thereof  must  necessarily  be  determined 
by  the  patent  laws,  and  by  the  rules  applicable  to  a  suit  by  a  patentee  or 
an  assignee  to  enjoin  the  infringement  of  a  patent.  —  National  v.  Schlegel, 
128  Fed.  733;   64  C.  C.  A.  594. 


§  723.    Residence. 

The  Act  of  Congress  exempts  a  defendant  from  suit  in  any  district  of  which 
he  is  not  an  inhabitant,  or  in  which  he  is  not  found  at  the  time  of  the  service 
of  the  writ.  It  is  an  exemption  which  he  may  waive,  but  unless  waived,  he 
need  not  answer  and  will  not  be  bound  by  anything  which  may  be  done 
against  him  in  his  absence.  —  Butterworth  v.  Hill,  114  U.  S.  128;  29  L.  Ed. 
119;  5S.  Ct.  796. 

The  act  of  March  3,  1897,  was  obviously  intended  to  add  to  the  general 
statutes  upon  the  subject  of  jurisdiction  in  patent  cases  a  definition  for  the 
particular  requisites  for  jurisdiction,  of  such  cases  by  the  various  circuit 
courts,  and  of  the  proper  method  of  service  of  process  upon  a  defendant  in 
the  district  of  which  he  is  not  an  inhabitant.  The  object  was  to  determine 
with  precision  the  boundaries  of  jurisdiction,  and  to  create  a  future  method 
of  service  of  process  in  patent  causes  against  non-resident  defendants,  which 
had  not  theretofore  been  stated  in  a  federal  statute.  —  Westinghouse  v. 
Great  Northern,  88  Fed.  258;  31  C.  C.  A.  625. 

The  averment  is,  that  the  defendant  had  a  regular  and  established  place 
of  business  in  Philadelphia,  and  that  the  acts  of  infringement  had  been  com- 
mitted by  the  defendant  in  that  city.  It  by  no  means  follows,  that,  because 
the  defendant  had  not  such  a  place  of  business  in  the  exhibition,  it  might  not 
have  had  one  or  more  such  places  of  business  elsewhere  in  Philadelphia; 
nor  are  we  ready  to  hold  that  because  one  writ  of  subpoena  in  this  case  has 
proved  ineffectual,  valid  service  of  another  may  not  be  made.  We,  there- 
fore, do  not  regard  the  order  appealed  from  as  in  any  sense  a  final  decree 
either  in  substance  or  form.  —  Waterman  v.  Parker,  107  Fed.  141 ;  46  C. 
C.  A.  203. 

In  re  Grossmayer,  177  U.  S.  48;  Ex  parte  Schollenberger,  96  U.  S.  369. 

A  corporation  chartered  under  the  laws  of  New  Jersey  is  not  an  inhabitant 
of  the  district  in  Texas  where  it  does  business.  It  might  have  agents  and  carry 
on  business  in  every  one  of  the  many  districts  of  the  United  States,  and  it 
could  not  be  held  that,  because  of  such  business,  it  was  an  inhabitant  of  every 
district  in  which  it  did  business.  —  Shaw  v.  American,  108  Fed.  842;  48 
C.  C.  A.  68. 

Shaw  v.  Mining  Co.  145  U.  S.  444;  Carter,  Jur.  Fed.  Cts.  155. 


§  724.     State  Court. 

An  action  to  recover  royalties  under  contract  for  the  sale  of  a  patent, 
though  there  may  arise  collaterally  the  question  whether  articles  made 
come  within  the  patent  does  not  arise  under  the  patent  laws  so  as  to  give 
jurisdiction  to  the  Circuit  Court.  —  Albright  v.  Teas,  106  U.  S.  613;  27  L.  Ed_ 
295 ;  1  S.  Ct.  550. 

Wilson  v.  Sanford,  10  How.  99. 


I  725  LACHES  667 

The  federal  courts  have  no  right,  irrespective  of  citizenship,  to  entertain 
suits  for  the  amount  of  an  agreed  license  or  royalty,  or  for  the  specific  execu- 
tion of  a  contract  for  the  use  of  a  patent,  or  of  other  suits  where  a  subsisting 
contract  is  shown  governing  the  rights  of  the  party  in  the  use  of  an  invention, 
and  that  such  suit  not  only  may,  but  must,  be  brought  in  the  state  court.  — 
Pratt  v.  Paris,  168  U.  S.  255;  42  L.  Ed.  458;  18  S.  Ct.  62. 

Hartell  v.  Tilghman,  99  U.  S.  547;  Wilson  v.  Sanford,  10  How.  99;  Albright  v. 
Teas,  106  U.  S.  613;  Goodyear  v.  Day,  1  Blatch.  565;  Blanchard  v.  Sprague,  1 
Cliff.  288;  Mfg.  Co.  v.  Hyatt,  125  U.  S.  46;  Wade  v.  Lawder,  165  U.  S.  624. 

It  is  no  objection  to  the  jurisdiction  of  the  state  court  that  the  question 
of  validity  may  involve  the  examination  of  conflicting  patents,  or  the  testi- 
mony of  experts.  It  is  the  fact  of  its  invalidity,  and  not  the  reasons  for  it, 
that  is  material.  (Citing  at  length  the  state  law  on  the  subject).  —  Pratt  v. 
Paris,  168  U.  S.  255;  42  L.  Ed.  458;  18  S.  Ct.  62. 

§  725.     Supreme  Court. 

The  Supreme  Court  has  jurisdiction  on  appeal  of  a  cause  arising  under  the 
patent  laws  regardless  of  the  amount  involved.  —  Phillip  v.  Nock,  80  U.  S. 
185;  20  L.  Ed.  567. 

As  the  court  had  jurisdiction  at  the  inception  of  the  suit,  even  though  upon 
narrow  ground,  yet,  as  the  defendants  did  not  ask  the  dismissal  of  the  bill 
on  the  ground  of  want  of  jurisdiction,  we  should  be  very  reluctant,  if  we  had 
the  power  now,  on  an  appeal,  after  the  case  had  been  tried  and  determined, 
to  reverse  the  decree.  —  Clark  v.  Wooster,  119  U.  S.  322;  30  L.  Ed.  392; 
7  S.  Ct.  217. 

We  have  jurisdiction  to  review  the  final  decree  in  the  suit  and  all  inter- 
locutory decrees  and  orders.  —  Worden  v.  Searles,  121  U.  S.  14;  30  L.  Ed. 
853;  7S.  Ct.  814. 

Distinguishing  Ex  parte  Kearney,  20  U.  S.  39 ;  New  Orleans  v.  Steamship, 
87  U.  S.  387. 

The  Supreme  Court  has  jurisdiction  to  review  a  judgment  of  the  Court 
of  Appeals  D.  C.  —  U.  S.  v.  Seymour,  153  U.  S.  353;  38  L.  Ed.  742;  14  S. 
Ct.  849. 

Now,  actions  at  law  for  infringement  and  suits  in  equity  for  infringement, 
for  interference,  and  to  obtain  patents,  are  suits  which  clearly  arise  under  the 
patent  laws;  being  brought  for  the  purpose  of  vindicating  rights  created  by 
those  laws,  and  coming  strictly  within  the  avowed  purpose  of  the  act,  (Ju- 
diciary Act,  Mar.  3,  1891)  to  relieve  the  court  of  that  burden  of  litigation 
which  operated  to  impede  the  disposition  of  cases  of  peculiar  gravity  and 
general  importance.  We  are  of  opinion  that  it  is  reasonable  to  assume  that 
the  attention  of  Congress  was  directed  to  this  class  of  cases ;  —  that  there  is 
nothing  intended  to  place  a  limitation  on  the  appellate  jurisdiction  of 
this  court  in  a  case  such  as  this.  —  United  States  v.  Am.  Bell,  159  U. 
S.  548;  40  L.  Ed.  255;   16  S.  Ct.  69. 


LACHES. 

General  Statement  §  726 
Application  §  727 
Bringing  Suit  §  728 
Excuses  §  729 
Injunction  §  730  (see  §  533) 


Reissue  §  731  (see  §  869) 
Miscellaneous  Rulings  §  732 
See  —  Abandonment  §  1;   Defenses 
306;  Disclaimer  §  339;  Injunction  § 
558,  568 


668  THE   FIXED   LAW   OF   PATENTS  §§  726-727 

§  726.     General  Statement. 

The  Patent  Statute  does  not  employ  the  term  laches.  Delay  of  applica- 
tion which  bars  a  patent  is  abandonment  under  Sec.  4886.  See  title  Aban- 
donment. Failure  to  prosecute  an  application  may  work  abandonment. 
Sec.  4894.  Failure  to  pay  the  final  fee  within  the  prescribed  period  may 
work  abandonment,  and  the  question  of  abandonment  will  be  considered  as 
a  question  of  fact  by  the  Patent  Office.  Sec.  4897.  While  Sec.  4916,  relating 
to  reissues  does  not  make  delay  a  bar  to  a  valid  reissue,  the  fact  of  unreason- 
able delay  or  of  intervening  rights  may  render  the  reissue  invalid.  See 
Reissue.  The  common  rules  of  laches  and  stale  claims  apply  to  cases  in 
equity  involving  patents. 

§  727.     Application. 

Congress  has  established  a  department,  with  officials  selected  by  the 
government,  to  whom  all  applications  for  patents  must  be  made;  has  pre- 
scribed the  terms  and  conditions  of  such  applications,  and  entrusted  the 
entire  management  of  affairs  of  the  department  to  those  officials;  that  when 
an  applicant  complies  with  the  terms  and  conditions  prescribed,  and  files 
his  application  with  the  officers  of  the  department,  he  must  abide  their  action, 
and  cannot  be  held  to  suffer  or  lose  rights  by  reason  of  any  delay  on  the  part 
of  those  officials,  whether  reasonable  or  unreasonable,  unless  such  delay  has 
been  brought  about  through  his  corruption  of  the  officials  or  through  his 
inducement  or  at  his  instance.  Proof  that  they  were  in  fault,  that  they 
acted  unwisely,  unreasonably,  and  even  that  they  were  culpably  dilatory, 
casts  no  blame  on  him  and  abridges  none  of  his  rights.  —  United  States  v. 
Am.  Bell,  167  U.  S.  224;  43  L>  Ed.  144;  17  S.  Ct.  809. 

The  mere  fact  of  delay  does  not,  therefore,  operate  to  deprive  the  inventor 
of  his  legal  rights.  Before  he  can  be  punished  it  must  be  shown  that  he  has 
been  guilty  of  a  wrong  —  that  he  has  caused  the  delay.  He  cannot  be  pun^ 
ished  on  account  of  the  delay  of  the  tribunal  before  which  he  is  presenting  his 
suit.  —  United  States  v.  Am.  Bell,  167  U.  S.  224;  43  L.  Ed.  144;  17  S.  Ct. 
809. 

We  do  not,  however,  intend  to  have  it  inferred  that  we  have  determined 
that  the  law  requires  any  degree  of  diligence  beyond  a  compliance  with  the 
statutory  provisions,  official  regulations,  and  the  formal  demands  from  time 
to  time  of  the  public  officials  charged  with  duties  under  the  patent  law.  We 
do  not  determine  that  any  degree  of  laches  whatever  will  forfeit  a  patent  once 
granted,  reserving,  of  course,  cases  of  abandonment,  and  other  cases  where, 
through  laches,  the  equities  of  strangers  have  become  established.  Congress, 
in  4894  and  4904,  R.  S.,  established  certain  fixed  periods  for  giving  progress 
to  applications  for  patents,  which  the  Supreme  Court  has  so  far  recognized 
by  analogy  as  to  apply  the  limitation  to  a  bill  in  equity  filed  under  sec. 
4915  R.  S.  Gandy  v.  Marble,  122  U.  S.  432.  The  United  States  asks  us  to 
establish  a  period  of  limitations  other  than  that  fixed  by  statute,  and  we  do 
not  decide  that,  under  any  circumstances,  we  have  any  authority  so  to  do. 
We  merely  determine  that  the  case  of  extreme  diligence  as  made  by  the 
United  States  cannot  be  maintained.  —  Am.  Bell  Tel.  v.  U.  S.  68  Fed.  542 ; 
25  C.  C.  A.  569. 

That  others  received  his  invention  with  incredulity  and  ridicule  was  no 
fault  of  his.  He  never  abandoned  his  invention.  Nor  do  we  find  such  laches 
on  his  part  as  to  deprive  him  of  its  use.  He  was  a  poor  man  and  was  ill  for  a 
long  time.  He,  unaided,  was  without  means  to  construct  his  apparatus  on 
such  a  scale  as  to  demonstrate  its  merit.    Those  to  whom  he  applied  for  its 


§  728  LACHES  669 

introduction  turned  a  deaf  ear  to  him.  In  the  face  of  discouragement  and 
wsth  reasonable  diligence  in  view  of  his  circumstances,  he  persisted  in  his 
efforts  until  they  were  finally  crowned  with  success.  We  must  therefore  hold 
that  the  Reid  &  Billington  apparatus  did  not  anticipate  any  of  the  claims  of 
the  patent  in  suit,  and  consequently  that  Williames  was  under  no  obligation 
to  enter  a  disclaimer.  —  McNeely  v.  Williames,  96  Fed.  978;  37  C.  C.  A.  641. 

Late  in  December,  1893,  the  inventor  became  insane.  At  this  crisis  there 
remained  three  months'  time  during  which  an  application  might  have  been 
filed,  if  there  had  been  anyone  legally  capable  of  making  an  application. 
The  trouble  was  that  there  was  then  no  law  authorizing  the  guardian  to  file 
an  application  for  a  patent  upon  an  invention  made  by  an  insane  person. 
The  law  which  for  the  first  time  took  cognizance  of  such  a  situation  was  passed 
Feb.  28,  1899  (C.  227,  30  Stat.  915).  The  act  of  that  date  amended  sec. 
4896  R.  S.  which  authorizes  the  administrator  or  executor  of  a  deceased 
inventor  to  file  an  application  for  an  invention  made  by  his  intestate  or 
testator,  by  providing  that  the  guardian  of  an  insane  person  may  file  an  appli- 
cation upon  an  invention  made  by  such  person  before  his  insanity.  The  last 
clause  of  that  act  provides  that  it  "is  to  cover  all  applications  now  on  file 
in  the  Patent  Office  or  which  may  be  hereafter  made."  Jenner,  as  guardian, 
at  date  of  this  act  had  on  file  an  application  for  a  patent  upon  the  insane 
inventor's  invention.  There  was  no  authority  of  law  for  its  filing  at  the  time 
it  was  filed,  but  that  trouble,  we  shall  assume,  was  cured  by  the  retroactive 
effect  of  the  act  of  1899.  But  the  date  of  that  application  was  Nov.  20,  1895, 
and  we  are  confronted  with  the  fact  that  at  that  date  the  invention  had 
been  in  public  use  for  more  than  three  years.  Congress  having  created  the 
monopoly,  may  put  such  restrictions  upon  it  as  it  pleases.  Having  made  no 
exception  in  favor  of  an  insane  person,  we  can  make  none.  —  Jenner  v. 
Bowen,  139  Fed.  556;  71  C.  C.  A.  540. 

§  728.     Bringing  Suit. 

Delay  in  bringing  suit  for  15  years  is  laches.  —  Leggett  v.  Standard,  149 
U.  S.  287;  37  L.  Ed.  737;  13  S.  Ct.  902. 

McLean  v.  Fleming,  96  U.  S.  245;  Spiedel  v.  Henrici,  120  U.  S.  377;  Galliher 
v.  Cadwell,  145  U.  S.  368. 

It  is  thus  apparent  that  so  far  from  the  complainant  having  made  out  a 
case  of  wilful  infringement  by  defendant  company,  the  converse  is  the  fact. 
Fully  aware  as  early  as  1880,  which  is  about  a  year  after  the  infringing  nets 
were  made,  that  the  defendant  was  using  them,  and  kept  advised  from  time 
to  time  by  his  foreman  that  infringement  was  continuing,  complainant  care- 
fully refrained  from  saying  or  doing  anything  to  warn  defendant  that  it  was 
infringing  until  almost  the  very  day  when  the  patent  expired.  The  reason 
for  this  policy  of  inaction  is  quite  apparent.  A  careful  examination  of  the 
record  will  leave  no  doubt  in  any  unprejudiced  mind,  that,  had  complainant 
notified  defendant  at  any  time  from  1880  to  1886  that  the  slings  were  in- 
fringements of  his  patent,  the  use  of  such  slings  would  have  ceased  forthwith. 
They  were  convenient,  and  in  some  respects  and  under  some  conditions, 
superior  to  other  appliances ;  hence,  the  set  of  four  were  always  kept  renewed. 
But  manifestly,  they  were  not  so  superior  as  complainant  contends,  for  their 
number  was  never  increased.  If  they  did  not  offer  sufficient  advantages 
to  warrant  increasing  their  number,  it  is  difficult  to  believe  that  those  ad- 
vantages would  have  been  sufficient  to  induce  continued  use  after  defendant 
was  advised  that  they  were  infringements  of  a  patent.  The  complainant 
has  deliberately  chosen  not  to  warn  an  unconscious  infringer,  whom  he  has 
watched  infringing  year  after  year,  no  doubt  hoping  thereby  to  increase  the 


670  THE    FIXED    LAW    OF    PATENTS  §  729 

amount  of  profits  ultimately  recoverable.  This  is  sharp  practice,  and  if 
there  ever  was  a  case  where  complainant  should  be  required  to  establish  these 
profits  by  reliable  and  tangible  proof,  this  is  preeminently  such.  —  Hohorst 
v.  Hamburg-American,  91  Fed.  655;  34  C.  C.  A.  39. 

§  729.     Excuses. 

It  would  seem  that  poverty  or  sickness  would  excuse  delay  in  prosecuting 
an  application.  —  Woodbury  v.  Keith,  101  U.  S.  479;  25  L.  Ed.  939. 

Where,  it  otherwise  appearing  on  the  face  of  the  bill  that  the  claim  is  stale, 
or  is  barred  by  lapse  of  time,  and  it  is  sought  to  avoid  the  effect  of  such  a  bar 
on  the  ground  that  the  fraud  complained  of  was  concealed  and  had  been  only 
recently  discovered.  It  is  necessary  that  the  particular  acts  of  fraud  or 
concealment  should  have  been  set  forth  by  distinct  averments,  as  well  as  the 
time  when  discovered,  so  that  the  court  may  see  whether,  by  the  exercise  of 
ordinary  diligence  the  discovery  might  have  been  before  made.  —  Wollensak 
v.  Reiher,  115  U.  S.  96;  29  L.  Ed.  355;  5  S.  Ct.  1132. 

Beanbien  v.  Beanbien,  23  How.  190;  Stearnes  v.  Page,  7  How.  819;  Moore  v. 
Green,  19  How.  69;  Marsh  v.  Whitmore,  21  Wall.  178;  Godden  v.  Kimmell,  99 
U.  S.  201;  Badger  v.  Badger,  2  Wall.  87;  Wood  v.  Carpenter,  101  U.  S.  135; 
Lansdale  v.  Smith,  106  U.  S.  391. 

Plaintiff's  poverty  is  no  excuse  for  laches  in  this  case.  —  Leggett  v.  Stand- 
ard, 149  U.  S.  287;  37  L.  Ed.  737;  13  S.  Ct.  902. 

Hayward  v.  Bank,  96  U.  S.  611. 

Note:  This  holding  is  without  authority  and  the  citation  is  not  truly  made. 
In  Hayward  v.  Bank,  the  court  did  not  say  "  that  a  party's  poverty  or  pecuni- 
ary embarrassment  was  not  a  sufficient  excuse  for  postponing  the  assertion 
of  his  rights.'5  What  the  court  did  say  was  "  His  poverty  or  pecuniary 
embarrassment  was  not  a  sufficient  excuse  for  postponing  the  assertion  of 
his  rights,"  which  is  quite  a  different  thing  when  the  true  context  is  seen. 
That  was  a  case  for  the  recovery  of  hypothecated  stocks,  a  case  in  equity  to 
recover  title  to  personal  property.  The  delay  there  was  a  very  different  one 
from  an  action  in  tort  against  a  great  monopoly  like  the  present  case",  and 
the  learned  justice  went  a  long  way  and  spun  a  very  fine  thread  of  analogy 
in  an  attempt  to  make  such  a  hard  and  fast  rule. 

The  plaintiff's  excuse,  in  this  instance,  that  he  preferred  for  prudential 
reasons,  to  receive  a  salary  from  the  defendant  rather  than  to  demand  a 
royalty  is  entitled  to  a  less  favorable  consideration  by  a  court  of  equity  than 
if  his  conduct  had  been  that  of  mere  inaction.  —  Lane  v.  Locke,  150  U.  S. 
193;  37  L.  Ed.  1049;  14  S.  Ct.  78. 

The  Edison  company  brought  suit  seasonably  against  the  first  and  prin- 
cipal infringer.  It  was  not  laches  to  delay  bringing  suit  against  other  in- 
fringers until  the  first  suit  had  reached  adjudication.  Edison  Electric  v. 
Sawyer-Man.  53  Fed.  592;  3  C.  C  A.  605. 

With  knowledge  of  infringement  by  complainant  and  its  predecessors  in 
business  for  fourteen  years  without  any  excuse  equitable  rights  are  lost.  - 
Woodmansee  v.  Williams,  68  Fed.  489;  15  C.  C.  A.  520. 

Action  was  brought  against  a  prior  infringer  within  a  year  from  the  time 
the  infringement  began,  and  the  issue  was  not  finally  settled  until  within  a 
year  previous  to  the  time  this  suit  was  brought.  Held:  That  suit  was  finally 
determined  in  favor  of  the  complainant  on  Oct.  21,  1898  (the  bill  here  was 
filed  Apr.  10,  1899).    Such  pending  litigation  involving  the  validity  and  con- 


§§  730-732  LACHES  671 

struction  of  the  patent  was  sufficient  reason  for  not  bringing  other  suits  for 
infringement  until  the  patent  should  be  finally  adjudicated.  —  U.  S.  Mitis 
v.  Detroit,  122  Fed.  863 ;  59  C.  C.  A.  589. 

Edison  v.  Sawyer,  53  Fed.  592;  Taylor  v.  Sawyer,  75  Fed.  301;  New  York  v. 
Loomis,  91  Fed.  421;   Stears-Roger  v.  Brown,  114  Fed.  939. 

§  730.     Injunction. 

Where  there  was  a  delay  of  seventeen  years  nearly  and  no  explanation  was 
made,  such  laches  would  disentitle  complainant  to  a  preliminary  injunction. 

—  Keyes  v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;  15  S.  Ct.  772. 
McLaughlin  v.  People's.  21  Fed.  574;  American  v.  Chicago,  41  Fed.  522;  Keyes 

v.  Pueblo,  31  Fed.  560;  Root  v.  Railway,  105  U.  S.  189;  Clark  v.  Wooster,  il9 
U.  S.  322;    Lane  v.  Locke,  150  U.  S.  193. 

For  full  list  of  cases  on  this  subject  see  Injunction  —  Grounds  for  Refusing 

—  Laches,  §  568. 

§  731.     Reissue. 

Even  if  the  patentee  had  the  right  to  a  reissue  if  applied  for  in  seasonable 
time,  he  had  lost  it  by  his  laches  and  unreasonable  delay.  —  Johnson  v. 
Flushing,  105  U.  S.  539;  26  L.  Ed.  1162. 

Miller  v.  Brass  Co.  104  U.  S.  350. 

Laches  in  obtaining  reissue.  —  Wollensak  v.  Sargent,  151  U.  S.  221 ;  38 
L.Ed.  137;  14  S.  Ct.  291. 

For  full  list  of  cases  on  this  subject  see  Reissue  —  Delay,  §§  875-9. 

§  732.     Miscellaneous  Rulings. 

Delay  of  twelve  years  raises  laches.  —  Lane  v.  Locke,  150  U.  S.  193;  37 
L.Ed.  1049;  14  S.  Ct.  78. 

Reasonable  diligence  as  well  as  good  faith  are  necessary  to  call  into  opera- 
tion the  powers  of  a  court  of  equity.  —  Woodmansee  v.  Williams,  68  Fed. 
489;  15  C.  C.  A.  520. 

Maxwell  v.  Kennedy,  8  How.  222;  Kittle  v.  Hall,  29  Fed.  511;  Piatt  v.  Vattier, 
9  Pet.  416;  Leggett  v.  Oil,  149  U.  S.  288;  McLaughlin  v.  Railway,  21  Fed.  574; 
Speidel  v.  Henrici,  15  Fed.  753;  The  Walter  M.  Fleming,  9  Fed.  474;  Lewis  v. 
Chapman,  3  Beav.  133;  Lane  v.  Locke,  150  U.  S.  193;  Keyes  v.  Mining,  158  U. 
S.  772. 

The  infringement  not  being  evident  either  from  the  name  or  character  of 
the  article,  and  neither  complainant  nor  its  assignor  having  actual  knowledge 
of  it,  although  the  article  was  sold  for  years,  does  not  constitute  laches  to 
prevent  recovery  by  accounting.  —  Imperial  v.  Stein,  77  Fed.  612;  23  C. 
C.  A.  353. 

This  suit  was  brought  about  two  and  one-half  months  before  the  expiration 
of  the  patent,  and  after  the  extensive  and  expensive  manufacture  of  Appleby 
machines  had  progressed  at  an  increasingly  active  rate  within  the  com- 
plainant's knowledge  and  observation  for  about  14  years.  All  the  adjudged 
cases  in  regard  to  laches  proceed  upon  the  inequitable  conduct  of  the  com- 
plainant, and  the  inequity  which  would  result  if  the  stale  claim  was  permitted 
to  be  enforced,  and  the  judgments  adverse  to  the  complainant  are  founded 
upon  the  fact  that  the  party  to  whom  the  laches  is  imputed  has  all  the  time 
"  knowledge  of  his  rights,  and  an  ample  opportunity  to  establish  them  in 


672 


THE   FIXED   LAW   OF    PATENTS 


733-734 


the  proper  forum ;  that,  by  reason  of  his  delay,  the  adverse  party  had  good 
reason  to  believe  that  the  alleged  rights  are  worthless  or  had  been  abandoned; 
and  that,  because  of  the  change  in  conditions  or  relations  during  this  period 
of  delay,  it  would  be  an  injustice  to  the  latter  to  permit  him  to  now  assert 
them."  A  further  reference  to  the  cited  cases  is  unnecessary,  as  Judge  Coxe 
has  cited  many  of  them  in  his  opinion  (82  Fed.  95).  —  Richardson  v.  Osborne, 
93  Fed.  828;  36  C.  C.  A.  610. 


LAW  ACTIONS 

General  Statement  §  733 
Directing  Verdict  §  734 
Findings  §  735 
Instructions  §  736 
Miscellaneous  Rules  §  737 


See —  Appeals  §§  131-2;  Damages 
§  285;  Defenses  §  306;  Evidence  §§ 
401-6;  Infringement  §  492;  Jurisdic- 
tion §  713;  Pleading  and  Practice  § 
788 


§  733-     General  Statement. 

The  subject  of  Jurisdiction  has  been  considered  under  that  title,  and  Sec. 
4919  need  not  be  here  repeated.  Under  the  old  practice,  prior  to  the  revision 
of  the  Patent  Act  in  1870-1872,  action  on  the  case  was  the  common  method 
of  procedure.  At  the  present  time  law  actions  arc  rare  except  in  the  Ninth 
Circuit.  Where  there  is  no  ground  for  equitable  relief,  with  the  present  rules 
as  to  damages,  and  in  the  absence  of  a  very  clear  measure  of  damages  — 
making  the  computation  little  more  than  a  simple  problem  in  arithmetic  — 
a  law  act, on  is  well-nigh  futile.  It  is,  furthermore,  the  observation  of  the 
writer  that  the  submission  of  facts  in  a  patent  case  to  a  jury  is  a  most 
hazardous  proceeding.  It  is  not  possible,  under  our  jury  system,  to  obtain 
a  panel  of  scientific  men. 

§  734.    Directing  Verdict. 

The  courts  of  the  United  States  have  no  power  to  order  a  peremptory 
nonsuit,  against  the  will  of  the  plaintiff.  —  Silsby  v.  Foote,  14  How.  218; 
14  L.  Ed.  394. 

Doe  v.  Grymes,  1  Pet.  469;  D'Wolf  v.  Raband,  1  Pet.  476;  Cram  v.  Morris, 
6  Pet.  598. 


Where  it  is  entirely  clear  that  the  plaintiff  cannot  recover,  it  is  proper 
to  give  such  a  direction,  but  not  otherwise.  —  Klein  v.  Russell,  86  U.  S.  433 ; 
22  L.  Ed.  116. 

In  our  opinion  this  was  a  question  of  fact  properly  to  be  left  for  determina- 
tion to  the  jury,  under  suitable  instructions  from  the  court  upon  the  rules  of 
law,  which  should  guide  them  to  their  verdict.  And  there  was  evidence  upon 
both  sides  of  the  issue  sufficient  to  require  that  it  should  be  weighed  and 
considered  by  the  jury  in  determination  of  the  question;  and  this  implies 
that,  if  it  had  been  submitted  to  the  jury  and  the  verdict  had  been  for  the 
plaintiffs,  it  would  have  been  the  duty  of  the  court  to  set  it  aside  as  not  sup- 
ported by  sufficient  evidence.  The  court  erred,  we  think,  in  withdrawing 
the  case  from  the  jury  as  it  did  by  directing  a  verdict  for  the  defendants.  — 
Keyes  v.  Grant,  118  U.  S.  25;  30  L.  Ed.  54;  6  S.  Ct.  974. 

Randall  v.  Baltimore,  109  U.  S.  478. 

A  motion  to  direct  a  verdict  is  broad  enough  to  cover  the  question  of  the 
invalidity  of  the  patent.  —  May  v.  Juneau,  137  U.  S.  408;  34  L.  Ed.  729; 
11  S.  Ct.  102. 


§  735  LAW    ACTIONS  673 

Brown  v.  Piper,  91  U.  S.  37;  Dunbar  v.  Myers,  94  U.  S.  187;  Slawson  v.  Grand, 
107  U.  S.  649;    Hendy  v.  Golden,  127  U.  S.  370. 

We  are  of  opinion  the  court  ought  to  have  directed  a  verdict  for  the  de- 
fendant on  the  ground  that  the  patent  was  void.  —  Fond  Du  Lac  v.  May,  137 
U.  S.  395;  34  L.  Ed.  714;   11  S.  Ct.  98. 

Note:  But  see  on  this  subject  whether  such  a  course  as  here  suggested  by 
Justice  Blatchford  is  justified  by  the  rule  laid  down  in  Silsby  v.  Foote,  14How. 
218;Doev.  Grymes,  1  Pet.  469;  D'Wolf  v.  Raband,  1  Pet,  476;  Cram  v. Morris,  6 
Pet.  598;  and  compare  Justice  Fuller's  remark  in  Haines  v.  McLaughlin,  135 
U.  S.  584,  saying.  "  all  questions  of  fact  are  exclusively  for  the  jury  to  decide. 
The  court  does  not  decide  nor  instruct  you  whether  any  device  was  or  was 
not  an  anticipation  of  plaintiff's  patent.  The  question  of  anticipation  is 
purely  a  question  of  fact  and  is  exclusively  for  the  jury  to  determine." 

In  view  of  the  fact  that  the  state  of  the  art  had  to  be  considered  in  this 
case,  the  broad  statement  of  Justice  Blatchford  seems  open  to  criticism. 

If  upon  the  state  of  art  as  shown  to  exist  by  the  prior  patents,  and  upon  a 
comparison  of  the  older  devices  with  those  described  in  the  patent  in  suit,  it 
should  appear  that  the  patented  claims  are  not  novel,  it  becomes  the  duty  of 
the  court  to  so  instruct  the  jury.  —  Market  v.  Rowley,  155  U.  S.  621;  39 
L.  Ed.  284;  15  S.  Ct.  224. 

Giant  v.  California,  98  U.  S.  126;  Heald  v.  Rice,  104  U.  S.  737;  Fond  Du  Lac  v. 
May,  137  U.  S.  396. 

Dissented  to  by  Justice  Brown,  and  rightly,  too,  as  I  think,  in  view  of 
Battin  v.  Taggart,  58  U.  S.  74;  Bischoff  v.  Wetherhead,  76  U.  S.  812. 

And  if,  therefore,  the  construction  of  plaintiff's  patent  was  for  the  deter- 
mination of  the  court,  either  on  the  face  of  the  patent,  or  on  the  face  of  the 
patent  in  connection  only  with  facts  of  such  nature  that  their  existence  and 
effect  could  not  be  reasonably  disputed,  it  follows  that  the  entire  issue  of 
infringement  was  practically  for  the  court,  however  it  might  have  been  with 
issues  of  novelty,  and  patentability,  or  other  issues  which  might  have  been 
raised  if  the  issue  of  infringement  could  properly  have  been  submitted  to  the 
jury,  or  determined  for  the  plaintiffs.  —  DeLoriea  v.  Whitney,  63  Fed.  611; 
11  C.  C.  A.  355. 

The  law  is  now  well  settled  that  the  trial  court  not  only  has  the  power, 
but  it  is  its  duty,  where  the  evidence  is  insufficient  to  support  a  verdict  in 
favor  of  the  plaintiff,  to  instruct  the  jury  to  find  a  verdict  in  favor  of  the 
defendant.  —  Overweight  v.  Improved,  94  Fed.  155;  36  C.  C.  A.  125. 

The  question  of  invention  is  ordinarily  for  the  jury,  subject  to  the  direc- 
tion of  the  court  concerning  the  construction  to  be  put  on  the  letters  patent. 
If,  however,  the  patent  in  suit  appears  to  the  court  to  be  plainly  invalid  for 
want  of  invention,  a  verdict  for  the  defendants  should  be  ordered.  The  pre- 
sumption of  validity  which  arises  from  the  patent  itself  does  not  necessarily 
require  the  submission  of  the  question  of  invention  to  the  jury.  —  Look  v. 
Smith,  148  Fed.  12;  78  C.  C.  A.  180. 

Heald  v.  Rice,  104  U.  S.  737;  May  v.  Juneau,  137  U.  S.  408;  Fond  Du  Lac  v. 
May,  137  U.  S.  395;    Market  v.  Rowley,  155  U.  S.  621. 

§  735-     Findings. 

In  a  suit  at  law  where  evidence  was  taken  and  the  question  of  infringement 
was  determined,  this  court  will  not  review  the  evidence  as  if  it  were  a  suit  in 
equity.  —  St.  Paul  v.  Starling,  140  U.  S.  184;  35  L.  Ed.  404;   11  S.  Ct.  803. 


674  THE    FIXED    LAW    OF    PATENTS  §§  736-737 

Upon  a  special  finding  upon  different  issues,  if  judgment  has  been  given  in 
favor  of  the  defendant,  if  the  finding  on  one  issue  is  unassailable,  no  error 
of  law  or  fact  in  respect  to  another  issue  can  be  deemed  harmful.  —  Keene  v. 
Barratt,  100  Fed.  590;  40  C.  C.  A.  571. 

§  736.     Instructions. 

It  is  not  error  to  refuse  to  instruct  as  to  an  abstract  question,  and  instruc- 
tions should  never  be  given  upon  hypothetical  statements  of  fact,  of  which 
there  is  no  evidence.  —  Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed. 
241;  10  S.  Ct.  876. 

Where  the  court  stated  the  facts  as  shown  by  the  evidence  as  to  an  anticipa- 
ting device,  and  then  left  the  matter  wholly  to  them,  there  was  no  error.  — 
Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed.  241;   10  S.  Ct.  876. 

Eastern  v.  Hope,  95  U.  S.  297. 

A  statement  by  the  court  to  the  jury  which  is  immaterial,  if  it  is  justified 
in  the  course  of  the  trial,  will  not  be  regarded  on  appeal.  —  Haines  v.  Mc- 
Laughlin, 135  U.  S.  584;  22  L.  Ed.  241;  10  S.  Ct.  876. 

At  the  trial  in  the  court  below,  the  presiding  judge  read  to  the  jury,  as 
a  part  of  his  charge,  an  extract  from  the  opinion  of  Judge  Colt  in  McDonald  v. 
Whitney,  24  Fed.  600.  Defendants  excepted.  We  are  of  opinion  that  this 
action  of  the  court  below  was  erroneous,  and  that  the  exception  was  well 
taken.  The  case  read  from  was  a  suit  between  different  parties  on  the  same 
patent.  In  the  extract  read  to  the  jury,  Judge  Colt  gave  his  views  upon  the 
questions  of  law  and  fact  involved.  Upon  these  issues  the  finding  of  another 
tribunal  in  a  case  between  other  parties  was  not  competent  evidence,  and 
should  not  have  been  called  to  the  attention  of  the  jury.  —  Arey  v.  De 
Loriea,  55  Fed.  323;  5  C.  C.  A.  116. 

It  was  the  duty  of  the  court  to  define  the  patented  invention  as  the  same 
was  expressed  in  the  language  of  the  claim.  —  Holmes  v.  Truman,  67  Fed. 
542;   14  C.  C.  A.  517. 

Rob.  Pat.  p.  378. 

§  737.    Miscellaneous  Rules. 

During  opening,  and  before  any  evidence  was  taken,  a  juror  became  ill. 
The  court  called  and  swore  a  new  juror.  On  exception,  held  that  as  such  was 
the  practice  in  the  state  where  the  circuit  was  held,  and  as  it  was  a  case 
where  no  serious  injury  could  result,  it  was  in  the  discretion  of  the  court.  — 
Silsby  v.  Foote,  14  How.  218;   14  L.  Ed.  394. 

When  the  essence  of  an  alleged  infringing  machine  is  not  in  dispute,  so 
that  the  question  of  infringement  by  it  turns  so  plainly  on  the  true  construc- 
tion of  the  patent  alleged  to  be  infringed  that  such  construction  being  ascer- 
tained or  not  in  dispute,  a  verdict  in  one  direction  ought  to  be  set  aside  as 
against  the  weight  of  evidence,  then,  under  the  rule  as  now  understood,  the 
court  ought  to  direct  a  verdict  in  the  other  direction ;  and  under  such  cir- 
cumstances, the  issue  of  infringement  is  essentially  the  same  as  that  of  the 
construction  of  the  patent  in  suit.  —  DeLoriea  v.  Whitney,  63  Fed.  611; 
11  C.  C.  A.  355. 

The  action  was  on  contract.  The  court  directed  non-suit  on  the  ground  that 
the  claims  of  the  patents  in  suit,  in  view  of  the  prior  art,  could  not  be  con- 


§  738  LETTERS    PATENT  675 

strued  to  cover  defendant's  acts.  Held:  The  present  case  is  at  law,  and  the 
question  is  not  one  of  equity  but  of  strict  contract  right.  The  contract  is 
explicit,  and,  in  our  opinion,  excludes  any  enquiry  into  the  prior  art  for  the 
purpose  of  limiting  the  scope  of  the  patent.  —  Leslie  v.  Standard,  98  Fed. 
827;  39  C.  C.  A.  314. 


LETTERS  PATENT. 

Statutory  Requirements  §  738 
General  Statement  §  739 
Construction  §  740 
Contract  Theory   §  741 
Defective  §  742 
Definition  §  743 
Monopoly  §  744 
Nature  of  Grant  §  745 
Property  Rights  in  §  746 


Scope  §  747 

Miscellaneous  Decisions  §  748 
See —  Assignment  §  149;  Copartner- 
ship §  270;  Joint  Invention  §  704; 
License  §  749;  Licensor  and  Licensee 
§  765;  Reissue  §  869;  Royalties  § 
897;  Title  §  925;  Unpatented  Inven- 
tions §  930 


§  738.     Statutory  Requirements. 

The  seal  heretofore  provided  for  the  Patent  Office  shall  be  the  seal  of  the 
Office,  with  which  letters  patent  and  papers  issued  from  the  Office  shall  be 
authenticated.    R.  S.  478. 

All  patents  shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by  the  Commissioner 
of  Patents,  and  they  shall  be  recorded,  together  with  the  specifications,  in 
the  Patent  Office  in  books  to  be  kept  for  that  purpose.    R.  S.  4883. 

Every  patent  shall  contain  a  short  title  or  description  of  the  invention 
or  discovery,  correctly  indicating  its  nature  and  design,  and  a  grant  to  the 
patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen  years,  of  the  exclusive 
right  to  make,  use,  and  vend  the  invention  or  discovery  throughout  the 
United  States  and  the  Territories  thereof,  referring  to  the  specifications  for 
the  particulars  thereof.  A  copy  of  the  specifications  and  drawings  shall  be 
affixed  to  the  patent  and  be  a  part  thereof.    R.  S.  4884. 

Every  patent  shall  issue  within  a  period  of  three  months  from  the  date 
of  the  payment  of  the  final  fee,  which  fee  shall  be  paid  not  later  than  six 
months  from  the  time  at  which  the  application  was  passed  and  allowed  and 
notice  thereof  was  sent  to  the  applicant  or  his  agent;  and  if  the  final  fee 
is  not  paid  within  that  period  the  patent  shall  be  withheld.  R.  S.  4885  as 
amended  May  23,  1908. 

As  thus  amended  the  section  differs  materially  from  the  section  as  origi- 
nally enacted  July  8,  1870.  The  section  as  affecting  all  patents  issued  prior 
to  May  23,  1908,  read  as  follows: 

Every  patent  shall  bear  date  as  of  a  day  not  later  than  six  months  from 
the  time  at  which  it  was  passed  and  allowed  and  notice  thereof  was  sent  to 
the  applicant  or  his  agent ;  and  if  the  final  fee  is  not  paid  within  that  period 
the  patent  shall  be  withheld. 

Patents  may  be  granted  and  issued  or  reissued  to  the  assignee  of  the 
inventor  or  discoverer;  but  the  assignment  must  first  be  entered  of  record 
in  the  Patent  Office.  And  in  all  cases  of  an  application  by  an  assignee  for 
the  issue  of  a  patent,  the  application  shall  be  made  and  the  specification  sworn 
to  by  the  inventor  or  discoverer;  and  in  all  cases  of  an  application  for  a 
reissue  of  any  patent,  the  application  must  be  made  and  the  corrected  speci- 
fication signed  by  the  inventor  or  discoverer,  if  he  is  living,  *  *  *  R.  S.  4895. 


676  THE    FIXED    LAW    OF    PATENTS  §§  739-742 

As  provided  by  Sec.  4896,  the  representative  of  a  deceased  inventor  or  an 
insane  inventor  may  make  the  necessary  application. 

§  739-     General  Statement. 

It  is  unnecessary  to  enter  upon  the  refinements  that  have  been  made  to 
establish  the  so-called  "  contract  theory,"  or  the  distinction  between  a  patent 
and  a  crown  monopoly,  or  even  the  distinction  between  a  patent  for  an  in- 
vention and  a  patent  for  land.  This  is  certain:  The  patent  for  an  invention 
is  a  grant  which  exists  only  by  reason  of  the  Constitution  and  the  acts  of 
Congress.  Every  right  and  every  ruling  must,  therefore,  root  back  in  the 
statute.  This  principle  is  fundamental.  Again,  this  we  know  to  be  the  fact: 
Whether  the  contract  theory  applies  or  not,  the  practical  question  in  deter- 
mining whether  the  inventor  has  performed  his  part  is  whether  he  has  com- 
plied with  the  terms  of  the  statute. 

§  740.     Construction. 

The  letters  patent  need  not  contain  a  recital  that  all  prerequisites  to  the 
grant  have  been  complied  with.  —  Railroad  v.  Stimpson,  14  Pet.  448;  10 
L.  Ed.  535. 

The  character  and  purpose  of  the  specification  as  compared  with  the 
English  system.  —  Hogg  v.  Emerson,  6  How.  437;  12  L.  Ed.  505. 

It  is  not,  of  course,  doubted  that  the  courts  in  construing  the  patent  as  all 
other  statutes,  must  have  regard  to  the  spirit  as  well  as  the  letter.  That 
simply  requires  that  the  courts  shall  ascertain  their  true  meaning,  but  when 
this  is  ascertained  the  applicant  for  a  patent  is  entitled  to  all  the  benefits 
which  these  statutes  thus  construed  give.  —  United  States  v.  Am.  Bell, 
167  U.  S.  224;  42  L.  Ed.  144;  17  S.  Ct.  809. 

§  741.     Contract  Theory. 

The  legislation  based  on  the  provision  (Const.  Act  I,  sec.  8)  regards  the  right 
of  property  in  the  inventor  as  the  medium  of  the  public  advantage  derived 
from  his  invention;  so  that  in  every  grant  of  the  limited  monopoly  two 
interests  are  involved,  that  of  the  public,  who  are  the  grantors,  and  that  of 
the  patentee.  There  are  thus  two  parties  to  any  application  for  a  patent,  and 
more,  when,  as  in  case  of  interfering  claim  or  patents,  other  private  interests 
compete  for  preference.  The  questions  of  fact  arising  in  this  field  find  their 
answers  in  every  department  of  physical  science,  in  every  branch  of  mechani- 
cal art;  the  questions  of  law,  necessary  to  be  applied  in  the  settlement  of  this 
class  of  public  and  private  rights,  have  founded  a  special  branch  of  technical 
jurisprudence.  —  Butterworth  v.  Hoe,  112  U.  S.  50;  28  L.  Ed.  656;  5  S.  Ct.  25. 

A  patent  is  a  contract  by  which  the  Government  secures  to  the  patentee 
the  exclusive  right  to  vend  and  use  his  invention  for  a  few  years,  in  consider- 
ation of  the  fact  he  has  perfected  and  described  it  and  has  granted  its  use  to 
the  public  forever  after.  The  general  rules  for  the  interpretation  of  grants 
and  contracts  govern  its  construction.  —  National  v.  Interchangeable,  106 
Fed.  693;  45  C.  C.  A.  544. 

§  742.    Defective. 

In  this  case  the  patent  was  issued  in  the  regular  process  of  business.  Sub- 
sequently and  after  infringement  and  after  this  suit  was  brought,  it  was 
discovered  that  the  signature  of  the  acting  or  assistant  Secretary  of  the 
Interior  had,  by  accident,  been  omitted.    This  defect  was  sought  to  be  cured 


§§  743-744  LETTERS   PATENT  677 

by  having  the  signature  supplied  by  the  secretary  who  had  been  succeeded 
in  that  office.  The  defense  had  left  complainant  to  his  proofs  as  to  the  grant 
of  the  letters,  and  therefore  set  up  the  defense  that  the  patent  was  invalid. 
Held,  that  such  error  defeated  the  patent ;  that  the  same  might  be  remedied 
by  proper  proceeding,  but  not  by  having  the  signature  supplied;  that  no 
recovery  for  infringement  prior  to  the  correction  could  be  had,  and  that 
under  correction  the  grant  could  not  relate  back  to  the  date  of  its  issue.  — 
Marsh  v.  Nichols,  128  U.  S.  605;  32  L.  Ed.  538;  9  S.  Ct.  168. 

Note:  While  it  is  not  the  author's  purpose  to  criticise  the  decisions  of  the 
great  court  at  Washington,  it  would  seem,  that  if  the  court  had  considered  the 
fact  of  notice  which  the  issue  and  record  of  the  grant  gave,  and  the  fact  that 
the  defendant  was  a  tort  feasor,  trespassing  under  such  notice,  it  should  have 
held  that,  notwithstanding  the  general  rule,  the  defendant  was  estopped  to 
question  the  regularity  of  the  method  by  which  the  error  was  corrected. 

A  mistake  in  issuance  cannot  be  corrected  by  supplying  the  omitted  signa- 
ture after  issue,  and  certainly  not  after  such  officer  had  gone  out  of  office.  — 
Marsh  v.  Nichols,  128  U.  S.  605;  32  L.  Ed.  538;  9  St.  168. 

Where  the  defect  in  the  patent  is  apparent  on  its  face,  it  may  be  attacked 
without  special  pleading  setting  up  the  specific  acts  which  defeat  the  instru- 
ment. —  Marsh  v.  Nichols,  128  U.  S.  605;  32  L.  Ed.  538;  9  S.  Ct.  168. 

Eureka  v.  Bailey,  78  U.  S.  492. 

The  patent,  as  originally  issued  being  in  every  respect  a  regularly  executed 
document,  and  the  statute  providing  for  no  subsequent  alteration  thereof  by 
the  patent  office  (except  in  cases  of  reissue,  which  this  is  not)  the  action  of 
the  commissioner  in  endorsing  it  with  an  attempted  "  correction,"  was 
without  jurisdiction  and  wholly  void.  —  Edison  v.  U.  S.  52  Fed.  300;  3 
C.  C.  A.  83. 

§  743.     Definition. 

The  meaning  of  the  words  "  patent  "  and  "  patented  "  as  used  in  section 
4887,  is  not  difficult  to  ascertain.  The  word  "  patent,"  originally  a  qualifying 
adjective  applied  to  the  "  open  letters  "  by  which  a  sovereign  grants  an  estate 
or  privilege,  has  come  to  mean,  in  connection  with  the  so-called  patent  laws 
of  the  United  States,  as  well  as  in  common  parlance,  the  exclusive  privilege 
itself  granted  by  the  sovereign  authority  to  an  inventor  with  respect  to  his 
invention.  What  the  nature  and  extent  of  the  exclusive  privilege  thus 
granted  by  the  constitution  and  laws  of  the  United  States  may  be,  depends 
upon  the  terms  of  the  act  of  Congress  providing  for  and  regulating  the  same  ; 
and,  when  this  section  4887  speaks  of  an  invention  which  has  been  previously 
patented  in  a  foreign  country,  it  obviously  means  an  invention  with  respect 
to  which  the  inventor  has  received  from  the  sovereign  authority  of  such 
country  such  exclusive  privilege  as  its  laws  provide  for  or  sanction.  —  Atlas 
v.  Simonds,  102  Fed.  643;  42  C.  C.  A.  398. 

§  744.     Monopoly. 

His  exclusive  right  does  not  rest  alone  upon  his  discovery,  but  also  upon 
the  legal  sanctions  which  have  been  given  to  it,  and  the  forms  of  law  with 
which  it  has  been  clothed.  —  Shaw  v.  Cooper,  7  Pet.  292;  8  L.  Ed.  689. 

The  entire  question  of  a  monopoly  founded  upon  a  patent  or  a  series  of 
patents  in  relation  to  recent  federal  legislation  against  restraint  of  commerce 
and  trade  has  been  so  fully  reviewed  by  the  Supreme  Court  in  the  Harrow 


678  THE   FIXED   LAW   OF   PATENTS  §  744 

Case  that  to  excerpt  from  it  would  result  in  quoting  substantially  the  entire 
opinion.    A  few  of  the  salient  points  of  that  case  may  be  summarized: 

1.  That  the  findings  of  a  state  court  in  an  equity  suit  are  conclusive  upon 
the  Supreme  Court. 

2.  That  the  Act  of  July  2,  1890,  may  be  set  up  as  a  defense  by  an  in- 
dividual. 

3.  That  ordinarily,  restrictive  provisions  in  the  license  or  sale  of  a  patent 
are  not  in  contravention  of  that  act. 

4.  That  the  owner  of  a  patent  may  sell,  keep,  use,  license,  or  refuse  to 
use  a  patent,  as  he  pleases ;  this  the  monopoly  grants. 

5.  That  a  state  has  the  right  "to  regulate  its  internal  affairs,  including  the 
manufacture,  use,  or  sale  of  an  article  subject  to  a  patent. 

6.  That  common  carriers  employing  patented  means  in  its  business  must 
recognize  the  paramountcy  of  their  duties  under  their  franchises,  and  cannot 
make  a  patent  monopoly,  if  used,  a  means  for  the  evasion  of  duty  to  the 
public. 

7.  That  notwithstanding  these  limitations  (5  and  6),  the  general  rule  is 
absolute  freedom  in  use,  sale,  or  license;  since  the  patent  is  a  monopoly 
created  under  the  constitution  and  statute  in  contravention  of  the  common- 
law  right. 

8.  That  reasonable  and  legal  conditions  and  restrictions  put  upon  an 
assignee  or  licensee  are  not  within  the  purview  of  the  interstate  commerce 
act. 

9.  That  license  or  sale  conditions  fixing  prices  of  a  patented  article  are 
not  in  violation  of  that  act. 

It  is  believed  that  the  fundamental  principle  underlying  this  decision  and 
the  others  quoted  from  in  this  section  is  this:  When  the  essence  of  the  act 
resides  within  the  monopoly  of  the  patent,  such  act  is  a  conceded,  limited 
privilege ;  when  the  essence  of  the  act  resides  without  the  monopoly  of  the 
patent,  and  the  monopoly  of  the  patent  is  made  a  cover  for  combinations 
and  machinations  contrary  to  law,  the  patent  grant  will  not  avail  the  wrong- 
doer. —  Bement  v.  National,  186  U.  S.  70;  46  L.  Ed.  1058;  22  S.  Ct.  747. 


It  is  manifest,  as  well  from  the  contract  as  from  the  proofs  outside  of  it, 
that  the  purpose  of  the  parties  was  to  form  a  combination  between  the  various 
manufacturers  to  prevent  competition  in  business  and  enhance  prices.  The 
corporation  provided  to  hold  the  legal  title  of  the  several  patents,  is  merely  an 
instrument  to  effect  this  object.  The  fact  that  the  property  involved  is 
covered  by  letters  patent  is  urged  as  a  justification;  but  we  do  not  see  how 
any  importance  can  be  attributed  to  this  fact.  Patents  confer  a  monopoly 
as  respects  the  property  covered  by  them,  but  they  confer  no  right  upon 
the  owners  of  several  distinct  patents  to  combine  for  the  purpose  of  restrain- 
ing competition  and  trade.  Patented  property  does  not  differ  in  this  respect 
from  any  other.  The  fact  that  one  patentee  may  possess  himself  of  several 
patents,  and  thus  increase  his  monopoly,  affords  no  support  for  an  argument 
in  favor  of  a  combination  by  several  distinct  owners  of  such  property  to 
restrain  manufacture,  control  sales  and  enhance  prices.  Such  combinations 
are  conspiracies  against  the  public  interests,  and  abuses  of  patent  privileges. 
The  object  of  these  privileges  is  to  promote  the  public  benefit,  as  well  as  to 
reward  inventors.  The  suggestion  that  the  contract  is  justified  by  the  situa- 
tion of  the  parties  —  their  exposure  to  litigation  —  is  entitled  to  no  greater 
weight.  Patentees  may  compose  their  differences,  as  the  owners  of  other 
property  may,  but  they  cannot  make  the  occasion  an  excuse  or  cloak  for  the 
creation  of  monopolies  to  the  public  disadvantage.  —  National  v.  Hench,  83 
Fed.  36:  27  C.  C.  A.  349. 


§  744  LETTERS    PATENT  679 

Nestor  v.  Brewing  Co.  161  Pa.  St.  473;  Carbon  Co.  v.  MoMiUin,  119  N.  Y.  46; 
Morris  v.  Barclay,  68  Pa.  St.  173;  Distilling  v.  People,  41  N.  E.  1S8;  National  v. 
Quick,  67  Fed.  130. 

The  parties  had  entered  into  a  monopoly  agreement  which  practically 
closed  the  art  to  every  other  person.  The  policy  was  to  be  to  "  tire  out  "  as 
well  as  to  defend  the  patents.  Held:  That  such  a  contract  is  not  void  as 
against  public  policy,  in  that  it  tends  to  create  a  monopoly,  has  been  decided 
in  the  case  of  Bement  v.  National,  188  U.  S.  70.  —  U.  S.  Consolidated  v. 
Griffin,  126  Fed.  364;  61  C.  C.  A.  334. 

We  do  not  look  on  this  as  a  contract  in  restraint  of  trade.  It  binds  no  one 
to  stay  out  of  the  trade.  At  most,  it  is  an  agreement,  merely,  that  if  Pungs 
renews  his  connection  with  the  trade,  he  shall  return  the  consideration 
received.  He  has  merely  put  himself  where,  without  putting  any  binding 
restraint  on  his  inventive  faculties,  he  will  realize,  for  the  time  being,  on  what 
he  has  already  invented.  —  American  v.  Pungs,  141  Fed.  923;  73  C.  C.  A. 
157. 

Harrison  v.  Glucose,  116  Fed.  304;   Morse  v.  Morse,  103  Mass.  73. 

That  articles  made  under  patents  may  be  the  subject  of  contracts  by  which 
their  use  and  price  in  subsales  may  be  controlled  by  the  patentee,  and  that 
such  contracts,  if  otherwise  valid,  are  not  within  the  terms  of  the  act  of 
Congress  against  restraints  of  interstate  commerce  or  the  rules  of  the  com- 
merce law  against  monopolies  and  restraints  of  trade,  is  now  well  settled.  — 
Park  v.  Hartman,  153  Fed.  24;  82  C.  C.  A.  158. 

Heaton  v.  Eureka,  77  Fed.  286;  Dickerson  v.  Tinling,  84  Fed.  192;  Edison  v. 
Kaufman,  105  Fed.  960;  Edison  v.  Pike,  116  Fed.  863;  Rupp  v.  Elliott,  131  Fed. 
730;   Victor  v.  The  Fair,  123  Fed.  428;   Bement  v.  National,  186  U.  S.  70. 

That  an  article  which  is  the  product  of  a  patent  is  not  an  ordinary  article 
of  commerce,  see  —  Indiana  v.  Case,  154  Fed.  365;  83  C.  C.  A.  343. 

The  rule  in  U.  S.  Bell  Tel.  Co.  167  U.  S.  224,  followed.  —  Indiana  v.  Case, 
154  Fed.  365;  83  C.  C.  A.  343. 

Congress  having  created  the  patent  law,  has  the  right  to  repeal  or  modify 
it,  in  whole  or  in  part,  directly  or  by  necessary  implication.  The  Sherman  law 
contains  no  reference  to  the  patent  law.  Each  was  passed  under  a  separate 
and  distinct  constitutional  grant  of  power;  each  was  passed  professedly  to 
advantage  the  public;  the  necessary  implication  in  not  one  iota  was  taken 
away  from  the  patent  law ;  the  necessary  implication  is  that  patented  articles, 
unless  or  until  they  are  released  by  the  owner  of  the  patent  from  the  dominion 
of  his  monopoly,  are  not  articles  of  trade  or  commerce  among  the  several 
states.  —  Rubber  Tire  v.  Milwaukee,  154  Fed.  358;  83  C.  C.  A.  336. 

The  only  grant  to  the  patentee  was  the  right  to  exclude  others,  to  have  and 
to  hold  for  himself  and  his  assigns  a  monopoly,  not  a  right  limited  or  con- 
ditioned according  to  the  sentiment  of  judges,  but  an  absolute  monopoly 
constitutionally  conferred  by  the  sovereign  lawmakers.  Over  and  above  an 
absolute  monopoly  created  by  law,  how  can  there  be  a  further  and  unlawful 
monopoly  in  the  same  thing?  If  plaintiff  were  the  sole  maker  of  Grant  tires, 
how  could  plaintiff's  control  of  prices  and  output  injure  the  people,  deprive 
them  of  something  to  which  they  have  a  right?  Is  a  greater  injury  or  de- 
privation inflicted,  if  plaintiff  authorizes  a  combination  or  pool  to  do  what 
plaintiff  can  do  directly?  —  Rubber  Tire  v.  Milwaukee,  154  Fed.  358;  83 
C.  C.  A.  336. 


680  THE    FIXED    LAW    OF    PATENTS  §  745 

The  right  of  an  owner  of  a  patent  to  reserve  to  himself  as  a  part  of  his 
monopoly  the  control  of  the  price  at  which  dealers  may  sell  the  patented 
product  to  users  is  unquestioned.  —  The  Fair  v.  Dover,  166  Fed.  117; 
C.  C.  A. 

Victors.  The  Fair,  123  Fed.  424;  Fuller  v.  Berger,  120  Fed.  274;  Rubber  Tire 
v.  Milwaukee,  154  Fed.  358;  Indiana  v.  Case,  154  Fed.  365;  Continental  v.  East- 
ern, 210  U.  S.  405;  Bobbs-Merrill  v.  Straus,  210  U.  S.  339;  Globe  v.  Walker,  210 
U.  S.  356. 


§  745.    Nature  of  Grant. 

Letters  patent  are  not  to  be  regarded  as  monopolies,  created  by  the 
executive  authority  at  the  expense  and  to  the  prejudice  of  all  the  community 
except  the  persons  therein  named  as  patentees,  but  as  public  franchises 
granted  to  the  inventor  of  new  and  useful  improvements  for  the  purpose  of 
securing  to  others  as  such  inventors,  for  the  limited  term  therein  mentioned, 
the  exclusive  right  and  liberty  to  make  and  use  and  vend  to  others 
to  be  used  their  own  inventions,  as  tending  to  promote  the  progress 
of  science  and  the  useful  arts,  and  as  matter  of  compensation  to  the  inventors 
for  their  labor,  toil  and  expense  in  making  the  inventions,  and  reducing  the 
same  to  practice  for  the  public  benefit,  as  contemplated  by  the  Constitution 
and  sanctioned  by  the  laws  of  Congress.  —  Seymour  v.  Osborne,  78  U.  S. 
516;  20  L.  Ed.  33. 

The  authority  by  which  the  patent  issues  is  that  of  the  United  States  of 
America.  The  seal  which  is  used  is  the  seal  of  the  Patent  Office,  and  that  was 
created  by  Congressional  enactment.  It  is  signed  by  the  Secretary  of  the 
Interior,  and  the  Commissioner  of  Patents,  who  also  countersigns  it,  is  an 
officerof  that  Department.  The  patent,  then,  is  not  the  exercise  of  any  prerog- 
ative power  or  discretion  by  the  President,  or  by  any  other  officer  of  the 
Government,  but  it  is  the  result  of  a  course  of  proceeding,  quasi  judicial  in  its 
character,  and  is  not  subject  to  be  repealed  or  revoked  by  the  President,  the 
Secretarv  of  the  Interior,  or  the  Commissioner  of  Patents,  when  once  issued. 
—  United  States  v.  Am.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

U.  S.  v.  Schurz,  102  U.  S.  378. 

Charters  and  patents  authenticating  grants  of  personal  privileges  were  in 
the  earlier  days  of  the  English  Government  made  by  the  Crown.  They  were 
supposed  to  emanate  directly  from  the  King,  and  were  not  issued  under  any 
authority  given  by  Acts  of  Parliament,  nor  were  they  regulated  by  any 
statutes.  Being,  therefore,  in  their  origin  an  exercise  of  his  personal  preroga- 
tive, the  power  of  working  them,  so  far  as  they  could  be  worked  at  all,  was 
in  the  King,  and  was  exercised  by  him  as  a  personal  privilege.  But  whatever 
may  have  been  the  course  of  procedure  in  English  jurisprudence,  it  can  have 
but  little  force  in  limiting  or  restraining  the  measures  by  which  the  govern- 
ment of  the  United  States  shall  have  a  remedy  for  an  imposition  upon  it 
or  its  officers  in  the  procurement  or  issue  of  a  patent.  We  have  no  King  in 
this  country;  we  have  had  no  prerogative  right  of  the  Crown;  and  letters 
patent  whether  for  inventions  or  for  grants  of  land,  issue  not  from  the  Presi- 
dent, but  from  the  United  States.  The  President  has  no  prerogative  in  the 
matter.  He  has  no  right  to  issue  a  patent,  and,  though  it  is  the  custom  for 
patents  for  lands  to  be  signed  by  him,  they  are  of  no  avail  until  the  proper 
seal  of  the  Government  is  affixed  to  them.  Indeed,  a  recent  Act  authorizes 
the  appointment  of  a  clerk  for  the  special  purpose  of  signing  the  President's 
name  to  patents  of  that  character.  And  so  far  as  patents  for  inventions  are 
concerned,  since  the  Act  of  1870,  they  are  issued  without  his  signature  and 


§  746  LETTERS    PATENT  681 

without  his  name  or  his  style  of  office  being  mentioned  in  them.  —  United 
States  v.  Am.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

The  monopoly  thus  granted  is  one  entire  thing  and  cannot  be  divided  into 
parts  except  as  authorized  by  law.  —  Waterman  v.  Mackenzie,  138  U.  S. 
252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

Compared  with  Patents  for  Land,  see  United  States  v.  Am.  Bell,  167  U. 
S.  224,  and  cases  cited;  42  L.  Ed.  144;  17  S.  Ct.  809. 

The  cases  declare  that  he  receives  nothing  from  the  law  that  he  did  not  have 
before,  and  that  the  only  effect  of  the  patent  is  to  restrain  others  from  manu- 
facturing and  using  that  which  he  has  patented.  Wherever  this  court  has 
had  occasion  to  speak,  it  has  decided  that  an  inventor  receives  from  a  patent 
the  right  to  exclude  others  from  its  use  for  the  time  prescribed  by  the  statute. 
—  Continental  v.  Eastern,  210  U.  S.  405;  51  L.  Ed.  922;  28  S.  Ct.  748. 

Root  v.  Railway,  105  U.  S.  189;  U.  S.  v.  Bell  Telephone,  167  U.  S.  224;  Grant 
v.  Raymond,  6  Pet.  242;  Bloomer  v.  McQuewan,  14  How.  539;  Patterson  v. 
Kentucky,  97  U.  S.  501;  Wilson  v.  Rousseau,  4  How.  646;  Seymour  v.  Osborne, 
11  Wall.  516;  Cammeyer  v.  Newton,  94  U.  S.  225;  Densmore  v.  Scofield,  102 
U.  S.  375;  Bement  v.  National,  186  U.  S.  70;  Heaton  v.  Eureka,  77  Fed.  294; 
Hoe  v.  Knapp,  27  Fed.  204. 

Under  its  constitutional  right  to  legislate  for  the  promotion  of  the  useful 
arts,  Congress  passed  the  patent  statutes.  The  public  policy  thereby  declared 
is  this:  Inventive  minds  may  fail  to  produce  many  useful  things  that  they 
would  produce  if  stimulated  by  the  promise  of  a  substantial  reward ;  what  is 
produced  is  the  property  of  the  inventor ;  he  and  his  heirs  and  assignees  may 
hold  it  as  a  secret  till  the  end  of  time;  the  public  would  be  largely  benefited 
by  obtaining  conveyances  of  these  new  commodities;  so  the  people  through 
their  representatives  say  to  the  inventor :  Deed  us  your  property,  possession 
to  be  yielded  at  the  end  of  17  years,  and  in  the  mean  time  we  will  protect  you 
absolutely  in  the  right  to  exclude  everyone  from  making,  using,  or  vending 
the  thing  patented,  without  your  permission.  Congress  put  no  limitations, 
excepting  time,  upon  the  monopoly.  Courts  can  create  none  without  legis- 
lating. The  monopoly  is  of  the  invention,  the  mental  concept  as  distinguished 
from  the  materials  that  are  brought  together  to  give  it  a  body.  Use  of  the 
materials  may  be  enjoined  as  injurious  to  the  public;  but  that  does  not  invade 
the  monopoly.  Use  of  the  invention  cannot  be  had  except  on  the  inventor's 
terms.  Without  paying  or  doing  whatever  he  exacts,  no  one  can  be  exempted 
from  his  right  to  exclude.  Whatever  the  terms,  courts  will  enforce  them, 
provided  only  that  the  licensee  is  not  thereby  required  to  violate  some  law 
outside  of  the  patent  law,  like  the  doing  of  murder  or  arson.  Does 
the  requirement  that  the  licensee  join  other  licensees  in  a  combina- 
tion or  pool  to  control  the  prices  and  output  of  an  innocuous  patented 
article  violate  the  Sherman  law?  We  cannot  dispose  of  the  question  on 
the  authority  of  Bement  v.  National,  186  U.  S.  70,  for  according  to  our 
reading  the  question  was  expressly  excepted  from  the  decision.  —  Rubber 
Tire  v.  Milwaukee,  154  Fed.  358;  83  C.  C.  A.  336. 

Bloomer  v.  McQuewan,  14  How.  539;  U.  S.  v.  Bell  Tel.,  167  U.  S.  224;  Bement 
v.  National,  186  U.  S.  70;  Good  v.  Deland,  121  N.  Y.  1;  Fuller  v.  Berger,  120 
Fed.  274;    Victor  v.  The  Fair,  123  Fed.  424;    Rupp  v.  Elliott,  131  Fed.  730. 

§  746.     Property  Rights  in. 

Inventions  secured  by  letters  patent  are  property  in  the  holder  of  the 
patent,  and  as  such  are  as  much  entitled  to  protection  as  any  other  property, 
consisting  of  a  franchise,  during  the  time  for  which  the  franchise  or  the 


682  THE    FIXED    LAW    OF    PATENTS  §  746 

exclusive  right  is  granted.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed. 
33. 

Right  of  parties  with  reference  to  a  patented  invention  will  be  construed 
according  to  the  act  under  which  the  patent  was  granted.  —  Brown  v.  Piper, 
91  U.  S.  37;  23  L.  Ed.  200. 

The  right  of  property  in  a  patented  invention  is  as  much  entitled  to  pro- 
tection as  any  other  right.  —  Cammeyer  v.  Newton,  94  U.  S.  225;  24  L. 
Ed.  72. 

Seymour  v.  Osborne,  11  Wall.  516;    16  St.  at  L.  201. 

Patents  rightfully  issued  are  property,  and  are  surrounded  by  the  same 
rights  and  sanctions  which  attend  all  other  property.  Patentees  as  a  class 
are  public  benefactors,  and  their  rights  should  be  protected.  But  the  public 
has  rights  also.  The  rights  of  both  should  be  upheld  and  enforced  by  an 
equally  firm  hand,  wherever  they  come  under  judicial  consideration.  —  Dens- 
more  v.  Scofield,  102  U.  S.  375;  26  L.  Ed.  214. 

The  property  right  of  a  patentee  is,  after  all,  but  a  property  right,  and 
subject  as  is  all  other  property,  to  the  general  law  of  the  land.  We  may  also 
concede  that  contracts  respecting  the  use  of  inventions  and  discoveries  are, 
like  all  other  contracts,  subject  to  the  limitations  imposed  by  definite  prin- 
ciples of  public  policy. 

Neither  the  patentee,  nor  the  machine  involving  his  invention,  nor  a  license 
for  use,  can  be  exempted  from  the  liabilities  and  regulations  which,  in  public 
interest,  attach  to  all  persons  and  property  under  the  general  law  of  the 
land.  Neither  is  the  right  to  make  or  sell  or  use  a  patented  invention  or 
process  free  from  the  restraints  imposed  by  the  police  power  in  the  states. 
—  Heaton  v.  Eureka,  77  Fed.  288;  25  C.  C.  A.  267. 

Missouri  v.  Bell  Tel.  Co.,  23  Fed.  539;  State  v.  Delaware,  47  Fed.  633;  State  v. 
Delaware,  50  Fed.  677;  Patterson  v.  Kentucky,  97  U.  S.  501;  Vasuini  v.  Paine, 
1  Har.  65;  Registering  Co.  v.  Sampson,  L.  R.  19  Eq.  462. 

If  he  see  fit,  he  may  reserve  to  himself  the  exclusive  use  of  his  invention 
or  discovery.  If  he  will  neither  use  his  device,  nor  permit  others  to  use  it, 
he  has  but  suppressed  his  own.  That  the  grant  is  made  upon  the  reasonable 
expectation  that  he  will  either  put  his  invention  to  practical  use,  or  permit 
others  to  avail  themselves  of  it  upon  reasonable  terms,  is  doubtless  true. 
This  expectation  is  based  alone  upon  the  supposition  that  the  patentee's 
interest  will  induce  him  to  use,  or  let  others  use,  his  invention.  The  public 
has  retained  no  other  security  to  enforce  such  expectations.  A  suppression 
can  endure  but  for  the  life  of  the  patent,  and  the  disclosure  he  has  made  will 
enable  all  to  enjoy  the  fruit  of  his  genius.  His  title  is  exclusive  and  so  clearly 
within  the  constitutional  provisions  in  respect  of  private  property  that  he 
is  neither  bound  to  use  his  discovery  himself,  nor  permit  others  to  use  it. 
The  dictum  found  in  Hoe  v.  Knapp,  27  Fed.  204,  is  not  supported  by  reason  or 
authority.  —  Heaton  v.  Eureka,  77  Fed.  288;  25  C.  C.  A.  267. 

Wilson  v.  Rousseau,  4  How.  674;  Pitts  v.  Wemple,  Fed.  Cas.  No.  11,194; 
Grant  v.  Raymond,  6  Pet.  218;  U.  S.  v.  Bell  Tel.  29 'Fed.  17;  Consolidated  v. 
Coombs,  39  Fed.  805;  Campbell  v.  Manhattan,  49  Fed.  935. 

Whether  his  patent  be  good  or  bad,  no  one  has  the  right  to  claim  the 
privilege  of  making  and  selling  his  goods  as  though  made  under  it  and  there- 
by depriving  the  owner  of  such  credit  as  belongs  to  it,  and  inducing  the  public 
to  suppose  that  the  seller  has  title  to  the  invention  supposed  to  be  embodied 
in  the  subject  of  the  sale.  —  Stimpson  v.  Stimpson,  104  Fed.  893;  44  C.  C. 
A.  241. 


§§  747-748 


LICENSE 


683 


§  747.    Scope  of. 

It  was  authoritatively  declared  in  James  v.  Campbell,  104  U.  S.  356,  that 
the  right  of  the  patentee  was  exclusive  of  the  government  as  well  as  of  all 
others.  —  Hollister  v.  Benedict,  113  U.  S.  59;  28  L.  Ed.  901;  5  S.  Ct.  717. 

The  inventor's  right  to  make,  use,  and  vend  his  device  does  not  come  from 
the  patent  law;  it  is  his  natural  right.  The  government's  grant  to  the 
patentee  and  his  assigns  is  the  right  to  exclude  others  from  practising  the 
invention.  As  Mr.  Chief  Justice  Taney  said  in  Boomer  v.  McQuewan,  14 
How.  539:  "  The  franchise  which  the  patent  grants  consists  altogether  in 
the  right  to  exclude  every  one  from  making,  using  or  vending  the  thing 
patented,  without  permission  of  the  patentee.  This  is  all  he  obtains  by  the 
patent."  —  Fuller  v.  Berger,  120  Fed.  274;  56  C.  C.  A.  588. 


§  748.     Miscellaneous  Decisions. 

Delivery  is  not  necessary  to  the  validity  of  letters  patent. 
Madison,  1  Cranch,  137;  2  L.  Ed.  60. 


Marbury  v. 


Power  to  grant  letters  patent  is  conferred  by  law  upon  the  Commissioner 
of  Patents,  and  when  that  power  has  been  lawfully  exercised,  and  a  patent 
has  been  duly  granted,  it  is  of  itself  prima  facie  evidence  that  the  patentee  is 
the  original  and  first  inventor  of  that  which  is  therein  described  and  secured 
to  him  as  his  invention.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

The  power  therefore,  (in  view  of  Art.  4,  sec.  3,  par.  2)  to  issue  a  patent  for 
an  invention,  and  the  authority  to  issue  such  an  instrument  for  a  grant  of 
land,  emanate  from  the  same  source,  and  although  exercised  by  different 
bureaux  or  officers  under  the  Government,  are  of  the  same  nature,  character 
and  validity,  and  imply  in  each  case  the  exercise  of  the  power  of  government 
according  to  modes  regulated  by  Acts  of  Congress.  —  United  States  v.  Am. 
Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

The  full  six  months  are  allowed  by  the  statute  to  the  applicant,  and  it 
can  hardly  be  supposed  that  Congress  intended  that  this  period  could  be  cut 
short  by  the  exigencies  of  the  Patent  Office.  Again,  the  statute  declares 
that,  if  the  final  fee  is  not  paid  within  the  six  months,  the  patent  shall  be  with- 
held, but  it  does  not  declare  that,  if  not  dated  as  directed,  the  patent  shall 
not  issue,  or,  if  issued,  shall  be  void.  —  Western  v.  North,  135  Fed.  79;  67 
C.  C.  A.  553. 


LICENSE. 

Statutory  Provision  §  749 

General  Distinction  from  Assignment 

§750 

Assignment  §  751  (see  §  149) 

Construction  of  §  752 

Contract  §  753 

Estoppel  §  754  (see  §  381) 

Forfeiture  §  755 

Implied  §  756 

Machine  §  757  (see  §  768) 

Non-Assignable  §  758 

Parol  §  759 

Royalties  .?  760  (see  §  897) 


Scope  §  761 
Termination  of  §  762 
Territorial  §  763 
Miscellaneous  §  764 
See  —  Administrator   §  40;    Assign- 
ment  §    165;     Copartnership   §   270; 
Corporations  §  271;    Damages  §  292; 
Defenses  §  311;    Employer  and  Em- 
ployee §  366;    Estoppel  §   384;    In- 
fringement §§  509-13;    Injunction  § 
569;     Jurisdiction    §    722;     Licensor 
and  Licensee  §  765;    Royalties  §  897; 
Sale  of  Patented  Article  §  899 


684  THE    FIXED    LAW    OF    PATENTS  §§  749-751 

§  749.     Statutory  Provision. 

The  statute  does  not  use  the  term  license.    By  the  terms  of  sec.  4898 

Every  patent  or  any  interest  therein  shall  be  assignable  in  law  by  an  in- 
strument in  writing,  and  the  patentee  or  his  assigns  or  legal  representatives 
may,  in  like  manner,  grant  and  convey  an  exclusive  right  under  his  patent  to 
the  whole  or  any  specified  part  of  the  United  States. 

And  sec.  4899  makes  the  following  provision  as  to  purchase  before  appli- 
cation : 

Every  person  who  purchases  of  the  inventor  or  discoverer,  or,  with  his 
knowledge  and  consent,  constructs  any  newly  invented  or  discovered  machine, 
or  other  patentable  article,  prior  to  the  application  by  the  inventor  or  dis- 
coverer for  a  patent,  or  who  sells  or  uses  one  so  constructed,  shall  have  the 
right  to  use,  and  vend  to  others  to  be  used,  the  specific  thing  so  made  or  pur- 
chased, without  liability  therefor. 

§  750.     General  Distinction  from  an  Assignment. 

The  patentee  or  his  assigns  may,  by  instrument  in  writing,  assign,  grant 
and  convey,  either  (1)  the  whole  patent  comprising  the  exclusive  right  to 
make,  use  and  vend  the  invention  throughout  the  United  States;  or,  (2) 
an  undivided  part  or  share  of  that  exclusive  right;  or,  (3)  the  exclusive  right 
under  the  patent  within  and  throughout  a  specified  part  of  the  United  States. 
(R.  S.  4898.)  A  transfer  of  either  of  these  three  kinds  of  interests  is  an  assign- 
ment properly  speaking,  and  vests  in  the  assignee  a  title  in  so  much  of  the 
patent  itself,  with  a  right  to  sue  infringers;  in  the  second  place  conjointly 
with  the  assignor,  in  the  first  and  third  cases  in  the  name  of  the  assignee  alone. 
Any  assignment  or  transfer  short  of  one  of  these,  is  a  mere  license,  giving  the 
licensee  no  title  in  the  patent;  and  no  right  to  sue  at  law  in  his  own  name 
for  infringement.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923; 
11  S.  Ct.  334. 

Gayler  v.  Wilder,  51  U.  S.  477;   Moore  v.  Marsh,  74  U.  S.  515. 

§  751.     Assignment. 

An  assignment  of  a  right  to  make,  use  and  sell  for  a  limited  time  in  a 
limited  territory,  in  the  absence  of  express  words,  does  not  pass  to  an  executor 
or  administrator.  —  Oliver  v.  Rumford,  109  U.  S.  75;  27  L.  Ed.  862;  3 
S.  Ct.  61. 

Troy  v.  Corning,  14  How.  193. 

Not  assignable  unless  so  expressed  in  instrument.  —  Lane  v.  Locke,  150 
U.  S.  193;  37  L.  Ed.  1049;  14  S.  Ct.  78. 

Where  a  licensee  assigns  a  license  to  a  corporation  succeeding  to  the 
business  and  the  original  licensor  acquiesces  in  or  by  implication  ratifies  the 
transfer  it  is  binding  upon  him.  —  Lane  v.  Locke,  150  U.  S.  193;  37  L.  Ed. 
1049;  14  S.  Ct.  78. 

Hammond  v.  Mason,  92  U.  S.  724;   Lightner  v.  Boston,  1  Law.  Des.  338. 

Distinguishing,  Hapgood  v.  Hewitt,  119  U.  S.  226;  Troy  v.  Corning,  55 
U.S.  193;  Oliver  v.  Rumford,  109  U.  S.  75;  Applying,  McClurg  v.  Kingsland, 
42  U.  S.  202;  Solomons  v.  U.  S.  137  U.  S.  342. 

No  license  is  assignable  by  the  licensee  to  another  unless  it  contains  words 
which  show  that  it  was  intended  to  be  assigned.  —  Waterman  v.  Shipman,  55 
Fed.  982;  5  C.  C.  A.  371. 


§  752  LICENSE  685 

Factory  v.  Corning,  14  How.  193;  Rubber  Co.  v.  Goodyear,  9  Wall.  788; 
Adams  £  Howard,  22  Fed.  656;  Baldwin  v.  Sibley,  1  Cliff.  150. 

A  license  to  use  a  patented  invention  that  does  not  contain  words  import- 
ing assignability  is  a  grant  of  a  mere  personal  right  to  the  licensee  which  does 
not  pass  to  his  heirs  or  representatives  and  which  cannot  be  transferred  to 
another  without  the  expressed  consent  of  the  licensor.  —  Bowers  v.  Lake 
Superior,  149  Fed.  983;  79  C.  C.  A.  493. 

Hapgood  v.  Hewitt,  119  U.  S.  227;  Oliver  v.  Rumford,  109  U.  S.  75;  Troy  v. 
Corning,  14  How.  193. 

§  752.     Construction  of. 

"  The  sole  and  exclusive  right  and  license  to  manufacture  and  sell  fountain 
penholders  containing  the  said  patented  improvement  throughout  the  United 
States,"  did  not  include  the  right  to  use  such  penholders,  at  least  if  manu- 
factured by  third  persons,  and  was  therefore  a  mere  license  and  not  an  assign- 
ment of  any  title  and  did  not  give  the  licensee  the  right  to  sue  alone,  at  law 
or  in  equity.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11 
S.  Ct.  334. 

Gayler  v.  Wilder,  51  U.  S.  477;  >  Paper  Bag  Cases,  105  U.  S.  766,  771. 

An  assignment  which  is  neither  an  undivided  interest  in  the  whole  patent, 
nor  of  an  exclusive  right  within  a  certain  territory,  is  a  mere  license.  —  Pope 
v.  Gormully,  144  U.  S.  298;  36  L.  Ed.  420;  12  S.  Ct.  637. 

We  are,  however,  of  opinion  that  tender  of  an  executed  license  is  not  a 
condition  precedent  to  recovery  of  royalties  arising  from  use  of  the  patented 
machines.  By  the  contract  the  defendants  agreed  to  pay  a  specified  royalty 
for  such  use,  they,  or  another  for  them,  have  had  the  use  and  reaped  the 
benefit.  The  delivery  of  the  executed,  formal  license  in  no  way  affected  that 
obligation,  and  was  not  by  any  term  of  the  contract  a  condition  precedent 
to  its  fulfillment.  The  obligation  to  pay  was  dependent  upon  the  use,  not 
upon  the  license.  The  defendants  were  in  no  way  injured,  nor  their  interest 
jeopardized  by  the  omission.  Aside  from  the  grant  of  use,  the  licenses  were 
merely  for  the  benefit  of  the  lessor,  regulating  and  restricting  the  use.  The 
contract  was  of  itself,  a  license  to  use,  fully  protecting  the  defendants  against 
any  claim  of  infringement  of  the  plaintiff's  right.  It  estopped  the  plaintiff 
to  assert  infringement.  An  agreement  to  license  is  as  efficacious  as  a  license 
in  that  respect,  the  conditions  being  performed  by  the  licensee.  A  license 
would  be  presumed  from  the  mere  acquiescence  of  the  plaintiff  in  such  use 
and  from  the  relation  and  acts  of  the  parties.  —  American  v.  VanNortwick, 
52  Fed.  752;  3  C.  C.  A.  274. 

Blanchard  v.  Sprague,  1  Cliff.  288;  McClurg  v.  Kingsland,  1  How.  202;  Chabot 
v.  Overseaming  Co.  6  Fish.  71;    Hermann  v.  Hermann,  29  Fed.  94. 

That  where  two  license  agreements  existed  in  which  license  fees  were  not 
to  be  paid  under  the  terms  of  the  second  license  except  in  the  event  of  the 
termination  of  the  first  license,  that  when  the  first  license  was  terminated 
in  fact  by  failure  of  the  parties  to  perform  thereunder,  the  terms  of  the  second 
license  became  of  force  and  royalties  were  recoverable  thereunder,  see 
—  Shepard  v.  Kinnear,  86  Fed.  638;  30  C.  C.  A.  315. 

That  a  contract  to  be  subsequently  approved  and  signed,  is  invalid  if, 
before  approval,  alterations  or  amendments  therein  have  been  made  not 
consistent  with  the  purpose  and  intent  of  the  parties  at  the  time  the  minds 
met,  see  —  Keene  v.  Barratt,  100  Fed.  590;  40  C.  C.  A.  571. 


686  THE    FIXED   LAW   OF    PATENTS  §  753 

No  implied  contract  of  license,  arising  from  the  circumstances  under  which 
the  patent  was  taken  out  and  the  relations  of  the  parties,  can  be  set  up  in  the 
face  of  a  proved  special  contract.  —  Standard  v.  Arrott,  135  Fed.  750:  68 
C.  C.  A.  388. 

That  a  state  statute  or  code  provision  affecting  contractile  relations  applies 
to  licenses  of  patents,  see  Wilfley  v.  New  Standard,  164  Fed.  421 ;  C.  C.  A. 

§  753-     Contract. 

Complainant  agreed  to  furnish  patented  parts,  and  in  event  of  failure,  to 
allow  defendant  to  make.  Complainant  failed  to  furnish;  defendant  made. 
Held,  that  no  notice  from  defendant  was  necessary  and  the  making  was  not 
infringement.  —  Hammond  v.  Mason,  92  U.  S.  724;   23  L.  Ed.  767. 

A  license  contract  cannot  be  set  aside  at  the  mere  volition  of  the  licensor 
so  that  he  can  sue  for  infringement.  —  Burdell  v.  Denig,  92  U.  S.  716 ;  23 
L.  Ed.  764. 

Complainants  contracted  to  sell  to  defendants  certain  machines  upon 
agreed  terms  of  royalty.  Defendants  thereupon  organized  the  W.  P.  B.  Co., 
officered  by  them  and  had  the  machines  shipped  to  their  company.  Held: 
that  as  there  was  no  consent  on  the  part  of  complainant  as  creditor  of  de- 
fendants, the  delivery  of  the  machines  to  such  company  at  the  request  of 
defendants  did  not  work  novation.  —  American  v.  VanNortwick,  52  Fed. 
752;  3  C.  C.  A.  274. 

The  contract  was  between  complainant  and  defendant.  It  is  no  answer  to 
say  that,  in  ordering  the  licensed  machines  to  be  delivered  to  their  company, 
they  acted  in  a  representative  capacity.  If  they  had  personal  objection  to 
such  delivery,  they  should  have  made  it  manifest.  They  were  silent  when  it 
became  them  to  speak.  They  cannot  now  object  that  the  delivery,  which  as 
representatives  of  the  company,  they  sought  and  obtained,  was  counter  to 
their  individual  wishes.  They  are  estopped.  —  American  v.  VanNortwick, 
52  Fed.  752;  3  C.  C.  A.  274. 

Swain  v.  Seamens,  9  Wall.  254;   Bronson  v.  Chappell,  12  Wall.  681. 

The  right  does  not,  however,  grow  out  of  the  paper,  but  out  of  the  contract, 
of  which  the  paper  is  evidence  simply.  —  Union  v.  Johnson,  61  Fed.  940; 
10  C.  C.  A.  176. 

Walk.  Pat.  sec.  303;  Rob.  Pat.  sees.  806,  809;  Buss  v.  Putney,  38  N.  H.  44; 
Potter  v.  Holland,  4  Blatchf.  206;  Baldwin  v.  Sibley,  1  Cliff.  150;  Jones  v.  Berger, 
58  Fed.  1006. 

The  secret  intentions  of  the  parties  cannot  be  injected  into  a  written  con- 
tract to  vary  its  terms  by  parol  evidence.  —  Standard  v.  Leslie,  78  Fed.  325; 
24  C.  C.  A.  107. 

Proof  of  the  circumstances  out  of  which  the  contract  grew,  and  which  sur- 
rounded its  adoption,  may  be  proven  to  ascertain  its  subject-matter  and  the 
standpoint  of  the  parties  in  relation  to  it,  where  the  language  of  the  contract 
is  obscure  or  doubtful;  but  such  evidence  cannot  be  received  to  vary  the 
contract  by  addition  or  substitution.  —  Standard  v.  Leslie,  78  Fed.  325 ; 
24  C.  C.  A.  107. 

West  v.  Smith,  101  U.  S.  263;  Union  v.  Western,  59  Fed.  49. 

Grammatical  rules  raise  only  a  prima  facie  presumption,  and  do  not  pre- 
clude the  settling  of  the  meaning  by  detracting  somewhat  from  the  exactness 


§  754  LICENSE  687 

of  the  language  in  order  to  give  effect  to  more  cogent  reasons  of  another  sort. 
—  Cowles  v.  Lowry,  79  Fed.  331;  24  C.  C.  A.  616. 

C.  Litt.  197  a;  Justice  Windham's  Case,  5  Coke,  7  b;  Wharton  v.  Fisher,  2 
Serg.  &  R.  182;  Williams  v.  Hadley,  21  Kan.  350;  Judd  v.  Gibbs,  3  Gray,  539; 
Von  Wittberg  v.  Carson,  44  Conn.  289;  Coffin  v.  Douglass,  61  Tex.  406;  Shoe  Co. 
v.  Ferrell,  68  Tex.  638;  Bank  v.  Beedle,  37  Minn.  527. 

The  license  contract  contained  a  provision  requiring  the  plaintiff  in  error 
to  "  vigorously  prosecute  infringers  of  said  letters  patent,  and  to  prevent  as 
far  as  possible  all  unlawful  interference  with  the  business  and  rights  of  said 
party  of  the  second  part  under  and  by  virtue  of  the  contract."  These  are 
proper  provisions,  and  they  are  not  open  to  criticism.  —  U.  S.  Consolidated 
v.  Griffin,  126  Fed.  364;  61  C.  C.  A.  334. 

§  754.    Estoppel. 

A  plea  of  that  condition,  to  satisfy  the  words  "  in  case  it  should  at  any  time 
be  judicially  decided  "  that  the  patent  was  bad,  would  have  to  be  that  it 
had  been  decided  to  that  effect.  It  would  not  be  enough  to  say  that  the 
defendant  thought  the  patent  bad  and  would  like  to  have  the  court  decide 
so  now.  —  U.  S.  v.  Harvey,  196  U.  S.  310;  49  L.  Ed.  492;  25  S.  Ct.  240. 

Complainant  sold  defendant  two  of  his  designs  before  patent  at  the  regular 
price  with  knowledge  that  the  same  were  purchased  to  be  copied.  It  was  a 
license,  although  the  sale  was  made  in  the  threat  of  defendant  to  purchase 
elsewhere  if  complainant  would  not  sell  them.  —  Anderson  v.  Eiler,  50  Fed. 
775;  1  CCA.  659. 

The  complainant  company  is  the  owner  of  the  Spaulding  patent  with  a 
great  many  others  in  the  same  art.  Some  time  before  bringing  this  suit,  it 
made  an  arrangement  with  the  owners  of  other  patents  by  which  all  were 
conveyed  to  a  trustee  to  issue  licenses  to  others  for  the  use  of  all  their  patents. 
In  some  of  these  licenses  the  Spaulding  patent  was  included  as  one  of  a  num- 
ber, and  it  is  now  agreed  that  the  complainant  company  cannot  be  heard  to 
deny  the  operativeness  of  the  Spaulding  patent.  As  the  defendants  were  not 
among  complainant's  licensees,  no  estoppel  arises  in  this  suit,  and  the  fact 
is  only  evidential  as  an  admission  against  complainant  which  can  be  ex- 
plained or  rebutted.  The  evidence  in  the  case  as  to  the  Spaulding  patent, 
and  its  inoperative  character,  in  our  view,  completely  overcomes  any  in- 
ference thus  sought  to  be  drawn,  while  the  omnibus  character  of  the  licenses, 
including  so  many  patents,  much  weakens  the  evidential  force  of  the  otherwise 
natural  implication  of  a  license  that  the  licensor  asserts  the  operativeness 
of  the  device  licensed.  —  McCormick  v.  Aultman,  69  Fed.  371 ;  16  C.  C  A. 
259. 

The  defendants  agreed  to  pay  the  expenses  of  the  patents,  but  failed  and 
refused  to  do  so.  They  as  infringers  are  estopped  to  plead  a  license.  — 
Timoney  v.  Buck,  84  Fed.  887;  28  C  C  A.  561. 

That  a  licensee  may  show  the  state  of  the  prior  art  for  the  purpose  of 
enabling  the  court  to  ascertain  the  scope  of  the  patent,  see  —  Americans. 
Helmstetter,  142  Fed.  978;  74  C  C  A.  240. 

In  a  former  suit  between  the  same  parties,  a  mutual  agreement  had  been 
reached  by  which  the  complainant  practically  licensed  the  defendant  to 
manufacture  the  device  in  brass  so  long  as  he  did  not  manufacture  it  in  iron. 
Subsequently  the  defendant  manufactured  a  device  in  iron,  but  not  one  which 
came  within  the  terms  of  the  contract.     Complainant  then  brought  this 


688  THE    FIXED   LAW   OF   PATENTS  §§  755-756 

suit  on  the  ground  that  the  conduct  of  defendant  had  operated  as  a  revoca- 
tion of  the  license.  Held:  that  such  manufacture  of  the  device  in  iron  not 
in  infringement  of  the  patent  did  not  revoke  the  license  to  manufacture 
in  brass.  —  Clancy  v.  Troy,  157  Fed.  554;  85  C.  C.  A.  314. 


i     §  755-    Forfeiture. 

An  attempted  sale  in  violation  of  a  specific  agreement  works  a  forfeiture 
of  the  license.  —  Piatt  v.  Fire  Extinguisher,  59  Fed.  897;  8  C.  C.  A.  357. 

The  defendant  agreed  that  if  he  failed  to  perform  his  covenants,  the  license 
might  be  forfeited  by  a  written  notice  served  upon  him,  or  his  successor,  and 
this  was  done.  His  subsequent  tender  of  money  in  payment  of  royalties, 
and  a  promise  to  perform  his  covenants,  could  not  avail  to  remove  the  for- 
feiture without  the  consent  of  the  licensor  and  the  other  licensees.  —  Piatt 
v.  Fire  Extinguisher,  59  Fed.  897;  8  C.  C.  A.  357. 

Hammacher  v.  Wilson,  26  Fed.  239;  White  v.  Lee,  3  Fed.  222. 

The  license  purported  to  be  an  exclusive  one.  Its  very  exclusiveness 
was  the  substance  of  the  thing  granted.  It  was  of  the  essence  of  that  for 
which  the  defendants  in  error  agreed  to  pay  royalties.  It  was  coupled  with 
a  covenant  to  protect  the  licensees  in  the  exclusive  use  of  the  rights  so  granted. 
There  has  been  a  total  breach  of  that  covenant.  The  licensors,  instead  of 
affording  the  promised  protection,  have  by  their  own  acts  in  effect  reappro- 
priated  to  their  own  use  that  which  they  granted  the  licensee.  In  short,  their 
course  was  such  that  the  licensee  was  evicted  from  the  granted  right  immedi- 
ately after  the  execution  of  the  license,  and  the  eviction  was  continuous 
until  the  commencement  of  the  suit.  —  Wilfley  v.  New  Standard,  164  Fed. 
421 ;  C.  C.  A. 

Rob.  Pat.  §  1241;  Angier  v.  Eaton,  98  Pa.  594;  Edison  v.  Thakara,  167  Pa. 
530;  McKay  v.  Smith,  39  Fed.  556;  National  v.  Boston,  41  Fed.  48;  Standard  v. 
Ellis,  159  Mass.  448. 

It  will  hardly  be  denied  that,  if  at  any  time  the  licensees'  operations 
are  unsatisfactory,  the  parties  might  by  subsequent  agreement  modify  them ; 
or,  if  the  operations  of  the  licensee  were  so  unsatisfactory  and  unbusinesslike  as 
to  amount  to  a  breach  of  the  agreement,  the  licensor  would  have  the  right  to 
terminate  it  and  make  a  license  to  another.  —  Goshen  v.  Single  Tube,  166 
Fed.  431;    CCA. 


§  756.     Implied. 

Whatever  license  resulted  to  the  corporation  from  the  facts  of  the  case  to 
use  the  invention,  it  was  confined  to  that  corporation  and  not  assignable  by 
it.  —  Hapgood  v.  Hewitt,  119  U.  S.  226;  30  L.  Ed.  369;  7  S.  Ct.  193. 

Troy  v.  Corning,  55  U.  S.  193;   Oliver  v.  Rumford,  109  U.  S.  75. 

Where  complainant  through  his  foundryman  furnished  defendant  with 
certain  parts  of  machinery  used  in  complainant's  process,  which  parts  were 
employed  in  other  processes,  the  defendant  could  not  claim  implied  license  to 
the  process  from  the  purchase  of  such  elements  used  therein.  —  Lawther 
v.  Hamilton,  124  U.  S.  1 ;  31  L.  Ed.  325;  8  S.  Ct.  342. 

Where  partnership  constructed  a  machine  with  knowledge  and  consent  of 
inventor  before  application ;  an  implied  license  arises  in  favor  of  the  machine 
so  constructed.    Wade  v.  Metcalf,  129  U.  S.  202;  32  L.  Ed.  661 ;  9  S.  Ct.  271. 


§  756  LICENSE  689 

Where  a  government  employee  made  an  invention  and  made  a  contract  with 
his  superior  licensing  the  bureau  to  use  his  invention  during  the  term  of  his 
employment,  Held,  that  such  agreement  did  not  abrogate  the  right  of  the 
bureau  to  a  shop  right  use  of  the  invention  after  the  discharge  of  theemployee. 
—  McAleer  v.  U.  S.  150  U.  S.  424;  37  L.  Ed.  1130;   14  S.  Ct.  160. 

Solomons  v.  U.  S.,  137  U.  S.  342;  Davis  v.  U.  S.  23  Ct.  CI.  329;  McCIurg  v. 
Kingsland,  42  U.  S.  202;   Seitz  v.  Brewers,  141  U.  S.  510. 

Where  a  government  employs  a  mechanic  who  invents,  obtains  a  patent 
and  makes  a  specific  assignment  of  a  shop  right  to  his  bureau,  such  license  will 
not  be  abrogated  by  any  subsequent  parol  agreement.  —  McAleer  v.  U.  S. 
150  U.  S.  424;  37  L.  Ed.  1130;  14  S.  Ct.  160. 

We  know  of  no  principle  upon  which  a  contract  can  be  evoked  from  a 
distinct  refusal  of  one  party  to  recognize  the  rights  of  the  other,  and  a  formal 
protest  against  any  such  rights  being  granted  him.  —  Kirk  v.  U.  S.  163 
U.  S.  49;  41  L.  Ed.  66;   16  S.  Ct.  911. 

Defendant  purchased  of  complainant  two  articles  of  complainant's  design 
with  the  stated  purpose  of  copying  them,  paying  the  market  price.  Held: 
that  such  sale  constituted  a  license.  —  Anderson  v.  Eiler,  50  Fed.  775;  1 
C.  C.  A.  659. 

Do  the  facts  that  the  copartnership,  styled  the  Bank  of  Fargo,  was  per- 
mitted to  use  the  patented  invention  for  seven  months  before  the  applica- 
tion for  a  patent  was  filed,  and  that  the  defendant  subsequently  succeeded  to 
their  business  and  property,  confer  upon  it  an  implied  license  to  make  and 
use  the  new  account  books  embodying  the  patented  invention?  The  appli- 
cation was  filed  Dec.  31,  1886.  The  Bank  of  Fargo  first  applied  the  invention 
to  their  account  book  June  2,  1886,  and  used  it  thereafter  with  complainant's 
consent  until  the  firm  was  dissolved  Jan.  1,  1887.  The  defendant  corporation 
was  organized  and  commenced  business  on  that  day.  The  defendant  did  not 
purchase,  construct,  or  use  any  article  embodying  complainant's  invention 
before  he  filed  his  application  for  a  patent,  since  it  did  not  come  into  existence 
until  after  that  filing.  Whatever  license  it  had  it  derived  from  the  dis- 
solved copartnership  by  purchase  or  assignment;  but  the  only  right  the 
partnership  had  was  the  statutory  privilege  of  using  and  vending  to  others 
to  be  used  the  specific  thing  they  had  made  with  complainant's  consent.  This 
was  not  a  grant  of  any  portion  of  the  franchise ;  it  was  a  mere  naked  license, 
personal  to  the  copartnership,  and  incapable  of  assignment  or  transfer.  — 
Thomson  v.  Citizens  Nat.  Bk.  53  Fed.  250;  3  C.  C.  A.  518. 

Hapgood  v.  Hewitt,  119  U.  S.  226;  Locke  v.  Bodley,  35  Fed.  289;  Troy  v. 
Corning,  14  How.  193;  Oliver  v.  Chem.  Wks.,  109  U.  S.  75. 

The  duration  and  scope  of  a  license  must  depend  upon  the  nature  of  the 
invention  and  the  circumstances  out  of  which  an  implied  license  is  presumed, 
and  both  must  at  least  depend  upon  the  intention  of  the  parties.  —  With- 
ington  v.  Kinney,  68  Fed.  500;   15  C.  C.  A.  531. 

Rob.  Pat.  sees.  808-811;  Montross  v.  Mabie,  30  Fed.  237. 

According  to  the  rule  in  Mfg.  Co.  v.  Kinney,  68  Fed.  500,  an  implied  license, 
if  it  relates  to  an  improvement  in  the  process,  ordinarily  authorizes  the  em- 
ployer to  continue  to  practise  the  process  during  the  whole  period  of  the 
patent.  This  follows  because  the  subject  matter  is  indivisible;  but,  if  the 
invention  pertains  to  a  machine,  it  is  understood,  ordinarily,  that  only  the 
specific  machine  or  machines  which  have  been  set  up  during  the  time  of  the 
employment  are  protected.    Such  is  the  ordinary  rule,  and  it  is  plainly  based 


690  THE    FIXED    LAW    OF    PATENTS  §  756 

on  a  sound  discretion.  It  is,  of  course,  more  a  rule  for  the  application  of 
facts  than  a  rule  of  law,  and  therefore  is  not  rigid.  When  the  patented  matter 
is  a  product,  particularly  if  it  is  a  minor  product,  or  even  if  it  is  a  minor 
machine,  so  that  in  either  case  it  is  used  in  quantity,  like  the  stop -valve  in 
Lane  v.  Locke,  150  U.  S.  193,  its  unlimited  use  during  the  time  of  employ- 
ment may  raise  an  implication  of  facts  in  favor  of  a  license  for  a  time  likewise 
unlimited,  as  in  the  case  of  a  process.  —  Boston  v.  Allen,  91  Fed.  248 ;  33 
C.  C.  A.  485. 

McClurg  v.  Kingsland,  1  How.  202;  Hapgood  v.  Hewitt,  119  U.  S.  226;  Wade 
v.  Metcalf,  129  U.  S.  202;  Solomons  v.  U.  S.  137  U.  S.  342;  Dalzell  v.  Mfg.  Co.,  149 
U.  S.  315;  Keys  v.  Mining  Co.  158  U.  S.  150;  Gill  v.  U.  S.  160  U.  S.  426. 

To  restrict  the  right  of  a  purchaser  of  an  apparatus  embodying  a  patented 
invention  to  use  it  for  the  purposes  for  which  it  is  peculiarly  adapted,  there 
must  appear  some  express  or  implied  agreement  by  which  the  mode  or  time 
or  place  of  use  has  been  limited ;  and  this  was  the  principle  upon  which  the 
Button  Fastener  Case  was  decided.  But  there  may  be  circumstances  under 
which  the  sale  by  a  patentee  of  one  patented  article,  will  carry  with  it  the 
right  to  use  another  in  co-operation  with  the  first,  although  the  thing  be 
covered  by  a  second  patent.  Thus,  if  the  article  sold  be  of  such  peculiar 
construction  as  that  it  is  of  no  practical  use  unless  it  be  used  in  combination 
with  some  subordinate  part,  covered  by  another  patent  to  the  vendor,  the 
right  to  use  the  latter  in  co-operation  with  the  former,  might  be  implied  from 
circumstances.  It  is  a  general  principle  of  law  that  a  grant  necessarily 
carries  with  it  that  without  which  the  thing  granted  cannot  be  enjoyed.  The 
limitation  upon  this  is,  that  the  things  which  pass  by  implication  only  must 
be  incident  to  the  grant,  and  directly  necessary  to  the  enjoyment  of  the  thing 
granted.  The  foundation  of  the  maxim  lies  in  the  presumption  that  the 
grantor  intended  to  make  his  grant  enjoyable.  —  Edison  v.  Peninsular,  101 
Fed.  831;  43  C.  C.  A.  479. 

Cutter  v.  Sheldon,  10  Blatchf.  1;  Heaton  v.  Eureka,  77  Fed.  288;  Adams  v. 
Burks,  17  Wall.  453. 

It  is  evident  that  the  extent  of  an  implied  license  must  depend  upon  the 
peculiar  types  of  each  case.  The  question  in  each  case  is,  whether  or  not  the 
circumstances  are  such  as  to  estop  the  vendor  from  asserting  infringement. 
—  Edison  v.  Peninsular,  101  Fed.  831 ;  43  C.  C.  A.  479. 

Roosevelt  v.  Electric  Co.  20  Fed.  724;  United  v.  California,  25  Fed.  475;  Amer- 
ican v.  Ament,  74  Fed.  789;  Stonecutter  v.  Shortsleeves,  16  Blatchf.  381;  111- 
ingsworth  v.  Spaulding,  43  Fed.  831. 

Among  the  defenses  interposed  was  that  of  an  implied  license  to  the  de- 
fendants to  use  the  invention.  The  defense  was  based  upon  Brickill's  conduct 
in  equipping  two  of  the  steam  fire  engines  of  the  fire  department  with  his 
patented  apparatus  before  making  application  for  his  patent,  and  in  per- 
mitting other  engines  to  be  equipped  with  it  while  he  remained  in  the  employ 
of  the  department.  The  court  below  was  of  the  opinion  that  a  license  to  use 
the  invention  with  the  first  two  engines  was  to  be  implied,  but  that  none  was 
to  be  implied  as  to  the  others.  There  is  no  assignment  of  error  challenging  the 
correctness  of  the  decree  in  respect  to  this  defense.  The  defense  was  not 
argued  at  the  bar,  although  it  is  urged  in  the  brief  for  the  appellants.  Under 
the  circumstances  we  do  not  feel  called  upon  to  consider  it  further  than  to 
say  that  we  think  the  court  below  disposed  of  it  correctly.  —  Brickill  v. 
Mayor,  112  Fed.  65;  50  C.  C.  A.  1. 

In  view  of  the  fact  that  buildings  specially  designed  for  the  use  of  Barber's 
process  and  apparatus  were  constructed  under  his  direction,  we  think  the 


J  757  LICENSE  691 

presumption  is  that  he  intended  to  grant  to  the  carbon  company  the  right  to 
use  his  process  in  connection  with  the  machines,  for  which  space  in  the  several 
factories  had  been  specially  arranged  with  his  knowledge  and  under  his 
direction.  The  right  of  use  presumed  is  the  right  to  use  such  number  of 
machines  as  had  been  prepared  for,  and  the  right  is  not  limited  to  the  life 
of  the  particular  machine,  but  will  include  replacements  so  long  as  the  carbon 
company  continues  in  the  manufacture  of  carbons.  The  scope  of  the  license 
therefore  includes  the  seventh  machine,  constructed  after  Barber  was  dis- 
charged, to  occupy  the  place  prepared  for  it  under  Barber's  direction.  By 
his  conduct  Barber  has  estopped  himself  from  asserting  that  the  use  of  his 
invention  to  this  extent  is  an  infringement  of  his  right  as  a  patentee.  — 
Barber  v.  National,  129  Fed.  370;  64  C.  C.  A.  40. 

Solomons  v.  U.  S.  137  U.  S.  342;  Lane  v.  Locke,  150  U.  S.  193;  Gill  v.  U.  S.  160 
U.  S.  426. 

Facts:  Complainant  sold  defendant  22  electric  locomotives  for  use  in 
its  tunnels  and  consented  to  the  installation,  by  a  third  party,  of  electric 
switches,  without  which  the  locomotives  could  not  be  operated.  Subse- 
quently defendant  purchased  other  locomotives  of  another  manufacturer 
and  operated  the  same  in  its  tunnels  in  connection  with  the  electric  switches 
installed.  The  infringement  complained  of  consisted  in  the  use  of  the 
patented  electric  switches  with  any  locomotive  not  made  by  complainant,  it 
being  claimed  that  the  right  to  use  the  switch  was  given  only  in  connection 
with  the  purchase  of  complainant's  locomotives.  Held:  Appellee  having  no 
notice  of  the  restriction  and  not  having  dealt  for  the  purchase  of  the  loco- 
motives with  such  restriction  in  mind,  the  license  that  the  law  raises  upon 
the  transactions  between  the  parties  is  as  broad  as  if  no  such  restriction 
usually  entered  into  the  dealings  of  appellant  (compl't.)  with  the  purchasing 
world.  The  sole  transaction  disclosed  here  in  the  sale  of  locomotives  to  be 
operated  without  royalty,  restriction  (express  or  implied)  or  further  license 
in  connection  with  the  trolley  switching  devices  —  a  transaction  that  must 
be  held  to  permit  the  use  of  the  same  devices  in  connection  with  other  loco- 
motives. —  Thompson-Houston  v.  Illinois,  152  Fed.  631 ;  81  C.  C.  A.  473. 

Edison  v.  Peninsular,  101  Fed.  836. 


§  757.    Machines. 

The  purchase  of  a  machine  with  the  right  to  use  the  invention  embraced 
therein  carries  with  it  no  interest  in  the  patent.  —  Mitchell  v.  Hawley,  83 
U.  S.  544;  21  L.  Ed.  322. 

When  the  patentee  has  himself  constructed  a  machine  and  sold  it  without 
any  conditions,  or  authorized  another  to  construct,  sell  and  deliver  it,  or 
to  construct,  use  and  operate  it,  without  any  conditions  and  for  a  considera- 
tion paid,  he  parts  with  his  monopoly  in  that  machine.  —  Mitchell  v.  Hawley, 
83  U.  S.  544;  21  L.  Ed.  322. 

Bloomer  v.  Millinger,  1  Wall.  350. 

A  machine  made  with  the  knowledge  and  consent  of  the  inventor  before  his 
application,  as  provided  in  sec.  4899,  carries  with  it  an  implied  license  from 
the  inventor  good  to  any  purchaser.  — Wade  v.  Metcalf,  129  U.  S.  202;  32 
L.  Ed.  661;  9  S.  Ct.  271. 

McClurg  v.  Kingsland,  42  U.  S.  202;  Bloomer  v.  McQueewan,  55  U.  S.  539; 
Bloomer  v.  Millinger,  68  U.  S.  340;  Adams  v.  Burks,  84  U.  S.  453;  Birdeall  v. 
Shaliol,  112  U.  S.  485. 


692  THE    FIXED   LAW   OF   PATENTS  §§  758-760 

§  758.     Non- Assignable. 

A  license,  though  usually  not  transferable,  is  transmissible  by  succession 
to  a  corporation  formed  by  the  union  of  two  licensees  succeeding  to  the  obliga- 
tions of  both.  —  Lane  v.  Locke,  150  U.  S.  193;  37  L.  Ed.  1049;  14  S.  Ct.  78. 

Lightner  v.  Boston,  1  Law.  Des.  338. 

May  be  waived  if  the  patentee  ratifies  the  transfer  of  the  license  by  other- 
wise treating  the  assignee  as  the  licensee  was  entitled  to  be  treated.  —  Lane 
v.  Locke,  150  U.  S.  193;  37  L.  Ed.  1049;   14  S.  Ct.  78. 

Hammond  v.  Mason,  92  U.  S.  724. 

§  759.     Parol. 

It  is  true  that  a  license  may  be  created  by  parol  and  be  established  by 
clear  implication  from  proven  facts  and  circumstances  (Solomons  v.  U.  S. 
137  U.  S.  342;  McClurg  v.  Kingsland,  1  How.  202;  Anderson  v.  Eiler,  50 
Fed.  775;  Withington  v.  Kinney,  68  Fed.  500)  but  it  is  also  true  that  by  like 
implication  arising  from  facts  and  circumstances  and  the  conduct  of  the 
parties  a  continuing  assignable  quality  may  be  given  to  a  license  originally 
unassignable.  That  the  proof  thereof  rests  in  parol  is  not  material  where  no 
one  is  concerned  except  the  parties  and  their  privies.  —  Bowers  v.  Lake 
Superior,  149  Fed.  983;  79  C.  C.  A.  493. 

As  to  the  world  at  large,  an  assignment  is  not  good  unless  put  in  writing 
and  recorded;  but  as  between  parties  to  the  transaction,  a  license  by  parol 
may  be  sustained,  and  enforced,  if  need  be,  by  a  decree  for  specific  per- 
formance. —  Cook  v.  Sterling,  150  Fed.  766;  80  C.  C.  A.  502. 

§  760.     Royalties. 

There  was  at  least  an  implied  license  to  use  the  improvement  upon  the 
same  terms  and  royalties  fixed  for  other  parties  from  the  time  complainants 
left  the  employ  of  defendant,  while  defendant  was  entitled  to  use  the  inven- 
tion without  payment  of  any  royalties  during  the  continuance  of  such  em- 
ployment. And,  apart  from  that,  that  the  decree  cannot  be  reversed  on  the 
ground  that  the  circuit  court  erred  in  dismissing  the  bill  because  when  it 
was  filed  complainants  were  not  entitled  to  any  relief  resting  on  grounds  of 
equity,  while  their  remedy  at  law,  then  and  thereafter,  was  plain,  adequate 
and  complete.  —  Keyes  v.  Eureka,  158  U.  S.  150;  39  L.  Ed.  929;  15  S.  Ct. 
772. 

The  contract  embraces  only  what  the  parties  reasonably  may  be  under- 
stood to  have  expected  to  be  patented.  The  provision  for  the  cessation  of 
payments  on  final  adverse  action  must  be  applied  to  such  claims  as  were 
rejected  for  want  of  novelty;  and  after  such  rejection,  the  licensor  can  make 
the  defendant  account  only  for  the  use  of  devices  embodying  what  remained 
of  his  claims.  The  covenant  to  use  due  business  diligence  in  pushing  the  sale 
did  not  preclude  defendant  from  using  any  later  invention,  nor  would  it 
require  him  to  enter  upon  a  hopeless  contest,  and  would  not  prevent  him  from 
avoiding  such  contest  by  purchase.  In  that  event  he  would  not  be  account- 
able to  the  licensor  for  royalties  on  the  new  machine.  —  Eclipse  v.  Farrow, 
199  U.  S.  581 ;  50  L.  Ed.  317;  26  S.  Ct.  150. 

Thorn  v.  Washburn,  159  U.  S.  423. 

Complainant  licensed  the  invention  to  defendant  at  a  specific  royalty  and 
minimum  selling  price.  This  complainant  violated,  making  and  selling  at  a 
lower  price.    The  defendant's  ability  to  pay  the  royalty  depended  upon  the 


§  761  LICENSE  693 

non-competition  by  complainant  at  reduced  prices.    This  breach  by  com- 
plainant of  his  undertakings,  when  found  to  be  unjustifiable  by  any  previous 
conduct  of  defendant,  relieved  defendant  from  the  obligation  which  it  has 
assumed.  —  Brusie  v.  Peck,  54  Fed.  820;  4  C.  C.  A.  597. 
Kingston  v.  Preston,  Doug.  634;   2  Parson  Con.  189. 

Defendant  gave  a  license  to  plaintiff  providing  for  a  minimum  annual  royalty 
so  much  per  article  and  a  fixed  royalty  per  article  in  excess  of  that  number. 
Defendant  also  agreed  to  make  no  other  license  on  better  terms,  or  if  he  did 
to  give  plaintiff  the  benefit  of  a  like  reduction.  Defendant  subsequently 
gave  another  license  to  other  parties  at  the  same  rate  per  article  but  for  a 
smaller  minimum  number  and  no  royalty  on  articles  over  that  number. 
Plaintiff  sues.  Held:  That  he  was  entitled  to  recover  moneys  paid,  subsequent 
to  said  second  agreement  in  excess  of  the  royalty  provided  in  the  second 
contract  whether  the  second  contract  had  resulted  in  the  production  of  the 
minimum  number  of  articles  or  not.  —  Guggenheim  v.  Kirchhofer,  66  Fed. 
755;  14  C.  C.  A.  72. 

The  parties  made  a  contract  containing  the  following  clause :  "  And 
provided,  further,  and  it  is  hereby  distinctly  understood  and  agreed,  that  ii 
the  said  parties  of  the  second  part  shall  sell  or  lease,  or  cause  to  be  sold  or 
leased,  for  use,  or  shall  cause  to  be  used,  in  any  foreign  country  any  .  .  . 
machines  at  rates  of  royalty  or  rental  less  than  those  charged  for  the  use  of 
like  machines  in  this  country,  then  the  royalty  rate  to  be  paid  by  said  parties 
of  the  second  part  to  said  parties  of  the  first  part  shall  be  forty-five  per  cent., 
in  lieu  of  forty  per  cent.,  as  herein  above  provided."  The  licensees  subse- 
quently began  selling  machines  in  foreign  countries  and  offered  to  pay  the 
increased  per  cent,  from  that  time.  Licensors  brought  suit  for  the  difference 
between  40  and  45  per  cent,  for  the  time  prior  to  the  beginning  of  such  foreign 
business.  Held:  That  the  contract  could  not  be  retroactive  from  its  language 
and  that  the  licensor  was  entitled  to  only  40  per  cent,  up  to  the  time  the 
foreign  sales  commenced.  — National  v.  Willcox,  74  Fed.  557 ;  20  C.  C.  A. 
654. 

Unless  the  contrary  appears  to  have  been  the  intention  of  the  parties, 
the  presumption  is  that,  under  a  license  for  the  exclusive  right  to  manufacture 
and  sell  under  a  patent,  royalties  are  not  payable  upon  articles  manufactured 
and  sold  after  the  expiration  of  the  life  of  the  patent.  Parties  may,  of  course, 
contract  as  they  choose;  but,  in  the  absence  of  some  provision  by  which  a 
promise  for  the  continuing  payment  of  royalties  upon  expired  patents  may 
be  fairly  incurred,  the  presumption  is  that  the  contract  is  upon  the  ordinary 
terms  as  to  the  duration  of  royalties.  —  Sproull  v.  Pratt  &  Whitney,  108  Fed. 
963;  48  C.  C.  A.  167. 

For  a  case  covering  license  for  several  patents,  capable  both  of  conjoint 
and  separate  use,  and  a  curious  holding  as  to  the  effect  of  the  expiration  of 
one  of  the  patents  under  the  peculiar  terms  of  that  contract,  see  —  Sproull  v. 
Pratt  &  Whitney,  108  Fed.  963;  48  C.  C.  A.  167. 

§  761.     Scope  of. 

Where  one  sells  a  machine  to  another  and  subsequently  purchases  the 
patent,  or  an  interest  therein,  covering  such  machine,  such  subsequent  pur- 
chase gives  the  purchaser  of  the  machine  a  license  as  against  his  vendor,  but 
whether  such  license  by  purchase  would  extend  to  and  include  other  co-owners 
of  the  patent  is  not  decided.  —  Gottfried  v.  Miller,  104  U.  S.  521 ;  26  L.  Ed. 
851. 


694  THE    FIXED    LAW    OF    PATENTS  §  762 

That  a  license  for  the  invention  of  a  patent  cannot  be  construed  to  cover 
other  devices  made  by  the  licensee  which  are  not  fairly  within  the  terms  of 
the  patent,  see  — Eclipse  v.  Farrow,  199  U.  S.  581;  50  L.  Ed.  317;  26  S.Ct. 
150. 

The  exclusive  right  granted  to  a  person  other  than  the  patentee  to  use  and 
sell  a  patented  device  within  a  named  district  of  country,  excludes  the  owner 
of  the  letters  patent  from  selling  the  same  or  using  the  same  in  that  region. 
A  licensee  does  not  use  or  sell  in  the  name  of  the  owner  of  the  patent,  but  in 
his  own  name,  and  for  his  own  benefit.  Having  an  exclusive  license  to  use 
and  sell,  no  one  has  a  right  to  use  or  sell  in  the  country  of  such  a  licensee. — 
Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 

A  license  which  provides  that  the  licensee  shall  supply  the  market  and  pay 
royalties  on  all  machines  containing  the  patented  improvement,  when  the 
invention  licensed  is  not  a  monopoly  and  where  it  is  no  specific  restriction, 
does  not  prohibit  the  licensee  from  making  and  selling  devices  not  containing 
the  patented  devices  without  paying  royalty.  —  Standard  v.  Leslie,  78  Fed. 
325;   24  C.  C.  A.  107. 

By  its  terms,  the  grant  covers  three  separate  or  separable  fields.  The 
patentee  may  agree  with  one  that  he  will  not  exclude  him  from  making,  with 
another  from  using,  and  with  yet  another  from  selling  devices  that  exemplify 
the  principles  of  his  invention.  Within  the  field  of  making,  it  has  never 
been  doubted,  so  far  as  we  are  aware,  that  he  may  subdivide  as  he  pleases  and 
offer  to  sell  or  lease  in  the  most  fanciful  parcels  on  the  harshest  terms;  that 
whether  purchasers  and  tenants  come  or  not  is  purely  his  own  concern ;  and 
that,  if  purchasers  or  tenants  do  come,  the  courts  will  enforce  the  terms  of 
the  sale  or  lease.  And  how  could  it  be  otherwise?  Owning  the  whole,  he  owns 
every  part.  The  field  being  his  property,  and  there  being  no  law  for  seizing 
it  and  adjudging  his  damages,  he  cannot  be  compelled  to  part  with  his  own 
except  on  inducements  to  his  liking.  The  same  conditions  must  prevail 
within  the  field  of  use,  for  how  can  it  be  distinguished? —  Victor  v.  The  Fair, 
123  Fed.  424;  61  C.  C.  A.  58. 

Heaton  v.  Eureka,  77  Fed.  288;  Cortelyou  v.  Lowe,  111  Fed.  1005;  Bement  v. 
National,  186  U.  S.  70;  Edison  v.  Kaufman,  105  Fed.  960;  Edison  v.  Pike,  116 
Fed.  863. 

The  consideration  upon  which  the  defendant  agreed  to  pay  royalties  was 
the  privilege  of  using  "  the  devices  described  and  claimed."  This  must  be 
interpreted  as  an  agreement  to  pay  for  the  use  of  such  devices  as  the  defendant 
would  not  otherwise  have  the  right  to  use,  namely,  such  as  were  covered  by 
the  claims  of  the  patent,  and  not  for  such  as  were  merely  described  and  not 
claimed,  or  as  were  included  as  single  elements  onlv  in  a  combination  claimed 
as  a  whole.  —  Western  v.  Robertson,  142  Fed.  471 ;  73  C.  C.  A.  587. 


§  762.    Termination  of. 

Defendant  cannot  force  a  termination  of  contract  except  by  suit  to  set  it 
aside,  until  which  time  he  cannot  say  what  he  afterwards  does  is  not  under 
the  contract  provided  the  machine  made  embodied  the  patent  in  suit.  — 
St.  Paul  v.  Starling,  140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct,  803. 

The  truth  seems  to  be  that  the  proviso  is  a  more  or  less  well-known  and 
conventional  one  in  licenses,  not  a  special  contrivance  for  this  special  case,  and 
that  the  fact  alone  is  enough  to  invalidate  attempts  to  twist  the  meaning  of 
the  words  to  the  interest  of  either  side.    The  proviso  was  inserted,  no  doubt 


§  763  LICENSE  095 

on  the  assumption  that  a  licensee,  when  sued  for  royalties,  is  estopped  to  deny 
the  validity  of  the  patent  which  he  has  been  using,  and  to  give  him  the  benefit 
of  litigation  by  or  against  third  persons,  notwithstanding  that  rule.  —  U.  S.  v. 
Harvey,  196  U.  S.  310;  49  L.  Ed.  492;  25  S.  Ct.  240. 
Charter  v.  Charter,  47  111.  App.  36. 

It  is  settled  law  that  a  license  to  use  a  patent  is  a  personal  privilege, 
which  terminates  with  the  life  of  the  individual  licensee  to  which  it  is  granted, 
unless  the  grant  contains  words  expressly  confirming  the  power  to  sell  or 
assign.  In  the  absence  of  such  power  if  the  licensee  be  a  natural  person  and 
dies,  or  an  artificial  person  or  partnership  and  ceases  to  exist,  the  license 
expires  equally  in  either  case.  —  Haffcke  v.  Clark,  50  Fed.  531;  1  C.  C.  A. 
570. 

Oliver  v.  Chemical  Co.  109  U.  S.  75;  Nail  Factory  v.  Corning,  14  How.  19 J ; 
Gayler  v.  Wilder,  10  How.  477. 

It  is  to  be  kept  in  mind  that  the  license  under  consideration  was  not 
like  that  in  St.  Paul  v.  Starling,  140  U.  S.  184,  unlimited  in  duration,  which 
requires  mutual  consent,  or  some  positive  act  by  one  of  the  parties  to  ter- 
minate it.  This  license  was  of  limited  duration ;  it  ran  only  for  a  year ;  and 
the  positive  act  required  was  not  one  to  end,  but  to  extend,  it.  —  Seal  v. 
Bookkeeper,  130  Fed.  449;  64  C.  C.  A.  651. 

§  763.     Territorial. 

The  right  to  use  a  machine  or  article  made  under  a  territorial  license 
stands  on  a  different  ground  from  the  right  to  make  and  sell  them,  and 
inheres  in  the  nature  of  a  contract  of  purchase  which  carries  no  implied 
limitation  of  the  right  of  use  within  a  given  locality.  —  Adams  v.  Burks,  84 
U.S.  453;  21  L.  Ed.  700. 

Where  a  patentee  has  assigned  his  right  to  manufacture,  sell  and  use  within 
a  limited  district  an  instrument,  machine  or  other  manufactured  product, 
a  purchaser  of  such  instrument  or  machine,  when  rightfully  bought  within 
the  prescribed  limits,  acquires  by  such  purchase  the  right  to  use  it  anywhere 
without  reference  to  other  assignments  of  territorial  rights  by  the  same 
patentee.  —  Adams  v.  Burks,  84  U.  S.  453;  21  L.  Ed.  700. 

A  license  to  make  and  sell  within  a  specified  territory  does  not  prevent 
the  use  of  an  article  so  made  and  sold  rightfully  within  the  territory  from 
being  used  anywhere  without  the  territory.  —  Adams  v.  Burks,  84  U.  S. 
453;  21  L.  Ed.  700. 

Defendant  cannot  terminate,  without  consent  of  plaintiff,  the  rights  con- 
ferred by  the  license,  and  that,  as  there  was  no  limitation  on  its  face,  the 
license  continued  until  the  expiration  of  the  patent.  —  St.  Paul  v.  Starling, 
140  U.  S.  184;  35  L.  Ed.  404;  11  S.  Ct.  803. 

The  sale  of  a  patented  article  by  an  assignee  within  his  territory  carries 
the  right  to  use  it  everywhere,  notwithstanding  the  knowledge  of  both  parties 
that  a  use  outside  the  territory  is  intended.  —  Hobbie  v.  Jennison,  149  U.  S. 
355;  37  L.  Ed.  766;  13  S.  Ct.  879. 

Adams  v.  Burks,  84  U.  S.  453;  Birdsall  v.  Shaliol,  112  U.  S.  485;  Wade  v. 
Metcalf,  129  U.  S.  202;   Boesch  v.  Graff,  133  U.  S.  697. 

One  who  buys  patented  articles  of  manufacture  from  one  authorized  to 
sell  them  becomes  possessed  of  an  absolute  property  in  such  articles,  unre- 


096  THE    FIXED    LAW    OF    PATENTS  §  764 

stricted  in  time  or  place.  Whether  a  patentee  may  protect  himself  and  his 
assignees  by  special  contracts  brought  home  to  the  purchasers  is  not  a  question 
before  us,  and  upon  which  we  express  no  opinion.  It  is,  however,  obvious 
that  such  question  would  arise  as  a  question  of  contract,  and  not  as  one 
under  the  inherent  meaning  and  effect  of  the  patent  laws. 

The  conclusion  reached  does  not  deprive  a  patentee  of  his  just  rights, 
because  no  article  can  be  unfettered  from  the  claim  of  his  monopoly  without 
paying  its  tribute.  The  inconvenience  and  annoyance  to  the  public  that  an 
opposite  conclusion  would  occasion  are  too  obvious  to  require  illustration.  — 
Keeler  v.  Standard,  157  U.  S.  659;  39  L.  Ed.  848;  15  S.  Ct.  738. 

Dissenting:    Justices  Brown,  Fuller  and  Field. 

The  grant  was  of  the  exclusive  right  to  use  and  sell  within  the  states 
named.  This,  under  the  authorities,  was  perhaps  nothing  more  or  less  than 
a  license.  —  Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 

Walk.  Pat.  sec.  296;  Hamilton  v.  Kingsbury,  17  Blatchf.  264;  Waterman  v. 
Mackenzie,  138  U.  S.  252. 

§  764.     Miscellaneous. 

The  exclusive  right  to  use  a  machine  continues  no  longer  than  the  term  of 
the  original  patent.  —  Paper  Bag  Cases,  105  U.  S.  766;  26  L.  Ed.  959. 
Wilson  v.  Rousseau,  4  How.  646. 

An  infringer  does  not  by  paying  damages  for  making  and  using  a  machine 
in  infringement  of  a  patent,  acquire  any  right  himself  to  the  future  use  of  the 
machine.  On  the  contrary  he  may,  in  addition  to  the  payment  of  damages 
for  past  infringement,  be  restrained  by  injunction  from  further  use,  and, 
when  the  whole  machine  is  an  infringement  of  the  patent,  be  ordered  to  de- 
liver it  up  to  be  destroyed.—  Birdsall  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed.  768; 
5  S.  Ct.  244. 

Suffolk  v.  Hayden,  3  Wall.  315;  Root  v.  Ry.  105  U.  S.  189;  Needham  v.  Oxley, 
8  L.  T.  N.  S.  604;   Frearson  v.  Loe,  9  Ch.  Div.  48. 

Note:  The  destruction  of  infringing  machine  is  not  based  on  any  statute 
and  has  been  denied  in  American  v.  Kitsell,  35  Fed.  521. 

The  licenses  were  never  demanded  by  the  defendants  nor  executed.  If 
tender  of  the  licenses  were  essential  to  recovery  under  the  contract,  we  are 
of  opinion  that  the  conduct  of  the  defendants  operates  as  a  waiver  of  per- 
formance. The  proper  licenses  were  tendered  for  execution.  Failure  of 
execution  and  delivery  were  due  to  the  inattention  or  evasion  of  the  defend- 
ants. They  are  not  permitted  to  take  advantage  of  their  own  wrong.  The 
licenses  contained  mutual  obligations.  The  duty  of  the  parties  to  execute 
them  was  concurrent.  —  American  v.  VanNortwick,  52  Fed.  752;  3  C. 
C.  A.  274. 

U.  S.  v.  Peck,  102  U.  S.  64. 

As  a  general  rule,  it  may  be  said  that  a  license  is  not  divisible.  The  term 
"  assigns  "  must  be  construed  as  the  right  to  assign  the  license  as  an  entirety. 
—  Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 

Walk.  sec.  310;   Brooks  v.  Byam,  2  Story,  525. 

Upon  the  defendants  rests  the  burden  of  proof  that  Kendrick,  though  not 
an  owner  of  record,  had  a  right  to  license  manufacture  under  the  patent.  — 
Denning  v.  Bray,  61  Fed.  651 ;  10  C.  C.  A.  6. 

Although  the  agent  exceeded  his  authority  under  his  power  of  attorney,  and 
although  his  authority  might  be  revoked  (under  Willcox  v.  Ewing,  141  U. 


§  764  LICENSE  697 

S.  627)  all  acts  previously  done  in  pursuance  of  it  remain  in  force.  —  Union 
v.  Johnson,  61  Fed.  940;  10  C.  C.  A.  176. 

A  license  from  one  member  of  a  firm  to  the  firm  during  the  continuance  of 
the  partnership  is  not  an  assignable  or  purchasable  asset,  notwithstanding 
that  the  tools  and  patterns  exclusively  useful  in  the  making  of  the  patented 
device  pass  as  an  asset  to  an  assignee  or  receiver.  —  Elgin  v.  Nichols,  65  Fed. 
215;  12  C.  C.  A.  578. 

Anderson  v.  Eiler,  50  Fed.  775. 

That  while  a  former  licensee  may  be  restrained  by  injunction  from  using 
the  trade  name  which  designated  the  article  of  the  patent,  in  an  action  seeking 
such  relief,  the  injunction  order  may  not  include  restraint  from  using  the 
patent,  see  —  Stimpson  v.  Stimpson,  104  Fed.  893;  44  C.  C.  A.  241. 

In  an  action  by  a  licensor  against  a  licensee  to  recover  royalties  upon 
sales  made  under  an  exclusive  license  upon  an  invalid  patent,  which  was,  at 
the  time  when  the  account  accrued,  apparently  valid  and  in  force,  and  from 
which  there  had  been  no  eviction,  the  invalidity  of  which  had  not  been  de- 
•  clared  by  an  adjudication  under  legal  proceedings,  and  no  notice  had  been 
given  by  the  licensee  of  its  refusal  to  pay  on  account  of  its  defects,  such 
invalidity  is  no  defense  to  the  suit.  As  long  as  the  licensee  continues  to  manu- 
facture under  a  patent  presumably  valid,  without  giving  notice  of  its  in- 
validity and  without  eviction,  he  is  presumed  to  manufacture  in  accordance 
with  his  license.  —  Holmes  v.  McGill,  108  Fed.  238;  47  C.  C.  A.  296. 

Marston  v.  Swett,  66  N.  Y.  211  and  82  N.  Y.  526;  Lawes  v.  Purser,  38  Eng.  Law 
&  Eq.  Rep.  48;  White  v.  Lee,  14  Fed.  789;  Birdsall  v.  Perego,  Fed.  Cas.  1,435; 
Stott  v.  Rutherford,  92  U.  S.  107;  Eureka  v.  Bailey,  11  Wall.  488;  3  Rob.  Pat. 
696. 

Kisinger  Co.  sued  Bradford  Co.  on  Morrison  patent  and  Kisinger  patent. 
Bradford  Co.  defended  under  Girard  &  Lawrence  patent,  a  subsequent 
improvement  to  which  it  held  license.  Decree  for  Kisinger  Co.  on  Morrison 
patent.  Bradford  Co.  then  brought  this  suit  alleging  that  Girard  &  Law- 
rence had  in  the  assignment  of  use  to  Bradford  Co.  guaranteed  the  patent 
against  all  prior  patents,  etc.,  and  alleging  that  Kisinger  Co.  prior  to  suit 
had  obtained  by  mesne  assignments  from  Girard  &  Lawrence  the  full  title 
to  the  patent  under  which  the  Bradford  Co.  held  license  and  guaranty  from 
Girard  &  Lawrence  and  that  such  purchase  was  with  full  knowledge.  Held: 
No  doubt  the  general  rule  is  that  the  assignee  takes  the  title  subject  to  the 
equities  of  the  other  parties  who  have  acquired  rights  therein,  of  which  he 
had  notice,  express  or  implied.  But  he  takes  no  other  burden.  He  comes 
under  no  affirmative  obligation  to  make  good  the  previous  contracts  of  his 
assignor.  The  claim  of  the  appellant  is  that  it  is  let  into  the  enjoyment 
of  the  Morrison  patent  by  a  transaction  which  it  had  no  right  to  compel  or 
prevent.  The  appellant  has  been  put  in  no  worse  situation  by  the  transfer. 
What  equity  has  supervened  in  its  favor  since  the  decree  in  the  former  suit? 
The  appellee  owed  it  no  duty,  and  has  not  prejudiced  the  appellant.  Nor  has 
it  acquired  any  right  which  it  has  not  paid  for,  or  which,  owing  no  duty  to 
the  appellant,  it  had  not  equal  right  to  purchase  with  any  other  person.  — 
Bradford  v.  Kisinger-Ison,  113  Fed.  811;  51  C.  C.  A.  483. 

The  owner  of  an  undivided  part  of  the  rights  secured  by  a  patent  may, 
without  the  consent  of  his  co-owners,  grant  a  valid  license  to  use  the  monopoly 
it  protects.  —  Paulus  v.  Buck,  129  Fed.  594;  64  C.  C.  A.  162. 

Bloomer  v.  McQueewan,  14  How.  539;   Blackledge  v.  Weir,  108  Fed.  71. 


698  THE    FIXED   LAW   OF   PATENTS  §  765 

The  license  so  granted  is  personal  in  its  nature,  and  unassignable,  no 
intent  being  shown  in  the  contract  that  it  should  be  otherwise.  —  Standard 
v.  Arrott,  135  Fed.  750;  68  C.  C.  A.  388. 

Complainant's  final  letter,  ordering  defendants  to  "  discontinue  building 
said  racks  in  cars  without  authority  by  me  to  do  so  under  penalty  of  the  law," 
coupled  with  the  statement  that,  if  he  should  "  conclude  to  allow  said  racks 
built  in  cars,  my  standing  price  will  be  five  dollars  per  car,"  was  in  entire 
accord  with  the  understanding  of  both  parties  either  that  there  had  been  no 
contract  for  a  future  license,  or  that,  even  if  any  such  license  might  have  been 
claimed,  it  was  one  terminable  at  the  will  of  complainant's  assignor,  and  the 
statements  in  his  letter  were  acquiesced  in  by  defendants  as  constituting  a 
complete  revocation  of  whatever  rights  or  license  they  might  otherwise  have 
claimed.  The  contract,  if  any,  was  thereby  rescinded  by  mutual  agreement. 
—  American  v.  Jones,  142  Fed.  974;  74  C.  C.  A.  236. 

Hartell  v.  Tilghman,  99  U.  S.  547;  Walker  on  Pat.  266;  White  v.  Lee,  14  Fed. 
789;  Ross  v.  Fuller,  105  Fed.  510;  Schenectady  v.  Holbrook,  101  N.  Y.  45;  De- 
nise  v.  Swett,  142  N.  Y.  602. 

Use  of  the  invention  cannot  be  had  except  on  the  inventor's  terms.  With- 
out paying  or  doing  whatever  he  exacts,  no  one  can  be  exempted  from  his 
right  to  exclude.  Whatever  the  terms,  courts  will  enforce  them,  provided 
only  that  the  licensee  is  not  thereby  required  to  violate  some  law  outside  of 
the  patent  law.  —  Rubber  Tire  v.  Milwaukee,  154  Fed.  358;  83  C.  C.  A.  336. 


LICENSOR  AND  LICENSEE. 

Right  to  Sue  §  765 

Title  §  766  {see  §  925) 

Miscellaneous  §  767 

See  —  Assignment  §  165;   Copartner- 


ship §  270;  Defenses  §  311;  Employer 
and  Employee  §§  367-8;  Estoppel  § 
384;  Infringement  §§  509-13;  In- 
junction §  749;   Jurisdiction  §  722 


§  765.     Right  to  Sue. 

The  conveyance  was  for  neither  an  individual  interest  in  the  patent  nor 
for  an  exclusive  territory.  It  is  therefore  to  be  regarded  as  a  license  only, 
and  under  the  act  does  not  enable  the  assignee  to  maintain  an  action  for 
infringement.  —  Gayler  v.  Wilder,  10  How.  477;   13  L.  Ed.  504. 

A  mere  licensee  cannot  sue  strangers  who  infringe.  In  such  cases  redress 
is  obtained  through  or  in  the  name  of  the  patentee  or  his  assignee.  —  Little- 
field  v.  Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

The  defendants  first  took  a  license  from  the  patentee,  and  under  it  and 
under  his  directions  erected  substantially  the  same  apparatus  now  used. 
Receiving  what  they  regarded  as  additional  light,  they  refused  to  continue 
payment  of  royalty  and  put  the  complainant  to  his  legal  remedy.  —  Tilghman 
v.  Procter,  102  U.  S.  707;  26  L.  Ed.  279. 

Licensees  must  enforce  their  rights  through  the  name  of  the  patentee  (or 
assignee).  —  Paper  Bag  Cases,  105  U.  S.  766;  26  L.  Ed.  959. 
Littlefield  v.  Perry,  88  U.  S.  223. 

See  full  discussion  and  settlement  of  the  law  in  Waterman  v.  Mackenzie, 
138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

If  the  licensee  cannot  use  the  name  of  its  licensor  in  an  action  to  protect 
its  rights  against  an  infringement  of  the  patented  device  or  improvement  it 


§  766  LICENSOR    AND    LICENSEE  699 

has  the  exclusive  right  to  use  and  sell,  we  have  a  case  of  a  person  possessing 
important  rights  with  no  legal  power  to  protect  them ;  for  a  licensee  cannot 
sue  in  his  own  name  for  an  infringement  of  the  patent  concerning  which  he 
has  a  license.  —  Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 

Gayler  v.  Wilder,  10  How.  477;  Waterman  v.  Mackenzie,  138  U.  S.  252;  2 
Washb.  Real.  Prop.  302;  Rogers  v.  Cox,  96  Ind.  157;  2  HI.  Comm.  442;  Little- 
field  v.  Perry,  21  Wall.  205;  Welch  v.  Mandeville,  1  Wheat,  233;  Hammond  v. 
Hart,  4  Ban.  &  A.  Ill;  Huber  v.  Sanitary  Depot,  34  Fed.  752;  Goodyear  v. 
Bishop,  4  Blatchf.  438;   Brush  v.  Thomson,  48  Fed.  224. 

A  mere  licensee  cannot  sue  strangers  who  infringe.  In  such  a  case  redress 
is  obtained  through  or  in  the  name  of  the  owner  of  the  patent.  —  Waterman 
v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371. 

A  license  amounting  to  a  transfer  of  the  title  is  not  forfeited  by  a  breach, 
in  paying  royalties,  so  as  to  enable  the  grantor  to  sue  the  grantee  under  the 
patent  for  infringement.  —  Atkins  v.  Parke,  61  Fed.  953;  10  C.  C.  A.  189. 

Hartell  v.  Tilghman,  99  U.  S.  547. 

As  licensee,  the  defendant  in  error  has  no  authority  to  maintain  the  action. 
—  Chauche  v.  Pare,  75  Fed.  283;  21  C.  C.  A.  329. 

Birdsall  v.  Shaliol,  112  U.  S.  486;   Waterman  v.  Mackenzie,  138  U.  S.  252. 

There  can  be  no  doubt  that  a  licensee  can  sue  the  patentee,  who  has  granted 
the  license,  for  infringing  the  patent  within  the  field  covered  by  the  license, 
in  the  same  manner  and  with  like  effect  as  though  the  patentee  were  a 
stranger.  —  Smith  v.  Ridgley,  103  Fed.  875;  43  C.  C.  A.  365. 

Littlefield  v.  Perry,  21  Wall.  205;  Adriance  v.  McCormick,  55  Fed.  288;  Walk. 
Pat.  sec.  400. 

The  complainant  had  a  license  to  make  and  sell  within  certain  territory, 
but  the  license  was  not  exclusive.  The  defendant  held  a  release  or  license 
for  what  it  had  done  from  the  patentee.  Held:  Complainant  could  not 
recover.  —  Excelsior  v.  City  of  Seattle,  117  Fed.  140;  55  C.  C.  A.  156. 

Waterman  v.  Mackenzie,  138  U.  S.  256;  Gayler  v.  Wilder,  10  How.  477; 
Mitchell  v.  Hawley,  16  Wall.  544;  Hayward  v.  Andrews,  106  U.  S.  672;  Oliver  v. 
Chemical,  109  U.  S.  75. 


§  766.    Title. 

The  fact  that  the  licensor  has  undertaken  to  make  an  assignment  which  it 
had  no  authority  to  make,  will  not  work  any  forfeiture  of  its  rights.  There 
is  no  stipulation  in  the  contract  of  license  that  any  such  action  shall  work  a 
forfeiture  of  the  rights  granted  by  it.  Under  such  circumstances  there  is 
no  forfeiture.  —  Brush  v.  California,  52  Fed.  945;   3  C.  C.  A.  368. 

Walker,  sec.  308;   Purifier  Co.  v.  Wolf,  28  Fed.  814. 

In  the  terms  of  the  grant  of  license,  it  was  contemplated  that  the  license 
should  extend  to  any  patents  which  the  licensor  should  thereafter  acquire. 
Under  such  circumstances,  the  licensor  should  be  estopped  to  deny  the 
validity  of  the  license  granted  the  licensee  on  the  ground  that  it  did  not  own 
said  patent,  or  that  it  had  no  existence  at  the  time  the  grant  or  license  was 
made,  or  on  the  ground  that  it  had  no  authority  at  that  date  to  grant  the 
license.  To  hold  otherwise  would  work  a  most  extensive  fraud  upon  the 
licensee.  The  sale  of  a  patent  right  contains  an  implied  warranty  as  to  title, 
and  an  after  acquired  title  obtained  by  the  vendor  inures  to  the  vendee.  — 
Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 


700  THE    FIXED    LAW    OF    PATENTS  §§  767-768 

Faulks  v.  Camp,  3  Fed.  898;  Curran  v.  Birdsall,  20  Fed.  835;  Gottfrield  v. 
Miller,  104  U.  S.  520;   Smith  v.  Sheley,  12  Wall.  358. 

§  767.     Miscellaneous. 

The  recovery  of  nominal  damages  by  a  licensor  without  joining  his  licensee 
does  not  bar  the  licensee  from  recovering  actual  damages  by  a  separate  suit 
for  the  same  infringement.  —  Birdsall  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed. 
768;  5  S.  Ct.  244. 

Defendants  were  licensees  from  plaintiffs,  and  an  agreement  based  upon 
such  license  provided  for  an  equal  sharing  of  expenses  of  litigation  affecting 
such  patents.  Defendants  were  sued,  and  plaintiffs  intervened  and  defended. 
The  licensed  patent  was  held  bad  and  defendants  refused  on  that  ground 
and  on  the  ground  that  plaintiffs  had  intervened  to  pay  their  share  of  costs 
and  expenses.  Held:  Neither  the  intervention  nor  the  defeat  of  the  patent 
excused  the  defendants.  —  Leicester  v.  Macon,  116  Fed.  196;  53  C.  C.  A. 
621. 

We  are  satisfied,  in  view  of  the  radical  departures  from  said  licensed  blocks, 
and  from  the  patented  construction,  in  defendant's  later  blocks,  that  it  is 
not  precluded  from  showing  that  said  blocks  are  not  covered  by  the  claims 
in  suit,  —  Western  v.  Robertson,  142  Fed.  471 ;  73  C.  C.  A.  587. 

The  patentee  may  grant,  if  he  will,  an  unrestricted  right  to  make  or  sell  or 
use  the  device  embodying  his  invention,  or  may  grant  only  a  restricted  right 
in  either  the  field  of  making,  using  or  selling.  To  the  extent  that  he  restricted 
either  one  of  these  separable  rights,  the  article  is  not  released  from  the  domain 
of  the  patent,  and  any  one  who  violates  the  restrictions  imposed  by  the 
patentee,  with  notice,  is  an  infringer.  —  Park  v.  Hartman,  153  Fed.  24; 
82  C.  C.  A.  158. 

The  licensor  has  the  right  not  only  to  royalties,  but  also  to  the  licensee's 
silence  respecting  the  validity  and  prima  facie  scope  of  the  patents.  — 
Indiana  v.  Case,  154  Fed.  365;  83  C.  C.  A.  343. 

Siemans  v.  Duncan,  142  Fed.  157. 


MACHINE. 

Statute  and  Definition  §  768 
Right  to  Use  §  769 
See —  Anticipation  §  100;  Designs  § 
333;   Destruction  of  §  338;    Infringe- 
ment   §§    514-5;     Invention    §    686; 


License  §  767;  Machine  and  Process 
§  770;  Machine  and  Product  §  771; 
Process  §  817;  Secret  Process  or 
Machine  §  898 


§  768.     Statute  and  Definition. 

A  machine  is  the  second  of  the  classes  of  patentable  inventions  named 
in  sec.  4886.  Brief  reflection  will  reveal  the  insufficiency  and  inaccuracy 
of  the  following  definitions.  No  one  of  them  distinguishes,  clearly,  a  machine 
from  a  tool  —  an  article  of  manufacture.  Take  this  simple  example :  A 
screw-driver  of  the  ordinary  sort  is  clearly  a  tool  and  not  a  machine;  it  is 
an  article  of  manufacture,  and  if  it  were  novel,  would  be  patentable  as  such. 
Now  add  to  this  screw-driver  a  ratchet  mechanism,  so  that  when  one  rotates 
the  handle  one  way  the  blade  or  bit  must  turn  with  the  handle,  and  when 
rotated  the  other  way  the  bit  remains  at  rest  and  the  ratchet  permits  the 
handle  to  turn  independently  of  the  bit,  In  the  ordinary  screw-driver  there 
is  no  law  of  action  imposed  by  the  mind  of  the  inventor;  in  the  ratchet 
screw-driver  there  is  the  law  imposed  by  the  mind  of  the  inventor,  which  law 


§  768  MACHINE  701 

is  that,  when  the  handle  is  rotated  in  one  direction  the  bit  is  compelled,  by 
the  ratchet  mechanism,  to  rotate  with  the  handle,  and  when  the  handle 
is  rotated  in  the  other  direction,  the  law  is  that  the  bit  shall  remain  at  rest. 
It  will  be  seen  that  no  one,  nor  all,  of  the  following  definitions  distinctly 
classifies  these  two  devices  —  the  one  as  an  article  of  manufacture  and  the 
other  as  a  machine. 

On  the  other  hand,  passing  from  matters  of  sharp  distinction  to  those  of 
broad  construction,  the  law  has  never  clearly  distinguished  between  a  machine 
and  an  aggregation  or  a  so-called  "  system."  Perhaps  the  nearest  approaches 
have  been  in  Dunbar  v.  Eastern,  81  Fed.  201  (§48)  and  Western  v.  Rochester, 
145  Fed.  41  (§  698).  It  is  evident  that  the  definition  of  a  machine  must  be 
redrawn  to  mark  the  distinction  between  those  true  combinations  patentable 
under  the  statute  and  the  ever-increasing  number  of  constructions  which 
are  the  product  of  engineering  skill,  but  which,  however  useful  and  however 
skillfully  devised,  are  nevertheless  aggregations  and  systems,  and  clearly 
non-patentable. 

The  term  "  machine  "  includes  every  mechanical  device  or  combination  of 
mechanical  powers  and  devices  to  perform  some  function  and  produce  a 
certain  effect  or  result.  But  when  the  effect  or  result  is  produced  by  chemical 
action  by  the  operation  or  application  of  some  element  or  power  of  nature, 
or  of  one  substance  to  another,  such  modes,  methods  or  operations  are  called 
processes.  —  Corning  v.  Burden,  15  How.  252;   14  L.  Ed.  683. 

A  machine  is  a  concrete  thing,  consisting  of  parts,  or  of  certain  devices. 
The  principle  of  a  machine  is  properly  defined  to  be  "  its  mode  of  operation  " 
or  the  peculiar  combination  of  devices  which  distinguishes  it  from  other 
machines.  A  machine  is  not  a  principle  or  an  idea.  The  use  of  ill  defined 
abstract  phraseology  is  the  frequent  source  of  error.  —  Burr  v.  Duryee,  68 
U.  S.  531 ;  17  L.  Ed.  750. 

The  doctrine  which  is  applicable  to  a  machine  patent  is  of  a  kindred 
character  with  that  applied  in  this  country  and  in  England  to  a  patent  for 
a  process.  —  Morley  v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 

McCormick  v.  Talcott,  61  U.  S.  402;  Chicago  v.  Sayles,  97  U.  S.  554;  Clough  v. 
Barker,  106  U.  S.  166;  Duff  v.  Sterling,  107  U.  S.  636;  Consolidated  v.  Crosby,  113 
U.  S.  157.  y 

And  comparing,  Tilghman  v.  Proctor,  102  U.  S.  707;  Nelson  v.  Hartford,  1 
Web.  P.  C.  295;  O'Reilly  v.  Morse,  56  U.  S.  62,115;  Curtis  v.  Piatt  (note)  L.  R. 
3  Ch.  Div.  134;  Badische  v.  Levinstein,  L.  R.  24  Ch.  Div.  156,  171;  Jupe  v. 
Pratt,  1  Web.  P.  C.  146;  Househillv.  Nelson,  1  Web.  P.  C.  685;  Proctor  v.  Bennis, 
L.  R.  36  Ch.  Div.  740;  Clark  v.  Adie,  L.  R.  2  App.  Cas.  315,  320. 

The  argument  that  a  machine  must  be  automatic  in  order  to  be  patentable 
is  not  sound.  A  piano  is  not  automatic,  nor  is  any  tool  or  implement  intended 
for  use  by  hand.  But  improvements  in  any  such  tool  used  in  an  art  or 
industry  are  patentable.  —  Weatherhead  v.  Coupe,  147  U.  S.  322;  37  L. 
Ed.  188;   13  S.  Ct.  312. 

A  machine  or  structure  may  embody  several  different  inventions.  There 
may  be  subcombinations  in  a  machine  which  are  new  and  useful,  and  operate 
conjointly  to  perform  some  subordinate  function.  Such  a  sub-combination,  if 
not  patented  by  a  claim,  might  be  appropriated  by  another  without  infringing 
a  patent  for  a  machine.  Being  for  a  different  invention,  it  is  the  proper 
subject  for  a  distinct  patent.  —  Thompson-Houston  v.  Elmira,  71  Fed.  396; 
18  C.  C.  A.  145. 


702  THE    FIXED    LAW    OF    PATENTS  §§  769-770 

§  769.     Right  to  Use. 

When  the  patented  machine  passes  rightfully  to  the  hands  of  the  purchaser 
from  the  patentee,  or  from  any  other  person  by  him  authorized  to  convey  it, 
the  machine  is  no  longer  within  the  limits  of  the  monopoly.  By  a  valid  sale 
the  machine  becomes  the  private  individual  property  of  the  purchaser,  and 
is  no  longer  protected  by  the  laws  of  the  U.  S.  but  by  the  laws  of  the  state  in 
which  it  is  situated.  —  Chaffee  v.  Boston,  63  U.  S.  217;   16  L.  Ed.  240. 

The  lawful  purchase  of  a  patented  machine  carries  with  it  the  right  to  use 
the  machine,  regardless  of  renewals  or  extensions  of  the  patent,  until  it  is 
worn  out.  —  Bloomer  v.  Millinger,  68  U.  S.  340;   17  L.  Ed.  581. 

Wilson  v.  Rousseau,  4  How.  640;  Bloomer  v.  McQueewan,  14  How.  549;  Chaffee 
v.  Boston,  22  How.  223;  Crane  v.  Price,  Web.  P.  C.  413. 

A  license  to  use  and  operate  during  the  life  of  the  patent  carries  the  right 
to  repair  and  right  to  continue  use  after  extension.  —  Mitchell  v.  Hawley, 
83  U.  S.  544;  21  L.  Ed.  322. 

Bloomer  v.  Millinger,  1  Wall.  350. 

The  lawful  purchase  of  a  machine  carries  with  it  the  right  to  use  the 
patented  device  embodied.  —  Adams  v.  Burks,  84  U.  S.  453;  21  L.  Ed.  700. 

Right  to  patented  machine  carries  with  it  the  right  to  use  and  sell  the 
product  of  that  machine.  —  Morgan  v.  Albany,  152  U.  S.  425;  38  L.  Ed.  500; 
14  S.  Ct.  627. 


MACHINE  AND  PROCESS. 

General  Rules  §  770  |      See  —  Machine  §  768 

§  770.     General  Rules. 

A  machine  may  be  new,  and  the  product  or  manufacture  proceeding  from 
it  may  be  old.  In  that  case  the  former  would  be  patentable  and  the  latter  not. 
The  machine  may  be  substantially  old  and  the  product  new.  In  that  event, 
the  latter  and  not  the  former,  would  be  patentable.  In  the  former  case  both 
would  be  patentable ;  in  the  latter,  neither.  The  same  remarks  apply  to  pro- 
cesses and  their  results.  Patentability  may  exist  as  to  either,  neither  or  both, 
according  to  the  fact  of  novelty,  or  the  opposite.  The  patentability  or  the 
issuing  of  a  patent  as  to  one,  in  no  wise  affects  the  rights  of  the  inventor  or 
discoverer  in  respect  to  the  other.  They  are  wholly  disconnected  and  inde- 
pendent facts.  Such  is  the  sound  and  necessary  construction  of  the  statute. 
—  Rubber  Co.  v.  Goodyear,  76  U.  S.  788;   19  L.  Ed.  566. 

Undoubtedly  a  patentee  may  claim  and  obtain  a  patent  for  an  entire 
combination  or  process,  and  also  for  such  parts  of  the  combination  or  process 
as  are  new  and  useful  or  he  may  claim  and  obtain  a  patent  for  both.  — 
Railroad  v.  Dubois,  79  U.  S.  47;  20  L.  Ed.  265. 

The  driven  well  patent  is  for  a  process  and  not  a  machine,  as  the  process  is 
used  whenever  water  is  drawn.  —  Andrews  v.  Hovey,  124  U.  S.  694;  31  L. 
Ed.  557 ;  8  S.  Ct.  676. 

McClurg  v.  Kingsland,  1  How.  202;  Beedle  v.  Bennett,  122  U.  S.  71. 

It  is  upon  its  face  "  for  an  improved  process  of  manufacture," 
and  mechanism   is   shown   and   described   simply  for   the    purpose   of  ex- 


§771  4  MACHINE   AND    PRODUCT  703 

hibiting  its  operation,  which  is  described  in  detail.  The  result  is  a  more 
perfect  article,  but  it  was  not  because  the  patentee  had  discovered  anything 
new  in  the  result  produced,  but  because  the  mechanism  was  better  adapted 
to  produce  that  result  than  anything  that  had  been  known.  As  devices  of 
that  description  had  been  produced  before,  doubtless,  with  great  care  in 
manufacture  of  them,  one  as  perfect  as  plaintiff's  might  have  been  made. 
So  that  all  that  he  invented  in  fact  was  a  machine  for  the  more  perfect 
manufacture  of  such  devices.  The  operation  or  function  of  such  a  machine 
however,  is  not  patentable  as  a  process.  —  Risdon  v.  Medart,  158  U.  S.  68; 
39  L.  Ed.  899;  15  S.  Ct.  745. 

Neilson  v.  Harford,  1  Web.  P.  C.  331;  O'Reilly  v.  Morse,  56  U.  S.  62,115;  House- 
hill  v.  Neilson,  1  Web.  P.  C.  673;  Tilghman  v.  Proctor,  102  U.  S.  708;  Mowry  v. 
Whitney,  81  U.  S.  620;  Cochrane  v.  Deener,  94  U.  S.  780;  New  Process  v.  Maus, 
122  U.  S.  413;  Telephone  Cases,  126  U.  S.  1;  Bell  Tel.  v.  Dolber,  15  Fed.  488; 
Weyeth  v.  Stone,  1  Story,  273;  Corning  v.  Burden,  56  U.  S.  252;  McKay  v. 
Jackman,  12  Fed.  615;    Brainard  v.  Cramme,  12  Fed.  621;    Gage  v.  Kellogg, 

23  Fed.  891;  Hatch  v.  Moffit,  15  Fed.  253;  Sickles  v.  Falls,  4  Blatchf.  518;  Ex- 
celsior v.  Union,  32  Fed.  221. 

Can  it  be  said  that  a  process  and  an  apparatus  are  inevitably  so  inde- 
pendent as  never  to  be  "  connected  in  their  design  and  operation?  "  They 
may  be  completely  independent.  But  they  may  be  related.  They  may 
approach  each  other  so  nearly  that  it  will  be  difficult  to  distinguish  the  process 
from  the  function  of  the  apparatus.  In  such  cases  the  apparatus  would  be 
the  dominant  thing.  But  the  dominance  may  be  reversed  and  the  process 
carry  an  exclusive  right,  no  matter  what  apparatus  may  be  devised  to  per- 
form it.  — U.  S.  ex  rel.  Steinmetz  v.  Allen,  192  U.  S.  543;  48  L.  Ed.  555; 

24  S.  Ct.  416. 

Cochrane  v.  Deener,  94  U.  S.  780;  Telephone  Cases,  126  U.  S.  1. 

Whether  such  a  process  patent  might  have  been  valid  for  the  steps  in  pill- 
dipping  pointed  out  in  the  complainant's  specifications,  we  need  not  discuss, 
because  the  complainant,  as  a  condition  of  getting  the  patent  in  suit,  expressly 
abandoned  and  withdrew  an  application  for  just  such  a  process  patent,  and  he 
is  thereby  estopped  from  contending  for  any  construction  of  his  present 
patent  which  would,  in  effect,  secure  him  the  same  thing.  —  Stearns  v. 
Russell,  85  Fed.  218;  29  C.  C.  A.  121. 

Sutter  v.  Robinson,  119  U.  S.  530;  Shepard  v.  Carrigan,  116  U.  S.  593;  Leggett 
v.  Avery,  101  U.  S.  256. 

MACHINE  AND  PRODUCT. 

General  Rules  §  771 

§  771.     General  Rules. 

Patents  for  a  machine  will  not  be  sustained  if  the  claim  is  for  a  result,  the 
established  rule  being  that  the  invention,  if  any,  within  the  meaning  of  the 
Patent  Act,  consists  in  the  means  or  apparatus  by  which  the  result  is  obtained, 
and  not  merely  in  the  mode  of  operation,  independent  of  the  mechanical 
devices  employed;  nor  will  a  patent  be  held  valid  for  a  principle  or  for  an 
idea  or  any  other  mere  abstraction.  —  Fuller  v.  Yentzer,  94  U.  S.  288;  24 
L.  Ed.  103. 

Dissenting:    Strong,  Waite,  Miller,  Bradley. 

Burr  v.  Duryee,  1  Wall.  531. 

A  patent  upon  a  machine  may  also  cover  a  manufacture.  —  Miller  v. 
Eagle,  151  U.  S.  186;  38  L.  Ed.  121;  14  S.  Ct.  310. 


704  THE    FIXED   LAW   OF   PATENTS  §§  772-774 

Where  right  to  use  patented  machine  is  acquired  right  to  use  and  sell 
product  goes  with  it.  —  Morean  v.  Albany,  152  U.  S.  425;  38  L.  Ed.  500; 
14  S.  Ct.  627. 

We  do  not  think  that  an  article  manufactured  in  a  machine  in  the  manner 
and  for  the  purposes  contemplated  when  the  machine  itself  was  made,  can  be 
held  to  be  a  part  of  the  machine  which  so  produces  it.  —  American  v.  Streat, 
83  Fed.  700;  28  C.  C.  A.  18. 

Morgan  v.  Albany,  152  U.  S.  425. 


MANUFACTURE. 

Statute  and  General  Statement  §  772 
Manufacture  and  Product  §  773  (see 
§771) 

Novelty  §  774 
Patentability  §  775 


See  —  Aggregation  §  46;  Art  §  146; 
Composition  of  Matter  §  264;  Machine 
and  Product  §  771;  Process  §§  820-1; 
Product  §  823 


§  772.    Statute  and  General  Statement. 

Manufactures  constitute  the  third  class  of  patentable  inventions  under 
sec.  4886.  The  Supreme  Court  has  held  that  a  manufacture  may  mean  either 
the  process  or  the  product.  Merrill  v.  Yeomans,  94  U.  S.  568.  Shall  we  then 
say  that  the  art  of  making  carborundum  by  electrolytic  decomposition  and 
synthesis  belongs  in  the  same  class  with  the  invention  of  a  new  and  useful 
tool?  It  is  at  once  clear  that,  as  in  the  case  of  an  art  (§  147),  the  classifica- 
tion of  patentable  inventions  as  made  by  the  statute  and  as  made  by  the 
courts  do  not  agree  in  terminology. 

§  773.    Manufacture  and  Product. 

After  a  patent  is  granted  for  an  article  described  as  made  by  causing  it  to 
pass  through  a  certain  method  of  operation  to  produce  it,  the  inventor 
cannot  afterwards,  on  an  independent  application,  secure  a  patent  for  the 
method  or  process  covered  by  the  previous  patent,  which  article  was  described 
in  that  patent  as  produced  by  the  method  or  process  sought  to  be  covered 
by  taking  out  the  second  patent.  —  Mosler  v.  Mosler,  127  U.  S.  354;  32  L. 
Ed.  182;  8  S.  Ct.  1148. 

Where  a  patent  upon  an  article  of  manufacture  does  not  claim  the  com- 
position of  matter,  though  it  describes  it,  such  omission  is  public  dedication 
of  the  said  composition.  —  Underwood  v.  Gerber,  149  U.  S.  224;  37  L.  Ed. 
710;   13  S.  Ct.  854. 

§  774.     Novelty. 

But  whether,  within  the  meaning  of  the  patent  law,  a  device  should  be 
deemed  to  be  a  manufacture  or  a  machine,  in  order  to  be  patentable,  it  must 
be  novel;  and  by  the  decided  cases  the  test  of  novelty  would  seem  to  be 
essentially  the  same  in  the  one  instance  as  in  the  other.  —  Campbell  v. 
Bayley,  63  Fed.  463;  11  C.  C.  A.  284. 

Glue  Co.  v.  Upton,  4  Cliff.  237  F.  C.  9,607;  Collar  Co.  v.  Vandeusen,  23  Wall. 
530;  Wood  Paper  Pat.  23  Wall.  566;  Cochrane  v.  Badische,  111  U.  S.  293;  Reck- 
endorfer  v.  Faber,  92  U.  S.  347. 

This  is  for  the  constructed  article  and  not  for  the  art  of  constructing  it. 
(That  is,  the  claim.)  All  suggestions,  therefore,  about  the  economy  of  con- 
structing the  blanks  by  cutting  them  off  widthwise  from  a  strip  of  a  plate  of 


§  775  MANUFACTURE  705 

metal,  so  that  the  wide  and  narrow  ends  of  the  plate  shall  alternate  and  thus 
utilize  the  whole  of  the  metal  are  irrelevant.  —  Strom  v.  Weir,  83  Fed.  170; 
27  C.  C.  A.  502. 


§  775-     Patentability. 

For  general  rules  as  to  limitation  of  patentability  of  a  manufacture,  see 
Rubber  Tip  v.  Howard,  87  U.  S.  498;  22  L.  Ed.  410. 

Nothing  short  of  invention  or  discovery  will  support  a  patent  for  a  manu- 
facture any  more  than  for  an  art,  machine  or  composition  of  matter.  — 
Union  v.  Vandeusen,  90  U.  S.  530;  23  L.  Ed.  128. 

Hotchkiss  v.  Greenwood,  11  How.  265;  Phillips  v.  Page,  24  How.  167;  Jones  v. 
Morehead,  1  Wall.  162;    Simpson  v.  Woodman,  10  Wall.  121. 

Articles  of  manufacture  may  be  new  in  the  commercial  sense  when  they  are 
not  new  in  the  sense  of  the  patent  law.  —  Union  v.  Vandeusen,  90  U.  S.  530; 
23  L.  Ed.  128. 

Glue  Co.  v.  Upton,  6  O.  G.  840. 

The  Patent  Office  fully  comprehends  the  rule  that  new  articles  of  commerce 
are  not  patentable  as  new  manufactures,  unless  it  appears  in  the  given  case 
that  the  production  of  the  new  articles  involved  the  exercise  of  invention  or 
discovery  beyond  what  was  necessary  to  construct  the  apparatus  for  its 
manufacture  or  production.  —  Milligan  v.  Upton,  97  U.  S.  3 ;  24  L.  Ed.  985. 

Ex  parte  Ackerson,  C.  D.  1869,  75;  Ex  parte  Chatillon,  2  O.  G.  115;  Bates  v. 
Serger,  2  O.  G.  493;  Ex  parte  Jerome,  3  O.  G.  64;  Ex  parte  Adams,  3  O.  G.  150; 
Ex  parte  Wattles,  3  O.  G.  291;  Ex  parte  Leggett,  2  O.  G.  199;  Ex  parte  Baxter, 
2  O.  G.  470;  Ex  parte  Beach,  3  O.  G.  607;  Draper  v.  Hudson,  3  O.  G.  354;  Saw- 
yer v.  Bixby,  1  O.  G.  165;  Merrill  v.  Yeomans,  5  O.  G.  267. 

A  distinction  must  be  observed  between  a  new  article  of  commerce  and  a 
new  article  which,  as  such,  is  patentable.  Any  change  in  form  from  a  previous 
condition  may  render  the  article  new  in  commerce;  as  powdered  sugar  is 
a  different  article  in  commerce  from  loaf  sugar,  and  ground  coffee  is  a  different 
article  in  commerce  from  coffee  in  the  berry.  But  to  render  the  article  new 
in  the  sense  of  the  patent  law,  it  must  be  more  or  less  efficacious,  or  possess 
new  properties  by  a  combination  with  other  ingredients;  not  from  a  mere 
change  of  form  produced  by  a  mechanical  division.  It  is  only  where  one  of 
these  results  follows  that  the  product  of  the  compound  can  be  treated  as 
the  result  of  invention  or  discovery  and  be  regarded  as  a  new  and  useful 
article.  —  Milligan  v.  Upton,  97  U.  S.  3;  24  L.  Ed.  985. 

Approving,  Hotchkiss  v.  Greenwood,  11  How.  265;  Phillips  v.  Paige,  24  How. 
167;  Jones  v.  Morehead,  1  Wall.  162;  Simpson  v.  Woodman,  10  Wall.  121;  Knight 
v.  R.  R.  Comp.  (Taney  C.  C.)  109;  Bean  v.  Smallwood,  2  Story,  411;  Winans  v. 
R.  R.  2  Story,  416;  Hicks  v.  Kelsey,  18  Wall.  670;  Union  v.  Vandeusen,  10 
Blatchf.  119;  Langdon  v.  DeGroot,  1  Paine,  204;  LeRoy  v.  Tatham,  14  How.  175. 

Where  certain  properties  are  known  to  belong  generally  to  classes  of 
articles  there  can  be  no  invention  in  putting  a  new  species  of  the  class  in  a 
condition  for  the  development  of  its  properties  similar  to  that  in  which  other 
species  of  the  same  class  have  been  placed  for  similar  development ;  nor  can 
the  changed  form  of  the  article  from  its  condition  in  bulk  to  small  particles, 
by  breaking  or  crushing  or  slicing  or  rasping  or  filing  or  grinding  or  sifting, 
or  other  similar  mechanical  means,  make  it  a  new  article,  in  the  sense  of  the 
patent  law.  —  Milligan  v.  Upton,  97  U.  S.  3;  24  L.  Ed.  985. 


706  THE    FIXED   LAW   OF   PATENTS  §  776 

Where  a  manufacture  is  claimed  without  claiming  the  composition  of 
matter,  in  view  of  the  art  the  patent  was  held  void.  —  Brigham  v.  Coffin, 
149  U.  S.  557;  37  L.  Ed.  845;  13  S.  Ct.  939. 

Underwood  v.  Gerber,  149  U.  S.  224. 

A  claim  which  does  not  describe  an  article  differing  at  all  in  its  completed 
state  from  prior  articles  is  clearly  invalid.  —  Risdon  v.  Medart,  158  U.  S. 
68;  39  L.  Ed.  899;  15  S.  Ct.  745. 

The  patent  in  suit  is  for  a  manufacture,  and  therefore  entitled  to  a  more 
liberal  construction  or  treatment  in  respect  to  the  question  of  aggregation  of 
parts,  than  if  the  invention  were  a  machine.  This  distinction  is  stated  by 
Robinson  on  Patents,  sec.  185,  n.,  but  the  definition  can  hardly  be  deemed 
clear  enough  for  practical  application.  —  Campbell  v.  Bay  ley,  63  Fed.  463; 
11  C.  C.  A.  284. 

An  article  of  manufacture  must  be  patentable,  if  patentable  at  all,  apart 
from  the  mechanical  means  employed  in  its  production.  —  Andrews  v. 
Thum,  67  Fed.  911 ;  15  C.  C.  A.  67. 

It  is  only  when  a  new  process  introduces  new  characteristics  into  the 
manufactured  article  by  which  it  can  be  identified  and  distinguished  from  all 
preceding  manufactures  that  the  article  itself  becomes  patentably  new.  — 
National  v.  New  England,  151  Fed.  19;  80  C.  C.  A.  485. 

If  a  lace  front  stocking  is  claimed  as  a  patentable  product,  when  made 
on  a  seamless  machine  with  a  single  thread,  in  a  continuous  operation, 
every  other  well  known  form  of  stocking  can  be  considered  a  patentable 
product  when  so  made,,  which  would  amount  to  a  practically  indefinite 
extension  of  the  monopoly  originally  granted  by  the  patent  for  the  seamless 
stocking.  It  must  be  admitted  that  it  is  somewhat  difficult  to  properly 
define  in  general  terms  what  is  or  is  not  a  patentable  "  manufacture,"  and  dis- 
tinguish it  from  the  mere  effect  or  result  of  a  process  or  machine.  The  difficulty 
possibly  arises  from  what  Robinson  calls  the  want  of  technical  language 
that  will  clearly  express  all  that  the  words  "  new  and  useful  manufacture  " 
in  the  patent  law  connotes.  But  however  this  may  be,  the  difficulty  is  best 
met,  as  in  the  interpretation  of  all  statutes,  by  a  close  adherence  to  the 
ordinary  and  common  sense  meaning  and  usage  of  the  words  employed  to 
express  the  legislative  will.  A  new  and  useful  product  or  manufacture  must 
be  differentiated  from  all  other  articles,  by  something  that  is  fundamental 
and  radical.  In  a  machine-made,  seamless,  lace  front  stocking,  we  do  not 
find  this  radical  differentiation  from  the  subject-matter  of  the  patent  in 
suit.  —  Kilborn  v.  Liveright,  165  Fed.  902;  C.  C.  A. 

Collar  Co.  v.  Vandeusen,  23  WaU.  530;  McCloskey  v.  Du  Bois,  8  Fed.  710; 
Weierman  v.  Shaw,  157  Fed.  928. 

MARKING  "  PATENTED." 

The  Statute  §  776  |       Rulings  Under  the  Statute  §  777 

§  776.    The  Statute. 

It  shall  be  the  duty  of  all  patentees,  and  their  assigns  and  legal  repre- 
sentatives, and  of  all  persons  making  or  vending  any  patented  article 
for  or  under  them,  to  give  sufficient  notice  to  the  public  that  the  same  is 
patented;  either  by  fixing  thereon  the  word  "  patented,"  together  with  the 
day  and  year  the  patent  was  granted;  or  when,  from  the  character  of  the 
article,  this  can  not  be  done,  by  fixing  to  it,  or  to  the  package  wherein  one  or 


§  777  MARKING        PATENTED  "  707 

more  of  them  is  enclosed,  a  label  containing  the  like  notice;  and  in  any 
suit  for  infringement,  by  the  party  failing  so  to  mark,  no  damages  shall  be 
recovered  by  the  plaintiff,  except  on  proof  that  the  defendant  was  duly 
notified  of  the  infringement,  and  continued,  after  such  notice,  to  make,  use, 
or  vend  the  article  so  patented.    R.  S.  4900. 

§  777.     Rulings  under  the  Statute. 

In  view  of  the  fact  that  all  letters  patent  are  recorded,  with  their  specifi- 
cations, in  the  Patent  Office,  a  record  which  is  notice  to  all  the  world,  it  is 
not  an  unreasonable  requirement  that  the  defendant,  who  relies  upon  a  want 
of  knowledge  upon  his  part  of  the  actual  existence  of  the  patent,  should 
aver  the  same  in  his  answer,  that  the  defendant  may  be  duly  advised  of  the 
defense.  —  Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609;  12  S.  Ct.  799. 

Providence  v.  Goodyear,  79  U.  S.  788;  Allen  v.  Deacon,  10  Sawy.  210. 

Failure  to  mark  article  "  patented  "  or  to  give  notice  is  a  bar  to  the  re- 
covery of  more  than  nominal  damages;  and  where  the  question  of  notice  is 
in  dispute  it  should  be  left  to  the  jury.  —  Coupe  v.  Royer,  155  U.  S.  565; 
39  L.  Ed.  263;  15  S.  Ct.  199. 

Providence  v.  Goodyear,  76  U.  S.  801;  Sessions  v.  Romadka,  145  U.  S.  50; 
Dunlap  v.  Schofield,  152  U.  S.  247. 

The  contention  of  the  appellants  that  there  is  no  proof  that  complainant 
gave  public  notice  of  his  patent  by  marking  his  machines  relates  only  to  the 
question  of  damages.  —  Inman  v.  Beach,  71  Fed.  420;  18  C.  C.  A.  165. 

The  question  is  not  whether  the  rules  of  pleading  required  the  allegation  of 
notice  in  a  bill  in  equity  which  asked  for  damages  and  profits  (that  question 
is  settled  in  Dunlap  v.  Schofield,  supra) ;  but  it  is  whether  the  neglect  to  take 
notice  of  the  omission,  either  by  answer  or  by  any  other  form,  until  after  the 
final  decree,  was  not  a  waiver  of  the  want  of  notice.  It  was  so  held  in  Rubber 
Co.  v.  Goodyear,  9  Wall.  811,  where  the  point  of  want  of  notice  did  not  appear 
until  the  hearing  before  the  master,  and  the  court  held  that  the  triable  issue 
must  be  confined  to  the  pleadings.  This  was  affirmed  in  Sessions  v. 
Romadka,  145  U.  S.  29.  In  Dunlap  v.  Schofield,  supra,  (a  bill  in  equity  to 
recover  damages),  the  bill  and  answer  made  the  proper  averments  and 
denials,  but  no  proof  was  given,  and  the  court  held  that  the  burden 
of  proof  rested  upon  the  complainant.  In  Coupe  v.  Royer,  155  U.  S.  583, 
the  pleadings  were  silent;  but  the  question  was  actually  litigated  upon  the 
trial  by  contradictory  evidence,  and  the  court  thought  that  it  should  have 
been  submitted  to  the  jury.  In  this  case  the  pleadings  were  silent.  The 
question  never  became  one  actually  in  issue,  and  was  never  raised  in  the 
circuit  court. 

It  is  too  late  to  raise  for  the  first  time  in  an  appellate  court  technical 
questions  of  pleading  or  proof  which  are  not  jurisdictional  in  their  character, 
and  which  were  not  raised  either  in  the  pleadings  or  before  the  trial  courts, 
where  defects  might  have  been  remedied,  and  which  must  therefore,  be 
considered  to  have  been  waived.  It  is  therefore  not  necessary  to  consider 
whether  the  provisions  of  section  4900  are  applicable  only  to  cases  in  law  or 
in  equity,  in  which  damages,  as  distinguished  from  profits,  are  the  subject 
of  investigation.  —  Tuttle  v.  Claflin,  76  Fed.  227 ;  22  C.  C.  A.  138. 

The  defendants  seem  to  place  stress  upon  the  fact  that  the  complainant's 
boxes  had  been  marked  with  the  dates  of  other  patents  beside  that  of  the 
patent  in  suit.  This  solitary  fact  is  of  no  importance  if  the  patents  are  of  no 
importance.  —  National  v.  Elsas,  86  Fed.  917;   30  C.  C.  A.  487. 


708  THE    FIXED   LAW   OP   PATENTS  §  778 

That  the  failure  to  mark  the  articles  or  packages  with  the  word  "  patented," 
in  order  to  be  employed  as  a  bar  against  recovery,  the  fact  must  be  dis- 
tinctly pleaded,  see  —  Hart  v.  Anchor,  92  Fed.  657;  34  C.  C.  A.  606. 

Sessions  v.  Romadka,  145  U.  S.  29. 

As  a  result  of  a  neglect  to  mark,  or  to  notify  the  defendants  in  the  absence 
of  it,  damages  are  denied  by  the  statute;  the  infringement  being  otherwise 
presumptively  innocent.  An  issue  being  made  by  the  answer,  a  compliance 
with  the  statute  is  required  to  be  affirmatively  shown  in  order  to  lay  ground 
for  an  account.  It  is  immaterial  that  in  the  present  instance  the  complainants 
neither  license  nor  sell  their  machines,  reserving  the  benefit  of  the  patent 
for  the  advantage  of  their  own  business.  The  fact  still  remains  that  without 
notice,  either  direct  or  constructive,  the  defendants  are  entitled  to  be  re- 
garded as  acting  innocently,  and  so  not  liable  to  damages,  by  the  express 
provision  of  the  statute.  —  American  v.  Mills,  162  Fed.  147;  89  C.  C.  A.  171. 

Dunlap  v.  Schofield,  152  U.  S.  244;   U.  S.  Mitis  v.  Midvale,  135  Fed.  103. 

Note:  This  decision  is  distinctly  a  step  in  the  right  direction.  It  only 
remains  to  make  "  notice,  either  direct  or  constructive,"  positively  sufficient 
to  meet  the  demands  of  the  statute. 

There  is  no  evidence  in  the  record  which  shows  or  tends  to  show  any  actual 
or  constructive  notice  to  the  defendant  of  the  patent  in  suit  prior  to  the  filing 
of  the  bill  of  complaint.  Under  circumstances  like  these,  however,  an  ac- 
counting of  profits  and  damages  subsequent  to  the  date  of  the  filing  of  the  bill 
was  allowed  by  this  court  in  American  v.  Mills,  162  Fed.  147.  The  mandate  in 
that  case,  by  implication  at  least,  clearly  permitted  such  an  accounting,  and 
we  have  not  been  referred  to  any  controlling  authority  to  the  contrary.  Turn- 
ing to  the  statute  upon  this  point  (R.  S.  4900),  this  goes  no  further  than  to  pro- 
hibit the  recovery  of  damages  without  proof  of  notice.  It  prescribes  no  par- 
ticular form  of  notice  or  any  particular  time  for  the  accounting.  To  permit 
an  accounting,  therefore,  after  notice  is  given  by  the  filing  of  the  bill,  if  the 
complainant  shall  establish  his  right  thereto,  does  not  contravene  the  statute, 
since,  notwithstanding  such  notice,  the  complainant  can  recover  no  damages 
unless  it  affirmatively  shows  infringement  after  notice. 

As  the  proofs  now  stand,  the  complainant  can  recover  no  damages;  but 
if  he  shall  be  able  to  show  infringement  after  the  bill  was  filed,  we  see  no  rea- 
son why  it  should  not  be  permitted  to  do  so,  and  recover  the  amount  so  shown, 
and  in  this  suit.  If  the  complainant's  proofs,  when  taken,  shall  not  affirma- 
tively disclose  infringement  subsequent  to  the  filing  of  the  bill,  it  will  be 
mulcted  with  costs,  and  the  defendant  will  not  have  been  injured.  —  Maimen 
v.  Union,  165  Fed.  440;  C.  C.  A. 

MORTGAGE. 

General  Statement  and  Rulings  §  778  |       See  —  Assignment  §  149 

§  778.     General  Statement  and  Rulings. 

A  mortgage  interest  is  an  assignable  and  recordable  interest  under  Sec. 
4898.  It  is  a  curious  fact  that  all  of  the  appellate  law  bearing  directly  upon 
this  subject  centers  about  the  Waterman  Cases. 

The  right  conferred  by  letters  patent  for  an  invention  is  limited  to  a  term 
of  years;  and  a  large  part  of  its  value  consists  in  the  profits  derived  from 
royalties  and  license  fees.  In  analogy  to  the  rules  governing  mortgages  to 
lands  and  chattels,  and  even  with  stronger  reason,  the  assignee  of  a  patent  by 
a  mortgage  duly  recorded,  whose  security  is  constantly  wasting  by  the  lapse 
of  time,  must  be  held,  (unless  otherwise  provided  in  the  mortgage)  entitled 


§  778  MORTGAGE  709 

to  grant  licenses  to  receive  fees  and  royalties,  and  to  have  an  account  of 
profits  or  an  award  of  damages  against  infringers.  There  can  be  no  doubt 
that  he  is  "  the  party  interested  either  as  patentee,  assignee  or  grantee," 
and  as  such  entitled  to  maintain  an  action  at  law  to  recover  damages  for  an 
infringement;  and  it  cannot  have  been  the  intention  of  Congress  that  a 
suit  in  equity  against  an  infringer  to  obtain  an  injunction  and  an  account  of 
profits,  in  which  the  court  is  authorized  to  award  damages,  when  necessary 
to  fully  compensate  the  plaintiff,  and  has  the  same  powers  to  treble  the 
damages  as  in  an  action  at  law,  should  not  be  brought  by  the  same  person.  — 
Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 
Root  v.  Railway,  105  U.  S.  189;   U.  S.  R.  S.  sec.  4919. 

A  patent  right  is  incorporeal  property,  not  susceptible  of  actual  delivery  and 
possession,  and  the  recording  of  a  mortgage  thereof  in  the  Patent  Office,  in  ac- 
cordance with  the  Act  of  Congress  is  equivalent  to  a  delivery  of  possession,  and 
makes  the  title  of  the  mortgagee  complete  towards  all  other  persons,  as  well  as 
against  the  mortgagor.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L. 
Ed.  923;   11  S.  Ct.  334. 

This  instrument  being  a  conveyance  made  to  secure  the  payment  of  a  debt, 
upon  condition  that  it  should  be  avoided  by  the  subsequent  payment  of  that 
debt  at  a  time  fixed,  was  a  mortgage,  in  apt  terms  and  in  legal  effect.  — 
Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

Conard  v.  Atlantic,  26  U.  S.  386,446. 

Whether  the  court  at  the  suggestion  of  mortgagor  or  mortgagee  will  join 
the  mortgagor  to  prevent  multiplicity  of  suits  or  the  miscarriage  of  justice, 
quaere.  —  Waterman  v.  Mackenzie,  138  U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct. 
334. 

After  the  mortgagee  has  taken  possession  the  mortgagor  had  no  power  to 
lease ;  and  the  mortgagor  is  entitled  to  have  and  is  bound  to  account  for  the 
accruing  rents  and  profits,  and  damages.  —  Waterman  v.  Mackenzie,  138 
U.  S.  252;  34  L.  Ed.  923;  11  S.  Ct.  334. 

Keech  v.  Hall,  1  Doug.  21;  Turner  v.  Cameron's,  5  Exch.  932;  Dawson  v. 
Johnson,  1  Fost.  &  F.  656;  Fairclough  v.  Marshall,  L.  R.  4  Exch.  Div.  37;  Sniggs 
v.  Memphis,  108  U.  S.  368;  Teal  v.  Walker,  111  U.  S.  242;  Hutchings  v.  King, 
68  U.  S.  53;  Gove  v.  Jennes,  19  Me.  53;  Bagnall  v.  Villar,  L.  R.  12  Ch.  Div.  812; 
Stelle  v.Carroll,  37  U.  S.  201;  Van  Ness  v.  Hyatt,  38  U.  S.  294;  Brobet  v. 
Brock,  77  U.  S.  519. 

The  mortgage  was  subject  to  the  license  which  had  previously  been  granted 
to  the  complainant,  and  could  in  no  manner  operate  to  restrict  or  curtail  the 
exclusive  right  of  the  complainant  to  make  and  sell  the  patented  improve- 
ments, so  long  as  the  license  should  remain  unrevoked.  The  recital  in  the 
mortgage  of  the  existence  of  this  license  was  notice  of  all  its  terms  and  con- 
ditions. —  Waterman  v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371. 

It  is  entirely  clear  upon  the  authority  of  Waterman  v.  Mackenzie,  138  U.  S. 
252,  that  by  virtue  of  the  mortgage,  the  whole  title  to  the  patents  at  the  time 
of  the  execution  of  the  instrument  became  vested  in  the  mortgagees,  subject 
only  to  be  defeated  by  performance  of  the  condition  or  by  redemption 
within  a  reasonable  time,  and  that  the  right  of  possession  of  the  in- 
corporeal property  was  in  legal  effect  delivered  to  the  mortgagees  at 
the  time  of  the  recording  of  the  mortgage  in  the  Patent  Office.  —  Waterman 
v.  Shipman,  55  Fed.  982;  5  C.  C.  A.  371. 


710  THE   FIXED   LAW   OF   PATENTS  §§  779-780 

OATH. 


Statutory  Requirements  and  General 
Rule  §  779 
Supplemental  Oath  §  780 


See  —  Amendment    §    52;     Defenses 
S306 


§  779.     Statutory  Requirements  and  General  Rule. 

The  applicant  shall  make  oath  that  he  does  verily  believe  himself  to  be  the 
original  and  first  inventor  or  discoverer  of  the  art,  machine,  manufacture, 
composition  or  improvement  for  which  he  solicits  a  patent ;  and  that  he  does 
not  know  and  does  not  believe  that  the  same  was  ever  before  known  or  used, 
and  shall  state  of  what  country  he  is  a  citizen.  Such  oath  may  be  made 
before  any  person  within  the  United  States  authorized  by  law  to  administer 
oaths,  or,  when  the  applicant  resides  in  a  foreign  country,  before  any  minister, 
charge  d'affaires,  consul,  or  commercial  agent  holding  commission  under  the 
Government  of  the  United  States,  or  before  any  notary  public,  judge,  or 
magistrate  having  an  official  seal  and  authorized  to  administer  oaths  in  the 
foreign  country  in  which  the  applicant  may  be,  whose  authority  shall  be  proved 
by  certificate  of  a  diplomatic  or  consular  officer  of  the  United  States. — R.S.4892, 
as  amended  Mar.  3,  1903. 

By  the  Act  3  Mar.  1903,  the  clause  in  italics  was  substituted  for  the  original 
clause  which  read:  "  of  the  foreign  country  in  which  the  applicant  may  be." 

Section  4895  provides  for  the  granting  of  patents  to  assignees,  and  specifi- 
cally provides  that  the  application  must  be  made  and  the  oath  sworn  to  by 
the  inventor.  It  also  provides  that  in  cases  of  reissue  the  application  must 
be  made  and  the  oath  made  by  the  inventor,  if  living. 

Section  4896  provides  for  the  making  of  oath  by  the  representative  of  a 
deceased  inventor  or  of  an  insane  inventor. 

The  patent  law  makes  it  essential  to  the  validity  of  a  patent  that  it  shall 
be  granted  on  the  application,  supported  by  the  oath  of  the  original  and  first 
inventor  (or  of  his  executor  or  administrator)  whether  the  patent  is  issued 
to  him  or  to  his  assignee.  A  patent  which  is  not  supported  by  the  oath  of  the 
inventor,  but  applied  for  by  one  who  is  not  the  inventor,  is  unauthorized  by 
law,  and  void,  and  whether  taken  out  in  the  name  of  the  applicant  or  of  any 
assignee  of  his,  confers  no  rights  against  the  public.  —  Kennedy  v.  Hazelton, 
128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct.  202. 

U.  S.  R.  S.  4886,  4888,  4892,  4895,  4896,  4920. 

The  recitals  upon  the  face  of  the  patent,  in  the  absence  of  fraud,  are  con- 
clusive evidence  that  the  necessary  oaths  were  taken  by  the  applicants 
before  the  letters  patent  were  granted.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

That  Warren  believed  himself  to  be  the  discoverer  of  his  composition  is 
presumed  from  his  oath  to  that  effect,  and  that  presumption  must  stand 
until  overthrown  by  very  clear  evidence.  —  Warren  v.  City,  166  Fed.  309; 
C.  C.  A. 

Smith  v.  Goodyear,  93  U.  S.  486;  Elizabeth  v.  Pavement  Co.  97  U.  S.  126. 

§  780.     Supplemental  Oath. 

If  the  application  as  amended  were  to  be  construed  as  embodying  such  an 
invention  as  is  now  claimed,  it  was  another  and  different  invention  from  that 
for  which  the  patent  was  originally  sought,  and,  if  an  amendment  having 
the  consequence  was  permissible,  it  should  have  been  verified  by  the  oath  of 
the  inventor.  —  American  v.  Steward,  155  Fed.  731;  84  C.  C.  A.  157. 


§§  781-782  OPERATIVENESS  711 

Ry.  Co.  v.  Sayles,  97  U.  S.  554;  Eagleton  v.  West,  111  U.  S.  490;  Kennedy  v. 
Hazelton,  128  U.  S.  667;  Mich.  v.  Consolidated,  67  Fed.  121;  Cleveland  v.  De- 
troit,  131  Fed.  853. 

Note:  A  dangerous  decision.    See  128  Fed.  599. 


OPERATIVENESS. 

General  Statement  §  781 

Decisions  §  782 

See  —  Anticipation   §   87;     Defenses 


§  314;   Reduction  to  Practice   §  860; 
Reissue  §  884 


§  781.     General  Statement. 

Operativeness  relates  directly  to  utility;  and  while  it  is  true  that  an 
inoperative  device  is  lacking  in  patentable  utility,  the  reverse  does  not 
necessarily  follow.  A  device  may  be  operative  and  still  lack  patentable 
utility.  Furthermore,  operativeness  relates  to  the  matter  of  proper  dis- 
closure of  the  invention  in  the  patent.  One  may  have,  for  example,  a  machine 
which  possesses  both  utility  and  operativeness,  but  if  the  patent  fails  to  show 
an  operative  machine  —  fails  to  show  that  which  would  enable  one  skilled 
in  the  art  to  which  it  appertains  or  is  most  nearly  related  to  make  and  use 
the  same  —  the  invention  viewed  within  the  four  corners  of  the  grant  is 
inoperative.  The  authorities  under  Invention  —  Evidence  of  —  Utility  and 
Invention  —  Utility  should  be  examined  in  connection  with  this  subject. 

§  782.     Decisions. 

The  very  fact  that  a  machine  is  patented  is  some  evidence  of  its  operative- 
ness, as  well  as  of  its  utility.  —  Dashiell  v.  Grosvenor,  162  U.  S.  425;  40 
L.  Ed.  1025;   16  S.  Ct.  805. 

When  a  model  is  constructed  after  a  design  shown  in  a  patent,  which  is 
not  perfectly  operative,  the  inference  is  that  there  was  an  error  in  working  out 
the  drawings,  and  not  that  the  patentee  deliberately  took  out  a  patent  for  an 
inoperative  device.  —  Dashiell  v.  Grosvenor,  162  U.  S.  425;  40  L.  Ed.  1025; 
16  S.  Ct.  805. 

We  are  even  further  from  an  ability  to  determine  that  a  mechanic  of 
ordinary  skill  in  the  art  could  not  make  the  patented  machine  in  issue,  and, 
with  the  aid  of  the  specification,  overcome  the  minor  difficulty  to  which  the 
appellant  refers.  The  law  does  not  require  more  than  this.  Persons  pos- 
sessed of  the  most  brilliant  conceptions  are  sometimes  the  poorest  mechanics. 
—  Packard  v.  Lacing,  70  Fed.  66;   16  C.  C.  A.  639. 

Pickering  v.  McCullough,  104  U.  S.  310;  Telephone  Cases,  126  U.  S.  1;  Rob. 
Pat.  sec.  128-129. 

That  so  long  as  operative  means  are  disclosed,  commercial  efficiency  is  not 
required,  especially  in  a  pioneer  invention,  see  —  Von  Schmidt  v.  Bowers,  80 
Fed.  121;  25  C.  C.  A.  323. 

Mergenthaler  v.  Publishing  Co.  57  Fed.  502. 

But  it  is  erroneous  to  suppose  that  because  the  element,  or  the  combina- 
tion of  elements,  in  a  claim,  do  not  of  themselves  constitute  an  operative 
thing,  or  one  capable  of  any  use,  the  claim  is  therefore  void.  —  Canda  v. 
Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 

It  is  asserted  that  the  Bradley  process  is  not  operative.  Having  found  that 
the  defendant  is  using  the  process  and  it  appearing  that  the  annual  output 


712  THE    FIXED    LAW    OF    PATENTS  §§  783-784 

of  its  works  is  now  over  7,000,000  pounds,  it  seems  unnecessary  to  enter 
upon  an  extended  discussion  of  this  proposition.  —  Electric  v.  Pittsburg, 
125  Fed.  926;  60  C.  C.  A.  636. 

It  is  frequently  a  characteristic  of  generic  inventions  that  their  first 
embodiments  work  imperfectly,  and  where  the  imperfections  may  be  rem- 
edied, as  in  this  case,  by  what  amounts  to  a  mere  readjustment  of  relative 
sizes,  such  change  does  not  affect  the  character  of  the  underlying  creative 
conception.  —  Scott  v.  Fisher,  145  Fed.  915;  76  C.  C.  A.  447. 


PATENT  OFFICE. 

The  Statutes  §  783 
Arbitrary  Conduct  §  784 
Decisions  of  §  785 
Rules  §  786 
Miscellaneous  §  787 


See  —  Adjudication  §  30;  Claims 
§§  207-10;  Commissioner  of  Patents 
§  258;  Injunction  §  575;  Interferences 
§  580;  Invention  §  630;  Res  Judicata 
§  895 


§  783.     The  Statutes. 

The  Secretary  of  the  Interior  is  charged  with  the  supervision  of  business 
relating  to  the  following  subjects: 


Fifth.    Patents  for  invention.  —  R.  S.  441. 

There  shall  be  in  the  Department  of  the  Interior  an  office  known  as  the 
Patent  Office,  where  all  records,  books,  models,  drawings,  specifications, 
and  other  papers  and  things  pertaining  to  patents  shall  be  safely  kept  and 
preserved.  —  R.  S.  475. 

There  shall  be  in  the  Patent  Office  a  Commissioner  of  Patents,  one  As- 
sistant Commissioner,  and  three  examiners-in-chief,  who  shall  be  appointed 
by  the  President,  by  and  with  the  advice  and  consent  of  the  Senate.  All 
other  officers,  clerks,  and  employees  authorized  by  law  for  the  Office  shall  be 
appointed  by  the  Secretary  of  the  Interior,  upon  the  nomination  of  the  Com- 
missioner of  Patents.  —  R.  S.  476. 

Section  440  specifies  the  salaries  of  these  officers.  Sec.  478  provides  a 
seal.  Sec.  486  creates  the  scientific  library.  Sees.  489  and  496  relate  to  print- 
ing and  disbursements.  While  there  are  numerous  other  provisions  for  the 
conduct  of  the  Office,  they  need  not  be  quoted  here. 

No  writer  on  the  subject  of  patents  would  do  his  full  duty  who  did  not 
raise  his  voice  in  solemn  protest  against  the  present  inefficient  provision  made 
by  Congress  for  the  needs  of  the  Office. 

§  784.    Arbitrary  Conduct. 

The  statute  gives  the  right  to  join  inventions  in  one  application  in  cases 
where  the  inventions  are  related,  and  it  cannot  be  denied  by  a  hard  and  fixed 
rule  which  prevents  such  joinder  in  all  cases.  Such  a  rule  is  not  the  exercise 
of  discretion ;  it  is  a  determination  not  to  hear.  The  unity  of  the  inventions 
claimed  is  not  denied.  It  is  manifest  that  if  an  appeal  cannot  be  compelled 
from  the  decision  of  the  primary  examiner,  an  applicant  is  entirely  without 
remedy.  It  was  the  duty  of  the  primary  examiner  to  accord  a  hearing  or, 
refusing  to  do  so,  to  grant  an  appeal.  —  Steinmetz  v.  Allen,  192  U.  S.  543; 
48  L.  Ed.  555;  24  S.  Ct.  416. 


§§  785-787  PATENT    OFFICE  713 

§  785.     Decisions  of. 

Controlling  in  subsequent  suit  between  same  parties  in  absence  of  other 
thoroughly  convincing  testimony.  —  Morgan  v.  Daniels,  153  U.  S.  120;  38 
L.  Ed.  657;   14  S.  Ct.  772. 

That  office  employs  the  best  experts  in  mechanics  which  it  can  secure  in 
this  and  other  countries.  Its  examinations  are,  indeed,  ex  parte  in  form,  but 
they  are  nevertheless  conducted  under  hot  and  skilled  contestation  in  every 
case  of  importance;  and  its  decisions,  though  not  conclusive,  are  entitled  to 
great  respect.  That  ruling  takes  rank  here  as  the  testimony  of  experts  of 
the  highest  experience,  skill  and  knowledge  in  mechanics.  —  Boyden  v. 
Westinghouse,  70  Fed.  816;  17  C.  C.  A.  430. 

§  786.    Rules. 

If  there  is  a  divergence  of  views  between  the  courts  and  the  Patent  Office 
and  the  divergence  proceeds  from  a  different  interpretation  of  the  statute, 
the  view  of  the  courts  ought  to  prevail.  —  Steinmetz  v.  Allen,  192  U.  S.  543; 
48  L.  Ed.  555;  24  S.  Ct.  416. 

The  Patent  Office  has  not  been  consistent  in  its  views  in  regard  to  the 
division  of  inventions.  At  times  convenience  of  administration  has  seemed  to 
be  of  greatest  concern ;  at  other  times  more  anxiety  has  been  shown  for  the 
rights  of  inventors.  The  policy  of  the  office  has  been  denominated  that  of 
■"  battledore  and  shuttlecock  "  and  rule  41  as  it  now  exists  was  enacted  to 
give  simplicity  and  uniformity  to  the  practice  of  the  office.  Its  enactment  was 
attempted  to  be  justified  by  the  assumption  that  the  patent  laws  gave  the 
office  a  discretion  to  permit  or  deny  a  joinder  of  inventions.  But,  as  we  have 
already  said,  to  establish  a  rule  applicable  to  all  cases  is  not  to  exercise  dis- 
cretion. Such  a  rule  ignores  the  differences  which  invoke  discretion,  and 
which  can  alone  justify  its  exercise,  and  we  are  of  opinion  therefore  that  rule 
41  is  an  invalid  regulation.  —  Steinmetz  v.  Allen,  192  U.  S.  543;  48  L.  Ed. 
555;  24  S.  Ct.  416. 

If  there  is  inconsistency  between  the  (Patent  Office)  rules  and  Statute,  the 
latter  must  prevail.  —  Steinmetz  v.  Allen,  192  U.  S.  543;  48  L.  Ed.  555; 
24  S.  Ct.  416. 


§  787.    Miscellaneous. 

The  judgment  of  the  patent  office,  the  tribunal  established  by  Congress  to 
determine  such  questions,  was  adverse  to  the  contention  of  the  government, 
and  such  judgment  cannot  be  reviewed  in  this  suit.  —  United  States  v.  Am. 
Bell,  167  U.  S.  224;  42  L.  Ed.  144;  17  S.  Ct.  809. 

The  six  months  within  which  the  final  fee  for  a  patent  must  be  paid  as 
prescribed  by  R.  S.  sec.  4897  means  six  calendar  months.  —  Economy  v. 
Lamprey,  65  Fed.  1000;   13  C.  C.  A.  271. 

Guaranty  v.  Green,  139  U.  S.  137;  Seemingly  overruling  Walk.  Pat.  sec.  125; 
Rob.  Pat.  sec.  585;   2  Bouv.  Law.  sec.  7. 

Unless  the  Patent  Office  itself  is  satisfied  of  the  patent's  validity,  the  public 
should  not  be  burdened  with  a  monopoly,  with  the  expectation  that  the 
courts  will  invalidate  it.  —  Weissenthanner  v.  Dodge,  161  Fed.  915;  88 
€.  C.  A.  388. 


714 


THE    FIXED    LAW   OF   PATENTS 


788-789 


PLEADING  AND  PRACTICE. 

General  Statement  §  788 

Amendment  §  789 

Bill  of  Review  §  790 

Demurrer  §  791 

Infringement  §  792  (see  §  445) 

Laches  §  793 

Multifariousness  §  794  (see  §  804) 

Notice  §  795 

Parties 

Complainant  §  796 

Defendant  §  797 

Joinder  §  798 
Patentability  §  799 
Pleas  §  800  \see  §  21) 
Profert  §  801 
Replication  §  802 
Sufficiency  §  803 

Suit  on  Plurality  of  Patents  §  804 
(see  §  794) 


Supplemental  Bills  §  805 
Title  §  806  (see  §  925) 
Miscellaneous  Rules  of  Practice  and 
Pleading  §  807 

See  —  Abatement  §  21;   Actions  §  24 
Adjudication  §  28;    Appeals  §   109 
Arbitration    §    145;     Comity    §    250 
Costs  §  272;   Damages  §  278;   Decrees 
§  301;     Defenses    §  306;     Demurrer 
§  323;  Equity  §  370;  Estoppel  §  381; 
Fraud  §  425;   Infringement  §§  483-4, 
516;    Injunction  §  533;    Interferences 
§§  582-3;    Interfering  Patents  §  586; 
Jurisdiction   §    713;     Laches   §    726; 
Law  Actions  §  733;    Marking  "  Pa- 
tented "  §  776;  Profits  §  825;  Rehear- 
ings  §  868;    Reopening  Case  §  890; 
Res  Judicata  §  893 


§  788.     General  Statement. 

This  work  deals  with  the  subjects  of  pleading  and  practice  only  so  far  as 
the  appellate  courts  have  ruled  on  those  subjects  in  patent  causes.  The  fol- 
lowing sections,  therefore,  cover  only  a  small  portion  of  the  law  applicable 
to  such  actions,  and  should  not  be  relied  upon  by  the  practitioner  as  being 
in  any  sense  complete. 


§  789.    Amendment. 

A  motion  to  amend,  or  file  an  answer  after  default,  is  generally  addressed 
to  the  discretion  of  the  court.  —  Dean  v.  Mason,  61  U.  S.  198;  15  L.  Ed.  876. 

Defendants  admitted  making  the  patented  device  and  justified  under  the 
plea  of  title.  Becoming  satisfied  that  their  title  was  bad  they  moved  to 
amend  by  denying  validity  of  the  patent  and  also  denying  infringement. 

Held:  that  amendment  denying  validity  could  be  made  but  that  the 
admission  of  infringement  must  stand.  —  Jones  v.  Morehead,  68  U.  S.  155 ; 
17  L.  Ed.  662. 

It  would  be  subversive  of  all  sound  practice,  and  tend  largely  to  defeat 
the  ends  of  justice,  if  the  court  should  refuse  to  accept  a  fact  as  settled 
which  is  distinctly  alleged  in  the  bill  and  admitted  in  the  answer.  —  Jones 
v.  Morehead,  68  U.  S.  155;  17  L.  Ed.  662. 

Crockett  v.  Lee,  7  Wheat.  523. 

Issues  not  raised  by  the  pleadings  cannot  be  brought  in  when  the  case  is 
before  a  master.  —  Rubber  v.  Goodyear,  76  U.  S.  788;  19  L.  Ed.  566. 

The  bill  did  not  set  up  specifically  the  second  reissue,  but  the  case  was  tried 
on  the  theory  that  such  reissue  had  been  pleaded.  Amendment  setting  forth 
such  reissue  was  allowed  after  decree  on  the  ground  that  the  defendant  was 
not  injured  and  such  pleading  conformed  to  the  proofs.  —  Tremain  v. 
Hitchcock,  90  U.  S.  518;  23  L.  Ed.  97. 

It  is  competent  to  allow  an  amendment  to  answer  nunc  pro  tunc  giving 
notice  of  prior  use.  —  Roemer  v.  Simon,  95  U.  S.  214;  24  L.  Ed.  384. 
Teese  v.  Huntington,  23  How.  2. 


§  790  PLEADING   AND    PRACTICE  715 

We  have  already  found  that,  as  the  record  stands,  it  contains  no  proof 
to  sustain  an  allegation  of  this  character.  Therefore  an  amendment  of  this 
nature  would  require  the  opening  of  the  record  below  for  further  proofs.  It 
is  not  at  all  a  case  where  a  complainant  has  proved  his  case,  but  his  allega- 
tions are  found  by  the  appellate  court  to  be  inapt.  To  grant  this  motion 
would,  under  the  circumstances,  violate  all  rules  requiring  diligence  from 
parties  complainant.  —  American  v.  U.  S.,  68  Fed.  542 ;   15  C.  C.  A.  569. 

We  think  the  distinction  must  be  kept  closely  in  view  between  amendments 
allowable  before  an  appeal  and  those  for  which  a  case  is  to  be  kept  along 
thereafter.  This  case  comes  within  the  closing  remarks  of  our  opinion  in 
Am.  Bell  Tel.  Co.  v.  U.  S.  68  Fed.  542,  570,  as  follows :  We  have  already  found 
that,  as  the  record  stands,  it  contains  no  proof  to  sustain  an  allegation 
of  this  character.  Therefore  an  amendment  of  this  nature  would  require 
the  opening  of  the  record  below  for  further  proofs.  It  is  not  at  all  a  case  where 
a  complainant  has  proved  his  case,  but  his  allegations  are  found  by  the  ap- 
pellate court  to  be  inapt.  To  grant  this  motion  would,  under  the  circum- 
stances, violate  all  the  rules  requiring  diligence  from  parties  complainant. 
—  Martin  v.  Martin,  71  Fed.  519;   18  C.  C.  A.  234. 

The  appellee  now  moves  for  leave  to  amend  his  brief  in  this  court  by 
introducing  a  prior  patent,  which  he  maintains,  shows  the  improvement 
which  the  claims  in  issue  would  cover  on  the  construction  of  them,  which 
the  appellant  contends  for.  The  appellee  does  not  offer  this  as  "proof," 
in  the  proper  sense  of  the  word,  and,  of  course,  if  so  offered,  it  could  not  be 
received  in  the  court,  unless  by  consent  of  both  parties.  —  Parsons  v.  Seelye, 
100  Fed.  452;  40  C.  C.  A.  484. 

U.  S.  v.  Hopewell,  51  Fed.  798;   Nashua  v.  Boston,  61  Fed.  237. 

The  granting  leave  to  file  an  amended  and  supplemental  bill  is  within  the 
discretion  of  the  court.  Railroad  v.  Newman,  77  Fed.  791.  The  granting 
or  refusing  leave  to  file  an  amended  bill  or  plea  is  a  matter  within  the  dis- 
cretion of  the  trial  court,  and  will  not  be  reviewed  in  an  appellate  court 
unless  there  has  been  gross  abuse  of  this  discretion.  Chapman  v.  Barney, 
129  U.  S.  677;  Gormley  v.  Bunyan,  138  U.  S.  623;  Marco  v.  Hicklin,  56 
Fed.  549.  As  a  general  rule  matters  resting  in  the  discretion  of  the  court 
below  cannot  be  re-examined  in  the  appellate  court.  Cheang-Kee  v.  U.  S. 
3  Wall.  320.  In  the  case  at  bar  the  court  exercised  its  discretion  after  careful 
examination.  A  petition  was  filed  asking  leave  to  file  the  amended  and  sup- 
plemental bill.  Notice  was  given.  A  day  was  fixed  for  the  hearing,  and  full 
discussion  was  had.  We  see  no  abuse  of  discretion  in  the  court.  —  Berliner  v. 
Seaman,  113  Fed.  756;  51  C.  C.  A.  440. 

Bates,  Fed.  Eq.  Pr.  sec.  637. 


§  790.    Bill  of  Review. 

New  evidence,  discovered  after  the  hearing  before  the  master  is  closed, 
may,  in  proper  cases,  be  ground  for  bill  of  review,  on  which  issue  may  be 
joined  and  evidence  adduced  by  both  parties  in  the  usual  way.  —  Thompson 
v.  Wooster,  114  U.  S.  104;  29  L.  Ed.  105;  5  S.  Ct.  788. 

The  subject  matter  of  a  litigation  having  been  disposed  of  on  appeal  in 
another  suit,  after  appeal  in  this  suit,  a  supplemental  bill  in  the  form  of 
a  bill  of  review  will  be  ordered.  —  Ballard  v.  Searles,  130  U.  S.  50;  32 
L.  Ed.  846;  9  S.  Ct.  418. 


716  THE   FIXED   LAW   OF   PATENTS  §  790 

The  case  being  affirmed  on  an  issue  not  raised,  but  raised  by  the  court,  a 
special  mandate  will  be  made  to  allow  a  bill  of  review.  —  Woodward  v. 
Boston,  63  Fed.  609;  11  C.  C.  A.  353. 

The  question  has  been  made  whether,  ordinarily,  equity  requires  that  a  bill 
of  review  should  be  permitted  to  be  filed  on  a  new  issue  which  might  have 
been  presented  in  the  principal  cause,  but  was  not.  On  general  principles, 
it  would  seem  that  there  would  be  no  equity  in  this  behalf,  unless  in  very 
exceptional  cases.  Nevertheless  later  authorities  do  not  permit  a  formulated 
rule  of  this  character,  and  as  no  fixed  formula  can  ever  be  laid  down,  limiting 
equity  as  to  relief  against  error,  fraud,  or  misfortune,  all  that  can  be  said 
in  this  behalf  is  that,  under  the  circumstances,  the  fact  that  the  petitioner 
for  the  review  was  originally  contented  to  rest  his  case  on  certain  issues 
ought  to  bar  him  from  calling  on  equity  to  aid  him  to  present  new  issues 
after  he  has  been  defeated  as  the  result  of  protracted  litigation  in  the  prin- 
cipal causes.  —  Boston  v.  Bemis,  98  Fed.  121;  38  C.  C.  A.  661. 

The  new  matter  should  be  such  as  if  known,  "  might  probably  have  pro- 
duced a  different  determination;  "  and  that  there  would  be  "  a  reasonable 
probability  that  the  proofs  if  they  sustained  the  allegations  of  the  petition, 
would  require  reconsideration  from  us  if  the  case  should  come  here  again." 
—  Boston  v.  Bemis,  98  Fed.  121 ;  38  C.  C.  A.  661. 

Story  Eq.  PI.  10th  ed.  sec.  413;  Daniell  Chan.  Prac.  6  ed.  1577;  Re  Gamewell, 
73  Fed.  908. 

With  reference  to  the  nature  and  degree  of  diligence  which  must  be  shown 
in  a  petition  of  this  character,  Lord  Bacon's  rule  requires  that  the  new  proof 
"  could  not  possibly  have  been  used  at  the  time  when  the  decree  was  passed." 
Story  says  that  it  must  be  such  as  the  party,  by  the  use  of  reasonable  dili- 
gence, could  not  have  known.  The  necessity  for  enforcing  this  rule  strictly, 
with  reference  to  anticipatory  matter,  was  stated  in  re  Gamewell,  73  Fed. 
908 ;  and  the  new  defence  now  sought  to  be  raised  is  of  the  same  family.  — 
Boston  v.  Bemis,  98  Fed.  121 ;  38  C.  C.  A.  661. 

Purcell  v.  Uliner,  4  Wall.  519;  Story  Eq.  PI.  10  ed.  sec.  414;  Young  v.  Keighly, 
16  Ves.  348. 

The  record  shows  that  not  until  after  the  patent  had  been  long  contested 
did  the  real  defendant,  the  Brill  Company,  make  any  effort  to  discover 
prior  use  where  it  would  be  most  likely  to  be  found.  When  defendant  did 
go  to  the  residence  of  the  inventor  at  the  time  he  obtained  his  patent,  it 
only  required  a  single  day  to  at  once  discover  substantially  all  of  the  material 
evidence  presented  on  the  petition.  It  was  held  that  in  view  of  this  fact, 
and  in  view  of  the  fact  that  defendant  was  dealing  with  the  railroad  com- 
panies, constantly,  by  whom  such  prior  use  would  have  been  had,  presented 
a  case  where  due  diligence  was  palpably  wanting.  —  Boston  v.  Bemis,  98 
Fed.  121;  38  C.  C.  A.  661. 

The  question  of  laches  is  ordinarily  for  the  court  below.  In  the  case  at 
bar,  however,  we  have  a  form  of  petition,  setting  out  all  the  facts  neces- 
sary to  dispose  of  the  question  of  laches,  while,  as  already  said,  the  affidavits 
are  so  contradictory  that  the  court  cannot  properly  dispose  of  that  of  ma- 
teriality, although  ordinarily  it  is  for  the  appellate  tribunal.  —  Boston  v. 
Bemis,  98  Fed.  121 ;  38  C.  C.  A.  661. 

The  patent  in  suit,  it  was  averred  by  the  petitioner,  expired  pending  appeal 
by  reason  of  the  expiration  of  a  foreign  patent.  The  petitioner  did  not  inform 
the  court  of  such  fact  at  the  time  of  argument  on  appeal ;  and  the  court  held 


§§791-792  PLEADING    AND    PRACTICE  717 

that  such  conduct  constituted  sufficient  laches  to  prevent  the  granting  of 
the  petition  to  lift  the  injunction  or  limit  the  accounting.  —  Westinghouse  v. 
Stanley,  138  Fed.  823;  71  C.  C.  A.  189. 

In  re  Gamewell,  73  Fed.  908;  Boston  v.  Bemis,  98  Fed.  121;  Mossberg  v. 
Nutter,  124  Fed.  966;  Kisinger-Ison  v.  Bradford,  123  Fed.  91;  Ricker  v.  Powell, 
100  U.  S.  104;  Story,  Eq.  PI.  sec.  406. 

§791.    Demurrer. 

If  it  be  suggested  that  the  claim  of  the  patent  is  for  the  boot  described, 
and  that  the  bill  merely  alleges  that  the  defendant  has  made,  used  and  sold 
boots  containing  and  embracing  the  invention  covered  by  the  patent,  in- 
stead of  alleging  that  the  defendant  had  made,  used  and  sold  the  invention 
on  the  patented  boot,  we  are  of  opinion  that  there  is  no  force  in  the  objection. 
The  bill  is  entirely  sufficient  to  put  the  defendant  upon  his  answer.  —  McCoy 
v.  Nelson,  121  U.  S.  484;  30  L.  Ed.  1017;  7  S.  Ct.  1000. 

Where  demurrer  was  had  to  a  bill  on  the  ground  that  the  invention  was  not 
patentable,  we  think  that  the  demurrer  should  have  been  overruled,  and 
that  the  defendants  should  have  been  put  to  answer  the  bill.  Whether 
or  not  the  design  is  new  is  a  question  of  fact,  which,  whatever  our  impressions 
may  be,  we  do  not  think  it  proper  to  determine  by  taking  judicial  notice 
of  the  various  designs  which  may  have  come  under  our  observation.  It  is  a 
question  which  may  and  should  be  raised  by  answer  and  settled  by  proper 
proofs.  —  New  York  v.  New  Jersey,  137  U.  S.  445;  34  L.  Ed.  741 ;  11  S.  Ct. 
193. 

§  792.    Infringement. 

The  circuit  court  held  that  the  bill  could  not  be  maintained  for  several 
infringements  by  portions  of  the  respondents  because  they  are  described 
as  a  copartnership.  Nevertheless  it  sets  out  that  they  infringed  "  jointly 
and  severally,"  so  that  the  reference  to  them  as  copartners  is  merely  de- 
scriptio  personarum,  which  cannot  override  a  positive  allegation.  —  Hobbs 
v.  Gooding,  111  Fed.  403;  49  C.  C.  A.  414. 

Simonds  v.  Hathorn,  93  Fed.  958. 

The  averment  of  the  bill  charged  the  defendant  with  infringement  "  within 
the  said  Eastern  District  of  Michigan,  and  since  the  first  day  of  January, 
1893."  It  is  not  fairly  open  to  the  construction  that  the  infringement 
charged  began  on  the  1st  day  of  January,  1893,  and  has  continued  ever 
since.  The  natural  and  reasonable  construction  is  that  the  infringement 
charged  occurred  after  or  subsequent  to  January  1,  1893,  without  specifying 
precisely  when.  —  U.S.  Mitts  v.  Detroit,  122  Fed.  863;  59  C.  C.  A.  589. 

Kaolatype  v.  Hoke,  30  Fed.  444;  Wycoff  v.  Wagner,  88  Fed.  515. 

In  some  rare  instances  where  the  cases  seem  to  have  been  exceptional,  the 
plaintiff  in  an  infringement  suit  has  been  required  to  specify  in  limine  the 
claims  relied  on,  but  there  is  no  such  precedent  in  this  circuit  for  such  an 
order.  Applications  therefor  were  denied  by  the  Circuit  Court  in  Johnson  v. 
Columbia  and  Johnson  v.  National,  106  Fed.  319.  —  Morton  v.  American, 
129  Fed.  916;  64  C.  C.  A.  367. 

The  argument  rests  upon  the  omission  to  aver  in  the  bill  that  infringe- 
ment occurred  "  at  New  York  City  in  the  Southern  District  of  New  York  and 
elsewhere  "  —  the  words  "  and  elsewhere  "  being  omitted.  But  the  de- 
fendants denied  that  they  had  infringed  at  New  York  City  or  elsewhere,  and 
the  case  was  tried  in  all  respects  as  if  the  question  were  properly  presented 


718  THE    FIXED    LAW   OF    PATENTS  §§  793-795 

by  the  pleadings.  It  would  be  a  hardship  to  all  concerned  to  subject  them 
to  the  expense  and  annoyance  of  a  new  action  when  the  addition  of  the  two 
words  "  and  elsewhere  "  will  make  the  bill  criticism  proof.  —  O'Rourke  v. 
McMullen,  160  Fed.  933;  88  C.  C.  A.  115. 

§  793.     Laches. 

The  defense  of  laches  need  not  even  be  set  up  in  the  pleadings  when  it  is 
apparent  that  the  court  may  upon  its  own  motion  refuse  relief  on  that  ground. 

—  Sullivan  v.  Railroad,  94  U.  S.  806;  24  L.  Ed.  324. 

Laches  is  a  defense  which  may  be  made  by  demurrer,  or  by  plea,  or  by 
answer,  or  presented  by  argument,  either  upon  a  preliminary  or  final  hearing. 

—  Woodmansee  v.  Williams,  68  Fed.  489;  15  C.  C.  A.  520. 

Keyes  v.  Eureka,  158  U.  S.  150;  McLaughlin  v.  Railway,  21  Fed.  574;  Lane  v. 
Locke,  150  U.  S.  193;  Maxwell  v.  Kennedy,  8  How.  222;  Walker,  597;  Curtis, 
440. 

§  794.     Multifariousness. 

We  do  not  regard  a  bill  multifarious  which  seeks  to  enjoin  an  unauthorized 
person  from  using  a  patented  article,  and  also  from  using  the  generic  name 
of  that  article.  —  Adam  v.  Folger,  120  Fed.  260;  56  C.  C.  A.  540. 

Animarium  v.  Neiman,  98  Fed.  14;  Javos  v.  Fleece,  60  Fed.  622;  Weir  v.  Gas 
Co  91  Fed.  940;  Dennison  v.  Thomas,  94  Fed.  651;  Harper  v.  Holman,  84  Fed. 
222;   U.  S.  v.  American,  128  U.  S.  315;  Oliver  v.  Piatt,  3  How.  333. 

§  795.     Notice. 

Defendants  undertook  to  prove  specific  prior  use  by  witness  without 
statutory  notice.  Held:  Inadmissible.  —  Railroad  v.  Stimpson,  14  Pet. 
448;    10  L.  Ed.  535. 

The  defendant  gave  notice  of  a  prior  publication  by  reference  merely  to 
a  book  of  some  1300  pages,  giving  neither  page  nor  topic.  Rejected  as  in- 
sufficient. —  Silsby  v.  Foote,  14  How.  218;  14  L.  Ed.  394. 

The  notice  merely  gave  the  name  and  place  of  residence  of  the  person 
alleged  to  have  had  prior  knowledge  and  use;  Held:  that  the  notice  should 
also  have  stated  where  the  use  was  had.  —  Silsby  v.  Foote,  14  How. 
218;    14  L.  Ed.  394. 

Prior  invention  cannot  be  set  up  and  proved,  unless  properly  pleaded 
under  the  statute  of  notice.  —  O'Reilly  v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

A  court  order  is  not  required  either  for  the  original  or  an  amended  notice 
under  the  statute.  —  Teese  v.  Huntington,  23  How.  2;  16  L.  Ed.  479. 

It  is  not  necessary  to  state  the  time,  in  addition  to  the  person  and  place, 
in  the  statutory  notice,  or  if  stated  by  the  defendant,  restricted  in  proof  to 
the  time  specified.  —  Phillips  v.  Page,  65  U.  S.  164;  16  L.  Ed.  636. 

When,  in  addition  to  the  particular  town  or  city,  the  name  and  residence 
of  the  witness  by  whom  that  use  is  to  be  proved  is  also  given  there  is  suffi- 
cient precision  and  certainty  in  the  notice.  —  Wise  v.  Allis,  76  U.  S.  737 ; 
19  L.  Ed.  784. 

Phillips  v.  Page,  24  How.  164. 


$  795  PLEADING    AND    PRACTICE  719 

Nor  do  we  think  that  a  party  giving  notice  is  bound  to  be  so  specific  as 
to  relieve  the  other  from  all  inquiry  or  effort  to  investigate  the  facts.  —  Wise 
v.  Allis,  76  U.  S.  737 ;  19  L.  Ed.  784. 

The  purpose  of  the  statutory  notice  is  to  apprise  plaintiff  fairly  of  what 
he  may  expect  to  meet.  —  Wise  v.  Allis,  76  U.  S.  737;  19  L.  Ed.  784. 
Teese  v.  Huntington,  23  How.  10. 

The  defense  of  want  of  novelty  can  be  raised  only  upon  the  statutory 
notice.  —  Blanchard  v.  Putnam,  75  U.  S.  420;  19  L.  Ed.  433. 

Corning  v.  Burden,  15  How.  271;  Teese  v.  Huntington,  23  How.  10;  Agawam 
v.  Jordan,  7  Wall.  583;  R.  R.  v.  Stimpson,  14  Pet.  459;  Silsby  v.  Foote,  14  How. 
222;    Phillips  v.  Page,  24  How.  168. 

The  defendant  must  comply  with  the  requirements  of  the  statute  to  raise 
the  defense  of  anticipation.  —  Agawam  v.  Jordan,  74  U.  S.  583;  19  L.  Ed. 
177. 

Wilton  v.  R.  R.  1  Wall.  Jr.  195;   Teese  v.  Huntington,  23  How.  10. 

It  is  an  abuse  of  the  privilege  of  giving  such  notice  without  some  reason  to 
suppose  some  defense  can  be  successfully  made  and  the  proofs  obtained,  as  it 
exposes  the  complainant  to  unnecessary  expense  and  trouble  in  preparing  for 
trial.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Parties  defendant,  such  as  infringers,  are  not  allowed  in  an  action  at  law 
to  set  up  the  defense  of  a  previous  invention,  knowledge  or  use  of  the  thing 
patented  unless  they  have  given  notice  of  such  a  defense  30  days  before  the 
time,  and  have  stated  in  the  notice  "  the  names  and  places  of  residence  of 
those  whom  they  intend  to  •  prove  to  have  possessed  a  prior  knowledge 
of  the  thing  and  where  the  same  had  been  used ;  "  and  the  settled  practice 
in  equity  is  to  require  the  respondent,  as  a  condition  precedent  to  such  a 
defense,  to  give  the  complainant  substantially  the  same  information  in  his 
answer.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Agawam  v.  Jordan,  7  Wall.  596;  Teese  v.  Huntington,  23  How.  10. 

In  the  absence  of  notice  on  pleading  in  equity,  evidence  to  assail  novelty 
cannot  be  considered.  —  Eureka  v.  Bailey,  78  U.  S.  488;   20  L.  Ed.  209. 

The  statute  requiring  notice  was  not  intended  to  apply  to  cases  involving 
matters  of  common  knowledge.  The  court  can  take  judicial  notice  of  it  and 
give  it  the  same  effect  as  if  it  had  been  set  up  as  a  defense  in  the  answer 
and  the  proof  were  plenary.  —  Brown  v.  Piper,  91  U.  S.  37;  23  L.  Ed.  200. 

Glue  Co.  v.  Upton,  6  O.  G.  843;    Needham  v.  Washburn,  7.  O.  G.  651. 

Parties  defendant  sued  as  infringers  are  not  allowed,  in  an  action  at  law, 
to  set  up  the  defense  of  a  prior  invention,  knowledge  or  use  of  the  thing  pa- 
tented unless  they  have  given  the  statutory  notice.  —  Roemer  v.  Simon, 
95  U.  S.  214;   24  L.  Ed.  384. 

R.  S.  sec.  4920;  Seymour  v.  Osborne,  11  Wall.  516;  Blanchard  v.  Putnam,  8 
Wall.  420. 

It  is  well  settled  law  that  the  failure  to  interpose  objection  before  the 
final  hearing  is  a  waiver  of  the  required  notice  in  an  equity  suit.  —  Roemer 
v.  Simon,  95  U.  S.  214;  24  L.  Ed.  384. 

Brown  v.  Hall.  6  Blatchf.  405. 


720  THE   FIXED   LAW   OF   PATENTS  §  796 

The  requirement  as  to  names  and  residences  of  persons  having  prior  knowl- 
edge etc.  does  not  include  names  of  witnesses  called  by  the  defense  to  make 
such  proof.  —  Roemer  v.  Simon,  95  U.  S.  214;  24  L.  Ed.  384. 

Teese  v.  Huntington,  23  How.  2. 

Persons  sued  as  infringers  in  a  suit  in  equity,  if  they  give  the  required 
notice  in  their  answer,  may  prove  at  the  final  hearing  the  same  matters  in 
defense  to  the  charge  of  infringement  as  those  which  the  defendant,  in  an 
action  at  law,  may  set  up  under  like  conditions.  —  Bates  v.  Coe,  98  U.  S.  31 ; 
23  L.  Ed.  68. 

Section  4920  R.  S.  declares  that  the  proofs  of  previous  invention,  knowl- 
edge or  use  of  the  thing  patented,  may  be  given  upon  notice,  in  the  answer  of 
the  defendant,  stating  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the  thing  patented, 
and  where  and  by  whom  it  had  been  used.  The  statute  does  not  declare  that 
the  names  of  the  witnesses  who  may  be  called  to  testify  to  such  prior  in- 
vention or  use  shall  be  stated  in  the  answer.  It  is  only  the  names  and  resi- 
dences of  the  persons  alleged  to  have  invented  or  to  have  had  prior  knowledge 
of  the  thing  patented  that  are  required.  —  Woodbury  v.  Keith,  101  U.  S. 
479;   25  L.  Ed.  939. 

Wilton  v.  R.  R.  1  Wall.  Jr.  195;  Many  v.  Jagger,  1  Blatchf.  376;  Roemer  v. 
Simon,  95  U.  S.  218. 

When  the  answer  admitted  and  the  proofs  showed  defendant  had  made 
and  sold  the  device  of  the  patent  in  suit  five  years,  four  years  of  said  time 
being  prior  to  the  date  of  the  patent,  it  was  held  such  answer  was  sufficient 
as  to  notice  and  the  proofs  as  to  prior  use.  —  Anderson  v.  Miller,  129  U.  S. 
70;  32  L.  Ed.  635;  9  S.  Ct.  224. 

These  two  patents  were  not  set  up  in  the  "answer,  and  cannot,  therefore, 
be  availed  of  as  an  anticipation  to  invalidate  the  claim  upon  the  ground 
of  want  of  novelty.  Grier  v.  Wilt,  120  U.  S.  429.  But  they  are  admissible 
in  evidence  as  showing  the  state  of  the  prior  art;  and  when  the  court,  ad- 
vised as  to  the  prior  art,  reaches  the  conclusion  that  the  improvement  on 
such  prior  art  described  in  the  patent  sued  on  did  not  embody  or  require 
invention,  and  was  not  patentable,  it  is  the  duty  of  the  court  to  dismiss  the 
cause  on  that  ground.  "  The  question  whether  the  invention  which  is  the 
subject-matter  in  controversy  is  patentable,  or  not,  is  always  open  to  the 
consideration  of  the  court,  whether  the  point  is  raised  by  answer  or  not." 
—  Jones  v.  Cyphers,  126  Fed.  753;  62  C.  C.  A.  21. 

Slawson  v.  Grand,  107  U.  S.  652;  Mahn  v.  Harwood,  112  U.  S.  358;  Hendy  v. 
Miners',  127  U.  S.  375. 

The  law  is  well  settled  that  the  defendant  to  a  suit  for  infringement  must 
give  notice  in  his  answer  of  any  defense  by  way  of  prior  patents,  publications, 
or  public  use,  if  he  desires  to  prove  any  of  such  defenses  to  show  want  of 
novelty  or  invention  in  the  patent  sued  on.  Otherwise  such  defenses  are 
receivable  in  evidence  only  to  show  the  state  of  the  art,  and  to  aid  in  the 
proper  construction  of  the  patent.  —  Morton  v.  Llewellyn,  164  Fed.  693 ; 
C.  C.  A. 

Grier  v  Wilt,  120  U.  S.  412;  Vance  v.  Campbell,  1  Black,  427;  Railroad  v. 
Dubois,  12  Wall.  47;  Brown  v.  Piper,  91  U.  S.  37;  Eachus  v.  Broomall,  115 
U.  S.  429. 

§  796.     Parties  —  Complainant. 

Grants  as  well  as  assignments  must  be  in  writing,  and  they  must  carry 
the  exclusive  right  under  the  patent,  to  make,  use  and  vend  to  others  to  be 


§  796  PLEADING    AND    PRACTICE  721 

used,  the  thing  patented,  within  and  throughout  some  specified  district  or 
portion  of  the  U.  S.  and  such  right  must  be  exclusive  of  the  grantee,  as  well 
as  of  all  others  except  the  grantee.  Suits  for  infringement  in  such  districts, 
if  committed  subsequent  to  the  grant,  can  only  be  brought  in  the  name  of 
the  grantee,  as  it  is  clear  that  no  one  can  maintain  such  an  action  until  his 
rights  have  been  invaded,  nor  until  he  is  interested  in  the  damages  to  be 
recovered.  —  Moore  v.  Marsh,  74  U.  S.  515;  19  L.  Ed.  37. 

Assignee  of  territorial  right,  for  a  particular  district,  could  not  bring  an 
action  on  the  patent  in  his  own  name ;  but  the  Act  of  Congress  having  made 
him  a  party  interested  in  the  patent,  it  is  now  equally  well  settled  that  he 
may  sue  in  his  own  name  for  invasion  of  the  patent  in  that  territorial  dis- 
trict, as  no  one  else  is  injured  by  any  such  infringement.  —  Moore  v.  Marsh, 
74  U.  S.  515;  19  L.  Ed.  37. 

Tyler  v.  Tuel,  6  Cranch,  324;   Gayler  v.  Wilder,  10  How.  477;   Curt.  Pat.  346. 

When  the  patentee  has  assigned  his  whole  interest,  either  before  or  after 
the  patent  has  issued,  the  action  must  be  brought  in  the  name  of  the  as- 
signee, because  he  alone  was  interested  in  the  patent  at  the  time  the  infringe- 
ment took  place;  but  when  the  assignment  is  of  an  undivided  part  of  the 
patent,  the  action  should  be  brought  for  every  infringement  committed 
subsequent  to  the  assignment  in  the  joint  names  of  the  patentee  and  as- 
signee, as  representing  the  entire  interest.  —  Moore  v.  Marsh,  74  U.  S.  515; 
19  L.  Ed.  37. 

Herbert  v.  Adams,  4  Mas.  15;  Curt.  Pat.  347;  Gayler  v.  Wilder,  10  How.  477; 
Whittemore  v.  Cutter,  1  Gall.  430;  Woodworth  v.  Wilson,  4  How.  712. 

Correct  interpretation  of  the  words  "  person  or  persons  interested  "  is, 
that  the  words  mean  the  person  or  persons  interested  in  the  patent  at 
the  time  when  the  infringement  was  committed,  which  is  the  cause  of  action 
for  which  the  damages  may  be  recovered.  —  Moore  v.  Marsh,  74  U.  S.  515; 
19  L.  Ed.  37. 

Dean  v.  Mason,  20  How.  198. 

Licensees  must  enforce  their  rights  through  the  name  of  the  patentee 
(or  assignee).  —  Paper  Bag  Cases,  105  U.  S.  766;  26  L.  Ed.  959. 
Littlefield  v.  Perry,  88  U.  S.  223. 

A  licensee  of  a  patent  cannot  bring  a  suit  in  his  own  name  at  law  or  in 
equity,  for  its  infringement  by  a  stranger ;  an  action  at  law  for  the  benefit  of 
the  licensee  must  be  brought  in  the  name  of  the  patentee  alone;  a  suit  in 
equity  may  be  brought  by  the  patentee  and  the  licensee  together.  —  Bird- 
sail  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed.  768;  5  S.  Ct.  244. 

Gayler  v.  Wilder,  10  How.  477;  Littlefield  v.  Perry,  21  Wall.  205;  Paper  Bag 
Cases,  105  U.  S.  766. 

The  objection  that  the  plaintiff  is  not  entitled  to  maintain  this  suit  be- 
cause it  does  not  itself  manufacture  is  without  force.  Its  right  to  sue  for 
the  protection  of  its  licensees  is  unquestionable.  —  Adams  v.  Tannage,  81 
Fed.  178;   26  C.  C.  A.  326. 

That  the  granting  of  a  license  carries  with  it  the  right  for  the  licensee  to 
join  the  licensor  as  co-complainant,  see — Excelsior  v.  Allen,  104  Fed.  553; 
44  C.  C.  A.  30. 

Nor  is  a  court  of  equity  divested  of  its  power  to  decree  appropriate  and 
final  relief  from  the  fact,  if  it  be  a  fact,  that  the  patentee  has  conspired  with 


722  THE    FIXED    LAW    OF    PATENTS  §§  797-798 

the  defendant  to  infringe  the  rights  of  the  licensee.  The  former  practice 
of  courts  of  Chancery  which  required  the  dismissal  of  a  bill  in  case  of  the 
joinder  of  complainants  whose  interests  were  antagonistic,  has  given  place  to 
a  more  equitable  procedure,  which  recognizes  the  power  of  the  court  to  so  ar- 
range the  parties  to  the  suit  as  their  interests  demand,  to  make  a  complainant 
a  defendant,  and  to  decree  relief  to  all  parties  before  it,  whether  they  appear 
as  complainants  or  defendants  so  long  as  they  are  all  the  necessary  parties 
to  the  controversy.  —  Excelsior  v.  Allen,  104  Fed.  553;  44  C.  C.  A.  30. 

Boughton  v.  Allen,  11  Page  321;  Osgood  v.  Franklin,  2  John.  Ch.  1;  Bowen  v. 
Ibley,  1  Edw.  Ch.  148;  LeFort  v.  Delafield,  3  Edw.  Ch.  22;  Parkman's  Admr.  v. 
Aicardi,  34  Ala.  393;  Snydam  v.  Dequidre,  Har.  Rep.  347;  U.  S.  v.  Union,  98 
U.  S.  569. 

§  797.     Parties  —  Defendant. 

The  suit  was  brought  against  the  company  and  three  individual  defend- 
ants. The  court  below  limited  its  decree  in  favor  of  the  complainant  to  the 
joint  infringement  of  all  the  defendants.  We  see  no  sufficient  reason,  under 
the  present  bill,  why  the  defendant  Hathorn  should  not  account  for  his 
several  or  individual  infringements.  We  understand  this  to  be  the  general 
rule.  —  Simonds  v.  Hathorn,  93  Fed.  958;  36  C.  C.  A.  24. 

Herring  v.  Gage,  Fed.  Cas.  6,422;  Tatham  v.  Lowber,  Fed.  Cas.  13,765;  New 
York  v.  American,  42  Fed.  455. 

Maxwell  was  properly  enjoined  as  an  infringer  by  reason  of  his  connection 
with  the  two  corporations.  —  National  v.  Polk,  121  Fed.  742;  58  C.  C.  A.  24. 

Rob.  Pat.  sec.  897;  Trent  v.  Risdon,  102  Fed.  635;  Toppan  v.  Tiffany,  39 
Fed.   420. 

An  injunction  against  the  corporation  restrains  all  its  officers,  agents 
and  servants  and  there  is  little  justification  for  making  these  persons  de- 
fendants except  in  rare  instances  where  it  is  shown  that  they  have  infringed 
the  patent  as  individuals  or  have  personally  directed  infringement.  The 
courts  of  this  circuit  have  frequently  had  occasion  to  criticise  this  practice 
and  have,  in  some  instances,  imposed  costs  upon  the  complainant  as  a  pen- 
alty for  thus  subjecting  innocent  parties  to  the  expense  and  annoyance 
of  defending  themselves  against  an  unwarrantable  accusation.  (Costs 
were  imposed  in  this  case.)  —  Hutter  v.  De  Q.  Bottle,  128  Fed.  283 ;  62  C.  C.  A. 
652. 

Farmers'  v.  Spruks,  119  Fed.  594;  Consolidated  v.  Columbian,  79  Fed.  795; 
Bowers  v.  Atlantic,  104  Fed.  887;  King  v.  Anderson,  90  Fed.  500;  Greene  v. 
Buckley,  120  Fed.  955;  Rowbotham  v.  Iron,  71  Fed.  759;  Linotype  v.  Ridder, 
65  Fed.  853;    Howard  v.  Plow,  35  Fed.  743. 

The  facts  recited  in  the  statement  of  the  case  satisfy  us  that  the  company 
is  simply  an  incorporation  of  Duncan.  Therefore  the  corporation  should 
be  enjoined,  just  as  its  officers,  directors,  and  stockholders  would  be,  if, 
as  individuals  and  without  resorting  to  the  corporate  form,  they  were  aiding 
and  abetting  Duncan  in  the  infringement.  —  Siemens-Halske  v.  Duncan,  142 
Fed.  157;   73  C.  C.  A.  375. 

Telegraph  v.  Himmer,  19  Fed.  322;  Parker  v.  McKee,  24  Fed.  808;  Burr  v. 
Kimbark,  28  Fed.  574;  Burdsall  v.  Curran,  31  Fed.  918:  Woodward  v.  Boston, 
60  Fed.  283;  National  v.  Connecticut,  73  Fed.  491;  Daniel  v.  Miller,  81  Fed. 
1000;    Alvin  v.  Scharling,  100  Fed.  87. 

§  798.     Parties  —  Joinder. 

One  holding  the  exclusive  right  to  a  specific  territory  may  be  joined  as 
party  plaintiff  in  a  suit  for  infringement  within  his  territory  in  an  action 


§  798  PLEADING    AND    PRACTICE  723 

by  the  holder  of  the  superior  title.  —  Woodworth  v.  Wilson,  4  How.  712; 
11  L.  Ed.  1171. 

It  is  the  rule  that  none  should  be  made  parties  plaintiff  or  defendant  in 
equity  who  have  no  interest  in  the  controversy  or  who  cannot  be  affected 
by  the  decree.  In  cases  where  the  want  of  interest  applies  it  is  equally  fatal 
when  applicable  to  plaintiffs  or  defendants.  In  the  former  case  it  is  fatal 
to  the  whole  suit ;  in  the  latter  it  is  fatal,  if  taken  in  due  time,  only  against 
the  defendant  improperly  joined.  Objection  ought  to  be  taken  by  demurrer, 
for  if  not  so  taken,  and  the  court  proceeds  to  a  hearing  on  the  merits  it 
will  be  disregarded,  at  least  if  it  does  not  materially  affect  the  propriety 
of  the  decree.  In  the  case  before  us  the  objection  of  misjoinder  appears 
nowhere  upon  the  pleadings,  and  is  urged  for  the  first  time  after  final  decree. 
As  to  this  objection,  therefore,  it  comes  too  late.  —  Livingston  v.  Wood- 
worth,  15  How.  546;  14  L.  Ed.  809. 

Story  Eq.  ch.  4,  sec.  231;  Raffity  v.  King,  VI  L.  J.  93;  Morley  v.  Hawkes, 
Y.  &  J.  520;  Alywin  v.  Bray,  Y.  &  J.  518. 

In  an  equity  suit  by  the  patentee,  the  court  may  order  the  joinder  of  a 
licensee.  —  Birdsall  v.  Shaliol,  112  U.  S.  485;  28  L.  Ed.  768;  5  S.  Ct.  244. 
Hammond  v.  Hart,  4  Ban.  &  A.  111. 

The  O.  S.  Co.  brought  this  action  against  defendant  S.  P.  Co.  for  infringe- 
ment in  transporting  cars  made  by  Whittier,  Fuller  &  Co.  which  were  alleged 
to  infringe  complainant's  patent.  Preliminary  injunction  issued  on  $5000 
bond  filed  by  complainant.  Defendant  answered  setting  up  fact  of  owner- 
ship of  the  cars  in  Whittier,  F.  &  Co.  and  the  fact  that  defendant  as  a  common 
carrier  was  obliged  to  transport  the  cars.  Thereupon  Whittier,  Fuller  &  Co. 
petitioned  to  intervene  and  defend.  Petition  was  granted  and  complainant 
ordered  to  file  a  new  bond  for  $20,000.  Held:  We  find  no  difficulty,  under  the 
circumstances,  in  determining  that  Whittier,  Fuller  &  Co.  were  properly 
admitted  as  defendants  in  the  action,  and  that  the  court  had  authority, 
under  its  equitable  jurisdiction,  to  require  a  new  bond  of  the  complainant, 
to  meet  the  new  conditions  of  the  case.  —  Standard  v.  Southern,  54  Fed. 
521;  4  C.  C.  A.  491. 

The  patent  was  assigned  conveying  the  entire  right,  title  and  interest 
of  the  assignor,  but  with  a  license  fee  provision,  and  conditions  subsequent 
by  which  the  title  might  revert  to  the  assignor.  The  assignor  was  made  a 
party  to  the  action.  On  demurrer  it  was  held:  That  the  so-called  license 
was  an  absolute  grant,  and  that  the  assignor  was  not  a  necessary  party  to 
the  action.  —  Sichler  v.  Deere,  113  Fed.  285;  51  C.  C.  A.  242. 

It  is  true  that  a  licensee  cannot  prosecute  a  suit  in  equity  in  his  own  name 
against  a  third  party  for  infringement,  but  must  at  least  join  the  patentee 
as  co-complainant,  who  may  be  so  joined  whether  willing  or  unwilling.  — 
Excelsior  v.  City  of  Seattle,  117  Fed.  140;  55  C.  C.  A.  156. 

Birdsall  v.  Shaliol,  112  U.  S.  485;  Littlefield  v.  Perry,  21  Wall.  205;  Paper  Bag 
Cases,  105  U.  S.  766;  Brush  v.  California,  52  Fed.  945. 

This  is  a  petition  presented  after  this  cause  was  reached  on  the  regular 
call  of  the  calendar  and  is  ready  for  argument,  asking  that  the  petitioner 
be  permitted  to  intervene,  and  that  the  cause  be  remanded  to  the  circuit 
court  to  take  testimony  on  the  question  of  complainant's  laches.  The 
petitioner  was  fully  informed  of  the  pendency  of  this  action,  and  declined 
an  opportunity  to  intervene  when  the  case  was  pending  in  the  circuit  court. 
The  proof  is  wholly  insufficient  to  warrant  the  extraordinary  relief  asked  for 


724  THE    FIXED   LAW   OF   PATENTS  §§  799-801 

by  the  petitioner,  assuming  the  power  of  the  court  to  grant  such  relief.  — 
Thomson-Houston  v.  Western,  158  Fed.  813;  86  C.  C.  A.  73. 


§  799.     Patentability. 

The  patentability  of  the  device  in  suit  can  be  attacked  without  setting 
it  up  in  an  answer.  —  Hendy  v.  Golden,  127  U.  S.  370;  32  L.  Ed.  207;  8 
S.  Ct.  1275. 

Dunbar  v.  Myers,  94  U.  S.  187;  Slawson  v.  Grand,  107  U.  S.  649;  Mahn  v. 
Harwood,   112  U.  S.  354. 

Want  of  patentability  is  a  defense,  though  not  set  up  in  an  answer  or  plea. 
—  May  v.  Juneau,  137  U.  S.  408;  34  L.  Ed.  729;  11  S.  Ct.  102. 

Brown  v.  Piper,  91  U.  S.  37;  Dunbar  v.  Myers,  94  U.  S.  187;  Slawson  v.  Grand, 
107  U.  S.  649;  Hendy  v.  Golden,  127  U.  S.  370. 

§  8oo.     Pleas. 

As  the  case  was  decided  on  the  sufficiency  of  the  plea,  its  allegations  must 
be  taken  as  true.  —  Hammond  v.  Mason,  92  U.  S.  724;  23  L.  Ed.  767. 

The  only  issue  upon  the  plea  and  replication  was  as  to  the  sufficiency 
of  the  testimony  to  support  the  plea  as  pleaded;  and  as  the  plea  was  not 
supported  by  the  testimony,  it  should  be  overruled,  and  the  defendant 
ordered  to  answer  the  bill.  —  Dalzell  v.  Dueber,  149  U.  S.  315;  37  L.  Ed.  749; 
13  S.  Ct.  886. 

Stead  v.  Course,  8  U.  S.  403;   Farley  v.  Kittson,  120  U.  S.  303;  Equity  rule,  34. 

The  hearing  was  upon  the  plea,  a  general  replication,  and  the  evidence 
taken  in  support  of  the  plea.  Such  a  plea  is  a  special  answer  to  the  bill, 
and  nothing  is  put  in  issue,  so  far  as  the  plea  extends,  but  the  truth  of  the 
matter  pleaded.  —  Hartz  v.  Cleveland,  95  Fed.  681 ;  37  C.  C.  A.  227. 

Farley  v.  Kittson,  120  U.  S.  303;   Dalzell  v.  Mfg.  Co.  149  U.  S.  315. 

By  setting  the  pleas  down  for  argument  the  complainant  has  admitted 
the  facts  but  not  the  conclusions  pleaded  therein.  —  General  v.  New  Eng- 
land, 128  Fed.  738;  63  C.  C.  A.  448. 

Farley  v.  Kittson,  120  U.  S.  303;   Burrell  v.  Hackley,  35  Fed.  833. 

The  establishment  of  a  license  was  all  that  was  required  to  constitute 
a  defense,  and  there  was  no  necessity  for  pleading  more  than  that.  —  Barber 
v.  National,  129  Fed.  370;  64  C.  C.  A.  40. 

That  the  defense  that  the  patent  was  illegally  issued  may  be  raised  by 
plea,  see  — Western  v.  North,  135  Fed.  79;  67  C.  C.  A.  553. 

That  the  defense  of  noninfringement  cannot  be  raised  by  plea,  see  — Western 
v.  North,  135  Fed.  79;  67  C.  C.  A.  553. 

§  8oi.     Profert. 

"  The  weight  of  authority  is  that  the  profert  of  any  recorded  instrument 
is  equivalent  to  annexing  a  copy.  And  if  a  party  avers  that  he  holds  title 
to  anything  by  a  certain  instrument  which  he  annexes,  and  that  that  in- 
strument both  grants  the  title  and  describes  the  full  extent  of  the  rights 
conferred,  it  is  equivalent  to  an  averment  that  he  has  title  to  all  the  rights 


§  §  802-804  PLEADING   AND    PRACTICE  725 

specifically  described  in  such  instrument."  —  Germain  v.  Wilgus,  67  Fed. 
597;   14  C.  C.  A.  561. 

Quoting  American  v.  Southern,  34  Fed.  803. 

Bogart  v.  Hinds,  25  Fed.  484;  Post  v.  Hardware,  26  Fed.  618. 

If  it  were  so,  such  profert  were  unnecessary  to  be  made,  as  none  of  the 
assignments  of  the  patent  referred  to  are  required  to  be  under  seal.  If 
profert  is  made  of  any  document,  of  which  it  is  not  necessary,  it  will  be  treated 
as  mere  surplusage,  and  will  not  entitle  the  defendant  to  oyer.  Walk.  Pat. 
sec.  433.  The  complainant  was  entitled  to  stand  upon  its  prima  facie  case 
as  to  title,  and  the  failure  to  set  out  the  assignments  referred  to  could  not, 
under  the  circumstances,  be  taken  advantage  of  by  demurrer.  —  Atherton 
v.  Atwood-Morrison,  102  Fed.  949;  43  C.  C.  A.  72. 


§  802.     Replication. 

Where  replication  was  not  filed,  but  proofs  were  taken  and  the  case  treated 
as  at  issue  the  court  on  appeal  will  not  seriously  consider  such  omission.  — 
Tilghman  v.  Procter,  102  U.  S.  707;  26  L.  Ed.  279. 

The  replication  cannot  perform  the  function  of  exceptions.  A  replication 
recognizes  the  sufficiency  of  the  answer  and  takes  issue  on  the  facts  charged. 
—  Robinson  v.  American,  135  Fed.  693;  68  C.  C.  A.  331. 


§  803.     Sufficiency. 

No  objection  was  made  to  the  sufficiency  of  the  pleading  when  the  final 
decree  was  stipulated  in  evidence.  We  are  well  satisfied  that  thereby  the 
appellant  waived  the  defective  nature  of  the  pleading,  if  the  plea  is  to  be  taken 
as  a  plea  of  res  adjudicata.  —  Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co.  58  Fed. 
721;   7  C.  C.  A.  442. 

Parties  are  no  longer  turned  out  of  court  because  their  i's  are  not  dotted 
or  their  t's  crossed,  and  courts  are  diligent  rather  to  search  for  the  sub- 
stantial justice  of  a  case,  than  to  insist  upon  strict  conformity  to  pleading. 
And,  while  the  rule  remains,  courts  at  the  present  day  are  not  inclined  to 
permit  parties,  for  the  first  time  upon  appeal,  to  assert  the  objection  that 
the  testimony,  which  has  been  taken  without  objection  in  the  court  below, 
supports  an  issue  not  comprehended  within  the  allegations  of  the  pleading.  — 
Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co.  58  Fed.  721;  7  C.  C.  A.  442. 

Wasatch  v.  Crescent,   148  U.  S.  293. 

The  bill  states  the  number  of  the  patent,  and  the  answer  denies  that  the 
complainant  was  the  original  and  first  inventor  of  the  improvement  specified 
in  the  letters  patent  so  numbered ;  thus  making  certain  the  invention  spoken 
to.  It  is  a  sufficient  denial  of  the  novelty  of  the  alleged  invention.  —  Robin- 
son v.  American,  135  Fed.  693;  68  C.  C.  A.  331. 


§  804.     Suit  on  Plurality  of  Patents. 

Several  patents  may  be  joined  and  sued  on  together  when  they  are  con- 
jointly related.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

More  than  one  patent  may  be  included  in  one  suit.  —  Bates  v.  Coe,  98 
U.  S.  31;  25  L.  Ed.  68. 
Gill  v.  Wells,  22  Wall.  27. 


726  THE    FIXED    LAW    OF    PATENTS  §  805 

In  an  action  to  annul  two  patents,  the  Government  may  join  them  in  one 
suit  where  they  relate  to  the  same  subject  matter  and  where  the  defendants 
and  their  interests  are  the  same.  —  United  States  v.  Am.  Bell,  128  U.  S. 
315;  .32  L.  Ed.  450;  9  S.  Ct.  90. 

The  bill  assails  two  patents,  issued  nearly  a  year  apart,  but  they  were  issued 
to  the  same  party  and  relate  to  the  same  subject,  the  latter  patent  being 
supposed  to  be  for  an  improvement  upon  the  earlier  one.  Both  are  held  by 
the  same  defendant,  and  are  used  by  it  in  the  same  operations.  The  principle 
of  multifariousness  is  very  largely  in  evidence,  and  is  more  often  applied 
where  two  parties  are  attempted  to  be  brought  together  by  a  bill  in  chancery 
who  have  no  common  interest  in  the  litigation,  whereby  one  party  is  com- 
pelled to  join  in  the  expense  and  trouble  of  a  suit  in  which  he  and  his  co- 
defendants  have  no  common  interest,  or  in  which  one  party  is  joined  as 
complainant  with  another  party  with  whom  in  like  manner  he  either  has  no 
interest  at  all,  or  no  such  interest  as  requires  the  defendant  to  litigate  it  in 
the  same  action. 

In  the  present  case  there  is  no  such  difficulty.  The  Company  and  Mr.  Bell 
are  the  only  parties  defendant,  and  their  interest  in  sustaining  the  patents  is 
the  same.  So  also  there  is  no  such  diversity  of  the  subject  matter  embraced 
in  the  assault  on  the  two  patents  that  they  cannot  be  conveniently  considered 
together,  and  although  it  may  be  possible  that  one  patent  may  be  sustained 
and  the  other  may  not,  yet  it  is  competent  for  the  court  to  make  a  decree 
in  conformity  with  such  finding.  It  seems  to  us  in  every  way  appropriate 
that  the  question  of  the  validity  of  the  two  patents  should  be  considered 
together.  —  United  States  v.  Am.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9 
S.  Ct.  90. 

Oliver  v.  Piatt,  44  U.  S.  333;   Walker  v.  Powers,  104  U.  S.  245. 

A  failure  of  the  complainant  either  to  establish  its  title  to  one  of  the 
patents,  or  show  an  infringement  of  one  or  more  of  the  patents,  would  not 
affect  its  right  to  an  injunction  and  an  accounting  with  respect  to  the  other 
patents.  —  Kansas  City  v.  Devol,  81  Fed.  726;  26  C.  C.  A.  578. 

Nourse  v.  Allen,  Fed.  Cas.  459;  Gillespie  v.  Cummings,  Fed.  Cas.  5,434;  Her- 
man v.  Brooklyn,  Fed.  Cas.  6703;  Seymour  v.  Osborne,  11  Wall.  516;  Hayes  v~ 
Dayton,  8  Fed.  702. 

§  805.     Supplemental  Bills. 

An  application  maybe  entertained  by  the  appellate  court,  after  judgement 
and  the  issue  of  mandate  and  after  the  close  of  the  term,  subject  to  certain 
limitations  arising  out  of  laches.  —In  re  Gamewell,  73  Fed.  908;  20  C^ 
C.  A.  111. 

Ricker  v.  Powell,  100  U.  S.  109. 

That  after  decision  and  decree  on  appeal  the  Appellate  Court  may,  upon 
motion,  pass  down  an  order  for  the  Circuit  Court  to  allow  a  party  to  file  a 
supplemental  bill,  see  —  Bliss  v.  Reed,  106  Fed.  314;  45  C.  C.  A.  304. 

Steel  Co.  v.  Vermilya,  90  Fed.  493. 

We  deem  this  the  better  practice  (to  allow  a  supplemental  bill  rather  than 
supplemental  proof  of  infringement  of  other  types  before  the  master)  because, 
if  an  accounting  before  the  master  is  extended  to  devices  that  have  not  been 
adjudged  by  the  court  to  be  infringements,  a  very  great  and  unnecessary 
consumption  of  time  and  burden  of  costs  may  be  imposed  upon  the  parties.  — 
Murray  v.  Orr,  153  Fed.  369;  82  C.  C.  A.  445. 


§§806-807  PLEADING    AND    PRACTICE  727 

§  806.     Title. 

An  averment  of  title  in  the  complainant  must  necessarily  be  made,  and  is 
the  necessary  foundation  for  all  rights  asserted  or  litigated  by  the  com- 
plainant. It  is  an  averment  without  which  complainant  has  no  proper 
standing  in  court.  It  matters  not  whether  the  title  be  that  of  the  patentee, 
derived  directly  from  the  grant  made  by  the  government,  or  that  of  an 
assignee  of  the  patentee  or  the  assignee  of  an  assignee.  In  either  case  it  is 
the  statement  of  a  prima  facie  qualification,  to  institute  the  suit,  and  such 
title,  whether  direct  to  the  patentee,  or  derivative  from  him  by  assignment 
or  assignments,  is  the  creature  of  the  patent  law,  and  not  of  the  common 
law ;  and,  whether  admitted  or  attacked  by  the  opposing  party,  the  questions 
raised  are  raised  under  the  patent  laws,  and  are,  therefore,  within  the  meaning 
of  the  Revised  Statutes  of  the  United  States,  justiceable  in  the  circuit  courts. 
—  Atherton  v.  Atwood-Morrison,  102  Fed.  949;  43  C.  C.  A.  72. 


§  807.     Miscellaneous  Rules  of  Practice  and  Pleading. 

The  principles  involved  having  been  decided  upon  their  merits  in  a  previous 
case,  this  court  will  not  review  the  subject  upon  mere  technical  points  of 
pleading.  —  Smith  v.  Ely,  15  How.  137;  12  L.  Ed.  634. 

An  action  for  infringement  may  be  tried  before  a  referee  by  consent.  — 
Hecker  v.  Fowler,  69  U.  S.  123;   17  L.  Ed.  259. 

Yates  v.  Russell,  17  Johns.  468;  Hall  v.  Mister,  Salk.  84;  Bank  v.  Widner,  11 
Paige  Ch.  533;  Green  v.  Pathen,  13  Wend.  295;  Caldwell,  Arb.  359;  Felter  v. 
Heath,  11  Wend.  482;  Graves  v.  Fisher,  5  Me.  70;  Miller  v.  Miller,  2  Pick.  570; 
Com.  v.  Props.  7  Mass.  417. 

Proofs  without  the  requisite  allegations  are  as  unavailing  as  such  allega- 
tions would  be  without  the  proofs  requisite  to  support  them.  —  Rubber  v. 
Goodyear,  76  U.  S.  788;  19  L.  Ed.  566. 

Foster  v.  Goddard,  1  Black,  518;  Tripp  v.  Vincent,  3  Barb.  Ch.  613;  Boone 
v.  Chiles,  10  Pet.  178;   Harrison  v.  Nixon,  9  Pet.  483. 

Persons  owning  reissued  letters  patent,  and  seeking  redress  from  those  who 
have  invaded  their  exclusive  rights,  are  not  obliged  to  introduce  in 
evidence  the  surrendered  patent,  and  if  the  old  patent  is  not  introduced  by 
the  party  sued,  he  cannot  have  the  benefit  of  such  defense.  —  Seymour  v. 
Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

It  is  possible  that  this  objection  to  the  evidence  would  have  been  available 
if  it  had  been  taken  in  season,  (that  the  prior  invention  set  up  in  the  answer 
did  not  comply  with  the  statute) .  But  we  are  not  referred  to  anything  to 
show  that  it  was  taken  in  the  court  below  or  before  the  examiner  when  the 
witnesses  were  examined.  In  Roemer  v.  Simon,  95  U.  S.  220,  we  held  that 
the  failure  to  interpose  such  objection  before  the  final  hearing  is  a  waiver  of 
the  required  notice  in  an  equity  suit.  —  Loom  Co.  v .  Higgins,  10£  U.  S.  580 ; 
26  L.  Ed.  1177. 

Practice  under  our  rules  defined  and  distinguished  from  the  English  rule. 
—  Thompson  v.  Wooster,  114  U.  S.  104;  29  L.  Ed.  105;  5  S.  Ct.  788. 

It  was  not  necessary  to  show  a  recovery  at  law  to  warrant  jurisdiction  in 
equity,  for  an  injunction  and  account.  —  McCoy  v.  Nelson,  121  U.  S.  484;. 
30  L.  Ed.  1017;  7  S.  Ct.  1000. 

Root  v.  Railway,  105  U.  S.  189. 


728  THE    FIXED    LAW   OF   PATENTS  §  807 

It  is  a  mistake  to  suppose  that  in  stating  the  facts  which  constitute  a 
fraud,  where  relief  is  sought  in  a  bill  in  equity,  all  the  evidence  which  may- 
be adduced  to  prove  the  fraud  must  be  recited  in  the  bill.  It  is  sufficient  if 
the  main  facts  or  incidents  which  constitute  the  fraud  against  which  relief 
is  desired  shall  be  fully  stated,  so  as  to  put  the  defendant  upon  his  guard 
and  apprise  him  of  what  answer  may  be  required  of  him.  —  United  States 
v.  Am.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S.  Ct.  90. 

Story  Eq.  PI.  sec.  252;  Harding  v.  Handy,  24  U.  S.  103;  St.  Louis  v.  Knapp, 
104  U.  S.  658. 

It  is  doubtless  necessary,  when  special  pleading  is  required,  that  a  former 
recovery  should  be  pleaded  in  bar.  But  if  the  record  be  properly  before  us 
in  evidence,  although  not  well  pleaded,  we  are  not  only  at  liberty  to  con- 
sider it,  but  are  bound  to  give  full  effect  to  it.  —  Bradley  v.  Eagle,  57  Fed. 
980;  6  C.  C.  A.  661. 

The  matter  charged  is  merely  additional  evidence  in  support  of  the  issue 
presented  and  determined  in  the  former  suit.  It  was  competent  evidence  in 
that  suit  without  any  statement  of  it  in  the  pleading,  if  the  objection  of  the 
statute  was  not  timely  urged.  The  proposed  evidence  comes  too  late  to  be 
availing.  The  decree  of  a  court  is  not  the  less  conclusive  because  a  party  has 
failed  to  produce  all  the  evidence  at  command,  or  because  of  newly-discovered 
evidence.  —  Bradley  v.  Eagle,  57  Fed.  980;  6  C.  C.  A.  661. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Zane  v.  Soffe,  110  U.  S.  200. 

It  is  said,  and  is  apparently  true,  that  the  parties  did  not  wish  to  raise 
this  question  (estoppel).  But  that,  if  successful,  would,  in  effect,  result  in 
submitting  to  the  court  a  moot  patent  cause,  which,  on  account  of  the  public 
interests  involved,  the  court  is  ordinarily  disinclined  to  permit.  As  a  general 
rule,  the  court,  before  passing  on  the  question  of  patentability,  is  entitled  to 
require  that  it  should  be  properly  presented  by  parties  legally  competent 
and  interested  to  do  it.  —  Woodward  v.  Boston,  63  Fed.  609;  11  C.  C.  A. 
353. 

A  settlement  made  after  final  decree  should  be  brought  before  the  court 
in  supplemental  proceedings  in  order  to  be  a  bar  to  a  final  decree.  —  Marden 
v.  Campbell,  79  Fed.  653;  25  C.  C.  A.  142. 

See,  Gamewell  v.  Municipal,  77  Fed.  490. 

The  complainant  has  not  pleaded  the  estoppel  he  claims,  and  defendant 
was  without  the  notice  in  the  pleadings  to  which  he  was  entitled.  Notwith- 
standing the  45th  equity  rule,  the  complainant  was  at  liberty,  and  should 
have  availed  himself  thereof,  to  plead  by  way  of  anticipation  the  estoppel  to 
the  defense  of  non-validity  of  the  patent.  —  Newark  v.  Ryan,  102  Fed.  693; 
42  C.  C.  A.  594. 

It,  however,  took  another  course  that  was  clearly  open  to  it  to  take,  and 
that  was  to  state  the  defense  of  this  pretended  assignment  by  way  of  anticipa- 
tion in  the  bill,  in  order  that  it  might  make  special  answer  thereto,  and  thus 
avoid  the  disadvantageous  position  in  which  it  would  be  placed  by  the 
forty-fifth  equity  rule,  by  which  special  replications  are  prohibited.  If  the 
bill  sets  forth  a  case  within  the  jurisdiction  of  the  court,  the  jurisdiction 
cannot  be  ousted  by  the  anticipation  and  denial  of  possible  defenses  that  may 
or  may  not  be  made.  Even  if  the  title  of  complainant,  as  set  forth  in  the 
bill,  were  put  in  issue  by  plea  or  answer,  the  question  would  still  be  one 
arising  under  the  patent  laws  of  the  United  States.  Such  an  issue  would  be 
incidental  and  collateral  to  the  main  purpose  of  the  suit.     In  this  case  the 


§  807  PRIORITY  729 

patentee  and  original  assignor  is  not  a  party  to  the  suit,  and  the  suit  could 
not,  therefore,  be  said  to  be  upon  the  contract  with  him.  This  is  not  a  suit 
to  enforce  a  contract  or  to  avoid  one,  but  is  a  claim  of  ownership  under  the 
laws  of  the  United  States,  which  is  properly  justiceable  in  the  federal  circuit 
courts.  —  Atherton  v.  Atwood-Morrison,  102  Fed.  949;  43  C.  C.  A.  72. 

If,  on  the  hearing  of  the  motion,  or  after  its  decision,  the  plaintiff  had 
made  timely  offer  to  amend  the  petition  by  alleging  that  the  acts  of  infringe- 
ment complained  of  were  committed  in  the  district  in  which  the  suit  was 
brought,  the  court  should  have  allowed  the  amendment.  —  Shaw  v.  American, 
108  Fed.  842;  48  C.  C.  A.  68. 

The  discovery  feature  of  the  bill  will  be  disregarded;  first,  because  an 
answer  under  oath  is  expressly  waived  in  the  bill;  second  because  the  bill 
propounds  no  interrogatories.  —  Excelsior  v.  City  of  Seattle,  117  Fed.  140; 
55  C.  C.  A.  156. 

Huntington  v.  Saunders,  120  U.  S.  78;  6  Enc.  PI.  &  Prac.  732. 

That  the  requirement  of  Sec.  4921  and  amendment  of  Mar.  3,  1897,  does 
not  require  that  the  complainant  in  equity  or  the  plaintiff  at  law  shall 
specially  allege  that  the  infringement  charged  took  place  during  the  six 
years  immediately  preceding,  see  —  Peters  v.  Hanger,  134  Fed.  586;  67  C 
C.  A.  386. 

We  hold  that  where,  in  a  suit  in  equity  as  in  this  case,  testimony  as  to 
facts,  upon  which  an  estoppel  is  contended  for,  is  introduced,  not  only  with- 
out objection  but  contentious  testimony  disputing  such  facts  is  produced  on 
the  other  side,  the  contention  for  an  estoppel  may  be  made  at  the  hearing 
without  having  been  pleaded.  —  Standard  v.  Arrott,  135  Fed.  750;  68  C. 
C.  A.  388. 

The  fact  that  an  invention  was  not  in  public  use  or  on  sale  in  this  country 
for  more  than  two  years  prior  to  the  application  for  the  patent  is  an  indis- 
pensable condition  to  its  validity,  and  an  averment  of  that  fact  is  essential 
to  the  statement  of  a  good  cause  of  action  for  its  infringement.  —  Hayes- 
Young  v.  St.  Louis,  137  Fed.  80;  70  C.  C.  A.  1. 

R.  S.  sec.  4886;  Walker  on  Pat.  sec.  425;  Krick  v.  Jansen,  52  Fed.  823;  Nathan 
v.  Craig,  47  Fed.  522;   Blessing  v.  Copper,  34  Fed.  753. 

We  dismiss  without  notice  other  partial  defenses  which  are  not  established 
by  the  evidence,  or  which  if  sustained  by  any  proof,  were  not  pleaded. 
Rubber  Co.  v.  Goodyear,  9  Wall.  788.  —  Indiana  v.  Case,  154  Fed.  365; 
83  C.  C.  A.  343. 

Assuming  that  the  defendant,  having  alleged  and  attempted  to  establish 
the  invalidity  of  the  patent,  is  in  a  position  to  claim  a  license  under  it,  we 
find  no  evidence  which  convinces  us  that,  as  to  the  digesters  in  controversy, 
such  a  license  was  given.  —  American  v.  DeGrasse,  157  Fed.  660;  87  C.  C. 
A.  260. 


PRIORITY. 

General  Statement  §  808 

Evidence  §  809  (see  §  288) 

Interference  §  810  (see  §  580) 

Reduction    to    Practice    §  811    (see 

§  860) 

Miscellaneous  Holdings  §  812 

See  —  Anticipation  §  58;    Divisional 


Patenting  §  348;  Double  Patenting 
§356;  Evidence  §§389-93;  Experi- 
ment §  412;  Foreign  Patent  §  423; 
Improvement  §  439;  Interferences 
§  580;  Interfering  Patents  §  586;  In- 
vention §  613;  Reduction  to  Practice 
§  860 


730  THE   FIXED   LAW   OF   PATENTS  §§808-810 

§  808.     General  Statement. 

Priority  is  a  question  arising  between  two  pending  applications,  a  pending 
application  and  an  issued  patent,  or  between  two  issued  patents.  The  first 
two  conditions  are  subjects  for  interference  proceedings;  the  third  is  a  con- 
dition which  may  be  met  either  by  an  action  under  4918  R.  S.  (see  Interfering 
Patents,  §  587),  or  it  may  be  met  and  settled  in  an  action  for  infringement. 
The  subject  of  interference  has  been  considered  under  §§582-585. 

§  809.     Evidence. 

An  invention  relating  to  machinery  may  be  exhibited  in  a  drawing  or  in 
a  model,  so  as  to  lay  the  foundation  of  the  claim  to  priority,  if  it  be  suffi- 
ciently plain  to  enable  those  skilled  in  the  art  to  understand  it.  —  Loom  Co. 
v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 

After  defendant  had  introduced  in  evidence  earlier  patents,  it  was  proper 
for  plaintiff  to  show  that  prior  to  the  date  of  any  of  them  he  had  reduced  his 
invention  to  a  working  form.  —  St.  Paul  v.  Starling,  140  U.  S.  184;  35  L. 
Ed.  404;   11  S.  Ct.  803. 

Elizabeth  v.  Nicholson,  97  U.  S.  126;    Webster  v.  Higgins,  105  U.  S.  580. 

Where  a  patent  is  introduced  in  suit  showing  with  certainty  the  date  of 
its  publication  and  prior  to  the  date  of  the  patent  in  suit,  it  is  incumbent 
upon  complainant  to  show,  if  not  with  equal  certainty,  yet  to  the  satisfaction 
of  the  court  that  the  invention  of  the  patent  in  suit  preceded  that  date.  — 
Clark  v.  Willimantic,  140  U.  S.  481;  35  L.  Ed.  521;   11  S.  Ct.  846. 

St.  Paul  v.  Starling,  140  U.  S.  184. 

The  defendant's  patent  having  been  issued  before  that  of  the  complainant,, 
upon  an  application  filed  in  advance  of  the  latter's  application,  the  burden 
of  proof  is  upon  complainant  to  establish  a  prior  use  of  the  machine  by  a 
preponderance  of  testimony  over  that  of  defendant  to  the  contrary.  — 
Ashton  v.  Coale,  52  Fed.  314;  3  C.  C.  A.  98. 

If  the  evidence  in  its  favor  were  fortified  by  the  presumption  of  validity 
afforded  by  the  patent  in  ordinary  cases,  we  might  think  it  right  that  that 
should  turn  the  scale,  and  that  this  claim  in  the  patent  should  be  held  valid. 
But  the  presumption  does  not  apply  in  such  circumstances,  and  the  burden  of 
proof  is  on  the  other  side.  —  Michigan  v.  Consolidated,  67  Fed.  121 ;  14 
C.  C.  A.  232. 

Eagleton  v.  West,  2  Fed.  774;   Eagleton  v.  West,  111  U.  S.  490. 

§  810.    Interference. 

Is  controlling  in  a  subsequent  suit  between  same  parties  in  absence  of 
other  thoroughly  convincing  testimony.  —  Morgan  v.  Daniels,  153  U.  S.. 
120;  38  L.  Ed.  657;  14  S.  Ct.  772. 

The  complainant  withdrew  from  the  interference  proceeding,  permitted  the 
contestant  to  make  his  case,  and  took  a  license  from  the  contestant.  We 
regard  it  as  an  admission  of  the  contestant's  priority  and  his  consequent 
right  to  a  patent.  —  Shoemaker  v.  Merrow,  61  Fed.  945;   10  C.  C.  A.  181. 

It  may  be  observed,  too,  that  the  features  of  the  later  patents  are  all 
described  and  illustrated  in  the  patent  to  Barter,  a  copy  of  which  is  made  an 
exhibit  in  the  bill.  If,  therefore,  they  were  not  included  in  the  interference 
(with  Barter)  and  did  not  so  become  the  established  property  of  Smith  under- 


§811  PRIORITY  731 

the  three  patents  mentioned  (the  prior  patent  in  interference)  then  they 
belong  to  Barter,  if  included  in  his  claims,  and  if  not  to  him,  then  to  the 
public,  because  of  his  failure  to  claim  them.  —  Russell  v.  Kern,  69  Fed.  94; 
16  C.  C.  A.  154. 

§  8n.    Reduction  to  Practice. 

It  is  impossible  to  examine  them,  and  look  at  the  process  and  the  ma- 
chinery and  the  results  of  each,  so  far  as  the  facts  are  before  us,  without 
perceiving  at  once  the  substantial  and  essential  difference  between  them  and 
the  decided  superiority  of  the  one  invented  by  Morse  (This  was  a  comparison 
of  the  alleged  foreign  devices  with  those  of  Morse ;  and  the  line  of  reasoning 
here  pursued  is  substantially  the  same  as  that  in  the  Telephone  Cases,  126 
U.  S.  1,  in  comparing  Bell  and  Reis.)  —  O'Reilly  v.  Mprse,  15  How.  62; 
14  L.  Ed.  601. 

He  is  the  first  inventor  and  entitled  to  the  patent,  who,  being  an  original 
discoverer,  has  first  perfected  and  adapted  the  invention  to  actual  use.  — 
Whiteley  v.  Swayne,  74  U.  S.  685;   19  L.  Ed.  199. 

Curt.  Pat.  43  notes. 

He  is  the  first  inventor  in  the  sense  of  the  patent  law,  and  entitled  to 
a  patent  for  his  invention,  who  first  perfected  and  adapted  the  same  to  use, 
and  it  is  well  settled  that  until  the  invention  is  so  perfected  and  adapted  to 
use  it  is  not  patentable.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Washburn  v.  Gould,  3  Story,  122;  Cahoon  v.  Ring,  1  Cliff.  612. 

We  do  not  doubt  that  Drawbaugh  may  have  conceived  the  idea  that  speech 
could  be  transmitted  to  a  distance  by  electricity  and  that  he  was  experi- 
menting upon  the  subject;  but  to  hold  that  he  had  discovered  the  art  of 
doing  it  before  Bell  did  would  be  to  construe  testimony  without  regard  to 
"  the  ordinary  laws  that  govern  human  conduct."  —  Telephone  Cases, 
126  U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778. 

Atlantic  v.  Brady.  107  U.  S.  192. 

In  the  law  of  patents  it  is  the  last  step  that  counts.  —  Washburn  v.  Beat 
Em  All,  143  U.  S.  275;  36  L.  Ed.  154;  12  S.  Ct.  443. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Safety  Valve  Co.  v.  Crosby,  113  U.  S.  157; 
Smith  v.  Goodyear,  93  U.  S.  486;  Magowan  v.  N.  Y.  141  U.  S.  332. 

It  is  obvious  that  the  man  who  first  reduces  an  invention  to  practice,  is 
prima  facie  the  first  and  true  inventor,  but  that  the  man  who  first  conceives, 
and,  in  a  mental  sense,  first  invents  a  machine,  art  or  composition  of  matter, 
may  date  his  patentable  invention  back  to  the  time  of  its  conception,  if  he 
connects  the  conception  with  its  reduction  to  practice  by  reasonable  dili- 
gence on  his  part,  so  that  they  are  substantially  one  continuous  act.  The 
burden  is  on  the  second  reducer  to  practice  to  show  the  prior  conception,  and 
to  establish  the  connection  between  that  conception  and  his  reduction  to 
practice  by  due  diligence.  It  has  sometimes  been  held,  in  the  decisions  in 
the  patent  office,  that  the  necessity  for  diligence  on  the  part  of  the  first 
conceiver  does  not  arise  until  the  date  of  the  second  conception ;  but  this,  we 
think,  cannot  be  supported  on  principle.  —  Christie  v.  Seybold,  55  Fed.  69; 
5  C.  C.  A.  33. 

Rob.  Pat.  sec.  384-386;  Millward  v.  Banes,  11  O.  G.  1060;  Christie  v.  Seybold, 
54  O.  G.  957:    Bedford  v.  Hunt,  1  Mason,  302;   Agawam  v.  Jordan,  7  Wall.  583; 
Whiteley  v.  Swayne,  7  Wall.  685;   Reed  v.  Cutter,  1  Story,  590;   White  v.  Allen, 
2  Cliff.  224;   Wright  v.  Postal,  44  Fed.  352. 


732  THE    FIXED    LAW    OF    PATENTS  §  812 

Having  thus  abandoned  any  attempt  to  make  his  idea  practically  available 
and  to  develop  his  theory,  in  fact,  the  subsequent  inventor  conceived  the  idea, 
embodied  it  in  means  by  which  it  could  be  carried  out,  proceeded  to  make 
articles,  and  thereby  first  perfected  it,  and  is  entitled  to  be  recognized  as  the 
real  inventor.  —  Ecaubert  v.  Appleton,  67  Fed.  917;  15  C.  C.  A.  73. 

Woolen  v.  Jordan,  7  Wall.  583;  Whiteley  v.  Swayne,  7  Wall.  687;  Reed  v. 
Cutter,  1  Story,  590;  Howe  v.  Underwood,  1  Fish.  P.  C.  166. 

If  the  inventor  conceived  the  improvements,  and  actually  gave  such  sub- 
stantial expression  to  the  invention  as  that,  without  further  exercise  of  the 
inventive  faculty,  one  familiar  with  the  construction  and  operation  of  the 
old  machine  could  construct  a  new  machine  embodying  the  novel  features, 
and  made  a  full  disclosure  of  the  same  to  a  subsequent  inventor,  the  latter 
is  not  entitled  to  the  attitude  of  one  whose  conception  is  later,  but  who  first 
constructed  an  organized  machine,  and  first  applied  for  a  patent.  —  Standard 
v.  Peters,  77  Fed.  630;  23  C.  C.  A.  367. 

It  was  said  by  this  court  in  Christie  v.  Seybold,  heretofore  cited: 

"  That  the  man  who  first  reduces  an  invention  to  practice  is  prima  facie 
the  first  and  true  inventor,  but  that  the  man  who  first  conceives,  and  in  a 
mental  sense,  first  invents,  a  machine,  art,  or  composition  of  matter,  may 
date  his  patentable  invention  back  to  the  time  of  its  conception,  if  he  connects 
the  conception  with  its  reduction  to  practice  by  reasonable  diligence  on  his 
part,  so  that  they  are  substantially  one  continuous  act.  The  burden  is  on 
the  second  reducer  to  practice  to  show  the  prior  conception,  and  to  establish 
the  connection  between  that  conception  and  his  reduction  to  practice  by 
proof  of  due  diligence." 

That  burden  may  be  met  by  the  exhibition  of  drawings,  and  by  oral  ex- 
planations of  his  conception  antedating  the  first  reduction  to  practice  by 
another.  —  Standard  v.  Peters,  77  Fed.  630;  23  C.  C.  A.  367. 

Railroad  v.  Stimpson,  14  Pet.  448;  Reed  v.  Cutter,  Fed.  Cas.  11,645;  McCormick  v. 
Minn.  42  Fed.  152. 

If  ineffectual  efforts  were  made  to  give  the  idea  form,  through  drawings, 
models,  or  machines,  but  were  abandoned  before  reaching  such  a  stage  of 
completion  as  to  require  only  ordinary  mechanical  skill  to  carry  the  concep- 
tion to  success,  the  claim  of  priority  of  invention  could  not  be  sustained 
against  a  later  independent  conception,  carried  into  practical  form  at  an 
earlier  date.  —  Standard  v.  Peters,  77  Fed.  630;  23  C.  C.  A.  367. 

Reed  v.  Cutter,  Fed.  Cas.  No.  11,645. 

The  failure  of  an  inventor  to  push  his  invention  to  completion  at  an  earlier 
date  or  file  an  application  for  a  patent  does  not  avail  a  subsequent  reducer 
to  practice  and  applicant  for  a  patent  who  derived  his  knowledge  of  the 
invention  from  the  prior  inventor.  —  Standard  v.  Peters,  77  Fed.  630;  23 
C.  C.  A  367. 

For  a  full,  complete  and  detailed  statement  of  the  law  upon  this  subject, 
see  the  quotation  under  §613  from  Automatic  v.  Pneumatic,  166  Fed.  288; 
C.  C.  A. 

§  812.     Miscellaneous  Holdings. 

When  defendant  claimed  to  have  invented  the  device  in  suit,  not  having 
made  an  application  for  a  patent,  the  right  of  the  complainant  to  his  patent 
is  not  disturbed  even  by  priority  of  invention  by  the  defendant  unless  he 
could  show  more  than  two  years  public  use  prior  to  plaintiff's  application.  — 
Loom  Co.  v.  Higgins,  105  U.  S.  580;  26  L.  Ed.  1177. 


§  813  PROCESS  733 

The  date  of  application  is  controlling  over  two  applications  made  by  the  same 
inventor,  and  date  of  application  and  not  date  of  patent  determines  legal 
effect  of  the  two  patents.  —  Washburn  v.  Beat  Em  All,  143  U.  S.  275;  36  L. 
Ed.  154;    12  S.  Ct.  443. 

The  fact  that  a  subsequent  inventor  devised  the  same  thing  without 
knowledge  of  the  former  invention  avails  nothing  in  view  of  R.  S.  sec.  4884- 
4886.  —  United  States  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530;  15  S.  Ct. 
420. 

Rob.  on  Pat.  sec.  58. 

Faure's  French  patent  was  dated  Oct.  20,  1880,  and,  inasmuch  as  he  was 
a  citizen  of  France,  he  is  not  permitted  to  claim  his  invention  before  that 
date,  as  against  a  citizen  of  the  United  States,  who,  being  also  an  original 
inventor,  subsequently  received  a  patent  for  his  own  invention  in  this 
country.  —  Elec.  v.  Brush,  52  Fed.  130;   2  C.  C.  A.  682. 

Brown's  disclaimer,  in  taking  his  patent,  of  itself,  is  a  sufficient  answer 
to  the  claim  now  made  in  his  favor.  —  Brown  v.  Stonemetz,  58  Fed.  571; 
7  C.  C.  A.  374. 

If  it  is  permissible,  as  contended,  to  maintain  his  patent  upon  evidence, 
dehors  the  proceedings  in  the  patent  office,  that  he  had  made  the  invention 
at  an  earlier  date  than  is  to  be  presumed  from  his  application  and  patent,  so 
as  to  carry  it  back  to  antedate  the  public  use,  the  proof  should  be  clear  and 
unequivocal  that  he  was  the  original  inventor.  —  Michigan  v.  Consolidated, 
67  Fed.  121 ;    14  C.  C.  A.  232. 

Eagleton  v.  West,  2  Fed.  774;  Eagleton  v.  West,  111  U.  S.  490;  Robinson, 
1026  n.  14. 

Where  a  disclaimer  was  filed  with  special  reference  to  a  pending  applica- 
tion in  favor  of  such  application,  such  disclaimer  establishes  priority  of 
invention  of  the  matter  disclaimed  in  favor  of  the  application  referred  to, 
see  North  Jersey  v.  Brill,  134  Fed.  580;  67  C.  C.  A.  380. 


PROCESS. 

General  Statement  §  813 
Claims  §  814  (see  §  184) 
Definitions  §  815 
Equivalents  §  816  (see  §  373) 
Mechanical  §  817 
Old  Elements,  New  Result  §  818 
Patentability  §  819 
Process  and  Product 

Claims  for  §  820  (see  §  184) 

Patentability  §  821 


Miscellaneous  Rulings  §  822 
See  —  Anticipation  §§  100-2;  Art 
§  146;  Claims  §  243;  Composition  of 
Matter  §  264;  Equivalents  §  373; 
Infringement  §§  518-20;  Invention 
§§  676-7,  685-8;  Machine  and  Pro- 
cess §  770;  Manufacture  §  772; 
Secret  Process  or  Machine  §  897; 
Specification  §  914 


§  813.     General  Statement. 

There  never  has  been  any  question  as  to  the  patentability  of  a  process. 
While  the  statute  does  not  employ  the  term,  undoubtedly  the  terms  "  art  " 
and  "  manufacture,"  as  used  in  Sec.  4886,  are  sufficient.  The  definitions 
found  under  §  815  will  be  found  unsatisfactory.  Probably  those  found  in 
Cochrane  v.  Deener  and  in  Tilghman  v.  Proctor  are  the  most  satisfactory. 
Since  the  decision  of  Westinghouse  v.  Boyden  (see  §  686)  mechanical  processes 
are  distinctly  non-patentable.  During  recent  years  the  practice  has  been 
not  uncommon  to  draw  process  claims  for  machines  with  the  expectation 


734  THE    FIXED    LAW    OF    PATENTS  §§  814-815 

of  broadening  the  patent.     Such  claims  are  undoubtedly  void  in  view  of 
the  holding  of  the  Supreme  Court. 

Rulings  bearing  on  this  subject  will  be  found  under  Infringement  — 
Process,  and  Invention  —  Process. 

§  814.     Claims. 

Where  the  patent  is  for  a  specific  process,  not  being  generic,  it  must  be 
shown  that  the  defendants  used  all  the  different  steps  of  that  process,  or  there 
could  be  no  infringement.  —  Royer  v.  Coupe,  146  U.  S.  524;  36  L.  Ed. 
1073;   13  S.  Ct.  166. 

Merely  to  describe  the  use  of  heated  acid,  without  any  information  what- 
ever as  to  the  extent  of  the  required  dilution  of  the  acid,  was  to  add  nothing 
to  the  stock  of  common  knowledge.  Mitchell's  invention,  it  will  be  observed, 
rested  upon  an  original  discovery,  and  he  was  bound  to  disclose  fully  to  the 
public,  in  and  by  his  patents,  his  modus  operandi.  Upon  this  the  provisions 
of  section  4888  of  the  Revised  Statutes  are  imperative.  —  Chemical  v. 
Raymond,  71  Fed.  179;  18  C.  C.  A.  31. 

Wood  v.  Underhill,  5  How.  1;  Tyler  v.  Boston,  7  Wall.  327;  Electric  v.  Mc- 
Keesport,  73  O.  G.  1289. 

§  815.     Definitions. 

The  invention  related  to  the  casting  of  cylinders.  By  constructing  a 
tangential  hole  or  gate  a  centrifugal  action  was  produced,  carrying  the  heavy 
iron  to  the  periphery  and  the  dross  to  the  center.  This  was  clearly  a  process 
as  all  of  the  devices  employed  were  old.  —  McClurg  v.  Kingsland,  1  How. 
202;   11  L.  Ed.  102. 

A  new  process  is  usually  the  result  of  discovery ;  a  machine  of  invention.  — 
Corning  v.  Burden,  15  How.  252;  14  L.  Ed.  683. 

An  art  may  require  one  or  more  processes  on  machines  in  order  to  produce 
a  certain  result  or  manufacture.  The  term  "  machine  "  includes  every 
mechanical  device  or  combination  of  mechanical  powers  and  devices  to  per- 
form some  function  and  produce  a  certain  effect  or  result.  But  where  the 
effect  or  result  is  produced  by  chemical  action,  by  the  operation  or  applica- 
tion of  some  element  or  power  of  nature,  or  of  one  substance  to  another,  such 
modes,  methods  or  operations  are  called  processes.  —  Corning  v.  Burden,  15 
How.  252;  14  L.  Ed.  683. 

The  Whitney  process  for  annealing  car  wheels,  though  consisting  of  several 
parts,  is  a  process,  and  not  a  mere  combination.  —  Mowry  v.  Whitney,  81 
U.  S.  620;  20  L.  Ed.  860. 

That  a  process  may  be  patentable,  irrespective  of  the  particular  form  of 
the  instrumentality  used,  cannot  be  disputed.  If  one  of  the  steps  of  a  process 
be  that  a  certain  substance  is  to  be  reduced  to  a  powder,  it  may  not  be  at 
all  material  what  instrument  or  machinery  is  used  to  effect  that  object, 
whether  a  hammer,  a  pestle  and  mortar,  or  a  mill.  Either  may  be  pointed 
out ;  but  if  the  patent  is  not  confined  to  that  particular  tool  or  machine,  the 
use  of  the  others  would  be  an  infringement,  the  general  process  being  the 
same.  A  process  is  a  mode  of  treatment  of  certain  materials  to  produce  a 
given  result.  It  is  an  act  or  a  series  of  acts,  performed  upon  the  subject 
matter  to  be  transformed  and  reduced  to  a  different  state  or  thing.  If  new 
and  useful  it  is  just  as  patentable  as  is  a  piece  of  machinery.  In  the  language 
of  the  patent  law,  it  is  an  art.    The  machinery  pointed  out  as  suitable  to 


§  816  PROCESS  735 

perform  the  process  may  or  may  not  be  new  or  patentable;  whilst  the 
process  itself  may  be  altogether  new;  and  produce  an  entirely  new  result. 
The  process  requires  that  certain  things  should  be  done  with  certain  sub- 
stances, and  in  a  certain  order;  but  the  tools  to  be  used  in  doing  this  may  be 
of  secondary  consequence.  —  Cochrane  v.  Deener,  94  U.  S.  780;  24  L.  Ed. 
139. 

That  a  patent  can  be  granted  for  a  process,  there  can  be  no  doubt.  The 
patent  law  is  not  confined  to  new  machines  and  new  compositions  of  matter, 
but  extends  to  any  new  and  useful  art  or  manufacture.  A  manufacturing 
process  is  clearly  an  art,  within  the  meaning  of  the  law.  Goodyear 's  patent 
was  for  a  process,  namely,  the  process  of  vulcanizing  India  rubber  by  sub- 
jecting it  to  a  high  degree  of  heat  when  mixed  with  sulphur  and  a  mineral 
salt.  The  apparatus  for  performing  the  process  was  not  patented,  and  was 
not  material.  The  patent  pointed  out  how  the  process  could  be  effected, 
and  that  was  deemed  sufficient.  Nelson's  patent  was  for  the  process  of 
applying  the  hot  blast  to  furnaces  by  forcing  a  blast  through  a  vessel  or 
receptacle  situated  between  the  blowing  apparatus  and  the  furnace,  and 
heated  to  a  red  heat;  the  form  of  the  heated  vessel  being  stated  by  the 
patent  to  be  immaterial.  These  patents  were  sustained  after  the  strictest 
scrutiny  and  against  the  strongest  opposition.  —  Tilghman  v.  Proctor,  102 
U.  S.  707;  26  L.  Ed.  279. 

Corning  v.  Burden,  56  U.  S.  267;  Nelson  v.  Thompson,  Web.  P.  C.  275,  371; 
Househill  v.  Nelson,  Web.  P.  C.  715;  O'Reilly  v.  Morse,  56  U.  S.  62. 

A  patent  for  a  process  and  a  patent  for  an  implement  or  a  machine  are  very 
different  things.  Where  a  new  process  produces  a  new  substance,  the  inven- 
tion of  the  process  is  the  same  as  the  invention  of  the  substance,  and  a 
patent  for  the  one  may  be  reissued  so  as  to  include  both,  as  was  done  in  the 
case  of  Goodyear's  vulcanized  rubber  patent.  But  a  process  and  a  machine 
for  applying  the  process  are  not  necessarily  one  and  the  same  invention. 
They  are  generally  distinct  and  different.  —  James  v.  Campbell,  104  U.  S. 
356;  26  L.  Ed.  786. 

Powder  v.  Powder,  98  U.  S.  126. 

The  doctrine  which  is  applicable  to  a  machine  patent  is  of  a  kindred 
character  with  that  applied  in  this  country  and  in  England  to  a  patent  for 
a  process.  —  Morley  v.  Lancaster,  129  U.  S.  263;  32  L.  Ed.  715;  9  S.  Ct.  299. 

McCormick  v.  Talcott,  61  U.  S.  402;  Chicago  v.  Sayles,  97  U.  S.  554;  Clough  v. 
Barker,  106  U.  S.  166;  Duff  v.  Sterling,  107  U.  S.  636;  Consolidated  v.  Crosby, 
113  U.  S.  157.  _ 

And  comparing, 

Tilghman  v.  Proctor,  102  U.  S.  707;  Nelson  v.  Hartford,  1  Web.  P.  C.  295; 
O'Reilly  v.  Morse,  56  U.  S.  62,  125;  Curtis  v.  Piatt,  (note)  L.  R.  3  Ch.  Div. 
134;  Badische  v.  Levinstein,  L.  R.  24  Ch.  Div.  156,171;  Jupe  v.  Pratt,  1 
Web.  P.  C.  146;  Househill  v.  Nelson,  1  Web.  P.  C.  685;  Proctor  v.  Bennis, 
L.  R.  36  Ch.  Div.  740;  Clark  v.  Adie,  L.  R.  2  App.  Cas.  315,320. 


§  8 1 6.     Equivalents. 

When  substitution  is  not  infringement,  see  Seabury  v.  Am  Ende,  152 
U.  S.  561;  38  L.  Ed.  553;   14  S.  Ct.  683. 

The  patentee  of  an  invention  of  a  process  is  entitled  to  the  benefit  of  all 
which  his  process  will  accomplish.  —  Cowles  v.  Lowrey,  79  Fed.  331 ;  24 
C.  C.  A.  616. 


736  THE   FIXED   LAW   OF   PATENTS  §817 

If  a  metallic  salt  of  any  kind  was  previously  used,  the  substitution  of 
another  metallic  salt  which  produced  the  same  result  would  be  the  employ- 
ment merely  of  an  equivalent.  —  National  v.  New  England,  153  Fed.  184; 
82  C.  C.  A.  359. 

§  817.     Mechanical. 

That  a  claim  for  a  mechanical  process  cannot  be  maintained,  see  —  West- 
inghouse  v.  Boyden,  170  U.  S.  537;  42  L.  Ed.  1136;  18  S.  Ct.  707. 

The  utterances  of  the  Supreme  Court  upon  the  question  of  whether  or  not 
a  mechanical  process  is  patentable  are  not  in  clear  harmony;  but  it  would 
seem  that  processes,  which  are  to  be  effected  wholly  by  mechanical  means, 
in  order  to  be  patentable  must  be  capable  of  being  distinguished  from  the 
method  of  operation  or  mere  function  of  the  mechanism  necessary  for  their 
accomplishment.  —  Appleton  v.  Star,  60  Fed.  411 ;  9  C.  C.  A.  42. 

Corning  v.  Burden,  15  How.  267;  O'Reilly  v.  Morse,  15  How.  62;  Tilghman  v. 
Proctor,  102  U.  S.  707;  Lawther  v.  Hamilton,  124  U.  S.  1;  Cochrane  v.  Deener, 
94  U.  S.  788;  Brown  v.  Piper,  91  U.  S.  37. 

The  process  is  purely  mechanical.  The  devices  and  machinery  necessary 
for  its  accomplishment  are  illustrated  by  drawings  and  minutely  described 
in  the  specification.  The  application  for  the  patent  was  rejected  in  the 
first  instance  on  the  ground  that  "  the  alleged  method  is,  as  presented,  the 
necessary  function  or  operation  of  the  mechanism  described,"  and  notwith- 
standing the  amendments  made  we  are  of  opinion  that  the  objection  was  not 
obviated,  and  that  the  patent  should  not  have  been  granted.  In  Appleton 
v.  Star,  60  Fed.  411  where  it  was  necessary  to  consider  the  question  of  the 
patentability  of  mechanical  processes,  we  were  unable  to  deduce  from 
decided  cases  a  definite  rule;  but  whatever  uncertainty  there  had  been, 
or  lack  of  harmony  in  the  dicta  and  decisions  of  the  Supreme  Court,  on  the 
subject,  was  removed  by  the  recent  opinion  of  that  court  in  Locomotive  iv 
Medart.  —  Wells  v.  Henderson,  67  Fed.  930;  15  C.  C.  A.  84. 

Corning  v.  Burden,  15  How.  252. 

The  method  may  be  practised  by  the  employment  of  any  means  adapted 
to  the  purpose,  and  then  known  to  the  art,  or  which  might  thereafter  become 
known.  To  be  sure,  if  the  mechanical  means  employed  are  the  subject  of 
a  patent,  the  party  who  uses  the  process  may  have  to  secure  the  right  to  use 
the  patented  method.  Assuming  for  the  moment  that  claim  2  was  for  a  com- 
bination of  generic  means,  such  a  claim  would  cover  all  known  means  of  the 
kind  enumerated.  And  it  would  cover  all  equivalents  which  might  there- 
after be  discovered  by  the  ordinary  skill  of  the  art,  and  were  not  the  fruit 
of  invention;  and  it  would  dominate  the  latter,  if  the  latter  was  of  an  im- 
provement merely  of  the  means  covered  by  the  former  invention.  But  the 
invention  of  means  hitherto  unknown  would  be  an  independent  invention, 
not  covered  by  the  patent,  and,  according  to  the  well-settled  rule,  would  of 
itself  be  entitled  to  a  patent.  —  Dayton  v.  Westinghouse,  118  Fed.  562; 
55  C.  C.  A.  390. 

Such  a  process  (the  mechanical  separation  of  cotton  hulls  and  lint)  may 
be  wholly  independent  of  the  particular  machinery  or  appliance  used,  and 
is  something  more  than  the  functions  of  the  machine  which  is  employed.  — 
Johnson  v.  Foos,  141  Fed.  73 ;  72  C.  C.  A.  105. 

American  v.  Buckskin,  72  Fed.  508. 

The  means,  method,  or  process  constitutes  a  patentable  process,  consist- 
ing, as  it  does,  of  a  series  of  treatments  of  a  peculiarly  obstinate  material 


§  817  PROCESS  737 

(cotton  hulls),  each  treatment  having  relation  to  the  character  of  the  material 
acted  upon  and  the  condition  produced  by  the  preceding  treatment.  —  John- 
son v.  Foos,  141  Fed.  73;  72  C.  C.  A.  105. 

Mowry  v.  Whitney,  14  Wall.  620;  Cochrane  v.  Deener,  94  U.  S.  780;  Carnegie 
v.  Cambria,  185  U.  S.  403;    American  v.  Buckskin,  72  Fed.  508. 

The  first  and  second  claims  are  for  a  process.  They  seem  to  us  to  be 
nothing  else  than  claims  for  the  function  of  the  apparatus  described.  No 
doubt  it  is  competent,  when  the  circumstances  permit  it,  for  an  inventor  in 
describing  a  machine  or  apparatus  which  he  has  devised,  to  make  a  claim  for 
a  process  which  his  patented  device  is  capable  of  carrying  out.  But  to  entitle 
him  to  do  this  the  process  must  be  one  capable  of  being  carried  out  by  other 
means  than  by  the  operation  of  his  patented  machine,  and,  unless  such  other 
means  are  known  or  within  the  reach  of  ordinary  skill  and  judgement,  the 
patentee  is  bound  to  point  them  out;  for,  unless  the  public  are  informed 
by  what  other  means  the  process  can  be  carried  out,  the  process  is  to  them 
nothing  else  than  the  operation  of  the  machine  —  in  other  words  the  exercise 
of  its  functions.  In  the  present  case  no  other  means  or  way  of  practising  the 
process  are  suggested  by  the  patentee  than  the  particular  device  on  which 
his  claims  for  the  apparatus  rests.  And  it  is  impossible  for  us  to  see  how 
the  process  which  is  the  subject  of  these  claims  could  be  worked  out  by  any 
other  means  than  the  particular  means  described  by  the  apparatus.  Cer- 
tainly it  is  not  explained  how  else  it  could  be  done.  Moreover,  if  the  apparatus 
is  not  new  its  functions  are  not  new.  —  American  v.  Steward,  155  Fed.  731 ; 
84  C.  C.  A.  157. 

Westinghouse  v.  Boyden,  170  U.  S.  537;  Wessel  v.  United,  139  Fed.  11;  Ameri- 
can v.  Sexton,  139  Fed.  564. 

Note:  This  is  refusal  to  follow  same  patent  decided  in  2nd  Cir.  C. 
C.  A.,  128  Fed.  599.  Look  for  reversal  by  Supreme  Court.  In  the  above 
quotation  there  is  scarcely  a  statement  which,  broadly  considered,  is  not 
questionable. 

The  patent  was  for  a  "  method  of  making  expanded  sheet  metal."  It 
had  been  held  void  in  the  Third  Circuit  (Bradford  v.  Expanded,  146  Fed. 
984).  Held:  Nor  can  we  agree  to  the  suggestion  that  the  patent  was  for 
the  function  only  of  a  machine.  No  doubt  the  function  or  principle  of  a 
machine  cannot  be  the  subject  of  a  patent.  It  is  not  a  distinct  entity,  but 
a  mere  property  of  the  machine,  and  inseparable  from  it,  and  is  developed 
by  its  normal  use.  But  Golding  was  not  here  seeking  to  patent  a  machine, 
or  the  operation  of  a  machine.  It  was  a  matter  of  indifference  to  him  by  what 
particular  means  his  method  could  be  practised,  but  only  that  certain  things 
should  be  done  in  a  certain  order.  The  apparatus  he  suggests  would  not  by 
any  known  method  of  use  be  of  any  value.  True,  he  could  slit  and  bend 
sheets  and  strands  of  metal  with  it.  That  was  the  function  of  it.  But  still, 
and  unless  he  invented  a  specific  method  of  use,  his  apparatus  was  of  no 
account.  The  material  and  the  apparatus  were  mere  disjecta  membra  until 
the  light  of  more  than  ordinary  intelligence  pointed  the  way  to  the  subjec- 
tion of  the  one  to  the  operation  of  the  other  to  a  useful  purpose.  We  think 
the  invention  may  rightly  and  aptly  be  characterized  as  an  improvement 
in  the  art  of  expanding  sheet  metal,  and  is  within  the  letter  and  spirit  of 
the  statute.  To  hold  otherwise  would  be  to  adopt  a  rule  which  would  operate 
to  exclude  from  the  benefits  of  the  law  many  valuable  inventions  of  things 
new  and  useful,  and  this,  not  by  resting  upon  any  exception  found  in  the 
statute,  but  upon  an  artificial  graft  of  error  alien  to  its  spirit  and  purpose.  — 
Expanded  v.  General,  164  Fed.  849;  C.  C.  A. 

Mowry  v.  Whitney,  14  Wall.  620;  Cochrane  v.  Deener,  94  U.  S.  780;  Telephone 
Cases,  126  U.  S.  1;  Carnegie  v.  Cambria,  185  U.  S.  403.  Distinguishing  Risdon 
u.  Medart,  158  U.  S.  68. 


738  THE   FIXED   LAW   OF   PATENTS  §§  818-819 

Note:  This  opinion  and  that  of  Bradford  v.  Expanded,  supra,  quoted 
and  criticized  under  §  682,  present  the  two  sides  of  a  most  difficult  and  un- 
settled problem.  The  opinion  of  Judge  Gray  in  Kilborn  v.  Liveright,  165  Fed. 
902,  may  be  read  with  interest  in  connection  with  these  cases.  It  is  my 
opinion  that  Judge  Gray  was  right  in  the  stocking  case  and  wrong  in  con- 
curring in  the  decision  of  Bradford  v.  Expanded. 

A  process  patent  can  only  be  anticipated  by  showing  an  earlier  similar 
process.  It  is  not  enough  to  show  that  the  Enzinger  filter  might  have  been 
operated  according  to  the  process  of  Stockheim,  but  that  his  process  had 
been  actually  used  in  its  practical  operation,  or  that  the  character  of  the 
structure  was  such  as  to  plainly  indicate  to  one  called  upon  to  operate 
it  that  its  intended  mode  of  operation  was  similar  to  that  now  claimed  by 
Stockheim.  —  Loew  v.  German-American,  164  Fed.  855;  C.  C.  A. 

Carnegie  v.  Cambria,  185  U.  S.  421. 

§  818.    Old  Elements,  New  Result. 

A  process  to  obtain  a  product  from  a  substance  from  which  it  has  never 
been  taken  may  be  creative  of  invention,  but  the  thing  itself,  when  obtained, 
cannot  be  called  a  new  manufacture.  It  may  have  been  in  existence  and  in 
common  use  before  the  new  means  of  obtaining  it  was  invented,  and  possibly 
before  it  was  known  that  it  could  be  extracted  from  the  subject  to  which  the 
new  process  is  applied.  —  American  v.  Fiber  Co.  90  U.  S.  566;  23  L.  Ed.  31. 

The  public  cannot  be  deprived  of  an  old  process  because  someone  has 
discovered  that  it  is  applicable  to  a  wider  range  of  use  and  capable  of  pro- 
ducing a  better  result,  than  was  before  known.  —  Lovell  v.  Cary,  147  U.  S. 
623;  37  L.  Ed.  307;  13  S.  Ct.  472. 

Smith  v.  Nichols,  88  U.  S.  112;   Roberts  v.  Ryer,  91  U.  S.  150. 

§  819.     Patentability. 

It  is  when  the  term  "  process  "  is  used  to  represent  the  means  or  method 
of  producing  a  result  that  it  is  patentable,  and  that  it  will  include  all  methods 
or  means  which  are  effected  by  mechanism  or  mechanical  combination.  — 
Corning  v.  Burden,  15  How.  252;  14  L.  Ed.  683. 

"  Whoever  discovers  that  a  certain  useful  result  will  be  produced  in  any 
art  by  the  use  of  certain  means  is  entitled  to  a  patent  for  it,  provided  he 
specifies  the  means."  But  everything  turns  on  the  force  and  meaning  of  the 
word  "  means."  It  is  very  certain  that  the  means  need  not  be  a  machine, 
or  an  apparatus,  it  may,  as  the  court  says,  be  a  process.  A  machine  is  a 
thing.  A  process  is  an  act,  or  a  mode  of  acting.  The  one  is  visible  to  the  eye ; 
an  object  of  perpetual  observation.  The  other  is  a  conception  of  the  mind, 
seen  only  when  being  executed  or  performed.  Either  may  be  the  means  of 
producing  a  useful  result.  —  Tilghman  v.  Proctor,  102  U.  S.  707 ;  26  L. 
Ed.  275. 

Explaining  O'Reilly  v.  Morse,  15  How.  62. 

We  think  that  the  method  or  art  covered  by  the  patent  is  patentable  as  a 
process,  irrespective  of  the  apparatus  or  instrumentality  for  carrying  it  out. 
—  New  Process  v.  Maus,  122  U.  S.  413;  30  L.  Ed.  1193;  7  S.  Ct.  1304. 

Corning  v.  Burden,  56  U.  S.  252;  Cochrane  v.  Deener,  94  U.  S.  780;  Tilghman 
v.  Proctor,  102  U.  S.  707. 

It  is  not  a  patentable  process  to  apply  heat  within  a  barrel  of  wine  by  old 
and  well  known  means  to  produce  the  same  result  attained  by  applying  heat 


§  819  PROCESS  739 

to  the  outside  of  the  barrel.  —  Dreyfus  v.  Searle,  124  U.  S.  60;  31  L.  Ed. 
352;  8  S.  Ct.  390. 

And  why  is  not  such  new  method  a  process?  There  is  no  new  machinery. 
The  rollers  are  an  old  instrument,  the  mixing  machinery  is  old,  the  hydraulic 
press  is  old ;  the  only  thing  that  is  new  is  the  mode  of  using  and  applying  these 
old  instrumentalities.  And  what  is  that  but  a  new  process?  This  process 
consists  of  a  series  of  acts  done.  It  is  a  mode  of  treatment.  Why  should 
it  be  doubted  that  such  a  discovery  is  patentable?  It  is  highly  useful,  and  it 
is  shown  by  the  evidence  to  have  been  the  result  of  careful  and  long  continued 
experiments  and  the  application  of  much  ingenuity.  —  Lawther  v.  Hamilton, 
124  U.  S.  1;  13  L.  Ed.  325;  8  S.  Ct.  342. 

For  general  rule  on  patentability  of  an  art  or  an  art  and  process,  see 
Telephone  Cases,  126  U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778. 

Full  discussion  of  in  light  of  the  leading  cases  which  are  cited.  —  Risdon 
v.  Medart,  158  U.  S.  68;  39  L.  Ed.  899;  15  S.  Ct.  745. 

The  question  now  concerns  the  prima  facie  validity  of  the  claim.  Owing 
to  the  natural  qualities  which  distinguish  the  constituents  of  a  grain  of  corn, 
namely,  the  germ,  the  starchy  portion,  and  the  hull,  and  the  natural  qualities 
of  water,  the  characteristic  process  of  the  claim  is  attained  under  the  con- 
ditions named  therein ;  that  is,  when  the  apparatus  specified,  or  some  equiva- 
lent apparatus,  is  supplied.  Without  the  forces  inevitably  and  naturally 
brought  into  play  by  the  water  and  the  ingredients  of  the  corn  grains,  the 
apparatus  would  accomplish  nothing.  The  apparatus  is  functional,  towards 
the  result  intended,  only  as  supplying  conditions  under  which  movements 
and  changes  of  structure  due  to  the  natural  qualities  of  the  substance  treated 
take  place.  If  the  process  be  new,  if  it  were  first  reduced  to  practice  by 
the  apparatus  proposed  or  indicated  in  the  claim  when  read  in  the  light  of  the 
specification,  then  the  claim  sets  forth  a  new  means.  If  the  operation, 
namely,  the  automatic  separation  of  an  increasing  mass  of  corn  into  germs, 
hulls,  and  starch  by  means  of  starch  milk,  itself  continuously  and  automat- 
ically formed  in  the  course  of  the  operation,  be  new,  then  the  claim  would 
seem  to  be  valid  and  patentable.  —  Chicago  v.  Pope,  84  Fed.  977 ;  28  C. 
C.  A.  594. 

Rob.  Pat.  1  256  n.;  Corning  v.  Burden,  15  How.  247;  Locomotive  v.  Medart, 
158  U.  S.  68;  Eames  v.  Andrews,  122  U.  S.  41;  Cochrane  v.  Deener,  94  U.  S.  780. 

There  is,  in  fact,  a  difference  in  the  material  of  the  two  pavements,  and  we 
are  inclined  to  differ  from  the  circuit  court,  and  to  regard  the  Perkins  patent 
as  patentable,  because  it  was  an  application  of  an  old  process  of  intense 
heating,  by  means  of  a  movable  furnace,  to  different  and  dissimilar  materials. 
The  two  processes  were  not  exactly  alike.  ,  Crochet  treated  the  surface  by 
vivid  heat,  removed  the  damaged  part,  roughened  the  remaining  surface, 
and  added  new  material.  Perkins  heated  in  the  same  way,  reduced  the  old 
material  to  a  soft,  pliable  state,  agitated  it  with  a  rake,  and  mixed  it  with 
enough  new  material  to  fill  up  the  spot  to  be  repaired.  —  U.  S.  Repair  v. 
Standard,  95  Fed.  137;  37  C  C.  A.  28. 

As  it  involves  not  merely  the  function  of  a  mechanical  device,  but  certain 
elemental  action,  we  think  it  the  proper  subject  of  a  process  patent.  It  is,  in 
fact,  a  series  of  acts  performed  with  molten  glass  and  wire-gauze,  by  which 
they  are  transformed  into  a  separate  manufacture,  within  the  definition  of  a 
process  patent.  —  Streator  v.  Wire-glass,  97  Fed.  950;  38  C.  C.  A.  573. 

Cochrane  v.  Deener,  94  U.  S.  780. 


740 


THE    FIXED    LAW    OF    PATENTS 


§§  820-821 


That  in  the  process  of  hydrating  lime,  where  the  only  novel  feature  was 
supplying  the  exact  amount  of  water  to  complete  the  hydration,  all  the  other 
steps  of  the  process  being  old,  and  knowledge  of  the  fact  that  such  exact 
amount  might  be  determined,  did  not  involve  invention,  see  —  Lauman  v. 
Urschel,  136  Fed.  190;  69  C.  C.  A.  206. 

The  hand  and  machine  methods  are  essentially  the  same.  The  fact  that 
in  one  case  the  work  is  done  by  a  hand  tool,  and  in  the  other  by  a  machine, 
does  not  influence,  much  less  control,  the  decision  of  the  question.  The  com- 
plainant did  not  discover  a  new  method  of  chipping  glass.  It  is  rather  the 
old  method  performed  by  a  new  tool.  It  is  impossible  to  demonstrate  wherein 
the  claims  of  this  patent  set  forth  anything  not  methodically  pursued  in  the 
hand  operation.  —  Penri  v.  Conroy,  159  Fed.  943;  87  C.  C.  A.  149. 

We  are  satisfied  that  Cameron  was  the  first  one  to  subject  a  flowing  current 
of  sewage  to  the  action  of  anaerobes  and  aerobes  under  conditions  which 
secured  their  separate  and  successive  action.  This  certainly  involved  "  the 
use  of  one  of  the  agencies  of  nature  for  a  practical  purpose."  The  process  was 
one  which  puts  a  force  of  nature  into  a  certain  specified  condition  and  then 
uses  it  in  that  condition  for  a  practical  purpose.  —  Cameron  v.  Saratoga, 
159  Fed.  453;   86  C.  C.  A.  483. 

Risdon  v.  Medart,  153  U.  S.  77;    Bell  Telephone,  126  U.  S.  1. 

§  820.     Process  and  Product  —  Claims  for. 

The  contention  that,  in  the  patent,  the  product  inheres  in  the  process, 
and  that,  therefore,  the  claim  of  the  one  necessarily  includes  the  other, 
cannot  be  sustained  on  principle  or  authority.  The  claim  is  single  and  is 
either  for  a  process  or  product;  otherwise,  if  the  claim  is  divisible,  one  part 
being  for  a  process  and  the  other  for  a  product,  it  would  be  a  double  claim, 
and  as  such  in  danger  of  being  held  void  for  ambiguity.  The  applicant  for 
a  patent  may  separately  claim  both  a  process  and  a  product,  but  cannot 
properly  claim  them  in  one  claim.  They  are  the  proper  subjects  of  separate 
and  distinct  claims.  —  Durand  v.  Schulze,  61  Fed.  819;   10  C.  C.  A.  97. 

Merrill  v.  Yeomans,  1  Ban.  &  A.  55;   Goodyear  v.  Rubber  Co.  2  Cliff.  371. 

If  the  complainant  had  included  in  his  patent  no  claims  except  the  product 
claims,  he  could  not  have  obtained  thereafter  another  patent  for  the  process, 
for  the  reason  that  the  process  and  the  product  are  substantially  one  in- 
vention or  discovery.  —  Downes  v.  Teter-Heany,  150  Fed.  122;  80  C.  C.  A.  76. 

Mosler  v.  Mosler,  127  U.  S.  361. 

§821.     Process  and  Product  —  Patentability. 

Explaining  and  distinguishing  Goodyear  v.  Day,  2  Wall.  Jr.  283,  and 
Goodyear  v.  R.  R.  Co.  2  Wall.  Jr.  356.  —  Powder  v.  Powder,  98  U.  S.  126; 
25  L.  Ed.  77. 

The  patent  in  suit  was  for  a  product,  viz.  a  hard  rubber  plate  for  artificial 
teeth,  and  the  product  was  described  and  claimed  in  terms  of  the  process. 
Held  that  another  product  for  performing  the  same  function,  but  produced 
from  different  material  and  by  a  different  process  was  not  infringement.  — 
Goodyear  v.  Davis,  102  U.  S.  122;  26  L.  Ed.  149. 

The  original  patent  was  for  a  process;  the  reissue  was  for  the  product. 
Although  there  are  two  patents,  one  for  a  process  and  the  other  for  a 
product,  there  is  in  fact  but  one  invention ;  and  it  may  be  assumed  that  the 
new  article  of  manufacture  is  a  product  which  results  from  the  use  of  the 


§  822  PROCESS  741 

process  described  in  the  patent,  and  not  one  which  may  be  produced  in  any- 
other  way.  —  Plummer  v.  Sargent,  120  U.  S.  442;  30  L.  Ed.  737;  7  S.  Ct. 
640. 

One  and  the  same  patent  may  cover  both  a  process  and  product,  but,  if  the 
patentee  choose  to  restrict  himself  to  one  by  his  claim,  he  cannot  include  the 
other  also  by  a  reference  to  other  parts  of  his  specification.  —  Durand  v. 
Schulze,  61  Fed.  819;  10  C.  C.  A.  97. 

The  patent  also  describes  a  process  for  making  it  which  was  new,  and  up 
to  the  present  time  is  the  only  known  process  by  which  it  can  be  produced. 
Since,  then,  there  was  novelty  both  in  the  process  and  product,  Hinsberg 
might  have  had  one  claim  for  the  process  and  another  claim  for  the  product. 

—  Maurer  v.  Dickerson,  113  Fed.  870;  51  C.  C.  A.  494. 

Rubber  v.  Goodyear,  9  Wall.  788;  Merrill  v.  Yeomans,  94  U.  S.  568. 

The  original  specifications  and  drawings  disclose  the  envelope  construction 
of  air-passages  surrounding  the  jet  of  gas.  In  these  circumstances,  we 
conclude  that  there  is  no  substantial  conflict  between  the  statements  of  the 
original  and  amended  specifications;  that  the  original  specification  suffi- 
ciently disclosed  the  nature  of  the  invention  claimed  in  the  patent,  and 
sufficiently  suggested  the  process  involved  therein ;  and  that  as  the  invention 
or  discovery  of  the  process  involved  the  product,  and  the  product  was  the 
result  of  the  process,  the  claims  for  the  process  were  properly  included  in  the 
patent  in  suit.  —  Kirchberger  v.  American,  128  Fed.  599;  64  C.  C.  A.  107. 

Powder  v.  Powder,  98  U.  S.  126;   Wing  v.  Anthony,  106  U.  S.  142. 

That  there  may  coexist  both  a  patentable  process  and  product  is  plain. 
In  such  case  both  the  process  and  the  product  must  be  new  and  useful.  So 
it  may  be  conceded  that  a  process  may  be  old,  but  the  product  new,  or  the 
product  old  and  the  process  new.  In  such  case  one  will  be  patentable  and 
the  other  not.  In  Providence  v.  Goodyear,  9  Wall.  788  it  was  said:  "The 
patentability,  or  the  issuing  of  a  patent  as  to  one,  in  no  wise  affects  the  rights 
of  the  inventor  or  discoverer  in  respect  to  the  other.  They  are  wholly 
disconnected  and  independent  facts."  Nevertheless  it  does  not  follow  that 
a  single  patent  may  issue  for  both  a  process  and  a  product  when  the  latter 
is  wholly  independent  of  the  other.  The  Goodyear  patent,  referred  to  above, 
originally  issued  for  both  a  process  and  a  manufacture.  It  was  surrendered, 
and  two  patents  taken,  one  for  the  process  and  one  for  the  product.  — 
Sanitas  v.  Voigt,  139  Fed.  551 ;  71  C.  C.  A.  535. 

That  the  abandonment  of  an  application  for  a  patent  upon  the  product 
of  a  process  does  not  in  any  way  argue  invalidity  of  the  process  patent,  see 

—  Mica  Insulator  v.  Commercial,  166  Fed.  440;  C.  C.  A. 

§  822.     Miscellaneous  Rulings. 

In  cases  of  chemical  inventions,  when  the  manufacture  claimed  as  novel  is 
not  a  new  composition  of  matter,  but  an  extract  obtained  by  the  decomposi- 
tion or  disintegration  of  material  substances,  it  cannot  be  of  importance 
from  what  it  has  been  extracted.  —  American  v.  Fiber,  90  U.  S.  566;  23 
L.  Ed.  31. 

It  is  quite  obvious  that  a  manufacture  or  a  product  of  a  process,  may  be 
no  novelty,  while,  at  the  same  time,  the  process  or  agency  by  which  it  is 
produced  may  be  both  new  and  useful  —  a  great  improvement  on  any  previ- 


742  THE   FIXED   LAW   OF   PATENTS  §  822 

ously  known  process  and  therefore  patentable  as  such.  —  American  v.  Fiber, 
90  U.  S.  566;  23  L.  Ed.  31. 

If,  however,  he  had  in  his  own  mind  only  a  claim  for  the  process  of  manu- 
facture by  which  the  article  was  made,  his  use  of  the  term  is  intelligible.  — 
Merrill  v.  Yeomans,  94  U.  S.  568;  24  L.  Ed.  235. 

Another  person  might  invent  a  better  apparatus  for  applying  the  process 
than  that  pointed  out  by  Nelson,  and  might  obtain  a  patent  for  such  improved 
apparatus;  but  he  could  not  use  the  process  without  a  license  from  Nelson. 
His  improved  apparatus  would,  in  this  respect,  stand  in  a  relation  to  the 
process  analogous  to  that  which  an  improvement  on  a  patented  machine 
bears  to  the  machine  itself.  —  Tilghman  v.  Proctor,  102  U.  S.  707 ;  26  L. 
Ed.  279. 

It  is  clear  that  both  patents  must  stand  or  fall  together.  If  the  patent  for 
the  process  is  invalid  so  must  be  the  patent  for  the  product.  —  Western  v. 
Ansonia,  114  U.  S.  447;  29  L.  Ed.  210;  5  S.  Ct.  447. 

The  fact  that  by  careful  workmanship  the  products  are  indistinguishable 
by  mere  inspection  does  not  establish  the  identity  of  the  processes;  and  as 
the  patent  for  the  product  must  be  limited  to  an  article  made  by  the  par- 
ticular process,  the  inquiry  must  be  determined  by  a  comparison  between  the 
methods  actually  employed.  —  Plummer  v.  Sargent,  120  U.  S.  442;  30  L. 
Ed.  737;  7  S.  Ct.  640. 

After  a  patent  is  granted  for  an  article  described  as  made  by  causing  it  to 
pass  through  a  certain  method  of  operation  to  produce  it,  the  inventor  cannot 
afterwards,  on  an  independent  application,  secure  a  patent  for  the  method 
or  process  covered  by  the  previous  patent,  which  article  was  described  in 
that  patent  as  produced  by  the  method  or  process  sought  to  be  covered  by 
taking  out  the  second  patent.  —  Mosler  v.  Mosler,  127  U.  S.  354;  32  L.  Ed. 
182;  8  S.  Ct.  1148. 

True,  if  the  process  were  the  mere  function  of  a  machine,  another  machine 
capable  of  performing  the  same  function  might  be  an  anticipation;  but  this 
is  not  because  a  process  can  be  anticipated  by  a  mechanism,  but  because, 
as  we  have  held  in  several  cases,  the  mere  function  of  a  machine  is  not  patent- 
able as  a  process  at  all.  —  Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed. 
968;  22  S.  Ct.  698. 

The  description  being  addressed  to  those  skilled  in  the  art,  the  statement 
being  made  that  variation  is  necessary  according  to  the  quality  of  the 
element  used,  it  is  sufficient  if  its  application  in  a  specific  instance  be  given.  — 
Schwarzwalder  v.  N.  Y.  66  Fed.  152;  13  C  C.  A.  380. 

It  may  be  that  the  variance  results  from  some  immaterial  change  in  the 
process  from  the  use  of  starting  material,  which  is  within  the  fair  range  of 
equivalents;  but,  having  failed  to  prove  identity  by  the  prescribed  tests,  the 
burden  is  on  the  holder  of  the  patent  to  show  that  the  variances  in  process 
are  immaterial,  or  the  starting  materials  equivalents  of  those  of  the  patents. 
—  Matheson  v.  Campbell,  78  Fed.  910;  24  C.  C.  A.  284. 

Whether  the  success  of  the  operation  under  the  patent  in  suit  is  due  to 
the  superiority  of  its  process  for  economical  production  or  to  the  changed 
conditions  referred  to,  or  to  both  combined,  is  not  material,  in  view  of  the 


§  823  PRODUCT  743 

fact  that  the  product,  and  not  the  process,  is  the  claim  of  discovery.  — 
National  v.  Swift,  104  Fed.  87;  43  C.  C.  A.  421. 

It  is  necessary  to  read  them  (product  claims)  in  connection  with  the  proc- 
ess described  in  the  patent  and  to  limit  the  scope  of  the  claims  to  a  product 
which  is  the  result  of  that  process.  —  Downes  v.  Teter-Heany,  150  Fed.  122; 
80  C  C.  A.  76. 


PRODUCT. 

Patentability  §  823 

Miscellaneous  Rules  §  824 

See —  Composition  of  Matter  §  264; 


Infringement  §§  521,  690;  Machine 
and  Product  §  771;  Manufacture 
§  772;  Sale  of  Patented  Article  §  899 


§  823.     Patentability. 

A  machine  may  be  new,  and  the  product  or  manufacture  proceeding  from 
it  may  be  old.  In  that  case  the  former  would  be  patentable  and  the  latter  not. 
The  machine  may  be  substantially  old  and  the  product  new.  In  that  event, 
the  latter,  and  not  the  former,  would  be  patentable.  Both  may  be  new  or 
both  may  be  old.  In  the  former  case,  both  would  be  patentable;  in  the  latter 
neither.  —  Rubber  v.  Goodyear,  76  U.  S.  788;   19  L.  Ed.  566. 

Where  a  new  process  produces  a  new  substance,  the  invention  of  the 
process  is  the  same  as  the  invention  of  the  substance,  and  a  patent  for  the  one 
may  be  reissued  so  as  to  include  both  as  was  done  in  the  case  of  Goodyear 's 
vulcanized  India  rubber  patent.  —  James  v.  Campbell,  104  U.  S.  356 ;  26 
L.  Ed.  786. 

While  a  new  process  for  producing  it  was  patentable,  the  product  itself 
could  not  be  patented,  even  though  it  was  a  product  made  artificially  for 
the  first  time,  in  contradistinction  to  being  eliminated  from  the  madder 
root.  Calling  it  artificial  alizarine  did  not  make  it  a  new  composition  of 
matter,  and  patentable  as  such,  by  reason  of  its  having  been  prepared 
artificially  for  the  first  time  from  anthracine,  if  it  was  set  forth  as  alizarine, 
a  well  known  substance.  —  Cochrane  v.  Badische,  111  U.  S.  293;  28  L.  Ed. 
433;  4  S.  Ct.  455. 

Wood  Paper  Patent,  23  Wall.  566. 

The  fifth  claim  of  the  patent  is  obviously  an  attempt  by  the  patentee 
to  obtain  a  monopoly  of  the  product  of  the  apparatus  described  in  the  patent, 
so  that  in  the  event  it  should  turn  out  that  his  apparatus  was  not  patentable, 
or  the  product  could  be  made  by  apparatus  not  infringing  his,  he  could  never- 
theless enjoy  the  exclusive  right  of  making  it.  A  claim  for  an  article  of  manu- 
facture is  not  invalid  merely  because  the  article  is  the  product  of  a  machine, 
whether  the  machine  is  patented  or  unpatented;  but  it  is  invalid  unless  the 
article  is  new  in  a  patentable  sense,  — ■  that  is,  unless  its  original  conception 
or  production  involved  invention,  as  distinguished  from  ordinary  mechanical 
skill.  If  it  is  new  only  in  the  sense  that  it  embodies  and  represents  superior 
workmanship,  or  is  an  improvement  upon  an  old  article  in  degree  and  ex- 
cellence, the  claim  is  invalid.  —  Edison  v.  American,  114  Fed.  926;  52  C. 
C.  A.  546. 

Hatch  v.  Moffitt,  15  Fed.  252;  Wooster  v.  Calhoun,  11  Blatchf.  215;  Excelsior 
v.  Union,  32  Fed.  221;  Smith  v.  Nichols,  21  Wall.  112;  Locomotive  v.  Medart, 
158  U.  S.  79. 

Whatever  novelty  in  a  patentable  sense  there  may  be  in  flakes  of  cooked 
wheat  which  are  thin,  crisp,  and  slightly  brown,  must  be  found  in  some 


744  THE    FIXED    LAW    OF    PATENTS  §  824 

superior  efficaciousness,  or  some  new  properties  which  they  possess,  and  not 
in  any  mere  change  of  form  produced  by  mechanical  division  of  the  cooked 
grain  either  before  or  after  the  last  step  in  cooking.  Cooked  grain  thus  pre- 
pared, and  having  all  the  characteristics  called  for  by  the  claim,  may  con- 
stitute a  new  article  of  commerce.  But  do  they  render  the  article  new  in  a 
patentable  sense?  If  so,  it  must  be  due  to  some  new  properties  or  improved 
efficacy  as  a  food.  —  Sanitas  v.  Voigt,  139  Fed.  551 ;  71  C.  C.  A.  535. 

Glue  Co.  v.  Upton,  97  U.  S.  3;  Cerealine  v.  Bates,  101  Fed.  272;  Maryland  v. 
Dorr,  46  Fed.  773. 

A  mere  difference  in  the  proportions  of  the  constituents  of  an  alloy,  how- 
ever useful  the  result  may  be,  does  not  entitle  the  originator  to  the  monopoly 
of  a  patent,  in  the  absence  of  other  circumstances  than  those  here  disclosed. 

—  Brady  v.  Ajax,  160  Fed.  84;  87  C.  C.  A.  240. 

§  824.     Miscellaneous  Rules. 

When  a  new  article,  a  new  property  in  the  composition  of  matter,  is  thus 
brought  to  light  for  the  enrichment  of  the  world's  knowledge  and  uses,  the 
statute  intends  that  the  discoverer  may  be  rewarded  with  exclusive  rights 
to  make  and  sell  the  article  during  the  moderate  term  for  which  the  patent  is 
granted.  This  broad  monopoly  can  be  granted  for  a  true  discovery  only, 
and  not  for  the  mere  improvement  of  a  known  composition.  —  National  v. 
Swift,  104  Fed.  87;  43  C.  C.  A.  421. 

Merrill  v.  Yeomens,  94  U.  S.  568. 

Given,  two  such  propositions  as  the  process  in  the  prior  patents,  like 
ingredients,  with  coagulation  of  the  albuminoids  and  resultant  product 
clearly  set  forth,  there  was  surely  no  pioneer  discovery  in  chemistry  on  the 
part  of  Van  Ruymbeke  to  authorize  a  patent  for  the  identical  product, 
however  meritorious  his  advance  may  have  proved  in  the  process  to  that  end. 

—  National  v.  Swift,  104  Fed.  87;  43  C.  C.  A.  421. 

That  claim,  in  terms,  is  for  the  described  product,  having  certain  dis- 
tinguishing characteristics  which  are  set  forth  in  the  claim  with  great  fullness. 
In  our  judgment  it  is  very  clear  that  the  claim  is  not  restricted  to  the  product 
made  by  the  described  process,  but  covers  the  chemical  individual,  how- 
ever produced.  We  know  of  no  rule  requiring  a  construction  limiting  a  claim 
for  a  chemical  product  to  the  described  process,  because  the  evidence  shows 
that  it  cannot  be  made  in  any  other  way  than  by  the  process  recited.  No 
warrant  for  such  a  rule  is  to  be  found  either  in  the  statute  or  in  the  decisions. 

—  Maurer  v.  Dickerson,  113  Fed.  870;  51  C.  C.  A.  494. 

In  general,  when  the  patent  is  for  a  product  of  manufacture,  it  is  not 
material  by  what  means  or  by  what  process  it  is  manufactured.  But  it  is 
obvious  that  there  must  be  an  exception  to  this  rule  to  cover  cases  where  the 
identity  or  specific  character  of  the  thing  patented  is  affected  by  the  means  or 
method  of  its  manufacture.  Thus  it  is  easy  to  understand  that  a  glove  made 
up  of  knitted  material  is  a  different  thing  from  one  made  from  cloth  or 
leather.  Its  qualities  are  dependent  on  the  way  in  which  it  is  made.  — 
Lamb  v.  Lamb,  120  Fed.  267;  56  C.  C.  A.  247. 


PROFITS. 

Statutory  Provision  §  825 
General  Statement  §  826 
Accountings  §  827 
Deductions 


General    Expenses  —  Not    Proper 
§  828 

Losses  §  829 
Manufacturer's  Profits  §  830 


825-826 


PROFITS 


745 


Rules  for  §  831 

Salaries  §  832 

Miscellaneous  §  833 
Definition  §  834 
Interest  §  835 
Master  in  Chancery  §  836 
Measure  of 

Actual  Gains  §  837 

Entire  Profits  §  838 

Rules  §  839 

Savings  by  Use  §  840 

Trustee  ex  Maleficio  Rule  §  841 

Miscellaneous  Rules  §  842 


Segregation 

Burden  of  Proof  §  843 

Failure  to  Make  §  844 

General  Rules  §  845 

Miscellaneous  Rules  §  846 
Miscellaneous      Rules      Concerning 
Profits  §  847 

See  —  Damages  §  278;  Designs  §  328; 
Jurisdiction  §  719;  Marking  "  Pa- 
tented "  §  776;  Reissue  §  887; 
Royalties  §  897;  Statute  of  Limitations 
§921 


§  825.     Statutory  Provision. 

The  several  courts  vested  with  jurisdiction  of  cases  arising  under  the 
patent  laws  shall  have  power  to  grant  injunctions  according  to  the  course 
and  principles  of  courts  of  equity,  to  prevent  the  violation  of  any  right 
secured  by  patent,  on  such  terms  as  the  court  may  deem  reasonable;  and 
upon  a  decree  being  entered  in  any  such  case  for  an  infringement  the  com- 
plainant shall  be  entitled  to  recover,  in  addition  to  the  profits  to  be  accounted 
for  by  the  defendant,  the  damages  the  complainant  has  sustained  thereby; 
and  the  court  shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its 
direction.  And  the  court  shall  have  the  same  power  to  increase  such  damages, 
in  its  discretion,  as  is  given  to  increase  the  damages  found  by  verdicts  in 
actions  in  the  nature  of  actions  of  trespass  upon  the  case. 

But  in  any  suit  or  action  brought  for  the  infringement  of  any  patent 
there  shall  be  no  recovery  of  profits  or  damages  for  any  infringement  com- 
mitted more  than  six  years  before  the  filing  of  the  bill  of  complainant  or  the 
issuing  of  the  writ  in  such  suit  or  action,  and  this  provision  shall  apply  to 
existing  causes  of  action.  —  R.  S.  4921. 

The  statute  of  limitation  provision  was  added  by  the  act  of  Mar.  3,  1897, 
and  went  into  effect  Jan.  1,  1898. 


§  826.     General  Statement. 

Much  that  has  been  said  by  way  of  general  statement  under  Damages 
applies  here.  Many  of  the  rules  under  that  title  apply  to  profits.  The 
difficulty  in  securing  substantial  recoupment  in  the  nature  of  profits  is 
hardly  less  difficult  than  in  the  nature  of  damages.  It  is  unnecessary  to 
add  to  what  has  been  said  upon  that  subject  under  damages,  except  to 
add  the  following  statement,  made  under  oath,  by  a  lawyer  of  long  experi- 
ence: 

"  I  have  had  the  equity  docket  of  the  Southern  District  of  New  York 
examined  and  have  found,  as  a  fair  average,  that  only  four  of  the  fifty-four 
patent  causes  wherein  accountings  were  decreed,  do  any  proceedings  upon  the 
accountings  appear  of  record."  (Compl'ts.  Rec,  Hall  v.  General,  153  Fed. 
907.) 

The  statement  of  counsel  in  that  case,  also  made  under  oath,  may  be 
of  interest : 

"  It  is  my  invariable  practice  founded  upon  my  own  experience  in  patent 
litigation,  extending  over  the  past  eighteen  years,  and  upon  my  knowledge 
of  the  experience  of  other  patent  counsel,  to  advise  my  clients  that,  in  the 
absence  of  an  established  license  fee,  there  is  hardly  any  chance  of  recovering 
damages  for  infringement,  and  that  in  no  event  can  they  expect  to  be  com- 
pensated either  by  damages  or  costs  for  the  expense  of  litigation  and  the 
injury  from  infringement.     I  advise  them  that  the  one  effective  remedy  is 


746  THE    FIXED    LAW    OF    PATENTS  §  827 

injunction,  and  that  where  injunction  cannot  be  obtained,  the  patentee  is 
without  remedy." 

§  827.     Accountings. 

The  right  to  an  account  of  profits  is  incident  to  the  right  to  an  injunction 
in  copy-  and  patent-right  cases.  —  Stevens  v.  Gladding,  58  U.  S.  447;  15 
L.  Ed.  155. 

See  Stephens  v.  Cady,  14  How.  528. 

Profits  obtained  by  infringement  after  suit  is  begun  can  be  reached  only 
when  such  infringement  is  a  continuation  of  former  infringement.  —  Marsh 
v.  Nichols,  128  U.  S.  605;  32  L.  Ed.  538;  9  S.  Ct.  168. 

Taking  into  account  the  fact  that  defendant  did  not  make  due  effort  to 
carry  out  his  application  (the  application  for  the  patent  in  suit),  and  that  it 
certainly  does  not  appear  that  the  Morrow  device  was  so  much,  if  at  all, 
better  than  the  licensor's,  that  due  business  diligence  did  not  require  the 
company  still  to  push  the  latter,  we  are  of  opinion  that  on  this  item  it  properly 
was  held  to  account.  —  Eclipse  v.  Farrow,  199  U.  S.  581;  50  L.  Ed.  317; 
26  S.  Ct.  150. 

Upon  an  accounting  for  an  infringement  commenced  before  the  bill  was 
filed,  and  continued  afterwards,  the  complainant  is  entitled  to  recover  profits 
derived  by  the  defendant  from  his  infringement  to  the  date  of  the  accounting. 
"  The  practice  saves  a  multiplicity  of  suits,  time  and  expense."  —  Unter- 
meyer  v.  Freund,  58  Fed.  205;  7  C.  C.  A.  183. 

Tatham  v.  Lowber,  4  Blatchf.  86;  Rubber  Co.  v.  Goodyear,  9  Wall.  788;  Marsh 
v.  Nichols,  128  U.  S.  605;  Robinson  v.  Bland,  2  Burrows,  1086;  Holabird  v. 
Burr,  17  Conn.  563. 

In  a  patent  case  there  can  be  no  right  to  an  accounting  unless  the  infringe- 
ment be  made  out;  but  the  infringement  may  be  found  and  the  injunction 
awarded  in  favor  of  a  complainant  who,  upon  the  proofs,  has  no  right  to  an 
accounting.  Upon  the  issue  whether  or  not  the  complainant  is  entitled  to 
the  accounting,  it  may  not  appear  that  the  defendant  used  or  sold  the 
patented  device,  but  merely  that  he  made  it;  or  it  may  otherwise  appear 
that  there  were,  in  fact,  no  profits,  or  that  an  account  had  already  been  stated, 
conditionally  or  otherwise,  by  the  parties  themselves,  and  that  for  want  of 
notice,  as  provided  in  sec.  4900  of  the  Revised  Statutes  of  the  United  States, 
no  damages  could  be  recovered.  In  such  event  there  could  be  no  award  of 
an  accounting  in  the  decree,  although  the  perpetual  injunction  would  be 
awarded.  Whittemore  v.  Cutter,  Fed.  Cas.  No.  17,601 ;  Elizabeth  v.  Pave- 
ment, 97  U.  S.  127.  In  a  patent  case  on  the  equity  side  the  primary  and 
essential  contention  relates  to  the  ownership  of  the  patent  by  complainant, 
the  validity  of  the  claims,  and  the  infringement.  The  final  adjudication  in 
favor  of  complainant  on  this  contention  is  a  perpetual  injunction.  —  Stand- 
ard v.  Crane,  76  Fed.  767;  22  C.  C.  A.  549. 

If  we  could  discover  any  theory  upon  which  a  substantial  recovery  might 
be  had  we  would  not  hesitate  to  direct  a  reference,  but  it  is  plain  that  such 
a  proceeding  will  prove  abortive,  after  subjecting  both  parties  to  large 
additional  expense  and  the  defendants  to  unnecessary  annoyance.  The 
master  would  be  involved  in  an  inextricable  tangle  from  which  it  will  be 
impossible  to  emerge  with  a  substantial  recovery  based  upon  a  rational  rule 
of  damages.  The  boards  sold  by  the  defendants,  and  which  they  had  a  right 
to  sell,  were  intended  to  be  used  in  connection  with  a  large  number  of  games 
in  the  description  of  some  of  which  the  word  "  Carrom  "  might,  in  certain 


§  828  PROFITS  747 

aspects,  be  used  innocently.  An  attempt  to  segregate  the  profits,  if  any, 
resulting  from  the  illegitimate  use  of  the  word  would  require  an  excursion 
into  the  realms  of  conjecture  and  speculation  without  hope  of  any  tangible 
result.  —  Ludington  v.  Leonard,  127  Fed.  155;  62  C.  C.  A.  269. 

Note:  It  will  be  observed  that  this  holding  grew  out  of  the  infringement 
of  a  trademark  involved  in  the  suit,  and  not  the  infringement  of  the  mechan- 
ical patent. 

That  an  appellate  court  may  correct  the  assessment  of  damages  or  account 
of  profits  (1)  send  the  case  back  to  the  Circuit  Court  for  further  instruction, 
or  (2)  itself  proceed  to  the  assessment  of  profits  by  dealing  with  the  master's 
report  as  affected  by  the  defendant's  exceptions,  see  —  Doten  v.  City  of 
Boston,  138  Fed.  406;  70  C.  C.  A.  308. 

Cawood  Patent,  94  U.  S.  695. 

The  complaint  was  for  infringement  after  the  date  of  the  assignment  (the 
patent  had  been  owned  by  one  of  complainants  alone  during  part  of  the  period 
of  infringement,  and  was  then  assigned  in  part  to  the  other  complainants 
without  an  assignment  of  accrued  choses  in  action.  Complainants  sought  to 
recover  for  the  period  prior  to  assignment  as  well  as  after).  Even  if  that  were 
permissible  the  bill  did  not  seek  to  recover  a  several  decree  in  favor  of  one  of 
the  complainants  for  one  part  of  the  profits  and  a  joint  decree  for  another. 
On  the  contrary,  the  complaint  was  of  infringement  after  the  date  of  assign- 
ment. The  court  below  erred  in  including  the  profits  for  this  period  (prior 
to  the  assignment)  in  the  recovery.  —  Canda  v.  Michigan,  152  Fed.  178; 
81  C.  C.  A.  420. 

Distinguishing  Moore  v.  Marsh,  7  Wall.  515. 

Adams  v.  Bellaire,  25  Fed.  270. 

That  the  court  having  decreed  infringement  of  a  certain  claim,  it  is  not 
competent  for  the  master  on  an  accounting  to  include  as  contributory  in- 
fringement elements  of  claims  not  found  to  be  infringed,  see — Canda  v.  Michi- 
gan, 152  Fed.  178;  81  C.  C.  A.  420. 

When  the  order  of  reference  was  made,  the  only  infringement  established 
by  the  decree  was  defendant's  sale  of  Columbia  ladders.  We  think  it  better 
and  cleaner-cut  practice  to  require  a  complainant  to  set  up  alleged  new  in- 
fringements in  a  supplemental  bill,  (rather  than  to  establish  infringement  by 
other  types  before  the  master  on  the  accounting).  Thereupon,  if  it  should 
be  found  that  the  additional  types  contained  only  colorable  departures  from 
the  adjudged  infringing  type,  the  decree  for  an  injunction  and  an  accounting 
and  the  order  of  reference  could  be  extended  to  cover  them  specifically;  or, 
if  the  changes  should  appear  to  be  so  radical  that  the  pending  suit  ought 
not  to  be  cumbered  and  delayed  by  practically  a  new  issue,  the  supplemental 
bill  could  be  dismissed  with  leave  to  the  complainant  to  begin  an  independent 
suit.  —  Murray  v.  Orr,  153  Fed.  369 ;  82  C.  C.  A.  445. 

It  was  not  open  to  defendant  on  the  question  of  additional  infringements 
to  refer  to  the  prior  art  to  limit  the  scope  of  invention  to  less  than  we  had 
found  it  to  be  in  determining  the  infringement  of  the  Columbia  ladder.  As 
the  changes  from  the  Columbia  type  are  only  colorable,  the  fact  of  the  decree 
that  is  questioned  on  this  appeal  must  be  reversed.  —  Murray  v.  Orr,  153  Fed. 
369;  82  C.  C.  A.  445. 

§  828.     Deductions  —  General  Expenses  —  Not  Proper. 

The  master's  report  was  based  altogether  upon  the  profits  actually  realized 
by  the  defendant  from  his  sales  of  infringing  machines.     The  defendant 


748  THE    FIXED   LAW    OF   PATENTS  §§  829-830 

was  charged  with  the  amount  received  by  him  from  sales  as  stated  by  himself. 
Besides  a  credit  for  the  cost  of  manufacture,  as  found  by  the  master,  and  a 
credit  for  advertising,  the  defendant  was  allowed  for  freight  and  cartage, 
and  discounts  to  purchasers.  We  think  the  master  was  right  in  disallowing 
the  lumping  sum  which  the  defendant  claimed  for  "  clerk  hire,  selling  ex- 
penses, rent  and  insurance."  That  was  a  mere  estimate  unsupported  by 
evidence.  We  do  not  see  upon  what  principle  the  defendant  is  entitled  to 
an  allowance  for  the  sum  paid  for  other  patents  and  the  cost  of  his  patterns. 
They  remain  his  property.  These  credits  were  properly  disallowed.  —  Sayre 
v.  Scott,  55  Fed.  971 ;  5  C  C.  A.  366. 

Crosby  v.  Consolidated,  141  U.  S.  441;  Elizabeth  v.  Pavement,  97  U.  S.  126. 

This  item  in  the  exhibit  filed  by  the  defendant's  bookkeeper  may  have  been 
the  general  cost  of  carrying  on  the  entire  business  of  the  defendant,  including 
its  manufacturing  departments,  or  it  may  be  a  mere  approximation  of  ex- 
penses of  selling,  which  would  include  interest  upon  the  general  capital 
engaged.  If  this  is  the  fact,  this  would  be  wrong.  —  Kisinger-Ison  v.  Brad- 
ford, 123  Fed.  91 ;  59  C.  C.  A.  221. 

Rubber  v.  Goodyear,  9  Wall.  789. 


§  829.    Deductions  —  Losses. 

Losses  incurred  by  the  defendant  through  its  wrongful  invasion  of  the  patent 
are  not  chargeable  to  the  plaintiff,  nor  can  their  amount  be  deducted  from 
the  compensation  which  the  plaintiff  is  entitled  to  receive.  —  Consolidated 
v.  Crosby,  141  U.  S.  441 ;  35  L.  Ed.  809;  12  S.  Ct.  49. 

Cawood  Pat.  94  U.  S.  695;  Elizabeth  v.  Nicholson,  97  U.  S.  126;  Tilghman  v. 
Proctor,  125  U.  S.  136. 

The  court  below  also  erred  in  sustaining  defendant's  claim  of  a  deduction 
of  the  losses  incurred  by  said  defendant  during  the  third  period  of  the  reckon- 
ing and  in  deducting  these  losses  from  the  profits  which  the  complainants 
were  otherwise  entitled  to  recover.  Cawood  Pat.  94  U.  S.  710,  and  Rubber  Co. 
v.  Goodyear,  9  Wall.  788  are  cited  as  authority  for  the  ruling;  but  these  cases 
only  hold  that  losses  occurring  concurrently  with  the  gaining  of  the  profits 
may  be  taken  into  account  —  that  is  to  say,  if  they  are  losses  directly  result- 
ing from  the  particular  transaction  on  which  the  profits  are  allowed.  (The 
fact  here  being  that  the  loss  period  was  subsequent  to  and  distinguishable 
from  the  profit  period.)  The  meaning  and  authority  of  such  general  state- 
ments should  be  limited  to  the  facts  of  the  case  in  which  they  were  expressed. 
And  it  is  necessary  to  impose  such  limitations  in  order  to  make  the  statements 
consistent  with  the  law  as  since  declared  by  the  same  court.  Callaghan  v. 
Myers,  128  U.  S.  617;  Crosby  v.  Safety,  141  U.  S.  453;  Walker  on  Pat. 
(4th  ed.)  sec.  713.  —  Canda  v.  Michigan,  152  Fed.  178;  81  C.  C.  A.  420. 


§  830.     Deductions  —  Manufacturer's  Profits. 

The  master  correctly  refused  to  allow  "  manufacturer's  profits  "and  interest 
on  the  capital  stock.  The  correct  rule  is  the  difference  between  cost  and  yield. 
—  Rubber  Co.  v.  Goodyear,  76  U.  S.  788;   19  L.  Ed.  566. 

As  no  countervailing  evidence  was  put  in  by  the  defendants  and  no 
specific  exception  was  made  to  the  master's  calculations,  that  he  made  no 
allowance  for  a  manufacturer's  profit,  we  think  there  is  no  foundation  on 
which  to  base  such  a  claim  now.  —  Warren  v.  Keep,  155  U.  S.  265;  39  L. 
Ed.  144;  15  S.  Ct.  83. 


§§  831-833  PROFITS  749 

When  the  complainant's  damages  are  measured  by  the  profits  of  defend- 
ants, it  is  true  that  credits  have  been  allowed  to  the  latter  "  as  a  mere  agency 
for  producing  a  patented  article  for  so-called  '  manufacturer's  profits.'  " 
This  rule  has  generally  been  applied  in  cases  where  the  patented  invention 
is  a  distinct  invention  and  a  part  only  of  the  entire  structure  which  was  made 
and  sold.  In  a  noted  case,  where  the  patent  was  for  an  entirely  new  product 
of  a  process,  which  was  not  separable  into  parts,  and  the  infringing  defendant 
made  and  sold  the  entire  article,  manufacturer's  profits  were  not  allowed 
upon  the  ground  that  the  entire  profits,  which  were  the  difference  between  the 
cost  and  yield,  belonged  to  the  owner  of  the  patent.  It  is  true  that  the  prin- 
ciple of  reduction  of  the  profits  of  the  defendant  infringer  by  the  deduction 
of  manufacturer's  profits,  when  the  patented  improvement  was  a  separable 
part  of  the  entire  structure  has  been  thought  applicable  in  two  cases  to  a 
reduction  of  damages  based  upon  loss  of  the  complainant's  profits,  when  the 
patented  improvement  was  a  distinct  and  separable  part  of  the  whole 
structure  which  the  complainant  made.  The  facts  of  this  case  have  no 
resemblance  to  those  cases.  There  is  no  apparent  reason  why  the  loss  which 
was  suffered  by  the  deliberate  act  of  the  defendant,  which  deprived  the 
complainant  of  trade  in  the  special  articles  of  manufacture,  every  expense 
of  its  business  going  on  as  before  to  its  full  extent,  should  not  be  the  actual 
profit  which  it  would  have  made  upon  the  sale  of  a  number  of  boxes  which 
it  was  prevented  from  selling.  —  National  v.  Elsas,  86  Fed.  917;  30  C.  C. 
A.  487. 

Warren  v.  Keep,  155  U.  S.  265;  Buerk  v.  Imhauser,  Fed.  Cas.  2,107;  Rubber 
Co.  v.  Goodyear,  9  Wall.  788;   Robertson  v.  Blake,  94  U.  S.  728. 

§  831.     Deductions  —  Rules  for. 

The  proper  rule  for  determining  the  profits  of  defendant  upon  a  patented 
attachment  is  to  deduct  from  the  full  profits  arising  therefrom  a  propor- 
tional amount  of  the  expenses  of  the  business.  —  Tremaine  v.  Hitchcock,  90 
U.  S.  518;  26  L.  Ed.  97. 

Complainant  proved  from  testimony  given  by  defendant  in  another  case 
the  profits  that  defendant  had  made  in  his  business.  Defendant  neither 
proved  any  deductions  therefrom  nor  in  any  way  explained  that  testimony, 
but  on  the  appeal  undertook  to  show  certain  deductions.  Held:  The  de- 
fendant could  have  made  any  explanation  of  his  testimony  he  desired,  and 
had  the  question  been  raised  before  the  master  the  complainants  would  have 
had  an  opportunity  to  show  that  the  profit  was  the  same  during  the  entire 
infringing  period.  —  Cimiotti  v.  Bowsky,  143  Fed.  508 ;  74  C.  C.  A.  617. 

§  832.     Deductions  —  Salaries. 

The  master  properly  refused  to  deduct  extraordinary  salaries  which  ap- 
peared on  the  books,  being  satisfied  they  were  dividends  of  profit  under 
another  name.  —  Rubber  v.  Goodyear,  76  U.  S.  788;   19  L.  Ed.  566. 

When  and  when  not  to  be  computed  on  accounting.  —  Seabury  v.  Am 
Ende,  152  U.  S.  561 ;  38  L.  Ed.  553;  14  S.  Ct.  683. 

§  833.     Deductions  —  Miscellaneous. 

While  repairs  and  weai  and  tear  should  be  taken  into  account,  value  of 
materials  bought  for  the  purpose  of  the  infringement  are  not  deductible 
items.  —  Rubber  v.  Goodyear,  76  U.  S.  788;  19  L.  Ed.  566. 

Defendants  added  a  twenty  per  cent,  profit  to  the  cost  of  lumber  used  in 
the  infringement,  and  the  court  said:  It  is  only  necessary  to  state  the  claims 


750  THE    FIXED    LAW    OF    PATENTS  §§  834-835 

to  show  its  preposterousness.  —  Elizabeth  v.  American,  97  U.  S.  126;   24 
L.  Ed.  1000. 

The  complainant,  as  territorial  assignee,  was  entitled  to  a  certain  propor- 
tion of  the  profit.  Defendant,  in  mitigation  of  damages  undertook  to  limit 
recovery  to  such  proportion.  Held:  Not  good.  —  Elizabeth  v.  American, 
97  U.  S.  126;  24  L.  Ed.  1000. 

The  defendant  will  not  be  allowed  to  diminish  the  show  of  profits  by- 
putting  in  the  unconscionable  claims  for  personal  services  or  other  inequitable 
deductions.  —  Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

Rubber  Co.  v.  Goodyear,  9  Wall.  788. 

Interest  on  plant  when  other  manufacture  conducted.  —  Seabury  v. 
Am  Ende,  152  U.  S.  561 ;  38  L.  Ed.  553;  14  S.  Ct.  683.      - 

The  item  of  commissions  paid  on  sales  was  a  proper  credit.  The  profits 
recoverable  are  only  those  which  were  actually  made,  and  the  general  burden 
is  upon  the  plaintiff  to  show  what  those  profits  were.  The  fair  and  reasonable 
expenses  incident  to  the  sale  of  the  infringing  devices  should  be  deducted 
from  the  gross  profit  shown  by  the  evidence.  —  Kisinger-Ison  v.  Bradford, 
123  Fed.  91;  59  C.  C  A.  221. 

Tremaine  v.  Hitchcock,  90  U.  S.  518;  Tilghman  v.  Proctor,  125  U.  S.  151. 

§  834.     Definition. 

"  Profits  "  is  the  gain  made  upon  any  business  or  investment,  when  both 
the  receipts  and  payments  are  taken  into  the  account.  —  Rubber  v.  Good- 
year, 76  U.  S.  788;   19  L.  Ed.  566. 

People  v.  Super.  Niag.  4  Hill,  23. 

In  patent  nomenclature,  what  the  infringer  makes  is  "profits;"  what 
the  owner  of  the  patent  loses  by  such  infringement  is  "  damages."  —  Dia- 
mond v.  Brown,  166  Fed.  306;  C.  C.  A. 

§  835.     Interest. 

In  making  up  the  decree,  interest  was  added  from  the  date  of  the  master's 
report  on  the  balances  found  due  after  the  ascertained  deductions  had  been 
made  and  this  is  assigned  as  error.  As  a  general  rule,  a  patentee  is  not  en- 
titled to  interest  on  profits  made  by  an  infringer.  The  reason  is  that  profits 
are  regarded  in  the  light  of  liquidated  damages.  Parks  v.  Booth,  102  U.  S. 
106.  But  in  many  of  the  cases  it  is  said  that  circumstances  may  arise  in  which 
it  would  be  proper  to  add  interest.  Mowry  v.  Whitney,  14  Wall.  653 ;  Little- 
field  v.  Perry,  21  Wall.  230.  Here,  as  has  been  seen,  in  effect,  the  original 
decrees  rendered  were  affirmed  to  the  extent  of  the  present  recoveries.  The 
cases  were  only  sent  back  to  ascertain  how  much  should  be  deducted  from 
those  decrees  for  errors  in  the  accounts  as  then  stated.  If  the  decrees  had 
been  entered  originally  for  the  present  amounts  the  patentee  would  have 
been  entitled  to  interest  from  the  date  of  the  decree.  R.  R.  v.  Turrill, 
101  U.  S.  836.  Under  these  circumstances,  it  seems  to  us  not  at  all  inequitable 
to  allow  interest  on  the  corrected  amounts  from  the  date  of  the  master's 
report.  —  Railroad  v.  Turrill,  110  U.  S.  301;  28  L.  Ed.  154;  4  S.  Ct.  5. 

Interest  is  allowed,  in  the  absence  of  special  circumstances  from  the  date 
of  filing  the  report  of  the  master.  —  Consolidated  v.  Crosby,  141  U.  S.  441 ; 
35  L.  Ed.  809;  12  S.  Ct.  49. 


§  836  PROFITS  751 

Silsby  v.  Foote,  61  U.  S.  378;  Mowry  v.  Whitney,  81  U.  S.  620;  Littlefield  v. 
Perry,  88  U.  S.  205;  Act  July  8,  1870,  Ch.  230,  sec.  55;  Parks  v.  Booth,  102 
U.  S.  96;    Root  v.  Railway,  105  U.  S.  189;    Railroad  v.  Turrill,  110  U.  S.  301. 

§  836.     Master  in  Chancery. 

The  conclusions  of  the  master  have  every  reasonable  presumption  in  their 
favor,  and  are  not  to  be  set  aside  or  modified,  unless  there  clearly  appears  to 
have  been  error  or  mistake  on  his  part.  —  Tilghman  v.  Proctor,  125  U.  S. 
136;  31  L.  Ed.  664;  8  S.  Ct.  894. 

Medsker  v.  Bonebrake,  108  U.  S.  66;  Donnell  v.  Columbia,  2  Sumn.  366; 
Mason  v.  Crosby,  3  Woodb.  &  M.  258;  Paddock  v.  Commercial,  104  Mass.  521; 
Richards  v.  Todd,  127  Mass.  167. 

The  report  of  a  master  is  merely  advisory  to  the  court,  which  it  may  accept 
and  act  upon  in  whole  or  in  part,  according  to  its  own  judgement  as  to  the 
weight  of  the  evidence.  Yet  in  dealing  with  exceptions  to  such  reports 
"  the  conclusions  of  the  master,  depending  upon  the  weighing  of  conflicting 
testimony,  have  every  reasonable  presumption  in  their  favor  and  are  not  to 
be  set  aside  or  modified  unless  there  clearly  appears  to  have  been  error  or 
mistake  on  his  part."  —  Boesch  v.  Graff,  133  U.  S.  697;  33  L.  Ed.  787;  10 
S.  Ct.  378. 

Kimberly  v.  Arms,  129  U.  S.  512;   Tilghman  v.  Proctor,  125  U.  S.  136. 

Exceptions  to  master's  report  raised  for  the  first  time  in  the  Supreme 
Court  will  not  be  entertained.  —  Topliff  v.  Topliff,  145  U.  S.  156;  36  L.  Ed. 
658;  12  S.  Ct.  825. 

McMicken  v.  Perin,  59  U.  S.  507. 

The  findings  of  the  referee  were  marked  "  approved  "  by  counsel  for  both 
parties.  Held:  After  all  this,  we  perceive  no  standing  ground  for  an 
exception  to  the  admission  of  evidence  embodied  in  the  agreed  statement  of 
facts.  —  Deering  v.  Kelly,  103  Fed.  261 ;  43  C.  C.  A.  225. 

If,  in  the  progress  of  the  references,  the  parties  neglect  or  omit  to  bring 
before  the  master  all  the  facts  bearing  upon  the  matters  referred,  and  neces- 
sary to  the  correct  conclusion  by  the  court,  they  are  in  default.  And  by  this 
default  the  court  is  deprived  of  the  aid  sought  in  ordering  the  reference.  If 
the  master  omit  or  neglect  to  report  all  the  facts  produced  before  him  bearing 
upon  the  matters  referred  to,  he  is  in  default.  The  parties  are  put  to  a  dis- 
advantage, and  the  report  should  be  recommitted,  unless  the  parties  supply 
the  omission  by  stipulation.  It  is  true  that  in  some  of  the  circuit  courts  a 
loose  practice  has  grown  up,  and  exceptions  to  a  master's  report  are  enter- 
tained, dealing  with  facts  to  which  his  attention  was  never  called.  This 
practice  does  not  commend  itself.  It  frequently  operates  a  surprise,  and  it 
shuts  the  door  to  any  explanation.  It  gives  room  for  the  display  of  skill 
and  strategy  on  the  part  of  ingenious  counsel.  It  may  secure  success  at  the 
expense  of  right.  When  there  exists  a  rule  of  practice,  inculcated  and  ap- 
proved by  recognized  authority,  it  should  be  followed.  To  prevent  mis- 
apprehension, it  is  best  to  state  that  we  do  not  require  the  conclusions  of  the 
master  on  matters  of  law  to  be  first  excepted  to  before  him.  This  is  unneces- 
sary. —  Gay  v.  Camp,  68  Fed.  67;  15  C.  C.  A.  226. 

2  Dan.  Ch.  Pr.  1314,  and  cases  cited. 

Every  reasonable  presumption  is  in  favor  of  a  master's  report  based  on 
oral  testimony,  and  it  will  not  be  set  aside  or  modified  unless  there  clearly 


752  THE    FIXED    LAW    OF    PATENTS  §  837 

appears  to  have  been  error  or  mistake.  —  Fullerton  v.  Anderson-Barngrover, 
166  Fed.  443;  CCA. 

Tilghman  v.  Proctor,  125  U.  S.  136;  Callaghan  v.  Myers,  128  U.  S.  666;  Camden 
v.  Stuart,  144  U.  S.  118;    Walk.  Pat.  §  725. 

The  question  whether  a  license  fee  was  established  is  one  of  fact,  and  as 
the  master  has  found  a  yearly  license  fee,  and  the  Circuit  Court  has  over- 
ruled defendant's  exceptions,  we  are  not  disposed  to  disturb  the  finding.  — 
Diamond  v.  Brown,  166  Fed.  306;  C.  C  A. 

Warren  v.  Keep,  155  U.  S.  265. 

§  837.     Measure  of  —  Actual  Gains. 

Under  instruction  from  the  circuit  court,  the  master  charged  the  defendant, 
not  only  with  his  actual  savings,  but  with  all  he  might  possibly  have  made, 
and  interest  thereon.  Held:  that  the  profits  in  equity  must  be  limited  to 
the  actual  profits  and  must  not  be  regarded  as  liquidated  punitive  damages. 
Livingston  v.  Woodworth,  15  How.  546;  14  L.  Ed.  809. 

It  is  clear  that  a  patentee  is  entitled  to  recover  the  profits  that  have  been 
actually  realized  from  the  use  of  his  invention,  although,  from  other  causes, 
the  general  business  of  the  defendant,  in  which  the  invention  is  employed, 
may  not  have  resulted  in  profits,  as  where  it  is  shown  that  the  use  of  his 
invention  produced  definite  saving  in  the  expense  of  manufacture.  On  the 
contrary,  though  the  defendant's  general  business  be  ever  so  profitable, 
if  the  use  of  the  invention  has  not  contributed  to  the  profits,  none  can  be 
recovered.  —  Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

Mowry  v.  Whitney,  14  Wall.  434;  Cawood  Pat.  94  U.  S.  695. 

The  infringer  is  liable  for  actual,  not  for  possible  gains.  The  profits, 
therefore,  which  he  must  account  for,  are  not  those  which  he  might  reason- 
ably have  made,  but  those  which  he  did  make,  by  the  use  of  plaintiff's  inven- 
tion ;  or,  in  other  words,  the  fruits  of  the  advantage  which  he  derived  from 
the  use  of  that  invention,  over  what  he  would  have  had  in  using  other  means 
then  open  to  the  public  and  adequate  to  enable  him  to  obtain  an  equally 
beneficial  result.  If  there  was  no  such  advantage  in  his  use  of  the  plaintiff's 
invention,  there  can  be  no  decree  for  profits,  and  the  plaintiff's  only  remedy 
is  by  an  action  at  law  for  damages.  But  if  the  defendant  gained  an  advantage 
by  using  the  plaintiff's  invention,  that  advantage  is  the  measure  of  the  profits 
to  be  accounted  for,  even  if  for  other  causes  the  business  in  which  the  inven- 
tion was  employed  did  not  result  in  profits.  —  Tilghman  v.  Proctor,  125 
U.  S.  136;  31  L.  Ed.  664;  8  S.  Ct.  894. 

Cawood  Pat.  94  U.  S.  710;  Mevs  v.  Conover,  11  O.  G.  1112;  Elizabeth  v. 
Pavement,  97  U.  S.  138;  Root  v.  Railway,  105  U.  S.  189;  Thomson  v.  Wooster, 
114  U.  S.  104. 

Upon  a  bill  in  equity  the  plaintiff  is  entitled  to  recover  the  amount  of 
gains  and  profits  that  the  defendants  have  made  by  the  use  of  the  invention. 
—  Tilghman  v.  Proctor,  125  U.  S.  136 ;  31  L.  Ed.  664;  8  S.  Ct.  894. 

Livingston  v.  Woodworth,  56  U.  S.  546;  Dean  v.  Mason,  61  U.  S.  198;  Rubber 
v.  Goodyear,  76  U.  S.  788;  Mowry  v.  Whitney,  81  U.  S.  620;  Littlefield  v.  Perry, 
88  U.  S.  205;  Mason  v.  Graham,  90  U.  S.  261;  Railroad  v.  Turrill,  94  U.  S.  695; 
Mevs  v.  Conover,  11  O.  G.  1111;  Elizabeth  v.  Pavement,  97  U.  S.  126;  Root  v. 
Railway,  105  U.  S.  189. 

It  appearing  that  the  defendant's  valve  derived  its  entire  value  from  the 
use  of  the  invention  covered  by  the  patent  in  suit,  and  that  the  entire  value 
of  the  defendant's  valve,  as  a  marketable  article,  was  properly  and  legally 


§  837  PROFITS  753 

attributable  to  the  invention  of  plaintiff,  he  is  entitled  to  recover  the  entire 
profit  of  the  manufacture  and  sale  of  the  valves.  —  Consolidated  v.  Crosby, 
141  U.  S.  441 ;  35  L.  Ed.  809;  12  S.  Ct.  49. 

Elizabeth  v.  Nicholson,  97  U.  S.  126;  Root  v.  Railway,  105  U.  S.  189;  Garret- 
eon  v.  Clark,  111  U.  S.  120;  Callaghan  v.  Myers,  128  U.  S.  617;  Hurlbut  v.  Schil- 
linger,  130  U.  S.  456. 

In  equity  the  profits  which  the  complainant  seeks  to  recover  must  be  shown 
to  have  been  actually  received  by  the  defendant;  in  other  words,  the  fruits 
of  the  advantage  which  he  derived  from  the  use  of  that  invention  over  what 
he  would  have  had  in  using  other  means  open  to  the  public  and  adequate  to 
enable  him  to  obtain  an  equally  beneficial  result.  —  Coupe  v.  Royer,  155 
U.  S.  565;  39  L.  Ed.  263;  15  S.  Ct.  199. 

Tilghman  v.  Proctor,  125  U.  S.  137;   Keystone  v.  Adams,  151  U.  S.  139. 

In  a  suit  in  equity  for  infringement  of  a  patent,  the  ground  upon  which 
profits  are  recovered  is  that  they  are  the  benefits  which  have  accrued  to  the 
defendants  from  their  wrongful  use  of  the  plaintiff's  invention,  and  for  which 
they  are  liable  ex  aequo  et  bono,  to  like  extent  as  a  trustee  would  be  who 
had  used  the  trust  property  for  his  own  advantage.  The  defendants  in  any 
such  suit  are  therefore  liable  to  account  for  such  profits  only  as  they  have 
accrued  to  themselves  from  the  use  of  the  invention,  and  not  for  those  which 
have  accrued  to  another,  and  in  which  they  have  no  participation.  — 
Belknap  v.  Schild,  161  U.  S.  10;   16  L.  Ed.  599;   16  S.  Ct.  443. 

Elizabeth  v.  American,  97  U.  S.  126;  Root  v.  Railway,  105  U.  S.  189;  Tilghman 
v.  Proctor,  125  U.  S.  136;  Keystone  v.  Adams,  151  U.  S.  139;  Coupe  v.  Royer, 
155  U.  S.  565. 

We  think  the  evidence  fully  warrants  the  conclusion  that  the  entire  value 
of  the  infringing  machine  made  and  sold  by  the  defendant,  was  due  to  the 
invention  covered  by  the  patent  in  suit,  and  therefore,  the  plaintiff  was 
entitled  to  the  whole  profits  realized.  —  Sayre  v.  Scott,  55  Fed.  971 ;  5  C. 
C.  A.  366. 

Elizabeth  v.  Pavement,  97  U.  S.  126;  Crosby  v.  Consolidated,  141  U.  S.  441. 

Was  there  evidence  of  the  defendant's  actual  profit?  There  is  nothing  in 
the  record  to  show  that  the  master  could  take  account  in  detail  in  the  ordinary 
way  in  which  accounts  are  taken,  and  so  a  general  estimate  was  necessary.  — 
Doten  v.  City  of  Boston,  138  Fed.  406;  70  C.  C.  A.  308. 

Suffolk  v.  Hayden,  3  Wall.  315. 

If  every  employee  invariably  worked  with  perfect  memory,  accuracy,  and 
good  judgment,  labor-saving  devices  would  be  fewer  and  less  important 
than  they  now  are.  That  the  value  of  a  labor-saving  device  is  based  largely, 
or  even  wholly,  upon  the  fact  that  those  who  work  are  frail  and  imperfect 
human  creatures,  and  not  beings  of  perfect  efficiency,  wisdom  and  honesty, 
does  not  lessen  the  value  of  the  device  or  the  profit  arising  therefrom.  The 
cash  register  and  the  watchman's  time  clock,  for  example,  are  deemed 
patentable,  yet  they  are  used  to  protect  an  employer  not  only  from  negli- 
gence, but  from  the  dishonesty,  of  his  employees.  A  labor-saving  device  is 
deemed  patentable  if  the  weakness  or  carelessness  or  dishonesty  of  the 
employee,  against  which  the  patented  device  is  effective,  is  recognized  as  a 
common  failing,  and  an  appreciable  source  of  danger  to  employers  in  like 
case.  In  the  Cawood  Patent,  94  U.  S.  695,  the  patentee  was  allowed  to  re- 
cover as  profits  the  saving  in  repairing  broken  rails  by  the  patented  device ; 
yet  these  rails  had  doubtless  been  damaged  by  improper  operation  as  well 
as  by  ordinary  wear  and  tear.    Probably  no  sharp  line  can  be  drawn  between 


754  THE    FIXED    LAW    OF    PATENTS  §  837 

the  two  cases.  Giving  the  master's  report  its  fair  interpretation,  his  state- 
ment that  the  cause  of  the  defendant's  damage  was  based  upon  carelessness, 
imperfect  operation,  and  miscalculation,  amounts  to  a  statement  that  it  was 
based  upon  human  frailty.  Under  the  old  system  the  damage  was  caused 
by  ordinary  wear  and  tear,  sometimes  the  result  of  negligence  or  miscal- 
culation, sometimes  the  result  of  wind,  current,  or  tide,  setting  the  ferryboat 
into  an  unexpected  position  or  giving  it  unexpected  speed.  This  damage  was 
frequent  and  usual,  and  could  be  most  cheaply  prevented  by  the  patent  in 
suit.  For  these  reasons  we  think  that  the  saving  thus  made  by  the  defendant 
was  recoverable  in  this  accounting.  —  Doten  v.  City  of  Boston,  138  Fed.- 406; 
70  C.  C.  A.  308. 

For  a  most  remarkable  holding  on  what  is  not  a  sufficient  showing  that, 
but  for  the  infringement  of  a  defendant,  the  complainant  would  have  made 
the  actual  gains  of  the  defendant,  this  opinion  is  commended.  The  argu- 
ments as  to  "  awareness  "  and  that  "  the  field  was  full  of  competition  selling 
the  drill  of  other  infringers  "  are  supremely  unique.  Any  attempt  to  excerpt 
from  this  opinion  of  18  pages  would  be  futile.  Attention  should  be  called  to 
the  fact  that  Judge  Richards  dissents,  and  also  to  the  opinion  of  Judge 
Severens  in  Brennan  v.  Dowagiac,  162  Fed.  472.  —  McSherry  v.  Dowagiac, 
160  Fed.  948;  89  CCA.  26. 

Possibly  in  a  case  like  this,  where  there  have  been  a  number  of  infringers, 
in  view  of  the  difficulty  of  proving  in  a  suit  against  one  that  the  sales  made 
by  him  were  lost  to  the  patentee,  if  a  reasonable  royalty  is  recoverable,  the 
prudent  course  is  to  sue  for  such  royalty  instead  of  the  profits  which  would 
have  accrued  to  the  patentee  had  he  made  the  sales.  This  course  was  not 
taken  by  the  appellee.  It  staked  its  case  on  the  right  to  recover  profits  lost 
by  it  and  prepared  it  along  that  line.  —  McSherry  v.  Dowagiac,  163  Fed. 
34;  89  C  C  A.  512. 

Note:  This  is  from  opinion  by  Cochran,  D.  J.,  denying  petition  for  re- 
hearing in  McSherry  v.  Dowagiac,  160  Fed.  948,  supra.  So  far  as  appears 
from  the  report  of  the  case,  this  opinion  is  by  Judge  Cochran  sitting  alone; 
and  it  would  therefore  seem  that  this  pronouncement  of  a  new  rule  of  profits 
lacks  the  weight  of  an  appellate  decision.  The  statement  above  quoted  is 
startling.  How  a  patentee  who  has  preserved  his  monopoly,  granting  no 
licenses,  who  has  been  most  wantonly  and  persistently  infringed,  could 
"  sue  for  such  royalty  instead  of  the  profits,"  is  a  proposition  quite  without 
the  experience  of  the  ordinary  practitioner. 

A  patentee  *may  withhold  the  exploiting  of  his  patent  in  a  particular 
territory,  or  he  may  not  be  able  at  the  time  to  extend  his  business  therein. 
But  this  gives  no  right  to  the  infringer  to  invade  the  territory  and  anticipate 
the  sales  which  the  patentee  might  make  when  he  should  desire  and  be  able 
to  carry  his  invention  there  for  a  profit  which  is  legitimately  his  own.  But 
this,  while  it  might  be  an  answer  to  the  suggestion  made  by  the  master,  is 
not  relevant  to  such  a  proceeding  as  this.  The  fact  that  the  owner  of  a 
patent  does  not  exercise  his  right  or  cannot  at  the  time  do  so  to  the  full, 
gives  no  license  to  another,  and  the  latter  is  liable  for  infringement,  to  the 
same  extent  as  if  the  owner  were  exercising  his  right  to  the  utmost.  The 
owner  has  the  same  right  as  he  has  to  any  other  property,  which  he  may 
put  to  use  or  not  as  he  chooses;  and  in  such  case  the  rule  is  always  that, 
if  a  stranger  without  right  seizes  and  uses  it,  he  is  bound  to  pay  for  such  use, 
and  it  is  no  answer  to  him  to  say  that  the  owner  was  doing  nothing  with  it. 
If  it  be  true,  as  has  often  been  declared,  that  the  exclusive  right  of  a  patentee 
is  property,  for  the  protection  of  which  the  public  faith  is  pledged,  it  should 
have  the  same  immunity  from  invasion,  and  its  violation  should  be  attended 


§  838  PROFITS  755 

with  the  same  consequences  as  in  the  case  of  other  species  of  property.  — 
Brennan  v.  Dowagiac,  162  Fed.  472;  89  C.  C.  A.  392. 

It  seems  to  have  been  contended  before  the  master  by  the  appellant, 
while  engaged  in  the  endeavor  to  ascertain  the  profits,  that  in  manufacturing 
and  selling  the  infringing  drills  it  had  employed  other  patents,  which  had 
enhanced  the  value  of  the  drills  and  the  price  at  which  they  were  sold,  and 
reference  was  made  to  certain  patents  belonging  to  the  plaintiff.  These 
patents  had  been  set  out  in  the  bill  and  infringement  thereof  charged.  But 
they  had  been  declared  void  by  the  circuit  court,  by  a  decree  which  remains 
unreversed  and  not  appealed  from.  They  should,  therefore,  have  been 
regarded  as  a  part  of  the  patented  art.  There  was  no  proof  which  could 
have  justified  the  master  in  the  conclusion  that  any  other  invention  than 
that  of  the  Peckham  patent  was  present  in  the  drills  which  constituted  the 
infringement.  Nor  did  the  master  find  that  there  was  any  other  patent 
involved  in  the  infringing  drills  which  was  entitled  to  share  in  the  profits 
than  those  belonging  to  the  plaintiff  which  had  been  held  void.  He  specified 
those  as  laying  the  foundation  for  applying  the  doctrine  of  Garretson  v. 
Clark,  111  U.  S.  120,  and  other  like  cases.  The  fact  is  that  the  conditions 
assumed  for  the  statement  of  the  rule  in  the  case  referred  to  did  not  exist. 
The  present  case  in  its  facts  is  in  closer  analogy  to  Elizabeth  v.  Pavement, 
97  U.  S.  126;  Goulds  v.  Cowing,  105  U.  S.  253;  Crosby  v.  Safety  Valve,  141 
U.  S.  441 ;  Canda  v.  Michigan,  152  Fed.  178.  —  Dowagiac  v.  Superior,  162 
Fed.  479;  89  C.  C.  A.  399. 

Wilson  v.  Rousseau,  4  How.  646;  Grant  v.  Raymond,  6  Pet.  218;  Bement 
v.  National,  186  U.  S.  70;    Heaton  v.  Eureka,  77  Fed.  288. 

§  838.     Measure  of  —  Entire  Profits. 

When  the  entire  profits  of  a  business  or  undertaking  result  from  the  use 
of  the  invention,  the  patentee  will  be  entitled  to  recover  the  entire  profits, 
if  he  elects  that  remedy.  And  in  such  a  case  the  defendant  will  not  be  allowed 
to  diminish  the  show  of  profits  by  putting  in  unconscionable  claims  for 
personal  services  or  other  inequitable  deductions.  —  Elizabeth  v.  American, 
97  U.  S.  126;  24  L.  Ed.  1000. 

Rubber  Co.  v.  Goodyear,  9  Wall.  788. 

If  the  profits  upon  the  whole  article  are  clearly  due  to  the  patented  part, 
which  gives  to  the  article  its  marketable  value,  they  are  the  measure  of 
recovery.  —  Untermeyer  v.  Freund,  58  Fed.  205 ;   7  C.  C.  A.  183. 

Mfg.  Co.  v.  Cowing,  105  U.  S.  253. 

Two  rules  governing  the  question  of  profits  are  laid  down  by  the  Supreme 
Court.  The  first  of  these  rules  (Elizabeth  v.  Nicholson,  97  U.  S.  126)  is  as 
follows:  Where  profits  are  made  by  an  infringer,  by  the  use  of  an  article 
patented  as  an  entirety,  the  infringer  is  responsible  to  the  patentee  for  the 
whole  of  such  profits,  unless  it  can  show  —  and  the  burden  is  on  the  infringer 
to  show  it  —  that  a  portion  of  such  profits  is  the  result  of  some  other  thing 
used  by  him.  And  the  second  rule  (Garretson  v.  Clark,  111  U.  S.  120)  is  as 
follows:  That  where  the  patent  is  for  an  improvement,  and  not  for  an 
entirely  new  article  or  product,  the  burden  is  on  the  patentee  to  show  what 
portion  of  the  infringer's  profits  is  due  to  the  particular  patented  feature. 

Inasmuch  as  appellant  offered  no  proof,  other  than  the  patent  itself, 
tending  to  show  that  the  profits  made  by  it  upon  the  ladders  sold  by  it  were 
the  result  of  anything  else  than  the  use  of  the  ladder  patented  as  an  entirety, 
and  inasmuch  as  no  proof  was  offered  by  appellee,  other  than  the  patent 
itself,  tending  to  separate  or  apportion  the  profits  made  by  the  appellant, 


756  THE    FIXED   LAW   OF   PATENTS  §§  839-840 

by  the  use  of  the  patent  in  question,  from  such  profits  as  might  have  been  due 
to  other  features,  neither  party  has  attempted  to  take  these  cases  out  of  the 
rule  contended  for  by  his  adversary  —  leaving  it  as  the  determinative  ques- 
tion in  these  cases  whether  (the  patent  only  being  before  us)  the  rule  laid 
down  in  the  Nicholson  case  or  the  rule  laid  down  in  the  Garretson  case,  is 
applicable  to  the  case  before  us,  as  the  patent  has  already  been  upheld  and 
construed  by  this  court. 

The  new  thought  in  the  art  of  ladder  building,  embodied  in  the  Murray 
patent,  was  the  utilizing  of  the  man's  weight  to  adjust  the  center  of  gravity. 
It  was  a  unitary  thought,  to  carry  out  which  the  elements  already  named  were 
only  agents;  and  a  unitary  thought,  though  thus  carried,  makes  the  ladder 
thus  built  a  new  article  within  the  meaning  of  the  Nicholson  case.  —  Orr  v. 
Murray,  163  Fed.  54;  89  C.  C.  A.  492. 

Note:  It  is  thought  that  this  clear  and  logical  statement  should  prove 
a  contributing  factor  in  the  much-needed  settlement  of  the  present  status 
of  the  rule  of  profits,  or,  more  properly,  the  rule  of  evidence  of  profits. 

§  839.    Measure  of  —  Rules. 

The  decree  was  entered  on  the  report  of  the  master,  for  the  estimated 
amount  of  profits  which  the  defendant,  with  reasonable  diligence,  might  have 
realized;  not  what,  in  fact  he  did  realize.  This  instruction  was  erroneous. 
The  rule  in  such  a  case  is,  the  amount  of  profits  received  by  the  unlawful  use 
of  the  machine,  as  this  in  general,  is  the  damage  done  to  the  owner  of  the 
patent.  It  takes  away  the  motive  of  the  infringer  of  patented  rights,  by  re- 
quiring him  to  pay  the  profits  of  his  labor  to  the  owner  of  the  patent.  Gen- 
erally this  is  sufficient  to  protect  the  rights  of  the  owner;  but  where  the 
wrong  has  been  done,  under  aggravated  circumstances,  the  court  has  the 
power,  under  the  statute,  to  punish  it  adequately,  by  an  increase  of  the 
damages.  —  Dean  v.  Mason,  61  U.  S.  198;  15  L.  Ed.  876. 

Livingston  v.  Woodworth,  15  How.  546. 

The  circuit  court  decreed  that  the  defendant  was  liable  "  for  all  the 
profits  made  in  violation  of  the  rights  of  the  complainants  under  the  patent 
aforesaid,  by  respondents,  by  the  manufacture,  use  or  sale  of  any  of  the 
articles  named  in  said  bill."  This  was  in  accordance  with  the  rule  in  equity 
cases  established  by  this  court.  —  Rubber  v.  Goodyear,  76  U.  S.  788;  19 
L.  Ed.  566. 

Livingston  v.  Woodworth,  15  How.  546;   Dean  v.  Mason,  20  How.  198. 

For  history  of  rule  see  Root  v.  Ry.,  105  U.  S.  189;  26  L.  Ed.  975. 

The  rule  in  equity  requiring  an  infringer  to  account  for  gains  and  profits 
which  he  has  made  from  the  use  of  a  patented  invention,  instead  of  limiting 
the  recovery  to  the  amount  of  royalties  paid  to  the  patentee  by  third  persons, 
has  been  constantly  upheld  under  the  Act  of  1870,  which  expressly  affirms 
the  defendant's  liability  to  account  for  profits,  as  well  as  authorizes  a  court 
sitting  in  equity  to  award  and  to  treble  any  damages  that  the  plaintiff  has 
sustained  in  excess  of  the  defendant's  profits.  —  Tilghman  v.  Proctor,  125 
U.  S.  136;  31  L.  Ed.  664;  8  S.  Ct.  894. 

R.  S.  4921;  Birdsall  v.  Coolidge,  93  U.  S.  64;  Marsh  v.  Seymour,  97  U.  S.  348; 
Root  v.  Railway,  105  U.  S.  189;  Goulds  v.  Cowing,  105  U.  S.  253;  Garretson  v. 
Clark,  111  U.  S.  120;  Black  v.  Thome,  111  U.  S.  122;  Birdsall  v.  Shaliol,  112 
U.  S.  485;  Thomson  v.  Wooster,  114  U.  S.  104. 


§  840.    Measure  of  —  Savings  by  Use. 

In  the  ascertainment  of  profits  made  by  an  infringer  of  a  patented  inven- 
tion, the  rule  is  a  plain  one.    The  profits  are  not  all  he  made  in  the  business 


§  841  PROFITS  757 

in  which  he  used  the  invention,  but  they  are  the  worth  of  the  advantage  he 
obtained  by  such  use ;  or  in  other  words,  they  are  the  fruits  of  that  advantage. 
Nor  does  it  follow  that  the  unprofitableness  of  the  defendant's  business  in 
any  degree  lessens  that  saving,  for  without  it  his  loss  would  have  been  so  much 
the  more.  —  Mevs  v.  Conover,  131  U.  S.  cxlii,  App.;  23  L.  Ed.  1008. 
Mowry  v.  Whitney,  14  Wall.  651. 

Method  of  computation  stated  and  approved  in  U.  S.  v.  Berdan,  156  U.  S. 
552;  29  L.  Ed.  530;  15  S.  Ct.  420. 

In  proving  profits,  it  is  necessary  to  show  a  saving  by  the  use  of  the  in- 
fringing tool  over  the  cost  of  operating  any  other  tool  which  defendant  was 
free  to  use.  —  Hohorst  v.  Hamburg-American,  91  Fed.  655 ;  34  C.  C.  A.  39. 

§  841.     Measure  of  —  Trustee  ex  Maleficio  Rule. 

An  infringer  is  a  trustee  ex  maleficio  for  the  owner  of  the  exclusive  rights 
protected  by  the  patent;  and  a  trustee  who  has  confused  the  profits  made 
by  the  use  of  the  trust  property  with  those  made  from  his  own  property,  and 
commingled  them  so  that  they  cannot  be  segregated,  must  account  for  the 
whole.  On  the  other  hand,  such  a  rule  would  work  unjustly  in  many  cases,  — 
as  where  the  patented  feature  is  of  an  insignificant  part  of  the  machine  or 
article;  and  it  is  probably  because  of  its  manifest  inequity  in  such  cases 
that  the  courts  have  placed  upon  the  complainant  the  burden  of  proof.  — 
Wales  v.  Waterbury,  101  Fed.  126 ;  41  C.  C.  A.  250. 

Lupton  v.  White,  15  Ves.  432;  Hart  v.  Ten  Eyck,  2  Johns.  Ch.  108,  Central 
v.  Connecticut,  104  U.  S.  54. 

In  the  present  case  the  infringer's  conduct  has  been  such  as  to  preclude 
the  belief  that  it  has  derived  no  advantage  from  the  use  of  the  plaintiff's 
invention,  as  the  master  well  said.  In  these  circumstances,  upon  whom  is  the 
burden  of  loss  to  fall?  We  think  the  law  answers  this  question  by  declaring 
that  it  shall  rest  upon  the  wrongdoer,  who  has  confused  his  own  with  that  of 
another  so  that  neither  can  be  distinguished.  It  is  a  bitter  response  for  the 
court  to  say  to  the  innocent  party,  "  You  have  failed  to  make  the  necessary 
proof  to  enable  us  to  decide  how  much  of  these  profits  are  your  own ;  "  for 
the  party  knows,  and  the  court  must  see,  that  such  a  requirement  is  impos- 
sible to  be  complied  with.  —  Brennan  v.  Dowagiac,  162  Fed.  472 ;  89  C.  C. 
A.  392. 

Hart  v.  Ten  Eyck,  2  Johns.  Ch.  62;  Wales  v.  Waterbury,  101  Fed.  126;  Wyllie 
v.  Ellice,  6  Hare,  505;  Bailey  v.  Bailey,  67  Vt.  494;  Mast  v.  Superior,  154  Fed. 
45;  The  Idaho,  93  U.  S.  575;  Smith  v.  Township,  150  Fed.  257;  Smith  v.  Motley, 
150  Fed.  266. 

Note:  This  is  distinctly  and  properly  a  cancellation  of  the  holding  of 
this  court  in  McSherry  v.  Dowagiac,  160  Fed.  948. 

The  infringement  was  not  accidental.  The  defendant  was  all  the  while 
informed  of  the  patent,  and  knew  that,  if  he  did  not  succeed  in  defeating  the 
patent,  it  would  be  obliged  to  account  for  the  profits  and  damages.  It  took 
the  risk  of  confusion,  and  the  loss  must  fall  upon  the  wrongdoer,  rather  than 
the  innocent  party.  It  is  as  clear  a  case  as  could  be  instanced  for  the  appli- 
cation of  the  rule  stated  and  applied  by  this  court  in  previous  cases  and 
by  other  courts  in  a  great  variety  of  instances  where  the  facts  indicated  the 
fitness  of  its  application.  In  another  case  decided  at  this  session  (Brennan 
v.  Dowagiac,  162  Fed.  472)  we  referred  to  several  cases  upon  this  subject, 
and  others  are  cited  in  our  opinion  in  Smith  v.  Motley,  150  Fed.  266.  — 
Dowagiac  v.  Superior,  162  Fed.  479;  89  C.  C.  A.  399. 


758  THE   FIXED   LAW   OF   PATENTS  §  842 

The  defendant  put  every  obstacle  in  the  way  of  arriving  at  any  measure 
of  profits,  failed  to  produce  records  and  books,  and  withheld  all  informa- 
tion possible  on  examination.  The  master  made  the  best  computation  pos- 
sible, and  made  all  deductions  that  the  evidence  disclosed.  The  appellate 
court  revised  these  figures,  materially  increased  the  amount  of  the  profits 
found,  decreased  the  allowances  for  selling,  and  held:  His  failure  or  refusal 
to  produce  the  most  satisfactory  evidence  leaves  his  case  exposed  to  the  pre- 
sumption that  if  produced  it  would  tell  against  him,  and  compels  the  court 
to  rely  on  the  less  definite  and  certain  evidence  which  the  record  may  supply. 
This  is  a  rule  by  which  the  courts  are  governed.  If  they  fail  to  observe  it, 
the  rights  of  parties  may  utterly  fail  of  protection.  —  Yesbera  v.  Hardesty, 
166  Fed.  120;  C.  C.  A. 

Rubber  Co.  v.  Goodyear,  9  Wall.  788;  Lupton  v.  White,  15  Ves.  432;  Hart 
v.  Ten  Eyck,  2  Johns.  Ch.  62;  Mast  v.  Superior,  154  Fed.  45;  Brennan  v.  Dowagiac, 
162  Fed.  472;  Dowagiac  v.  Superior,  162  Fed.  479;  Wales  v.  Waterbury,  101  Fed. 
126. 


§  842.    Measure  of  —  Miscellaneous  Rules. 

The  profits  arising  from  the  infringement  of  the  combination  are  those  of 
the  entire  combination,  and  are  not  mitigated  by  the  fact  of  certain  elements 
being  old.  —  Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

It  was  quite  right  for  the  circuit  court,  when  these  cases  were  sent  back, 
to  direct  the  master  to  ascertain  from  the  old  evidence,  if  possible,  and,  if 
not,  from  new,  how  much  should  be  deducted  from  the  old  decrees  on  account 
of  the  erroneous  recoveries.  The  true  way  of  determining  this  clearly  was- 
te find  out  what  part  of  the  profits  for  which  the  original  decrees  were  ren- 
dered had  been  made  by  the  use  of  the  non-infringing  machines.  —  Rail- 
road v.  Turrill,  110  U.  S.  301 ;  28  L.  Ed.  154;  4  S.  Ct.  5. 

Payments  made  for  infringement  are  incompetent  proof  of  a  fixed  royalty- 
—  Cornley  v.  Marckwold,  131  U.  S.  159;  33  L.  Ed.  117;  9  S.  Ct.  744. 
Rude  v.  Westcott,  130  U.  S.  152. 

If  a  prior  patent  existed  covering  substantially  the  invention  in  suit  and 
it  was  held  by  a  third  party,  whether  it  could  be  regarded  as  open  to  the  in- 
fringer the  court  declined  to  say.  —  McCreary  v.  Pennsylvania,  141  U.  S. 
459;  35  L.  Ed.  817;   12  S.  Ct.  40. 

Where  plaintiff  sued  on  later  of  two  patents  covering  substantially  the- 
same  device  it  was  held  that  the  earlier  patent  must  be  deemed  open  to 
defendant.  —  McCreary  v.  Pennsylvania,  141  U.  S.  459;  35  L.  Ed.  817; 
12  S,  Ct.  40. 

In  estimating  the  profits  made  by  an  infringer  the  comparison  must  be 
between  the  patented  invention  and  what  was  known  and  open  to  the  public 
at  and  before  the  date  of  the  patent.  —  McCreary  v.  Pennsylvania,  147  U.  S. 
459;  35  L.  Ed.  817;   12  S.  Ct.  40. 

The  profits  made  by  the  defendant  cannot  be  increased  or  diminished  by 
any  act  on  the  part  of  the  plaintiff ;  and  the  amount  of  them  is  not  affected 
by  the  question  whether  during  the  same  time  the  plaintiff  did  or  did  not 
use  the  patented  invention.  —  Consolidated  v.  Crosby,  141  U.  S.  441 ;  35 
L.Ed.  809;  12S.Ct.49. 


§  843  PROFITS  759 

Profits  of  other  manufacturers  cannot  be  taken  as  a  measure  between 
parties  to  suit.  —  Keystone  v.  Adams,  151  U.  S.  139;  38  L.  Ed.  103;  14 
S.  Ct.  295. 

No  time  for  payment  being  named,  payment  is  due  for  each  article  as 
delivered.  —  U.  S.  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530;  15  S.  Ct.  420. 
Citing  and  discriminating,  Packet  Co.  v.  Sickles,  51  U.  S.  440. 

When  a  contract  establishing  a  license  fee  has  been  considered  and  aban- 
doned, and  a  subsequent  agreement  is  made  fixing  no  license  fee  the  former 
abandoned  contract  does  not  determine  the  terms  or  conditions  of  the  new 
contract  entered  into.  —  U.  S.  v.  Berdan,  156  U.  S.  552;  39  L.  Ed.  530; 
15  S.  Ct.  420. 

That  evidence  to  show  the  difference  in  cost  between  a  manufacturer 
using  the  patent  and  one  not  using  it,  is  not  competent  proof  to  establish  a 
measure  of  profits,  see  —  Robbins  v.  Illinois,  81  Fed.  957;  27  C.  C.  A.  21. 

Mfg.  Co.  v.  Adams,  151  U.  S.  139;  Coupe  v.  Royer,  155  U.  S.  565;  Belknap  v. 
Schild,  161  U.  S.  10. 

The  witness  was  the  president  of  the  complainant  and  the  cost  estimate 
was  one  made  by  him  as  the  result  of  his  experience  in  his  own  factory; 
and  the  principal  objection  now  urged  is  that  the  estimate  of  what  the  cost 
would  be  at  the  complainant's  factory  is  no  criterion  of  the  cost  in  defendant's 
factory.  Perhaps  it  would  not  be  the  best  criterion  if  the  actual  cost  to 
defendant  had  been  shown ;  but  the  defendant  did  not  offer  to  prove  that, 
although  the  proof  was  under  his  own  control,  nor  did  it  offer  any  evidence 
to  prove  that  the  estimate  given  by  the  complainant's  witness  was  incorrect. 
Under  such  circumstances  we  think  the  proof  was  admissible.  —  Mast  v. 
Superior,  154  Fed.  45;  83  C.  C.  A.  157. 

The  total  amount  of  appellant's  crop  during  the  years  of  infringement 
was  definitely  shown  by  its  own  books.  The  market  prices  during  those 
years  were  ascertained.  Here  were  definite  figures  upon  which  to  calculate 
the  profits.  The  law  requires  no  more  than  reasonable  certainty  in  such  a  case. 
—  Fullerton  v.  Anderson-Barngrover,  166  Fed.  443;  C.  C.  A. 

Suffolk  v.  Hayden,  3  Wall.  315;  Doten  v.  City,  138  Fed.  406;  Bigelow  v- 
Dobson,  10  Fed.  386. 

In  order  that  the  royalty  found  by  the  master  may  be  accepted  as  a  measure 
of  damages  against  a  defendant  who  is  a  stranger  to  the  license  proved 
before  the  master,  the  royalty  must  be  paid  before  the  infringement  took 
place.  —  Diamond  v.  Brown,  166  Fed.  306;  C.  C.  A. 

Rude  v.  Westcott,  130  U.  S.  152. 

§  843.     Segregation  —  Burden  of  Proof. 

The  master  refused  to  allow  the  profits  due  to  elements  not  patented 
which  entered  into  the  composition  of  the  patented  articles.  There  may  be 
cases  in  which  such  an  allowance  would  be  proper.  This  is  not  one  of  them. 
The  manner  in  which  defendant's  books  were  kept  renders  such  an  account 
impossible.  —  Rubber  v.  Goodyear,  76  U.  S.  788;  19  L.  Ed.  566. 

In  disallowing  the  profits  upon  the  combined  buckle  and  lever,  he  did  so 
apparently  in  deference  to  the  rule  that,  where  the  articles  which  have  been 
made  and  sold  by  the  infringer  contain  not  the  patented  invention  alone, 
but  other  inventions  and  improvements,  the  profits  for  which  he  is  to  account 


760  THE   FIXED   LAW   OF   PATENTS  §  843 

are  not  the  total  profits  but  those  only  which  are  attributable  to  the  presence 
of  the  patented  invention.  This  has  always  been  the  rule,  and  it  is  mani- 
festly a  just  one  upon  principle;  but  it  is  often  difficult  of  practical  applica- 
tion, and  the  courts  have  sometimes  applied  it  so  that  it  has  not  produced 
an  equitable  result.  In  many  cases,  where  it  is  obvious  that  the  patented 
invention  has  contributed  a  great  part  of  the  profits  realized  from  selling  the 
infringing  article  or  apparatus  embodying  unpatented  features,  it  is  practi- 
cally impossible  for  the  complainant  to  establish  affirmatively  the  propor- 
tionate part.  The  present  case  is  an  illustration.  Yet  there  is  no  way  by 
which  the  complainant  can  establish  the  proportion.  As  the  rule  has  been 
applied  in  some  of  the  adjudged  cases,  there  could  be  no  recovery  against  the 
infringer  to  account  for  the  whole  profits,  even  though  it  could  not  be  proved 
that  the  commercial  value  of  the  article  was  wholly  due  to  the  patented 
feature.  —  Wales  v.  Waterbury,  101  Fed.  126;  41  C.  C.  A.  250. 

The  respondents  urge  that  these  complainants  are  not  entitled  to  recover 
the  entire  profits  thus  ascertained,  because  these  infringing  devices  may  be 
said  to  be  not  only  infringements  of  complainants'  patent  but  also  the  Mayo 
patent,  and  the  burden  is  on  the  complainants  to  separate  the  profits  attrib- 
utable to  respondents'  infringements  of  the  patent  in  suit  from  those 
attributable  to  the  use  of  the  Mayo  invention.  It  has  been  the  uniform  prac- 
tice of  the  courts  to  refuse  to  determine  such  collateral  questions  in  suits 
where  the  validity  and  scope  of  a  third  party's  patent  are  not  directly  put 
in  issue.  —  Brinton  v.  Paxton,  134  Fed.  78;  67  C.  C.  A.  204. 

McCreary  v.  Pennsylvania,  141  U.  S.  459. 

The  complainants  failed  to  establish  just  what  portion  of  the  profits 
were  due  to  the  infringing  mechanism.  —  Brinton  v.  Paxton,  134  Fed.  78; 
67  C.  C.  A.  204. 

Garretson  v.  Clark,  111  U.  S.  121. 

How  much  of  the  twenty-eight  and  one-half  cents,  the  difference  between 
the  cost  and  selling  price  of  defendant's  new  appliance,  was  due  to  the 
improvement  covered  by  claim  1?  The  record  fails  to  show.  This  was 
necessary.  —  Baker  v.  Crane,  138  Fed.  60;  70  C.  C.  A.  486. 

Seymour  v.  McCormick,  16  How.  480;  Garretson  v.  Clark,  111  U.  S.  120; 
Keystone  v.  Adams,  151  U.  S.  139. 

There  is  no  evidence  that  the  improvements  introduced  any  new  function 
or  result,  nor  any  satisfactory  proof  that  the  machines  were  by  reason  thereof 
more  convenient  or  practical  for  the  user  or  more  commercially  successful. 
In  short,  there  is  no  evidence  that  the  patented  improvements  were  a  domi- 
nant feature  of  the  machine,  or  contributed  to  its  sale,  or  created  a  new 
article,  or  obviated  prior  objections  in  practical  operation ,  or  which  shows  that 
the  sales  may  not  have  depended  upon  advertising,  charged  accounts,  and 
other  mere  business  methods.  Furthermore,  there  is  evidence  that  other 
machines,  not  containing  these  patented  improvements,  were  on  the  market, 
and  were  salable.  In  these  circumstances,  the  defendant  is  only  liable  for 
profits  realized  from  the  use  of  that  part  of  the  patented  invention  which  is 
new,  and  which  he  has  wrongfully  appropriated,  and  the  complainant  must 
furnish  evidence  from  which  the  profits  may  be  thus  apportioned,  or  he  can- 
not recover.  —  Force  v.  Sawyer-Boss,  143  Fed.  894 ;  75  C.  C.  A.  102. 

Ingels  v.  Mast,  6  Fish.  P.  C.  415;  McCreary  v.  Pennsylvania,  141  U.  S.  459; 
Brickill  v.  Mayor,  112  Fed.  65. 

But  before  it  (the  rule  of  segregation)  can  be  applied,  it  is  incumbent  on 
the  defendant  to  prove  that  some  substantial  part  of  the  peculiarities  of 


§§844-845  PROFITS  761 

the  former  patents  (prior  art)  were  embodied  in  the  patented  articles  sold, 
and  that  they  were  of  such  a  character  that  they  probably  contributed  to 
the  profits.  Elizabeth  v.  Pavement  Co.  97  U.  S.  126.  On  this  being  shown, 
the  burden  of  proof  is  devolved  upon  the  party  seeking  to  recover  the  profits 
to  prove  what  part  of  the  entire  profits  are  due  to  the  use  of  his  own  invention. 
He  must  make  the  separation  of  values  and  show  to  the  court  how  much  is  his 
rightful  proportion.  —  Canda  v.  Michigan,  152  Fed.  178;  81  C.  C.  A.  420. 

That  while  the  burden  is  upon  complainant  to  prove  that  the  entire  profit 
upon  an  infringing  article  is  due  to  the  patented  improvement,  when  such 
proof  has  been  adduced  and  the  burden  of  rebutting  such  proof  is  taken  by 
the  defendant,  a  finding  of  a  master  upon  such  proofs  will  not  be  disturbed 
in  the  absence  of  obvious  error,  see —  McSherry  v.  Dowagiac,  160  Fed.  948; 
89  C.  C.  A.  26. 

§  844.     Segregation  —  Failure  to  Make. 

The  bill  was  taken  pro  confesso.  Defendants  made  no  proofs.  Plaintiff 
failed  to  segregate  or  to  eliminate  common  matters  under  the  ordinary 
rules.  Defendant  merely  objected  to  master's  report  and  assigned  errors. 
The  court  seems  to  hold  that  the  defendant  having  had  his  day  in  court  and 
having  failed  to  defend  his  rights  he  is  bound  by  the  proofs  of  plaintiff  if 
they  are  within  the  pleadings  and  pursuant  to  the  decree  and  not  mani- 
festly erroneous ;  and  that  affidavits  to  the  contrary  will  not  be  heard  in  this 
court.  —  Thomson  v.  Wooster,  114  U.  S.  104;  29  L.  Ed.  105;  5  S.  Ct.  788. 

Complainant  may  showprofits  of  defendant  to  prove  his  damages,  but  where 
infringed  device  was  only  a  part  of  defendant's  machine,  in  the  absence  of 
proof  and  segregation,  only  nominal  damages  can  be  assessed.  —  Keystone 
v.  Adams,  151  U.  S.  139;  38  L.  Ed.  103;   14  S.  Ct.  295. 

Seymour  v.  McCormick,  57  U.  S.  480;  Rubber  Co.  v.  Goodyear,  76  U.  S.  788; 
Mowry  v.  Whitney,  81  U.  S.  620;  Elizabeth  v.  Nicholson,  97  U.  S.  126;  Garretson 
17.  Clark,  111  U.  S.  120;  Tilghman  v.  Proctor,  125  U.  S.  136. 

The  complainant  claimed  as  damages  the  entire  profit  of  defendant  and 
failed  and  refused  to  segregate  any  portion,  although  he  well  understood 
defendant's  position.  Having  taken  such  position  and  insisted  upon  such 
theory  of  damages  he  cannot  have  the  matter  referred  back  to  prove  his 
damages  under  a  different  theory.  —  Mosher  v.  Joyce,  51  Fed.  441;  2  C.  C. 
A.  322. 

That  failure  to  segregate  according  to  the  rule  in  Garretson  v.  Clark, 
is  fatal,  see— Robbins  v.  Illinois,  81  Fed.  957;  27  C.  C.  A.  21. 

§  845.    Segregation  —  General  Rules. 

When  a  patent  is  for  an  improvement  and  not  for  an  entirely  new  machine 
or  contrivance,  the  patentee  must  show  in  what  particular  his  improvement 
has  added  to  the  usefulness  of  the  machine  or  contrivance.  He  must  separate 
its  results  distinctly  from  those  of  the  other  parts,  so  that  the  benefits  derived 
from  it  may  be  distinctly  seen  and  appreciated.  The  rule  on  this  head  is 
aptly  stated  by  Mr.  Justice  Blatchford  in  the  court  below :  "  the  patentee  " 
he  says,  "  must  in  every  case  give  evidence,  tending  to  separate  or  apportion 
the  defendant's  profits  and  the  patentee's  damages  between  the  patented 
feature  and  the  unpatented  features,  and  such  evidence  must  be  reliable 
and  tangible,  and  not  conjectural  or  speculative;  or,  he  must  show,  by 
equally  reliable  and  satisfactory  evidence,  that  the  profits  and  damages 
are  to  be  calculated  on  the  whole  machine,  for  the  reason  that  the  entire 


762  THE   FIXED   LAW   OF   PATENTS  §  845 

value  of  the  whole  machine,  as  a  marketable  article,  is  properly  and  legally- 
attributable  to  the  patented  feature."  —  Garretson  v.  Clark,  111  U.  S.  120; 
28  L.  Ed.  371 ;  4  S.  Ct.  291. 

Where  patent  covers  only  a  part  of  an  improvement  upon  a  general 
machine  profits  must  be  segregated.  —  McCreary  v.  Pennsylvania,  141  U. 
S.  459;  35  L.  Ed.  817;   12  S.  Ct,  40. 

Seymour  v.  McCormick,  57  U.  S.  480;  Mowry  v.  Whitney,  81  U.  S.  620;  Little- 
field  v.  Perry,  88  U.  S.  205;  Elizabeth  v.  Nicholson,  97  U.  S.  126;  Garretson  v. 
Clark,  111  U.  S.  120. 

The  present  is  a  case  where  the  defendant  would  not,  and,  as  we  think, 
could  not,  have  made  any  profits  from  manufacturing  the  holders  if  it  had 
not  used  the  patented  buckle  to  command  a  sale  for  them ;  and  upon  the  facts 
is  within  the  second  branch  of  the  rule  stated  in  Garretson  v.  Clark,  and 
within  other  authorities  sanctioning  a  recovery  of  the  total  profits  derived 
from  the  sale  of  an  infringing  article  embodying  unpatented  features,  when, 
but  for  the  patented  features,  it  would  not  have  been  a  marketable  article.  — 
Wales  v.  Waterbury,  101  Fed.  126;  41  C  C  A.  250. 

Mfg.  v.  Cowing,  105  U.  S.  255;  Hurlbut  v.  Schillinger,  130  U.  S.  456;  Crosby  v. 
Consolidated,  141  U.  S.  441;  Mosher  v.  Joyce,  51  Fed.  441;  Holmes  v.  Truman, 
67  Fed.  542. 

The  complainants  established  that  respondents  made  a  certain  profit 
upon  the  infringing  devices  of  certain  amount  upon  each  and  every  one  of 
them,  separate  and  apart  from  the  mechanism  to  which  it  is  intended  to  be 
attached,  and,  it  appearing  that  no  other  picker  mechanism  upon  the  market 
was  open  to  the  respondents  to  use,  the  master,  under  the  circumstances,  was 
justified  from  this  evidence,  together  with  other  facts  and  circumstances 
before  him,  in  finding  that  the  total  amount  of  these  profits  was  the  amount 
of  complainants'  damages.  —  Brinton  v.  Paxton,  134  Fed.  78;  67  C.  C.  A. 
204. 

Mason  v.  Graham,  90  U.  S.  261;  Lattimore  v.  Hardsocg,  121  Fed.  986;  Rob. 
on  Pat.  sec.  1062. 

The  final  rule  which  renders  the  recovery  of  substantial  damages  or 
material  profits  a  practical  impossibility  in  the  great  majority  of  cases. 

The  master  found  that  the  profits  derived  by  the  defendant  from  the  sale 
of  train  equipments  in  connection  with  the  patented  quick-action  valve 
(the  device  infringed)  were  the  sum  of  $49,533.  He  also  found  that  the  sale 
of  the  defendant  diverted  an  equal  number  of  train  equipments  from  the  com- 
plainants, upon  which  the  complainants  would  have  realized  a  profit  of 
$193,978,  and  the  complainants  were  entitled  to  that  amount  as  damages 
caused  by  the  infringement,  Exceptions  were  filed,  and  the  case  recom- 
mitted to  the  master  "  for  the  purpose  of  making  a  computation  of  profits 
and  damages  based  upon  the  sales  by  the  defendant  of  the  quick-action  valves 
of  the  patent  only,  separated  from  those  upon  the  complete  equipments." 
The  master  interpreted  Judge  Wheeler's  decision  as  meaning  only  that  the 
accounting  was  to  be  confined  to  complainant's  profits  and  damages  based 
upon  the  sales  of  the  "  triple-valve  structure  dissociated  from  the  acces- 
sories necessary  to  constitute  a  train  equipment,"  Upon  this  theory  the 
master  found  that  the  profits  made  by  the  defendant  upon  these  sales  were 
$36  945,  and  that  the  damages  sustained  by  the  complainants  by  loss  of 
profits  on  diverted  sales  were  $128,737.  This  report  was  confirmed  by  the 
circuit  judge,  and  on  appeal  the  entire  recovery  was  swept  aside,  and  nominal 
damages  only  awarded,  with  the  following  statement  of  the  law: 

The  proofs  show  that  there  was  comparatively  little  demand  by  railroad 


§  845  PROFITS  763 

companies  for  complete  automatic  air-brake  equipments  that  were  not  pro- 
vided with  quick-action  triple-valves  during  the  period  of  the  infringement. 
But  it  is  clear  that  the  quick-action  attachment  was  one  of  secondary  im- 
portance in  automatic  brake  equipments.  It  is  apparent  that  the  com- 
plainants could  not  have  sold  any  of  the  patented  valves  if  there  had  not 
been  embodied  in  them  the  devices  of  the  quick-action  triple-valve  of  the 
earlier  Westinghouse  patent,  or  equivalent  devices  such  as  the  defendant 
and  the  Boy  den  Brake  Co.  employed  in  their  quick-action  valves,  and  which 
did  not  infringe  the  earlier  patent. 

The  general  rule  governing  recoveries  in  infringement  cases  is  stated  in 
Garretson  v.  Clark,  111  U.  S.  120,  in  the  following  language: 

"  The  patentee  must  in  every  case  give  evidence  tending  to  separate  or 
apportion  the  defendant's  profits  and  the  patentee's  damages  between  the 
patented  features  and  the  unpatented  features,  and  such  evidence  must  be 
reliable  and  tangible,  and  not  conjectural  and  speculative ;  or  he  must  show 
by  equally  reliable  and  satisfactory  evidence  that  the  profits  and  damages 
are  to  be  calculated  on  the  whole  machine,  for  the  reason  that  the  entire 
value  of  the  whole  machine  as  a  marketable  article  is  properly  and  legally 
attributable  to  the  patented  feature." 

Referring  to  the  first  branch  of  this  rule,  this  court  said  in  Wales  v.  Water- 
bury,  101  Fed.  126: 

"This  has  always  been  the  rule,  and  it  is  a  satisfactory  and  just  one  upon 
principle;  but  it  is  often  difficult  of  practical  application,  and  the  courts 
have  sometimes  applied  it  so  that  it  has  not  produced  an  equitable  result.  In 
many  cases,  where  it  is  obvious  that  the  patented  invention  has  contributed 
a  great  part  of  the  profits  realized  from  selling  the  infringing  article  or 
apparatus  embodying  unpatented  features,  it  is  practically  impossible  for 
the  complainant  to  establish  affirmatively  the  proportionate  part." 

Referring  to  the  theory  that  an  infringer  is  a  trustee  ex  maleficio,  and 
the  rule  that  a  trustee  who  has  confused  the  profits  made  by  the  use  of  a 
trust  property  with  those  made  from  his  own  property,  and  commingled 
them  so  that  they  cannot  be  segregated,  must  account  for  the  whole,  this 
court  in  that  case  also  said: 

"  Such  a  rule  would  work  unjustly  in  many  cases,  as  where  the  patented 
feature  is  of  an  insignificant  part  of  a  machine  or  article ;  and  it  is  probably 
because  of  its  manifest  inequity  in  such  cases  that  the  courts  placed  upon  the 
complainant  the  burden  of  proof." 

The  adjudications  in  which  the  latter  branch  of  the  rule  in  Garretson  v. 
Clark  has  been  applied  are  cited  in  Wales  v.  Waterbury.  In  all  of  them,  in 
which  the  question  was  as  to  the  basis  of  profits  upon  sales,  the  rule  applied 
was  that  the  profits  upon  the  whole  machine  or  article  were  allowable  only 
when,  but  for  the  patented  feature,  the  machine  or  article  sold  by  the  infringer 
would  not  have  commanded  a  market. 

The  question  whether  a  machine  would  or  would  not  have  been  market- 
able without  the  patented  part  is  of  course  a  question  of  fact,  but  it  is  one 
which  depends  largely  upon  opinion  evidence.  The  most  satisfactory  evi- 
dence upon  the  question  is  that  which  is  afforded  by  the  nature  and  intrinsic 
value  of  the  improvement  which  it  introduces  into  the  art  or  industry  in 
which  the  machine  is  employed.  .  .  . 

Inasmuch  as  the  complainants  did  not  attempt  to  separate  or  apportion 
the  defendant's  profits  and  their  own  damages  between  the  patented  and 
the  unpatented  features  of  the  quick-action  triple-valve,  it  was  incumbent 
upon  them  to  prove  that  the  entire  value  of  the  defendant's  quick-action 
valve  as  a  marketable  article  was  properly  and  legally  attributable  to  the 
patented  features.  What  they  did  prove,  and  all  they  proved  was  that  pur- 
chasers of  triple-valves  generally  demanded  some  form  of  quick-action  valves, 
and  that,  except  to  a  very  limited  extent,  purchasers  could  not  be  found  for 


764  THE    FIXED    LAW    OF    PATENTS  §  845 

valves  without  these  features.  This  falls  short  of  proof  that  only  the  patented 
form  could  supply  the  demand,  and  does  not  meet  the  requirements  of  the 
second  branch  of  the  rule.  —  Westinghouse  v.  New  York,  140  Fed.  545; 
72  C.  C.  A.  61. 

Note:  As  above  indicated,  this  decision  brings  the  rule  in  Garretson  v. 
Clark  to  its  last  limit,  and  practically  inhibits  a  substantial  recovery  for  in- 
fringement. In  fact,  it  may  now  be  said  that,  in  most  cases,  if  the  com- 
plainant cannot  secure  protection  by  injunction,  he  has  no  remedy  against 
piracy.  For  note  the  situation  in  the  present  case:  There  were  but  two 
successful  emergency  valves  of  the  type  demanded  by  the  railroads  —  the 
Westinghouse  and  the  Boyden.  The  defendant  could  use  neither.  Con- 
sequently and  perforce  the  railroads,  when  they  needed  the  quick-action 
triple  valve  equipment,  must  buy  from  either  Westinghouse  or  Boyden  — 
or  from  this  defendant  who  was  an  infringer  of  Westinghouse.  The  railroads 
did  buy  the  number  of  quick-action  valves  reported  by  the  master ;  and  the 
court  holds  that,  because  railroads  did  buy  some  air-brakes  without  the 
quick-action  valves,  the  complainant  has  not  made  out  a  case.  It  is  to  be 
noted  that  the  record  in  this  case  was  made  by  one  of  the  greatest  patent 
attorneys  in  this  country ;  and  in  these  circumstances  it  is  evident  that  with 
such  a  rule,  a  substantial  recovery  upon  an  infringed  improvement  is  next  to 
impossible. 

In  Westinghouse  v.  New  York,  140  Fed.  545,  Judge  Wallace,  delivering  the 
opinion  of  this  court,  reviewed  the  authorities  on  the  question  of  recoveries 
in  infringement  cases,  and  distinguished  between  those  where  the  patented 
part  was  of  such  paramount  importance  that  it  really  created  the  value  of  the 
whole  article,  and  those  where  such  part  was  relatively  an  unimportant 
factor  in  the  normal  value  of  the  whole,  or  where  such  value  depended  chiefly 
upon  the  presence  of  the  unpatented  parts.  There  the  court  recognized  the 
well-settled  rule  that  in  cases  of  the  former  class  the  infringer  should  be  held 
accountable  for  all  profits,  as  trustee  ex  maleficio,  by  reason  of  having  con- 
fused profits  made  by  the  use  of  a  trust  property  with  those  from  his  own 
property,  and  commingled  them  so  that  they  could  not  be  separated.  The 
court,  however,  quoted  from  the  opinion  in  Wales  v.  Waterbury,  101  Fed. 
126  as  follows:  "  Such  a  rule  would  work  unjustly  in  many  cases  —  as 
where  the  patented  feature  is  of  an  insignificant  part  of  a  machine  or  article ; 
and  it  is  probably  because  of  its  manifest  inequity  in  such  cases  that  the  courts 
have  placed  upon  complainant  the  burden  of  proof."  —  Force  v.  Sawver- 
Boss,  143  Fed.  894;  75  C.  C.  A.  102. 

Garretson  v.  Clark,  111  U.  S.  120. 

We  do  not  by  any  means  impugn  the  general  rules  laid  down  in  Garretson 
v.  Clark,  111  U.  S.  120,  and  the  cases  which  have  followed  it,  one  of  which 
is  that,  when  the  infringement  consists  in  making  or  using  articles  improved 
by  his  own  invention,  the  plaintiff  must  prove  the  extent  of  the  enhancement 
of  profits  by  the  use  of  his  own,  as  distinguished  from  those  due  to  the  article 
improved.  But  we  are  of  opinion  that  the  circumstances  of  this  case,  first, 
in  that  in  the  patented  combination  no  other  invention  inheres,  and  that 
the  combinations  are  not  for  improvements  merely,  but  substitutes  for 
essential  congeries  in  a  drill,  and,  secondly  that  the  infringement  has  been 
so  conducted  as  to  render  a  distinction  of  profits  impossible,  are  controlled 
by  principles  quite  independent  of  those  involved  in  Garretson  v.  Clark, 
and  that  the  plaintiff  was  entitled  to  a  decree  for  the  profits  for  the  sales  of 
the  infringing  drills.  —  Brennan  v.  Dowagiac,  162  Fed.  472;  89  C.  C.  A.  392. 

Note:  This  is  a  plain  and  proper  reversal  of  the  holding  of  this  court 
in  McSherry  v.  Dowagiac,  160  Fed.  948. 


§  846  PROFITS  765 

Mr.  Justice  Blatchford  *  *  *  formulated  the  rule  laid  down  in  Garretson 
v.  Clark,  111  U.  S.  120.  —  Brennan  v.  Dowagiac,  162  Fed.  472;  89  C.  C.  A. 
392. 

Note:  It  may  be  an  item  of  minor  interest  that  this  common  supposition 
is  not  well  founded.  The  rule  as  stated  by  Justice  Blatchford  was  copied  by 
him  from  the  report  of  the  master,  George  J.  Sicard,  Esq.,  a  law-partner  of  the 
late  President  Cleveland ;  and  Mr.  Sicard  previously  copied  the  same,  almost 
verbatim,  from  a  written  request  to  find  submitted  to  him  by  the  late  Justice 
Francis  A.  Macomber,  who  was  at  that  time  counsel  for  Clark. 

For  a  most  sane  and  salutory  construction  and  limitation  of  the  rule  of 
Garretson  v.  Clark,  see  Yesbera  v.  Hardesty,  166  Fed.  120;  C.  C.  A. 


§  846.     Segregation  —  Miscellaneous  Rules. 

The  true  inquiry  is,  as  to  the  profits  which  the  defendants  have  realized 
as  the  consequence  of  the  improper  use  of  these  improvements.  Such  profits 
belong  to  the  plaintiff  and  should  be  accounted  for  to  him.  —  Littlefield  v. 
Perry,  88  U.  S.  205;  22  L.  Ed.  577. 

Where  the  patent  covers  only  a  part  of  or  an  improvement  upon  a  general 
device,  profits  must  be  segregated.  —  McCreary  v.  Pennsylvania,  141  U.  S. 
459;  35  L.  Ed.  817;  12  S.  Ct.  40. 

Seymour  v.  McCormick,  57  U.  S.  480;  Mowry  v.  Whitney,  81  U.  S.  620;  Little- 
field  v.  Perry,  88  U.  S.  205;  Elizabeth  v.  Nicholson,  97  U.  S.  126;  Garretson  v. 
Clark,  111  U.  S.  120. 

Where  defendants  did  not  manufacture  and  sell  the  infringing  device  as 
a  separate  article,  but  manufactured  and  used  it  in  the  manufacture  and  sale 
of  the  article  to  which  it  was  applicable,  obviously  the  entire  profits  upon  the 
article  sold  would  not  be  a  proper  measure  of  damages,  since  the  patented 
device  was  only  an  inconsiderable  part  of  such  article,  and  profits  upon  the 
entire  article  are  only  allowable  where  such  article  is  wholly  the  invention 
of  the  patentee,  or  where  its  entire  value  is  properly  and  legally  attributable 
to  the  patented  feature.  —  Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed. 
609;  12S.  Ct.  799. 

Seymour  v.  McCormick,  57  U.  S.  480;  Mowry  v.  Whitney,  81  U.  S.  620;  Little- 
field  v.  Perry,  88  U.  S.  205;  Garretson  v.  Clark,  111  U.  S.  120. 

In  the  absence  of  proof  showing  that  the  defendant's  infringing  device 
derived  its  whole  commercial  value  from  the  use  of  the  patented  improvement, 
the  court  could  not  have  made  an  order  directing  the  master  to  find  the  profits 
on  the  entire  device.  —  Mosher  v.  Joyce,  51  Fed.  441 ;  2  C.  C.  A.  322. 

Littlefield  v.  Perry,  21  Wall.  205;    Dobson  v.  Dornan,  118  U.  S.  15. 

The  well  settled  doctrine  of  the  Supreme  Court  was  and  is,  that  the  profits 
to  be  assessed  under  section  4921  R.  S.  in  suits  in  equity  for  the  infringe- 
ment of  a  patent,  are  those  only  which  are  properly  attributable  to  the 
patented  feature,  and  that  the  evidence  of  the  patentee  must  "  apportion  the 
defendant's  profits  and  also  the  patentee's  damages  between  the  patented 
and  unpatented  feature."  —  Untermeyer  v.  Freund,  58  Fed.  205;  7  C.  C.  A. 
183. 

Garretson  v.  Clark,  111  U.  S.  120;   Dobson  v.  Carpet  Co.  114  U.  S.  439. 

It  is  also  immaterial  that  a  spring  bearing  plate  was  superadded  to  the 
patented  features  of  the  buckle  of  the  defendant,  as  we  are  satisfied  the  or- 
ganized device  did  not  derive  its  commercial  value  to  any  appreciable  extent 


766  THE    FIXED    LAW    OF    PATENTS  §  847 

from  that  addition,  and  would  have  sold  as  readily  without  it.  —  Wales  v. 
Waterbury,  101  Fed.  126;  41  C.  C.  A.  250. 

In  such  case  the  infringer  is  not  liable  to  the  patentee  for  the  profit  he 
has  made  by  the  use  of  the  entire  apparatus.  He  is  liable  only  for  such  as 
has  accrued  from  the  use  of  that  part  of  it  which  was  new,  and  which  he 
has  used  without  right.  —  Brickill  v.  Mayor,  112  Fed.  65;  50  C.  C.  A.  1. 

McCreary  v.  Canal,  141  U.  S.  462. 

This  is  not  a  case  where  the  entire  or  any  considerable  value  of  the  article 
sold  is  attributable  to  the  patented  feature,  and  profits  upon  the  entire 
article  are  only  allowable  where  such  article  is  wholly  the  invention  of  the 
patentee,  or  where  its  entire  value  is  properly  and  legally  attributable  to 
the  patented  feature.  —  Lattimore  v.  Hardsocg,  121  Fed.  986 ;  58  C.  C.  A.  287. 

Sessions  v.  Romadka,  145  U.  S.  29;  McCreary  v.  Penn.  141  U.  S.  459;  Warren 
v.  Keep,  155  U.  S.  265;  Garretson  v.  Clark,  111  U.  S.  120;  Mowry  v.  Whitney, 
14  Wall.  620;  Seymour  v.  McCormick,  16  How.  480;  Dobson  v.  Hartford,  114 
U.  S.  439;    Littlefield  v.  Perry,  21  Wall.  205. 

The  complainant  insists  that  the  strap  could  not  have  been  sold  without 
the  reels  (the  patented  part),  and  for  this  reason  that  it  should  have  been 
awarded  the  profits  which  the  defendant  made  upon  the  strap  sold  by  him 
during  the  period  of  infringement,  together  with  the  damages  accruing  from 
loss  of  complainant's  profits  upon  diverted  sales  of  strap  during  that  period. 
If  the  proofs  had  shown  that  the  strap  could  not  have  been  sold  except 
with  the  patented  reels,  the  contention  for  the  appellant  would  be  supported 
by  the  authority  of  cases  like  Wales  v.  Waterbury,  101  Fed.  126.  But  the 
proofs  do  not  show  this,  and  not  only  the  direct  evidence,  but  also  presump- 
tions deducible  from  the  small  utility  of  the  patented  invention,  authorize 
and  require  a  contrary  conclusion.  That  the  strap  was  salable  independently 
of  the  reels  is  shown  by  the  fact  that  during  the  period  of  infringement  and 
subsequently  the  defendant  sold  it  in  considerable  quantities  without  reels, 
as  well  as  with  reels  which  did  not  infringe  the  patent.  —  Cary  v.  De  Haven, 
139  Fed.  262;  71  C.  C.  A.  388. 

Some  of  it  he  treated  as  the  patent  directed,  and  sold  the  proceeds.  Why 
did  he  do  so?  Why  did  he  take  the  additional  trouble  to  follow  the  patented 
process,  and  risk  being  prosecuted  as  an  infringer?  Why,  under  those 
circumstances,  he  should  not  account  for  the  profits  he  made  by  the  patented 
process  we  fail  to  see,  and  we  are  referred  to  no  authority  which  denies  such 
profits  to  the  patentee.  —  Hemolin  v.  Harway,  166  Fed.  434;  C.  C.  A. 

§  847.     Miscellaneous  Rules  Concerning  Profits. 

The  invalidity  of  the  patent  does  not  render  the  sales  of  machines  illegal, 
so  as  to  taint  with  illegality  the  obligation  of  the  defendants  to  account  for 
them,  as  they  had  acted  under  a  contract.  —  Kinsman  v.  Parkhurst,  59  U.  S. 
289;  15  L.  Ed.  385. 

The  conduct  of  the  defendants  has  not  been  such  as  to  commend  them  to 
a  court  of  equity.  Under  the  circumstances,  every  doubt  and  difficulty  should 
be  resolved  against  them.  —  Rubber  v.  Goodyear,  76  U.  S.  788;  19  L.  Ed. 
566. 

Lupton  v.  White,  15  Vesey,  432;  Copeland  v.  Crane,  9  Pick.  79;  Dexter  v. 
Arnold,  2  Sumn.  109;    Miller  v.  Whittier,  36  Me.  585. 

In  the  reissue,  the  applicant  stated  what  his  improvement  would  save. 
If  he  was  correct  in  this  statement,  it  is  not  an  unfair  presumption  that  if 


§  848  PROTESTS  767 

the  profit  to  the  patentee  was  no  greater  than  he  claimed  it  was,  it  could  not 
have  been  more  when  the  invention  was  used  by  an  infringer.  —  Mowry  v. 
Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

Where  no  profits  are  shown  to  have  accrued,  a  court  of  equity  cannot  give 
a  decree  for  profits  by  way  of  damages,  or  as  a  punishment  for  the  infringe- 
ment. —  Elizabeth  v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

Livingston  v.  Woodworth,  15  How.  559. 

If  an  infringer  of  a  patent  has  realized  no  profits  from  the  use  of  the 
invention,  he  cannot  be  called  upon  to  respond  for  profits;  the  patentee  in 
such  case,  is  left  to  his  remedy  for  damages.  —  Elizabeth  v.  American,  97 
U.S.  126;  24  L.Ed.  1000. 

The  burden  of  proving  the  amount  of  profits  that  the  defendants  have  made 
by  the  use  of  his  invention  is  upon  plaintiff.  —  Tilghman  v.  Proctor,  125 
U.  S.  136;  31  L.  Ed.  664;  8  S.  Ct.  894. 

Blake  v.  Robertson,  94  U.  S.  728;  Elizabeth  v.  Pavement,  97  U.  S.  126;  Dob- 
son  v.  Hartford,  114  U.  S.  439;  Mowry  v.  Whitney,  81  U.  S.  620. 

The  bill  cannot  be  maintained  for  an  account  of  profits  received  by  the 
defendant  from  the  use  of  this  patent,  because  a  decree  for  profits  can  only 
proceed  upon  the  ground  that  the  plaintiff  is  at  least  the  equitable  owner  of 
the  patent,  and  there  can  be  neither  legal  nor  equitable  ownership  of  a  void 
patent.  —  Kennedy  v.  Hazelton,  128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct.  202. 

The  question  is  whether  there  was  a  contract  for  the  use,  and  not  whether 
all  the  conditions  of  the  use  were  provided  for  in  such  contract.  This  is  the 
ordinary  rule  in  respect  to  the  purchase  of  property  or  labor.  The  fact  that 
there  was  no  agreed  price  was  immaterial.  —  U.  S.  v.  Berdan,  156  U.  S.  552; 
39  L.  Ed.  530;  5  S.  Ct.  420. 

U.  S.  v.  Palmer,  128  U.  S.  262;   U.  S.  v.  Russell,  80  U.  S.  623. 

That  the  findings  by  the  lower  court  are  conclusive  unless  from  other 
findings  there  was  apparent  error,  see  —  U.  S.  v.  Berdan,  156  U.S.  552;  39 
L.Ed.  530;  15  S.  Ct.  420. 

The  invasion  of  the  complainant's  right  having  been  established,  and  an 
injunction  ordered,  it  may  be  presumed  that  there  are  some  profits  or  damages 
to  be  recovered.  —  American  v.  Crosman,  61  Fed.  888;  10  C.  C.  A.  146. 

The  defendants  are  liable  to  account  for  such  gains  and  profits  only  as 
accrued  to  themselves,  and  not  for  those  which  accrued  to  the  manufacturers 
from  whom  they  bought.  —  Kisinger-Ison  v.  Bradford,  123  Fed.  91;  59 
C.  C.  A.  221. 

Elizabeth  v.  Pavement,  97  U.  S.  126;  Root  v.  Railway,  105  U.  S.  189;  Tilghman 
v.  Proctor,  125  U.  S.  136;  Coupe  v.  Royer,  155  U.  S.  565;  Belknap  v.  Schild,  161 
U.  S.  11. 

PROTESTS. 
General  Statement  §  848  |       See  —  Interferences  §  580 

§  848.     General  Statement. 

The  practice  of  filing  protests  against  the  allowance  of  claims,  either  by 
a  party  then  or  formerly  in  interference  or  by  a  party  having  knowledge 
of  the  content  of  certain  pending  claims,  is  without  direct  statutory  sanction, 


768  THE   FIXED    LAW   OF   PATENTS  §  849 

and  without  sanction  under  the  rules  of  the  Patent  Office,  excepting  Rule 
12,  which  says: 

No  attention  will  be  paid  to  unverified  ex  parte  statements  or  protests 
concerning  pending  applications  to  which  they  are  not  parties,  unless  infor- 
mation of  the  pendency  of  such  applications  shall  have  been  voluntarily 
communicated  by  the  applicants. 

It  is  a  proceeding  which  can  be  entertained  only  with  reference  to  a  pending 
application.  A  protest  cannot  be  heard  with  reference  to  an  issued  patent, 
since  the  Commissioner,  having  no  power  to  cancel  or  repeal  a  patent  (McCor- 
mick  v.  Aultman,  169  U.  S.  606;  §  26),  is  not  at  liberty  to  put  a  cloud  on  the 
grant  after  having  issued  the  same.  Moreover,  a  person  aggrieved  by  the 
issuance  of  a  patent  containing  claims  which  he  considers  as  interfering  with 
his  activities  has  the  following  remedies:  First,  the  right  to  raise  an  inter- 
ference, if  he  is  a  competing  inventor,  by  the  filing  of  proper  claims ;  secondly, 
he  has  the  right  under  Sec.  4918,  if  he  has  a  patent  which  he  thinks  is  inter- 
fered with,  to  obtain  a  judicial  determination  of  the  question;  thirdly,  he 
has  the  right  to  go  about  his  business,  and  if  he  is  sued  for  the  infringement 
of  such  claims,  to  defeat  them,  if  he  is  able,  in  the  courts  provided  for  that 
purpose. 

Protest  proceedings  appear  to  relate  to  questions  of  non-patentability  by 
reason  of  prior  publication  or  patent,  while  a  public  use  proceeding  (see  §  859), 
though  similar  in  character,  relates  to  prior  use  of  the  subject-matter  of  the 
claim.  While  the  Patent  Office  appears  to  rest  authority  for  this  proceeding 
upon  an  office  rule,  it  is  thought  that  the  power  originates  in  the  general 
provisions  of  the  statute  charging  the  Commissioner  with  certain  duties  and 
with  the  determination  of  questions  of  novelty  and  utility  in  addition  to  the 
settlement  of  priorities ;  and  for  the  obtaining  of  that  knowledge  of  the  state 
of  the  art  which  will  enable  him  to  perform  his  duty  toward  the  public  as 
well  as  toward  the  inventor,  such  proceedings  as  protests  and  public  use 
proceedings  are  not  to  be  discouraged. 

The  only  instance  in  which  an  appellate  court  has  directly  considered  the 
subject  of  protests  is  the  following: 

The  protest  filed  by  Hall  in  the  Patent  Office  against  the  reissue,  and  the 
long  contest  made  by  him  and  his  attorneys  against  it,  are  in  the  nature  of 
a  confession.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 


PUBLIC  USE. 

The  Statute  and  General  Statement 

§849 

Evidence  of  §  850  (see  §  388) 

Experiment  §  851  (see  §  412) 

Foreign  Use  §  852 

General  Rules  §  853 

Publicity  §  854 

Secret  Use  §  855 

Single  Use  §  856 


Two  Years  Use  §  857 
Miscellaneous  Rules  §  858 
See  —  Abandonment  §  18;  Anticipa- 
tion §§  94,  103-4;  Defenses  §  321; 
Experiment  §  415;  Judicial  Notice  § 
710;  Priority  §  808;  Public  Use  Pro- 
ceedings §  859;  Reissues  §  869; 
Secret  Process  or  Machine  §  898; 
Unpatented  Invention  §  930 


§  849.     The  Statute,  and  General  Statement. 

Section  4886  provides  that  the  invention,  in  order  to  be  patentable,  must 
not  have  been  in  public  use  or  on  sale  in  this  country  for  more  than  two 
years  prior  to  the  application ;  and  Sec.  4923  provides  that  a  patent  shall  not 
be  held  void  by  reason  of  it  or  any  part  thereof  having  been  known  or  used  in  a 
foreign  country,  before  the  domestic  invention  or  discovery  thereof,  if  it  had 
not  been  patented  or  described  in  a  printed  publication. 

Public  use  is  one  of  the  statutory  defenses,  which  may  be  made  on  proper 


§§850-851  PUBLIC   USE  769 

notice.    See  Defenses.      But  it  is  a  defense  which,  like  anticipation  resting 
on  parol  evidence,  must  be  clear  and  indubitable.    See  Evidence. 

§  850.     Evidence  of. 

No  patent  shall  be  held  to  be  invalid  on  account  of  sale  and  public  use 
for  more  than  two  years  prior  to  the  application,  except  on  proof  that  the 
invention  was  on  sale  and  in  public  use  more  than  two  years  before  the 
application  thereof  was  filed  in  the  Patent  Office.  —  Agawam  v.  Jordan,  74 
U.S.  583;  19  L.  Ed.  177. 

McClurg  v.  Kingsland,  1  How.  209;    Stimson  v.  R.  R.  4  How.  380. 

Evidence  to  establish  prior  use  must  not  leave  "room  for  very  grave  doubt." 
There  must  be  satisfactory  evidence  that  the  article  went  into  public  use.  — 
Hanifen  v.  Godshalk,  84  Fed.  649;  28  C.  C.  A.  507. 

Cantrell  v.  Wallick,  117  U.  S.  689. 

Proof  of  public  use  rests  upon  the  defendant,  and  every  reasonable  doubt 
should  be  resolved  against  it.  —  Penn  v.  Conroy,  159  Fed.  943 ;  87  C.  C.  A. 
149. 

Barbed  Wire  Pat.  143  U.  S.  275. 

§  851.     Experiment. 

Whilst  the  supposed  machine  is  in  such  experimental  use,  the  public  may  be 
incidentally  deriving  a  benefit  from  it.  If  it  be  a  grist  mill,  or  a  carding 
machine,  customers  from  the  surrounding  country  may  enjoy  the  use  of  it 
by  having  their  grain  made  into  flour,  or  their  wool  into  rolls,  and  still  it 
will  not  be  in  public  use,  within  the  meaning  of  the  statute.  —  Elizabeth  v. 
American,  97  U.  S.  126;   24  L.  Ed.  1000. 

When  the  subject  of  invention  is  a  machine,  it  may  be  tested  and  tried  in 
a  building,  either  with  or  without  closed  doors.  In  either  case,  such  use  is 
not  public  use,  within  the  meaning  of  the  statute,  so  long  as  the  inventor 
is  engaged,  in  good  faith,  in  testing  its  operation.  He  may  see  cause  to  alter 
it  and  improve  it  or  not.  His  experiments  will  reveal  the  fact  whether  any 
and  what  alterations  may  be  necessary.  If  durability  is  one  of  the  qualities 
to  be  attained,  a  long  period,  perhaps  years,  may  be  necessary  to  enable 
the  inventor  to  discover  whether  his  purpose  is  accomplished.  And  though, 
during  all  that  period,  he  may  not  find  that  any  changes  are  necessary,  yet 
he  may  be  justly  said  to  be  using  his  machine  only  by  way  of  experiment; 
and  no  one  would  say  that  such  a  use,  pursued  with  a  bona  fide  intent  of 
testing  the  qualities  of  the  machine,  would  be  a  public  use  within  the  meaning 
of  the  statute.  So  long  as  he  does  not  voluntarily  allow  others  to  make  it 
and  use  it,  and  so  long  as  it  is  not  on  sale  for  general  use,  he  keeps  the  inven- 
tion under  his  own  control,  and  does  not  lose  his  title  to  a  patent.  —  Eliza- 
beth v.  American,  97  U.  S.  126;  24  L.  Ed.  1000. 

A  use  by  the  inventor,  for  the  purpose  of  testing  the  machine,  in  order 
by  experiment  to  devise  additional  means  for  perfecting  the  success  of  its 
operation  is  admissible;  and  where,  as  incident  to  such  use,  the  product  of 
its  operation  is  disposed  of  by  sale,  such  profit  from  its  use  does  not  change 
its  character ;  but  where  the  use  is  mainly  for  the  purposes  of  trade  and  profit 
and  the  experiment  is  merely  incidental  to  that,  the  principal  and  not  the 
incident  must  give  character  to  the  \xse.  The  thing  implied  as  excepted  out 
of  the  prohibition  of  the  statute  is  a  use  which  may  be  properly  characterized 
as  substantially  for  the  purposes  of  experiment.  Where  the  additional  use 
is  not  for  that  purpose,  but  is  otherwise  public,  and  for  more  than  two  years 


770  THE    FIXED   LAW   OF    PATENTS  §  851 

prior  to  the  application,  it  comes  within  the  prohibition.  —  Smith  v.  Sprague, 
123  U.  S.  249;  31  L.  Ed.  141;  8  S.  Ct.  122. 

The  use  of  the  invention  by  the  inventor  himself,  or  by  another  person 
under  his  direction,  by  way  of  experiment,  and  in  order  to  bring  the  invention 
to  perfection,  has  never  been  regarded  in  this  court  as  such  a  public  use  as 
under  the  statute  defeats  his  right  to  a  patent.  —  Smith  v.  Sprague,  123 
U.  S.  249;  31  L.  Ed.  141 ;  8  S.  Ct.  122. 

Shaw  v.  Cooper,  32  U.  S.  292;  Elizabeth  v.  Nicholson,  97  U.  S.  126;  Egbert  v. 
Lippmann,  104  U.  S.  333. 

Where  the  evidence  shows  use  for  more  than  two  years  prior  to  applica- 
tion for  a  patent,  the  proofs  that  such  use  were  purely  experimental  should 
be  full,  clear,  unequivocal  and  convincing.  —  Smith  v.  Sprague,  123  U.  S.  249; 
31  L.  Ed.  141;  8  S.  Ct.  122. 

Where  a  machine  is  in  the  process  of  legitimate  experiment  and  reduction 
to  practice  it  is  not  public  use  to  sell  the  product  of  such  machine  so  long  as 
the  product  is  the  incident  and  not  the  principal  factor.  —  Smith  v.  Sprague, 
123  U.  S.  249;  31  L.  Ed.  141;  8  S.  Ct.  122. 

Putting  an  invention  into  general  use  to  test  its  utility  is  not  within  the 
statute  and  cases  giving  right  of  experiment.  —  Root  v.  Third  Ave  R. 
146  U.  S.  210;  36  L.  Ed.  946;  13  S.  Ct.  100. 

Elizabeth  v.  Nicholson,  97  U.  S.  126;  Smith  v.  Sprague,  23  U.  S.  249;  Hall  v. 
MacNeale,  107  U.  S.  90;    Egbert  v.  Lippmann,  104  U.  S.  333. 

But  the  mere  intention  of  the  patentee  is  not  sufficient.  Experimental  use 
or  sale  for  experimental  purposes  is  a  fact  to  be  proved,  and  cannot  reside 
in  mere  intention.  If  Swain  had  supplemented  his  testimony  by  showing  that 
he  at  once  proceeded,  after  the  Modus  machine  was  installed,  to  test  its 
efficiency  as  compared  with  outward-discharge  machines,  or  inward-discharge 
machines  without  his  central  partition ;  if  he  had  made  such  experiments  as 
he  has  conducted  since  this  suit  was  begun,  or  the  best  tests  he  was  able  to 
under  the  circumstances,  —  the  case  would  be  different.  But  it  does  not 
appear  that  the  patentee  ever  conducted  any  experiments  to  determine  the 
comparative  efficiency  of  the  patented  machine  until  after  the  beginning  of 
the  present  suit.  Under  all  the  circumstances,  there  is  total  failure  of  proof 
that  the  sale  of  the  Modus  machine  was  for  such  experimental  trial  as  the 
law  contemplates,  and  which  is  sufficient  to  bring  the  case  outside  the 
statutory  prohibition.  —  Swain  v.  Holyoke,  109  Fed.  154;  48   C.  C.  A.  265. 

If  the  machine,  under  the  circumstances  presented  in  this  case,  contained 
the  invention  in  its  finished  form,  the  inventor  cannot  relieve  himself  from 
the  consequences  which  follow  by  showing  that  it  was  installed  by  him  with 
imperfect  connections.  —  Swain  v.  Holyoke,  109  Fed.  154 ;  48  C.  C.  A.  265. 

In  an  art  requiring  extensive  experiment  to  determine  results,  public 
experimental  use  for  that  purpose  does  not  necessarily  work  dedication.  — 
Westinghouse  v.  Saranac,  113  Fed.  884;  51  C.  C.  A.  514. 

It  is  contended  that  no  public  use  can  be  a  bar  to  a  patent  unless  there 
is  an  element  of  profit  involved  or  unless  the  inventor  allows  the  invention 
to  go  out  of  his  control.  The  object  of  evidence  on  these  points  is  to  dis- 
tinguish between  a  use  by  the  public,  as  in  Elizabeth  v.  Pavement  Co.  97 
U.  S.  126,  for  the  purpose  of  experiment,  and  a  use  by  any  part  of  the  public, 
as  in  Egbert  v.  Lippmann,  104  U.  S.  333,  which  is  not  experimental.     The 


§§852-853  PUBLIC   USE  771 

ultimate  question  is  not  whether  the  public  used  the  invention,  but  whether 
the  use  was  directed  to  a  development  of  the  invention  or  test  of  its  practi- 
cality. For  the  purpose  of  proving  the  ultimate  fact,  evidence  as  to  whether 
the  inventor  derived  a  profit  from  the  use  or  retained  control  may  be  im- 
portant, but  it  is  not  necessarily  conclusive.  But  where  a  use  known  to  the 
public  is  shown,  the  proof  on  the  part  of  the  patentee  who  contends  that  it 
is  not  a  bar,  "  because  it  was  for  the  purpose  of  perfecting  an  incomplete 
invention  by  tests  and  experiments  .  .  .  should  be  full,  unequivocal,  and 
convincing."  —  Thomson-Houston  v.  Lorain,  117  Fed.  249;  54  C.  C.  A.  281. 
Mfg.  Co.  v.  Sprague,  123  U.  S.  249. 

That  the  unrestricted  use  of  a  machine  which  from  its  first  operation  is 
a  mechanical  and  commercial  success  cannot  be  declared  to  be  a  secret  and 
experimental  use,  even  though  certain  minor  improvements  are  subsequently 
made;  and  that  the  rule  in  Elizabeth  v.  Pavement  Co.  97  U.  S.  126  does  not 
apply,  see  —  Jenner  v.  Bowen,  139  Fed.  556;  71  C.  C.  A.  540. 

Mr.  Edison  testified  that  "  so  far  as  the  process  is  concerned,  it  is  just 
the  same  now,  in  a  broad  sense,  that  it  was  "  in  1888.  The  patent  application 
was  not  filed  until  1898.  Between  1889  and  1898  duplicates  to  the  number  of 
6,000  or  7,000  were  made  and  used  commercially.  Held:  Public  use  con- 
tinuing more  than  nine  years  in  commercial  operations  must  be  presumed 
from  the  testimony,  and  such  fact  is  neither  controverted  nor  modified  by 
other  proof,  so  that  it  is  immaterial  whether  experimental  use  occurred  at 
any  stage.  The  statute  invalidates  the  patent  if  the  invention  described 
therein  was  in  public  use  or  on  sale  earlier  than  two  years  before  the  applica- 
tion was  filed.  The  use  so  established  was  public  use,  in  violation  of  the 
statute,  and  not  within  the  well-defined  meaning  of  experimental  use  for 
testing  the  invention.  —  National  v.  Lambert,  142  Fed.  164;  73  C.  C.  A.  382. 

Worley  v.  Tobacco,  104  U.  S.  340;  Smith  v.  Sprague,  123  U.  S.  249;  Eastman 
v.  Mayor,  134  Fed.  844. 

There  was,  no  doubt,  an  earlier  machine  (one  made  and  used  for  more  than 
two  years  prior  to  application)  more  or  less  complete,  which  was  being 
experimented  with.  But  the  use  made  of  it  was  purely  experimental,  and 
does  not  count.  Nor  is  it  affected  by  the  fact  that  caramels  cut  on  it  were 
sold.  The  caramels  did  not  have  to  be  thrown  away  to  escape  the  charge 
of  public  use.  —  American  v.  Mills,  149  Fed.  743;  79  C.  C.  A.  449. 

Elizabeth  v.  Pavement,  97  U.  S.  126;    Bryce  v.  Seneca,  140  Fed.  161. 

For  a  public  use  which  was  similar  to  that  in  Elizabeth  v.  Pavement  Co. 
97  U.  S.  126,  and  held  not  to  be  abandonment,  see  Warren  v.  City,  166  Fed. 
309;  C.  C.  A. 

§  852.    Foreign  Use. 

It  is  clear  that  prior  use  in  a  foreign  country  will  not  supersede  a  patent 
granted  here,  unless  the  alleged  invention  was  patented  in  some  foreign 
country.  —  Roemer  v.  Simon,  95  U.  S.  214;  24  L.  Ed.  384. 

§  853.     General  Rules. 

If  an  inventor  should  be  permitted  to  hold  back  from  the  knowledge  of 
the  public  the  secrets  of  his  invention ;  if  he  should  for  a  long  period  of  years 
retain  the  monopoly,  and  make  and  sell  his  invention  publicly,  and  thus 
gather  the  whole  profits  of  it,  relying  upon  his  superior  skill  and  knowledge 
of  the  structure  and  then,  and  then  only,  when  the  danger  of  competition 


772  THE   FIXED   LAW   OF   PATENTS  §§  853 

should  force  him  to  secure  the  exclusive  right  he  should  be  allowed  to  take 
out  a  patent,  and  thus  exclude  the  public  from  any  further  use  than  what 
would  be  derived  under  it  during  his  fourteen  years;  it  would  materially 
retard  the  progress  of  science  and  the  useful  arts,  and  give  a  premium  to  those 
who  would  be  least  prompt  to  communicate  their  discoveries.  —  Pennock 
v.  Dialogue,  2  Pet.  1 ;  7  L.  Ed.  327. 

It  is  not  a  public  knowledge  of  his  invention  that  precludes  the  inventor 
from  obtaining  a  patent  for  it,  but  a  public  use  or  sale  of  it.  —  Elizabeth 
v.  American,  97  U.  S.  126;  27  L.  Ed.  1000. 

It  is  not  public  knowledge  of  an  invention  but  public  use  or  sale  which 
precludes  an  inventor  from  obtaining  a  valid  patent.  —  Root  v.  Third  Ave. 
R.  146  U.  S.  210;  36  L.  Ed.  946;  13  S.  Ct.  100. 

Quoting  Elizabeth  v.  Nicholson,  97  U.  S.  126. 

A  mechanical  invention  can  be  put  to  use  only  when  embodied  in  a  con- 
crete machine,  and  it  is  as  much  embodied  in  one  such  machine,  as  in  a 
thousand.  Whether,  when  thus  put  to  use,  it  is  put  "  in  public  use,"  is  a 
fact  to  be  determined  not  by  the  number  of  machines  in  which  it  is  so  em- 
bodied, nor  by  the  length  of  time  they  are  run,  but  by  the  extent  of  use  to 
which  such  inventor  allows  such  embodiment  to  be  put.  He  may  retain  his 
control  over  the  machine  which  embodied  such  inventions  and  reserve  to 
himself  the  right  to  select  the  individuals  who  shall  use  it,  or  secure  to  him- 
self right  of  access  to  it  for  the  purpose  of  conducting  his  experiments;  but 
when  he  parts  with  such  machine  unreservedly,  so  that  thenceforth  the  right 
to  take,  and  hold,  and  use,  and  sell  it  is  free  to  the  public,  that  machine,  and 
the  invention  it  embodies,  is  by  him  put  in  public  use.  And  he  does  so  part 
with  it  when  he  sells  it  under  a  contract  which  not  only  allows  the  individual 
purchaser  to  use  it,  but  leaves  him  free  to  transfer  machine  and  use  to  whom 
he  will.  Whether  the  purchaser  chooses  to  resell  it  or  not,  is  immaterial ;  he  has 
the  power  to  do  so,  and  that  is  enough.  If  the  inventor  wishes  to  keep  control 
of  the  machine  which  embodies  his  invention,  to  secure  his  own  access  to 
it  for  examination,  and  to  keep  it  in  the  friendly  hands  of  those  who,  he 
intends,  shall  aid  him  by  practical  experiment,  he  must  make  such  restrictions 
a  part  of  the  contract  of  sale  and  the  court  cannot  assume  them  to  exist  in 
the  absence  of  proof.  —  DeLamater  v.  Heath,  58  Fed.  414;  7  C.  C.  A.  279. 

Egbert  v.  Lippmann,  104  U.  S.  333. 

Instead  of  laying  down  a  fixed  rule,  it  seems  to  us  that  in  each  case  the 
court  should  direct  its  attention  to  the  fundamental  inquiry:  Under  what 
circumstances  and  for  what  purpose  did  the  public  use  or  sale  take  place? 
And,  where  it  appears  that  there  has  been  a  public  use  or  sale  for  more  than 
two  years  before  the  application,  the  burden  is  thrown  upon  the  patentee  to 
establish,  by  full,  clear,  and  convincing  proofs,  that  such  use  or  sale  was 
principally  and  primarily  for  experimental  purposes,  and  that  such  purposes 
were  not  merely  incidental  or  subsidiary.  —  Swain  v.  Holyoke,  109  Fed.  154; 
48  C.  C.  A.  265. 

Fruit-Jar  Co.  v.  Wright,  94  U.  S.  94;  Egbert  v.  Lippmann,  104  U.S. 337;  Hall 
v.  Macneale,  107  U.  S.  96;  Elizabeth  v.  Pavement,  97  U.  S.  126;  Mfg.  Co.  v. 
Sprague,  123  U.  S.  256. 

A  person  may  obtain  his  knowledge  of  an  invention  direct  from  the  in- 
ventor and  may  practise  it  publicly  without  his  knowledge  or  consent,  and 
such  use  will  invalidate  a  patent  unless  the  application  is  filed  within  the 
statutory  period  thereafter.  In  order  to  relieve  the  inventor  from  the  con- 
sequences of  such  use,  assuming  that  relief  is  possible,  it  must  appear  that 


§853  PUBLIC   USE  773 

the  knowledge  was  obtained  by  deception,  and  that  the  use  was  fraudulent 
or  piratical.  The  meaning  of  "  fraudulent  "  is  too  well  known  to  require 
definition,  but  it  may  be  wise  to  refer  to  the  meaning  of  the  other  adjectives 
used  by  the  Supreme  Court.  "  Surreptitious  "  means,  "  Fraudulently 
obtained.  Falsely  crept  in.  Obtained  by  falsehood,  fraud  or  stealth,  by 
suppression  or  concealment  of  facts."  u  Piratical  "  means,  "  Acquired  by 
piracy  or  robbery."  It  is  entirely  clear  that  when  the  courts  have  used  these 
words  in  patent  causes  they  intended  them  to  apply  to  acts  done  mala  fide, 
clandestinely,  treacherously  and  by  means  of  falsehood,  fraud  or  breach  of 
trust.  It  is  equally  clear  that  they  have  never  been  used  to  characterize 
knowledge  obtained  openly  and  in  the  due  course  of  business  or  applied  to 
any  act  which  is  neither  malum  prohibitum  nor  malum  in  se. 

The  question,  what  constitutes  a  fraudulent,  piratical  or  wrongful  appropri- 
ation, sale  or  use  of  the  invention,  is  left  very  much  as  the  earlier  authori- 
ties leave  it,  in  obscurity.  We  have  been  referred  to  no  case  since  the  clear 
exposition  of  the  law  in  Andrews  v.  Hovey  where  a  plain  case  of  public  use 
earlier  than  two  years  before  the  application  for  the  patent  has  been  held  to 
be  ineffectual  as  a  defense  because  the  use  was  surreptitious.  When  the 
question  is  fairly  presented  it  may  be  that  the  courts  will  hesitate  to  introduce 
exceptions  to  the  rule  as  broadly  stated  by  the  Supreme  Court,  with  the 
confusion  and  uncertainty  incident  thereto.  —  Eastman  v.  Mayor,  134  Fed. 
844;  69  C.  C.  A.  628. 

The  patent  was  applied  for  and  granted  in  May,  1864.  At  that  time  the 
act  of  1839  —  explaining,  supplementing  and  superseding  the  act  of  1836  — 
was  in  force.    The  seventh  section  of  that  act  is  as  follows  : 

"  Sec.  7  .  .  .  That  every  person  or  corporation  who  has,  or  shall  have 
purchased  or  constructed  any  newly  invented  machine,  manufacture,  or 
composition  of  matter,  prior  to  the  application  by  the  inventor  for  a  patent, 
shall  be  held  to  possess  the  right  to  use,  and  vend  to  others  to  be  used,  the 
specific  machine,  manufacture,  or  composition  of  matter  so  made  or  pur- 
chased, without  liability  therefor  to  the  inventor,  or  any  other  person 
interested  in  such  invention;  and  no  patent  shall  be  held  to  be  invalid  by 
reason  of  such  purchase,  sale,  or  use  prior  to  the  application  for  a  patent  as 
aforesaid,  except  on  proof  of  abandonment  of  such  invention  to  the  public; 
or  that  such  purchase,  sale,  or  prior  use  has  been  for  more  than  two  years 
prior  to  such  application  for  a  patent." 

The  last  clause  of  this  section,  which  is  particularly  applicable  to  this 
controversy,  has  been  condensed  and  tersely  stated  by  Mr.  Walker  as  follows: 

"  A  patent  is  void  for  the  invention  covered  thereby  when  in  public  use 
or  on  sale  earlier  than  two  years  before  the  application  for  the  patent  " 
(sec.  93). 

The  entire  subject  has  been  thoroughly  examined  and  the  conclusion  of 
the  Supreme  Court  stated  in  Andrews  v.  Hovey,  123  U.  S.  267,  and  reaffirmed 
after  a  second  exhaustive  examination  in  the  same  case,  124  U.  S.  694.  The 
question  now  at  issue  was  directly  involved  in  that  case.  The  court  says, 
speaking  of  the  numerous  defenses : 

"  It  is  necessary  to  consider  only  one  of  them,  which,  in  our  view,  is  fatal 
to  the  validity  of  the  patent,  and  that  is,  that  the  invention  was  used  in 
public  at  Cortland,  in  the  State  of  New  York,  by  others  than  Green  (the 
inventor)  more  than  two  years  before  the  application  for  the  patent." 

The  court  says,  in  construing  the  section  quoted  supra: 

"  The  evident  intention  of  Congress  was  to  take  away  the  right  (which 
existed  under  the  act  of  1836)  to  obtain  a  patent  after  an  invention  had  for 
a  long  time  been  in  public  use  without  the  consent  or  allowance  of  the  in- 
ventor; it  limited  that  period  to  two  years,  whether  the  inventor  had  or 
had  not  consented  to  or  allowed  the  public  use." 


774  THE   FIXED   LAW    OF   PATENTS  §  854 

After  an  examination  of  every  reported  case  upon  the  rehearing  the  court 
was  confirmed  in  its  opinion  that  its  former  decision  was  correct  and  closes 
the  elaborate  discussion  in  the  following  language: 

"  The  second  clause  of  the  seventh  section  seems  to  us  to  clearly  intend, 
that,  where  the  purchase,  sale,  or  prior  use  referred  to  in  it  has  been  for  more 
than  two  years  prior  to  the  application,  the  patent  shall  be  held  to  be  invalid, 
without  regard  to  the  consent  or  allowance  of  the  inventor.  Otherwise  the 
statute  cannot  be  given  its  full  effect  and  meaning." 

Among  the  authorities  thus  examined  and  overruled  was  Campbell  v. 
Mayor,  9  Fed.  500,  which  was  the  original  decision  holding  the  patent  in 
this  suit  valid.  —  Eastman  v.  Mayor,  134  Fed.  844;  69  C.  C.  A.  628. 

Note:  This  case,  perhaps,  holds  the  record  for  long  and  laborious  conflict. 
The  first  device  was  completed  and  delivered  for  use  March  28,  1860.  The 
application  was  not  filed  until  May  13,  1864.  This  action  was  commenced 
Nov.  13,  1877;  and  the  decision  herein  was  filed  Jan.  16, 1905.  The  litigation 
covered,  in  round  numbers,  28  years;  between  the  filing  of  the  application 
and  the  final  decree  of  the  Circuit  Court  of  Appeals  41  years;  a  final  decree 
on  an  invention  put  in  use  45  years  before  that  decree  was  reached. 

The  patent  was  governed  by  the  act  of  Mar.  3,  1839,  as  to  public  use.  That 
act  provided  that  "  A  patent  is  void  if  the  invention  covered  thereby  was  in 
public  use  or  on  sale  earlier  than  two  years  before  the  application  for  the 
patent."  (Walker's  paraphrase.)  The  act  was  without  qualification.  The 
public  use  was  instituted  by  the  inventor  on  March  28,  1860.  Notwithstand- 
ing the  fact  that  it  was  a  perfect  working  device  on  that  day,  application  was 
not  made  until  four  years,  two  and  one-half  months  had  elapsed.  The 
excuses  of  experimental  use  and  surreptitious  use,  to  my  mind,  were  the  most 
flimsy.  That  a  case  like  this  could  remain  in  the  courts  for  more  than  a 
quarter  of  a  century  serves  to  show  the  utter  inadequacy  of  our  patent 
courts  and  the  laws  governing  the  trial  of  patent  causes. 

§  854.     Publicity. 

Whether  the  use  of  an  invention  is  public  or  private,  does  not  necessarily 
depend  upon  the  number  of  persons  to  whom  its  use  is  known.  If  an  inventor, 
having  made  his  device,  gives  or  sells  it  to  another,  to  be  used  by  the  donee 
or  vendee  without  limitation  or  restriction,  or  injunction  of  secrecy,  and  it  is 
so  used,  such  use  is  public,  within  the  meaning  of  the  statute,  even  though  the 
use  and  knowledge  of  the  use  may  be  confined  to  one  person.  —  Egbert  v. 
Lippmann,  104  U.  S.  333;  26  L.  Ed.  755. 

Some  inventions  are  by  their  very  character  only  capable  of  being  used 
where  they  cannot  be  seen  or  observed  by  the  public  eye.  An  invention  may 
consist  of  a  lever  or  spring,  hidden  in  the  running  gear  of  a  watch,  or  of  a 
ratchet,  shaft  or  cog-wheel  covered  from  view  in  the  recesses  of  a  machine 
for  spinning  or  weaving.  Nevertheless,  if  its  inventor  sells  a  machine  of 
which  his  invention  forms  a  part,  and  allows  it  to  be  used  without  restriction 
of  any  kind,  the  use  is  a  public  one,  within  the  meaning  of  the  law.  So,  on 
the  other  hand,  a  use  necessarily  open  to  public  view,  if  made  in  good  faith 
solely  to  test  the  qualities  of  the  invention,  and  for  the  purposes  of  experi- 
ment is  not  a  public  use  within  the  meaning  of  the  patent  law.  Elizabeth 
v.  Paving  Co.  97  U.  S.  126;  Shaw  v.  Cooper,  7  Pet.  292.  —  Egbert  v.  Lipp- 
mann, 104  U.  S.  333;  26  L.  Ed.  755. 

Note:  In  this  case,  Justice  Woods  held  that  where  the  inventor  had  made 
an  improved  corset  steel  and  presented  it  to  his  ladylove,  who  used  it;  and 
where  said  inventor  subsequently  married  the  donee  and  subsequently  made 
her  a  second  corset  steel  —  the  two  articles  combined  covering  more  than 
two  years  before  patent — such  use  was  public  and  constituted  abandonment. 
To  this  Justice  Miller  wisely  dissented. 


§§  855-856  PUBLIC   USE  775 

The  fact  that  the  improvement  was  concealed  within  the  safe  and  could 
be  seen  only  by  the  destruction  of  the  safe  does  not  avoid  public  use.  — 
Hall  v.  Macneale,  107  U.  S.  90;  27  L.  Ed.  367;  2  S.  Ct.  73. 

Egbert  v.  Lippmann,  104  U.  S.  333. 

The  fact  that  the  anticipating  device  was  concealed  from  view  and  could 
not  have  come  to  public  notice  does  not  constitute  a  secret  device  such  as 
would  take  it  outside  the  law  of  public  use.  —  Brush  v.  Condit,  132  U.  S. 
39;  33  L.  Ed.  251;  10  S.  Ct.  1. 

The  process  was  practised  by  Pettigrew  and  Gleason,  and  those  who 
assisted,  and  was  open  to  the  observation  of  the  employees  generally,  and  of 
all  who  passed  through  the  plant.  We  think  there  was  abundant  publicity. 
—  U.  S.  Mineral  v.  Manville,  125  Fed.  770;  60  C.  C.  A.  288. 

Coffin  v.  Ogden,  18  Wall.  120;  Brush  v.  Condit,  132  U.  S.  39;  Forncrook  v. 
Root,  127  U.  S.  180;   Peters  v.  Active,  129  U.  S.  530. 

§  855.     Secret  Use. 

Inventors  may,  if  they  can,  keep  their  invention  secret ;  and  if  they  do  for 
any  length  of  time,  they  do  not  forfeit  their  right  to  apply  for  a  patent,  unless 
another,  in  the  meantime,  has  made  the  invention,  and  secured  by  patent  the 
exclusive  right  to  make,  use  and  vend  the  patented  improvement.  Within 
that  rule  and  subject  to  that  condition,  inventors  may  delay  to  apply  for  a 
patent.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Inventors  may,  if  they  can,  keep  their  inventions  secret,  but  if  they  do  not, 
and  suffer  the  same  to  go  into  public  use  for  a  period  exceeding  what  is 
allowed  by  the  patent  act  they  forfeit  their  right  to  a  patent.  —  Parks  v. 
Booth,  102  U.  S.  96;  26  L.  Ed.  54. 

The  unrestricted  use  of  a  device,  without  injunction  to  secrecy,  con- 
stitutes public  use.  —  Manning  v.  Cape  Ann,  108  U.  S.  462;  27  L.  Ed.  793; 
2  S.  Ct.  860. 

Egbert  v.  Lippmann,  104  U.  S.  333. 

The  inventor  built  and  set  up  and  licensed  to  another  a  machine,  without 
restriction  as  to  secrecy.  Later  minor  improvements  were  made,  but  the 
machine  was  a  successful  one  from  the  start.  Held:  The  licensee  understood 
its  mechanism  and  its  method  of  use,  and  was  under  no  restriction  as  to  the 
place  and  manner  of  operation,  and  under  no  obligation  of  secrecy.  When 
the  object  of  the  use  is  the  perfecting  of  an  invention,  the  sale  of  the  product, 
if  strictly  incidental  to  an  experimental  use,  is  not  a  public  use  under  sec. 
4886  R.  S.,  and  will  not  defeat  a  patent.  A  use  which  is  impliedly  excepted 
out  of  the  prohibition  of  the  statute  is  a  use  which  may  be  properly  char- 
acterized as  substantially  for  the  purposes  of  experiment.  "  When  the  sub- 
stantial use  is  not  for  that  purpose,  but  is  otherwise  public,  and  for  more  than 
two  years  prior  to  the  application,  it  comes  within  the  prohibition." —  Jenner 
v.  Bowen,  139  Fed.  556 ;  71  C.  C.  A.  540. 

Smith  v.  Sprague,  123  U.  S.  249;  International  v.  Gaylord,  140  U.  S.  55;  Root 
v.  Third  Ave.  146  U.  S.  210;   Eastman  v.  Mayor,  134  Fed.  844. 

Distinguishing  Elizabeth  v.  Pavement  Co.  97  U.  S.  126. 

§  856.     Single  Use. 

It  follows  that  a  single  instance  of  sale  or  of  use  by  the  patentee  may.  under 
the  circumstances,  be  fatal  to  the  patent.  —  Consolidated  v.  Wright,  94 
U.  S.  92;  24  L.  Ed.  68. 


776  THE    FIXED    LAW   OF   PATENTS  §  857 

Pitts  v.  Hall,  2  Blatchf.  235;  Am.  v.  Am.  4  Fish.  291;  McMillin  v.  Barclay,  5 
Fish.  189;   McClurg  v.  Kingsland,  1  How.  202;   Agawam  v.  Jordan,  7  Wall.  583. 

To  constitute  public  use  of  a  patent  it  is  not  necessary  that  more  than  one 
of  the  patented  articles  should  be  publicly  used.  The  use  of  a  great  number 
may  tend  to  strengthen  the  proof  of  public  use,  but  one  well  defined  case  of 
public  use  is  just  as  effectual  to  annul  the  patent  as  many.  —  Egbert  v. 
Lippmann,  104  U.  S.  333;  26  L.  Ed.  755. 

Not  dependant  upon  the  number  of  persons  using  it.  —  Root  v.  Third 
Ave.,  146  U.  S.  210;  36  L.  Ed.  946;  13  S.  Ct.  100. 
Egbert  v.  Lippmann,  104  U.  S.  333. 

A  single  unrestricted  sale  proved  is  sufficient  to  establish  the  defense  of 
prior  public  use.  —  DeLamater  v.  Heath,  58  Fed.  414;  7  C.  C.  A.  279. 

Fruit  Jar  Co.  v.  Wright,  94  U.  S.  92;  Egbert  v.  Lippmann,  104  U.  S.  332;  Hall 
v.  MacNeale,  107  U.  S.  90;  Mfg.  Co.  v.  Sprague,  123  U.  S.  249;  Elizabeth  v.  Pave- 
ment Co.  97  U.  S.  126. 

The  sale  of  this  machine  was  absolute,  unconditional  and  for  a  valuable 
consideration.  As  a  general  rule,  a  single  unrestricted  sale  by  the  patentee 
of  his  patented  device,  embodying  his  completed  invention,  is  a  public  use 
or  sale  within  sec.  4886  of  the  Revised  Statutes.  —  Swain  v.  Holyoke,  109 
Fed.  154;  48  C.  C.  A.  265. 

Egbert  v.  Lippmann,  104  U.  S.  333;  Fruit-Jar  Co.  v.  Wright,  94  U.  S.  92;  Hall 
v.  MacNeale,  107  U.  S.  90;  Henry  v.  Soapstone  Co.  2  Fed.  78;  Sinclair  v.  Backus, 
4  Fed.  539;  Mfg.  Co.  v.  Mellon,  58  Fed.  705;  DeLamater  v.  Heath,  58  Fed.  414; 
Mfg.  Co.  v.  Sprague,  123  U.  S.  249. 

We  should  hesitate  to  lay  down  the  broad  proposition  that  a  single  sale  of 
a  patented  device  for  experimental  purposes  works  a  forfeiture  under  the 
statute.  We  do  not  understand  that  it  has  ever  been  so  expressly  decided 
by  the  Supreme  Court.  It  is  certainly  doubtful  whether,  under  such  cir- 
cumstances, the  device  can  be  said  to  be  "  on  sale  "  within  the  fair  meaning 
of  the  statute.  It  does  not  follow  that,  because  a  machine  has  been  sold, 
it  has  passed  the  experimental  stage.  —  Swain  v.  Holyoke,  109  Fed.  154; 
48  C.  C.  A.  265. 

Hall  v.  MacNeale,  107  U.  S.  96. 

There  are  undoubtedly  cases  where  the  strict  application  of  this  rule 
(a  single  unrestricted  sale)  works  great  hardship.  Some  inventions  are  for 
large  and  costly  structures,  others  require  a  long  period  of  time  to  test  their 
practical  utility,  and  still  others  are  for  small  devices  which  are  attached 
to  large  machines.  It  follows  that  an  inventor,  from  lack  of  means  or  other 
circumstances,  may  be  forced  to  sell  his  patented  device  in  order  to  test  its 
utility  or  efficiency.  For  these  reasons  the  courts  in  some  instances  have 
declined  to  enforce  the  strict  rule  where  the  sale  was  attended  by  some 
exceptional  circumstance.  —  Swain  v.  Holyoke,  109  Fed.  154;  48  C.  C.  A. 
265. 

Graham  v.  McCormick,  11  Fed.  859;  Graham  v.  Mfg.  Co.  11  Fed.  138;  Harmon 
v.  Struthers,  57  Fed.  637;  Innis  v.  Boiler  Works,  22  Fed.  780;  Eastern  v.  Standard, 
30  Fed.  63;    Draper  v.  Wattles,  3  Ban.  &  A.  618. 

§  857.     Two  Years  Use. 

Is  fatal  to  the  validity  of  the  patent.  —  Worley  v.  Loker,  104  U.  S.  340; 
26  L.  Ed.  821. 

McClurg  v.  Kingsland,  1  How.  202;  Consolidated  v.  Wright,  94  U.  S.  92;  Egbert 
v.  Lippmann,  104  U.  S.  333. 


§858  PUBLIC   USE  777 

While  the  act  of  1836  made  any  public  use  fatal,  the  act  of  1870  makes  a 
public  use  of  two  years  prior  to  the  application  fatal  to  the  granting  of  a 
valid  patent.  —  Manning  v.  Cape  Ann,  108  U.  S.  462;  27  L.  Ed.  793;  2 
S.  Ct.  860. 

McClurg  v.  Kingsland,  1  How.  202;  Egbert  v.  Lippmann,  104  U.  S.  333;  Fruit 
v.  Wright,  94  U.  S.  92;   Worley  v.  Tobacco,  104  U.  S.  340. 

An  invention  which  had  been  in  public  use  more  than  two  years,  whether 
with  or  without  the  inventor's  consent  is  abandoned.  —  Andrews  v.  Hovey, 
123  U.  S.  267;  31  L.  Ed.  160;  8  S.  Ct.  101. 

Statutes  and  authorities  construed.  —  Andrews  v.  Hovey,  124  U.  S.  694; 
31  L.  Ed.  557 ;  8  S.  Ct.  676. 

McClurg  v.  Kingsland,  42  U.  S.  202;  Pierson  v.  Eagle,  3  Story,  402;  Hovey  v. 
Stevens,  1  Wood  &  M.  290;  Pitts  v.  Hall,  2  Blatchf .  229;  McCormick  v.  Seymour, 
2  Blatchf.  240;  Seymour  v.  McCormick,  57  U.  S.  480;  Sargent  v.  Seagrave,  2 
Curt.  553;  Kendall  v.  Winsor,  62  U.  S.  322;  Pennock  v.  Dialogue,  27  U.  S.  1; 
Shaw  v.  Cooper,  32  U.  S.  292;  Sanders  v.  Logan,  2  Fish.  P.  C.  167;  American  v. 
American,  4  Fish.  P.  C.  284;  McMillin  v.  Barclay,  5  Fish.  P.  C.  189;  Russell  v. 
Mallory,  10  Blatchf.  140;  Jones  v.  Sewall,  3  Cliff.  563;  Klein  v.  Russell,  86  U.  S. 
433;  Henry  v.  Francestown,  2  B.  &  A.  221;  Consolidated  v.  Wright,  94  U.  S.  92; 
Kelleher  v.  Darling,  4  Cliff.  424;  Henry  v.  Providence,  3  B.  &  A.  501;  Draper 
v.  Wattles,  3  B.  &  A.  618;  Bates  v.  Coe,  88  U.  S.  31;  Graham  v.  McCormick,  10 
Biss.  39;  Brickill  v.  Mayor,  18  Blatchf.  273;  Campbell  v.  Mayor,  20  Blatchf. 
67;   Davis  v.  Fredericks,  21  Blatchf.  556. 

If  an  inventor  applies  for  his  patent  within  two  years  from  the  time  that 
he  first  exhibits  his  completed  invention  in  public,  no  amount  of  public  use 
within  that  two  years,  either  by  the  inventor  or  others,  will  work  any  for- 
feiture of  his  right  to  a  patent  or  constitute  any  evidence  of  abandonment.  — 
Haines  v.  McLaughlin,  135  U.  S.  584;  22  L.  Ed.  241;   10  S.  Ct.  876. 

Where  an  inventor  puts  his  invention  into  public  use  for  more  than  two 
years  without  controlling  his  invention  and  in  good  faith  seeking  to  perfect 
the  same,  such  use  avoids  the  patent.  —  Root  v.  Third  Ave.,  146  U.  S.  210; 
36  L.  Ed.  946 ;  13  S.  Ct.  100. 

Eizabeth  v.  Nicholson,  97  U.  S.  126;  Smith  v.  Sprague,  123  U.  S.  249;  Hall  v. 
MacNeale,  107  U.  S.  90;    Egbert  v.  Lippmann,  104  U.  S.  333. 

§  858.     Miscellaneous  Rules. 

The  acquiescence  of  an  inventor  in  the  public  use  of  his  invention  can  in 
no  case  be  presumed,  where  he  has  no  knowledge  of  such  use.  But  this 
knowledge  may  be  presumed  from  the  circumstances  of  the  case.  —  Shaw 
v.  Cooper,  7  Pet.  292;  8  L.  Ed.  699. 

Where  the  employee  invents  under  hire  and  employer  uses,  such  use,  if  for 
more  than  two  years  is  public  use  and  is  not  avoided  by  any  part  ownership 
by  the  employer.  —  Worley  v.  Loker,  104  U.  S.  340;  26  L.  Ed.  821. 

An  inventor  cannot  relieve  himself  of  the  consequences  of  the  prior  public 
use  of  his  patented  invention  by  assigning  an  interest  in  his  invention  or 
patent  to  the  person  bv  whom  the  invention  was  used.  —  Worley  v.  Loker, 
104  U.  S.  340;  26  L.  Ed.  821. 

What  constitutes.  —  Hall  v.  MacNeale,  107  U.  S.  90;  27  L.  Ed.  367;  2 
S.  Ct.  73. 

Coffin  v.  Ogden,  18  Wall.  120. 


778 


THE   FIXED   LAW   OF   PATENTS 


859-860 


It  follows  from  this  principle  (rule  in  Penna.  v.  Locomotive,  110  U.  S. 
490)  that,  where  the  public  has  acquired  in  any  way  the  right  to  use  a  machine 
or  device  for  a  particular  purpose,  it  has  the  right  to  use  it  for  all  the  like 
purposes  to  which  it  can  be  applied,  and  no  one  can  take  out  a  patent  to  cover 
the  application  of  the  device  to  a  similar  purpose.  —  Blake  v.  San  Francisco, 
113  U.  S.  679;  28  L.  Ed.  1070;  5  S.  Ct.  692. 

It  will  hardly  be  contended  that  the  mistaken  advice  of  a  patent  solicitor 
can  override  a  statute  of  the  United  States.  —  Eastman  v.  Mayor,  134  Fed. 
844;  69  C.  C.  A.  628. 


PUBLIC  USE  PROCEEDINGS. 

General  Statement  §  859 

See  —  Interference  §  580;  Public  Use  §  849 

§  859.    General  Statement. 

These  proceedings  are  similar  to  protests  (see  §  848),  and  appear  to  have 
grown  up  in  much  the  same  way.  While  a  protest  proceeding  may  inform 
the  Commissioner  as  to  prior  publication,  these  proceedings  are  to  inform  him 
as  to  public  use.  Both  proceedings  have  as  their  object  the  assistance  of  the 
Commissioner  in  performing  his  duties  under  sec.  4893.  As  appears  from 
the  case  quoted  from  below,  it  is  not  a  proceeding  which  a  contestant  before 
the  Office  can  institute  without  some  risk  to  himself ;  for  the  establishment  of 
a  prior  use  to  defeat  an  opponent  may  operate  to  defeat  both  parties. 

The  public  use,  therefore,  carried  back  more  than  two  years  prior  to  Beck- 
ert's  application,  antedates  the  new  application  of  Currier  for  a  still  longer 
period,  and  prevents  not  only  Beckert's  fourth  claim,  but  the  claim  of  the 
patent  in  suit,  from  covering  needles  with  headed  pins.  —  Dodge  v.  Jones, 
159  Fed.  715;  86  C.  C.  A.  191. 


REDUCTION  TO  PRACTICE. 

General  Statement  §  860 
Diligence  §  861 

Essential  to  Patentability  §  862 
Experiment  §  863  (see  §  412) 
Last  Step  Rule  §  864 
Operativeness  §  865 


Priority  §  866 
What  Constitutes  §  867 
See  —  Experiment  §  412;    Operative- 
ness §  781;    Priority  §  811;    Public 
Use  §  849 


§  860.     General  Statement. 

What  has  been  said  with  reference  to  operativeness  (§  781)  applies  largely 
to  this  subject.  The  statute  (sec.  4886)  requires  that  an  invention,  in  order 
to  be  patentable,  shall  not  only  be  new  but  useful.  It  is  self-evident  that  an 
invention  which  cannot  be  reduced  to  practice  without  further  invention  is 
not  patentable  by  reason  of  non-utility.  Moreover,  the  statute  requires 
that  the  specification  shall  recite  the  manner  and  process  of  making,  con- 
structing, compounding  and  using  the  invention,  in  such  full,  clear,  concise 
and  exact  terms  as  to  enable  any  person  skilled  in  the  art  or  science  to  which 
it  appertains,  or  with  which  it  is  most  nearly  connected,  to  make,  construct, 
compound,  and  use  the  same;  and  in  case  of  a  machine,  he  shall  explain  the 
principle  thereof,  and  the  best  mode  in  which  he  has  contemplated  applying 
that  principle.    R.  S.  4888. 

Since  the  furnishing  of  a  model  (sec.  4891)  is  not  mandatory,  and  the  re- 
quirement has  fallen  into  desuetude,  the  Commissioner  has  no  means  of 
knowing,  in  many  cases,  whether  the  invention  is  operative,  or  has  been 
reduced  to  practice  to  any  extent  whatever.    One  who  has  had  any  con- 


§§  861-862  REDUCTION   TO    PRACTICE  779 

siderable  experience  in  patent  soliciting  well  knows  that  many  inventions 
pass  directly  from  the  drafting  board  to  the  patent  specification,  without 
ever  having  been  embodied  in  a  machine.  Many  of  these  paper  patents  are 
never  reduced  to  practice  —  many  never  could  be.  There  is  evidently  a 
tendency  on  the  part  of  the  courts,  in  some  cases,  to  limit  the  application  of 
such  paper  patents  as  showing  anticipation  (§92).  It  must  be  borne  in  mind 
that  failure  to  reduce  to  practice  or  inoperativeness  are  not  questions  within 
the  rule  of  non-user  as  laid  down  by  the  Supreme  Court  in  Continental  v. 
Eastern,  210  U.  S.  405  (§  574). 


§  86 1.     Diligence. 

The  settled  rule  of  law  is,  that  whoever  first  perfects  a  machine  is  entitled 
to  the  patent,  and  is  the  real  inventor,  although  others  may  have  had  the 
idea  and  made  some  experiments  toward  putting  it  in  practice.  He  is  the 
inventor  and  is  entitled  to  the  patent  who  first  brought  the  machine  to  per- 
fection and  made  it  capable  of  useful  operation.  —  Agawam  v.  Jordan,  74 
U.  S.  583;  19  L.Ed.  177. 

Washburn  v.  Gould,  3  Story,  133. 

A  complicated  invention,  requiring  many  experiments  and  much  study  to 
give  it  practical  form,  would  reasonably  delay  a  reduction  to  practice  after 
the  first  conception  for  a  greater  length  of  time  than  where  the  idea  and  the 
machine  embodying  it  were  simple  in  character.  Then,  too,  the  sickness  of 
the  inventor,  his  poverty  and  his  engagements  in  other  inventions  of  a  similar 
kind,  are  all  circumstances  which  may  affect  the  question  of  reasonable 
diligence.  —  Christie  v.  Seybold,  55  Fed.  69 ;  5  C.  C.  A.  33. 

Bradford  v.  Corbin,  6  O.  G.  223;  Webster  v.  Carpet  Co.  5  O.  G.  522;  Cox  v. 
Griggs,  1  Biss  362;  Munger  v.  Connell,  1  O.  G.  491;  Proctor  v.  Ackroyd,  6  O.  G. 
603;  Cushman  v.  Parkam,  9  O.  G.  1108. 


§  862.    Essential  to  Patentability. 

Original  and  first  inventors  are  entitled  to  the  benefit  of  their  inventions 
if  they  reduce  the  same  to  practice,  and  seasonably  comply  with  the  re- 
quirements of  the  patent  law  in  procuring  letters  patent  for  the  protection 
of  their  exclusive  rights.  Crude  and  imperfect  experiments  are  not  sufficient 
to  confer  a  right  to  a  patent;  but  in  order  to  constitute  an  invention,  the 
party  must  have  proceeded  so  far  as  to  have  reduced  his  idea  to  practice  and 
embodied  it  in  some  distinct  form.  —  Seymour  v.  Osborne,  78  U.  S.  516; 
20  L.  Ed.  33. 

An  invention  in  order  to  be  patentable  must  be  more  than  a  mere  ex- 
periment ;  its  utility  must  have  been  established  by  reduction  to  practice.  — 
Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

This  was  a  problem  of  the  reconciliation  of  antagonisms,  which  so  often 
occurs  in  mechanics  and  without  which  practically  successful  results  are  not 
attained.  —  Consolidated  v.  Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct. 
513. 

A  conception  of  the  mind  is  not  an  invention  until  represented  in  some 
physical  form,  and  unsuccessful  projects  or  experiments,  abandoned  by  the 
inventor,  are  equally  destitute  of  character.  —  Clark  v.  Willimantic,  140 
U.  S.  481 ;  35  L.  Ed.  521 ;  11  S.  Ct.  846. 


780  THE   FIXED   LAW   OF   PATENTS  §§  863-866 

§  863.    Experiment. 

What  constitutes  legitimate  experiment  in  reducing  to  practice,  see 
—  Smith  v.  Sprague,  123  U.  S.  249;  31  L.  Ed.  141;  8  S.  Ct.  122. 

§  864.    Last  Step  Rule. 

In  the  law  of  patents  it  is  the  last  step  that  counts.  —  Washburn  v.  Beat 
Em  All,  143  U.  S.  275;  36  L.  Ed.  154;  12  S.  Ct.  443. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Safety  Valve  Co.  v.  Crosby,  113  U.  S. 
157;   Smith  v.  Goodyear,  93  U.  S.  486;  Magawan  v.  N.  Y.  141  U.  S.  332. 

§  865.     Operativeness. 

All  we  know  is  that  he  found  out  that,  by  changing  the  intensity  of  a 
continuous  current  so  as  to  make  it  correspond  exactly  with  the  changes  in 
density  of  air  caused  by  sonorous  vibrations,  vocal  and  other  sounds  could 
be  transmitted  and  heard  at  a  distance.  This  was  the  thing  to  be  done, 
and  Bell  discovered  the  way  of  doing  it.  —  Telephone  Cases,  126  U.S.  1 ; 
31  L.  Ed.  863;  8  S.  Ct.  778. 

Although  at  the  time  Bell  applied  for  his  patent  he  had  never  actually 
transmitted  spoken  words  so  that  they  could  be  distinctly  understood,  so 
long  as  he  had  described  the  device  with  sufficient  precision  to  enable  one 
skilled  in  the  art  thereafter  to  produce  a  speaking  telephone,  it  was  sufficient. 
"  Where  the  question  is  whether  a  thing  can  be  done  or  not,  it  is  always  easy 
to  find  persons  ready  to  show  how  not  to  do  it."  —  Telephone  Cases,  126 
U.  S.  1;  31  L.  Ed.  863;  8  S.  Ct.  778. 

Loom  v.  Higgins,  105  U.  S.  580. 

The  law  does  not  require  that  a  discoverer  or  inventor,  in  order  to  get  a 
patent  for  a  process,  must  have  succeeded  in  bringing  his  art  to  the  highest 
degree  of  perfection.  It  is  enough  if  he  describes  his  method  with  sufficient 
clearness  and  precision  to  enable  those  skilled  in  the  matter  to  understand 
what  the  process  is,  and  if  he  points  out  some  practical  way  of  putting  it  in 
operation.  —  Telephone  Cases,  126  U.  S.  1 ;  31  L.  Ed.  863 ;  8  S.  Ct.  778. 

The  patent  laws  were  not  designed  for  the  benefit  of  the  man  who  attempts 
to  originate  a  useful  thing,  but  rather  to  reward  the  one  who  first  achieves 
success  in  the  production  of  it.  It  would  be  a  perversion  of  the  law  to  hold 
a  machine  which  can  do  certain  kinds  of  work  to  be  an  infringement  of  a 
patent  for  a  different  machine,  which  cannot  do  the  same  work.  —  Norton 
v.  Jensen,  49  Fed.  859;  1  C.  C.  A.  452. 

His  patent  should  not  be  declared  void  because  he  was  in  doubt  as  to 
which  of  the  compositions  would  prove  the  most  satisfactory  in  a  commercial 
sense,  or  because  he  had  not  practically  and  finally  tested  and  chemically 
isolated  all  the  matter  or  material  containing  the  required  cohesive,  ad- 
hesive and  acid  resisting  qualities.  — American  v.  Howland,  80  Fed.  395;. 
25  C.  C.  A.  500. 

Telephone  Cases,  126  U.  S.  1. 

§  866.     Priority. 

However  brilliant  the  discovery  of  the  new  principle  may  be,  to  make  it 
useful  it  must  be  applied  to  some  practical  purpose.  Short  of  this  no  patent 
can  be  granted.  And  it  would  not  seem  to  be  a  work  of  much  labor  for  a 
man  of  ingenuity  to  describe  what  he  had  invented.    The  principle  may  be 


§§  867-868  REHEARINGS  781 

the  new  and  valuable  discovery,  but  the  practical  application  of  it  to  some 
useful  purpose  is  the  test  of  its  value.  —  LeRoy  v.  Tatham,  63  U.  S.  132; 
16  L.  Ed.  366. 
LeRoy  v.  Tatham,  14  How.  156,  176. 

He  is  the  first  inventor  and  entitled  to  the  patent,  who,  being  an  original 
discoverer,  has  first  perfected  and  adapted  the  invention  to  actual  use.  — 
Whitely  v.  Swayne,  74  U.  S.  685;   19  L.  Ed.  199. 

Curt.  Pat.  43  and  notes. 

He  who  first  publishes  his  device,  puts  it  upon  record,  makes  use  of  it 
for  a  practical  purpose,  and  gives  it  to  the  public,  by  which  it  is  eagerly 
seized  upon  should  have  doubts  of  invention  resolved  in  his  favor.  —  Wash- 
burn v.  Beat  Em  All,  143  U.  S.  275;  36  L.  Ed.  154;   12  S.  Ct.  443. 

§  867.     What  Constitutes. 

A  machine  is  said  to  be  complete  when  the  apparatus  is  attached  substan- 
tially complete  in  its  operative  parts.  And  it  is  not  necessary  that  it  should 
be  doing  work,  so  long  as  it  is  capable  of  it.  —  Troy  v.  Odiorne,  58  U.  S.  73; 
15  L.  Ed.  37. 

A  patentable  invention  is  a  mental  result.  It  must  be  new  and  shown  to  be 
of  practical  utility.  Everything  within  the  domain  of  the  conception  belongs 
to  him  who  conceived  it.  The  machine,  process  or  product  is  but  its  material 
reflex  and  embodiment.  —  Smith  v.  Nichols,  88  U.  S.  112;  22  L.  Ed.  566. 

It  can  hardly  be  claimed  that  the  rough  sketch  made  by  Seybold  of  his 
proposed  press  was  a  reduction  to  practice.  It  has  been  held  in  many  cases, 
that  drawings  much  more  complete  than  the  one  here  testified  to,  are  not 
reductions  to  practice,  as  against  a  subsequent  conceiver  who  first  made  an 
actual  operative  machine.  —  Christie  v.  Seybold,  55  Fed.  69;  5  C.  C.  A.  33. 

Reeves  v.  Bridge  Co.  5  Fish.  P.  C.  456;  Lubricator  v.  Renchard,  9  Fish.  293; 
Drill  Co.  v.  Simpson,  29  Fed.  288;  Ellithorpe  v.  Robertson,  4  Blatchf.307;  Draper 
v.  Mills,  13  O.  G.  276;   Odell  v.  Stout,  22  Fed.  159. 

Expression  of  the  means  of  an  alleged  invention,  in  a  drawing  or  sketch, 
is  frequently  the  best  attainable  evidence  of  the  needful  "  representation  in 
physical  form,"  and  may  rightly  be  accepted  as  satisfactory  proof  of  such 
fact,  when  fairly  authenticated,  definite,  and  reasonable  under  the  circum- 
stances. —  Consolidated  v.  Adams,  161  Fed.  343;  88  C.  C.  A.  355. 

REHEARINGS. 

General  Statement  §  868  §§    138-9;     Pleading    and    Practice 

See  —  Adjudication   §    35;     Appeals  |       §788;   Reopening  Case  §  890 

§  868.     General  Statement. 

Rules  regarding  rehearings  are  rules  of  practice  not  peculiar  to  patent 
causes.  As  will  be  seen  from  the  following  citations,  the  courts  apply  these 
general  rules  to  patent  causes  with  no  substantial  variation. 

After  the  case  has  been  heard  and  decided  upon  its  merits,  the  plaintiff 
could  not  file  a  disclaimer  in  court,  or  introduce  new  evidence  upon  that  or 
any  other  subject,  except  at  a  rehearing  granted  by  the  court,  upon  such  terms 
as  it  saw  fit  to  impose.  The  granting  or  refusal,  absolute  or  conditional,  of 
a  rehearing  in  equity,  as  of  a  new  trial  at  law,  rests  in  the  discretion  of  the 


782 


THE    FIXED   LAW   OF   PATENTS 


§869 


court  in  which  the  case  has  been  heard  or  tried,  and  is  not  a  subject  of  appeal. 
The  terms  imposed  are  a  condition  precedent  to  a  rehearing  not  having  been 
complied  with,  the  disclaimer  was  not  in  the  case.  —  Roemer  v.  Neumann, 
132  U.  S.  103 ;  33  L.  Ed.  277 ;  10  S.  Ct.  12. 

In  reaching  our  conclusions  of  fact  in  this  case,  we  have  not  been  unmindful 
of  the  abuses  which  the  strict  rules  enforced  in  the  allowing  of  the  rehearings 
were  adopted  to  pre" vent.  Where  an  elaborate  opinion  of  the  court  of  last 
resort  upon  the  evidence  is  published,  and  the  weaknesses  of  the  losing  side 
are  clearly  .brought  out,  and  the  defeated  party  is  thereafter  given  an 
opportunity  to  strengthen  the  defects  of  his  case  by  evidence  as  to  trans- 
actions long  past  and  machinery  long  since  cast  into  the  scrap  heap,  there  is 
great  danger  that  the  exigencies  of  the  case  may  lead  witnesses  to  round 
out  evidence  beyond  that  which  exact  truth  would  permit.  Such  evidence 
must  be  taken  with  great  caution,  and  weighed  in  the  light  of  this  danger.  — 
Potts  v.  Creager,  97  Fed.  78;  38  C.  C.  A.  47. 


REISSUES. 

The  Statute  §  869 

Abandoned  Claim  §  870  (see  §  1) 

Broadening 

Not   Permissible  —  In   General    § 
871 

Not  Permissible  —  Omitting  Ele- 
ments §  872 
When  Permissible  §  873 
Miscellaneous  Rules  §  874 

Delay 

Excusable  §  875 
Fatal  §  876 
General  Rules  §  877 
Intervening  Rights  §  878 
Miscellaneous  Rules  §  879 

Decision  of  Commissioner  §  880 


Different  Invention  §  881 
Disclaimer  §  882  (see  §  339) 
General  Rules  §  883 
Grounds  for  §  884 
Inadvertence,  Accident,  or  Mistake 
§  885 

Scope  of  §  886 
Surrender  —  Effect  of  §  887 
Tests  of  Validity  §  888 
Miscellaneous  Rules  §  889 
See  —  Assignment   §    173;    Commis- 
sioner  of    Patents    §  258;     Defenses 
§  310;  Disclaimer  §  339;    Divisional 
Patenting    §  348;     Double   Patenting 
§  356;    Fraud  §  425;    Infringement 
§  522;   Laches  §  731 


§  869.     The  Statute. 

Whenever  any  patent  is  inoperative  or  invalid,  by  reason  of  a  defective 
or  insufficient  specification,  or  by  reason  of  the  patentee  claiming  as  his  own 
invention  or  discovery  more  than  he  had  a  right  to  claim  as  new,  if  the  error 
has  arisen  by  inadvertence,  accident  or  mistake,  and  without  any  fraudulent 
or  deceptive  intention,  the  Commissioner  shall,  on  the  surrender  of  such 
patent  and  the  payment  of  the  duty  required  by  law,  cause  a  new  patent 
for  the  same  invention,  and  in  accordance  with  the  corrected  specification, 
to  be  issued  to  the  patentee,  or,  in  case  of  his  death  or  of  an  assignment  of 
the  whole  or  any  undivided  part  of  the  original  patent,  then  to  his  executors, 
administrators,  or  assigns,  for  the  unexpired  part  of  the  term  of  the  original 
patent.  Such  surrender  shall  take  effect  upon  the  issue  of  the  amended 
patent.  The  Commissioner  may,  in  his  discretion,  cause  several  patents  to 
be  issued  for  distinct  and  separate  parts  of  the  thing  patented,  upon  demand 
of  the  applicant,  and  upon  payment  of  the  required  fee  for  a  reissue  for  each 
of  such  reissued  letters  patent.  The  specifications  and  claim  in  every  such 
case  shall  be  subject  to  revision  and  restriction  in  the  same  manner  as  original 
applications  are.  Every  patent  so  reissued,  together  with  the  corrected 
specifications,  shall  have  the  same  effect  and  operation  in  law,  on  the  trial 
of  all  actions  for  causes  thereafter  arising,  as  if  the  same  had  been  originally 
filed  in  such  corrected  form ;  but  no  new  matter  shall  be  introduced  into  the 
specification,  nor  in  case  of  a  machine  patent  shall  the  model  or  drawings  be 
amended,  except  each  by  the  other;  but  when  there  is  neither  model  nor 


§§  870-871  REISSUES  783 

drawing,  amendments  may  be  made  upon  proof  satisfactory  to  the  Commis- 
sioner that  such  new  matter  or  amendment  was  a  part  of  the  original  inven- 
tion, and  was  omitted  from  the  specification  by  inadvertence,  accident,  or 
mistake,  as  aforesaid.    R.  S.  4916. 

Patents  may  be  granted  and  issued  or  reissued  to  the  assignee  of  the  in- 
ventor or  discoverer;  but  the  assignment  must  be  first  entered  of  record  in 
the  Patent  Office.  And  in  all  cases  of  an  application  by  an  assignee  for  the 
issue  of  a  patent,  the  application  shall  be  made  and  the  specification  sworn 
to  by  the  inventor  or  discoverer;  and  in  all  cases  of  an  application  for  a 
reissue  of  any  patent,  the  application  must  be  made  and  the  corrected 
specification  signed  by  the  inventor  or  discoverer,  if  he  is  living,  unless  the 
patent  was  issued  and  the  assignment  made  before  the  eighth  day  of  July, 
1870.    R.  S.  4895. 

§  870.    Abandoned  Claim. 

Indeed  we  have  heretofore  expressed  doubts  whether  reissued  letters  patent 
can  be  sustained  in  any  case  where  they  contain  claims  that  have  once  been 
formally  disclaimed  by  the  patentee,  or  rejected  with  his  acquiescence  and 
he  has  consented  to  such  rejection  in  order  to  obtain  his  letters  patent.  — 
Goodyear  v.  Davis,  102  U.  S.  222;  26  L.  Ed.  149. 

Leggett  v.  Avery,  101  U.  S.  256. 

When  applicant  abandoned  a  claim  under  pressure  of  rejection  it  does  not 
follow  that  such  rejection  implies  that  the  claim  is  otherwise  covered.  — 
Yale  v.  James,  125  U.  S.  447;  31  L.  Ed.  807;  8  S.  Ct.  967. 

Swain  v.  Ladd,  102  U.  S.  408. 

A  claim  once  abandoned  in  the  Patent  Office  and  restored  in  the  reissue 
cannot  be  admitted  in  consistency  with  numerous  decisions  by  this  court.  — 
Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;   10  S.  Ct.  884. 

§  871.    Broadening  —  Not  Permissible  —  In  General. 

The  practice  of  the  art  of  broadening  claims  by  reissue  to  cover  subsequent 
invention  is  to  be  condemned,  and  the  reissue  to  be  limited.  —  Burr  v. 
Duryee,  68  U.  S.  579;  17  L.  Ed.  660. 

The  new  art  of  expanding  patents  for  machines  into  patents  for  "  a  mode 
of  operation,"  a  function,  a  principle,  a  result,  so  that  by  an  equivocal 
use  of  the  term  "  equivalent  "  a  patentee  of  an  improved  machine  may  sup- 
press all  further  improvements,  is  to  be  condemned.  —  Case  v.  Brown,  69 
U.  S.  320;   17  L.  Ed.  817. 

Burr  v.  Duryee,  1  Wall.  535;   McCormick  v.  Talcott,  20  How.  405. 

It  is  clear  that  the  commissioner  has  no  jurisdiction  to  grant  a  reissue 
except  for  the  same  invention  as  the  original.  —  Seymour  v.  Osborne,  78 
U.  S.  516;  20  L.  Ed.  33. 

Cahart  v,  Austin,  2  Cliff.  536;  Curt.  Pat.  276;  Woodworth  v.  Stone,  3  Story, 
753. 

We  think  it  proper  to  reiterate  our  disapprobation  of  these  ingenious 
attempts  to  expand  a  simple  invention  of  a  distinct  device  into  an  all- 
embracing  claim,  calculated  by  its  wide  generalizations  and  ambiguous 
language  to  discourage  further  invention  in  the  same  department  of  industry 
and  to  cover  antecedent  inventions.  —  Carlton  v.  Bokee,  84  U.  S.  463; 
21  L.  Ed.  517. 


784  THE   FIXED   LAW   OF   PATENTS  §  871 

It  appears  on  the  face  of  the  reissue  that  it  is  for  a  different  invention, 
for  the  reissue  is  attempted  to  be  sustained  only  on  the  ground  that  it  is  for 
a  single  stage  process.  —  American  v.  Fiber,  90  U.  S.  566;  23  L  Ed.  31. 

A  reissue  could  only  be  granted  for  the  same  invention  embraced  in  the 
original  patent,  the  specification  could  not  be  substantially  changed,  either 
by  addition  of  new  matter  or  the  omission  of  important  particulars,  so  as 
to  enlarge  the  scope  of  the  invention.  —  Russell  v.  Dodge,  93  U.  S.  460; 
23  L.  Ed.  973. 

Morey  v.  Lockwood,  8  Wall.  230. 

The  original  covered  only  the  process.  In  the  reissue  division  was  made,  one 
patent  covering  the  process  and  the  other  the  product.  Held:  Invalid.  — 
Powder  v.  Powder,  98  U.  S.  126;  25  L.  Ed.  77. 

Burr  v.  Duryee,  1  Wall.  575;  Seymour  v.  Osborne,  11  Wall.  516;  Gill  v.  Wells, 
22  Wall.  1;   Wood  Paper  Pat.  23  Wall.  566. 

A  reissue  for  a  broader  claim  than  the  original,  especially  when  it  embraces 
matter  previously  rejected  and  disclaimed  by  amendment  or  in  obtaining 
an  extension,  is  invalid.  —  Leggett  v.  Avery,  101  U.  S.  256;  25  L.  Ed.  865. 

Here  is  a  sweeping  generalization,  which  reissue  claims  taken  literally, 
would  give  to  the  patentee  a  monopoly  of  all  water  wheels  having  simul- 
taneously an  effective  inward  and  downward  flow  and  discharge,  whatever 
might  be  the  shapes  of  the  floats,  or  of  the  crown. 

The  mistake  of  the  patentee,  or  his  assigns,  seems  to  have  been  in  sup- 
posing that  he  was  entitled  to  have  inserted  in  a  reissue  patent  all  that  he 
might  have  applied  for  and  had  inserted  in  his  original  patent.  A  reissue  can 
be  granted  only  for  the  same  invention  which  was  originally  patented.  If 
it  were  otherwise,  a  door  would  be  opened  to  the  admission  of  the  greatest 
frauds.  —  Swain  v.  Ladd,  102  U.  S.  408;  26  L.  Ed.  184. 

This  court  has  repeatedly  held  that  if,  on  comparing  a  reissue  with  the 
original,  the  former  appears  on  its  face  to  be  for  a  different  invention  from  that 
described  or  indicated  in  the  latter,  it  must  be  declared  invalid.  —  Ball  v. 
Langles,  102  U.  S.  128;  26  L.  Ed.  104. 

Seymour  v.  Osborne,  78  U.  S.  516;   Russell  v.  Dodge,  93  U.  S.  460. 

If  the  reissued  patent  is  to  be  construed  as  appellant  insists  it  should  be 
and  as  it  must  be  to  include  the  defendant's  devices  it  is  broader  than  the 
original  patent  and  therefore  void.  —  Hopkins  v.  Corbin,  103  U.  S.  786; 
26  L.  Ed.  610. 

Wood  Paper  Patent,  90  U.  S.  566;  Powder  v.  Powder,  98  U.  S.  126;  Ball  v. 
Langles,  102  U.  S.  128;  Russell  v.  Dodge,  93  U.  S.  460;  Swain  v.  Ladd,  102  U. 
S.  408;  Wicks  v.  Stevens,  2  Woods,  312. 

The  general  rule  and  leading  case  (quoted  §  873)  —  Miller  v.  Brass  Co. 
104  U.  S.  350;  26  L.  Ed.  783. 

General  rule  followed.  —  Guidet  v.  Brooklyn,  105  U.  S.  550 ;  26  L.  Ed.  1106. 

General  rule  applied  and  followed.  —  Johnson  v.  Flushing,  105  U.  S.  539; 
26  L.  Ed.  1162. 

Giant  v.  California,  6  Sawy.  508;  Powder  v.  Powder,  98  U.  S.  126j  Ball  v. 
Langles,  102  U.  S.  128;   James  v.  Campbell,  104  U.  S.  356. 


§  871  REISSUES  785 

A  reissue  for  a  broader  claim  than  warranted  by  the  original  is  void.  — 
Bantz  v.  Frantz,  105  U.  S.  160;  26  L.  Ed.  1013. 
Miller  v.  Brass  Co.  104  U.  S.  350. 

Broadening  claim  voids  patent.  —  Matthews  v.  Boston,  105  U.  S.  54; 
26  L.  Ed.  1022. 
Miller  v.  Brass  Co.  104  U.  S.  350. 

The  specification  and  first  claim  of  the  reissued  patent  is  a  plain  attempt 
to  include  a  device  which  was  not  and  could  not  be  fairly  covered  by  the 
original  patent.  The  claim  is,  therefore,  for  that  reason  void.  —  Moffitt  v. 
Rogers,  106  U.  S.  423;  37  L.  Ed.  76;   IS.  Ct.  70. 

Gill  v.  Wells,  22  Wall.  1;  Wood  Paper  Pat.  23  Wall.  566;  Powder  v.  Powder, 
98  U.  S.  126;  Ball  v.  Langles,  102  U.  S.  128;  Miller  v.  Brass  Co.  104  U.  S.  350; 
James  v.  Campbell,  104  U.  S.  356;  Heald  v.  Rice,  104  U.  S.  737;  Bantz  v.  Frantz, 
105  U.  S.  160;  Johnson  v.  R.  R.  105  U.  S.  539. 

It  is  quite  clear  that  the  original  patent  covered  a  mechanism  to  accomplish 
a  specific  result,  and  that  the  reissued  patent  covers  the  process  by  which  the 
result  is  attained,  without  regard  to  the  mechanism  used  to  accomplish  it. 
The  reissue  is  therefore  much  broader  than  the  original  patent,  and  covers 
every  mechanism  which  can  be  contrived  to  carry  on  the  process.  —  Wing 
v.  Anthony,  106  U.  S.  142;  27  L.  Ed.  110;   IS.  Ct.  93. 

Powder  v.  Powder,  98  U.  S.  126;  Campbell  v.  James,  104  U.  S.  356;  Heald  v. 
Rice,  104  U.  S.  737;  GUI  v.  Wells,  22  Wall.  1;  Wood  Paper  Pat.  23  Wall.  566; 
Ball  v.  Langles,  102  U.  S.  128;  Miller  v.  Brass  Co.  104  U.  S.  350;  Johnson  v. 
R.  R.  105  U.  S.  539;   Bantz  v.  Frantz,  105  U.  S.  160. 

If  so  construed  it  is  invalid  as  being  for  a  different  invention  from  any 
invention  found  in  the  original  patent.  And  if  it  is  so  limited  as  to  be  no 
broader  than  the  claim  of  the  original  patent,  there  has  been  no  infringement 
of  it.  —  Gosling  v.  Roberts,  106  U.  S.  39;  27  L.  Ed.  61 ;  IS.  Ct.  26. 

The  expansions  in  the  reissue  were  afterthoughts,  developed  by  the  subse- 
quent course  of  improvement,  and  intended  to  cover  matter  appearing  in 
subsequent  patents.  No  excuse  is  given  for  the  delay  and  no  inadvertence, 
accident  or  mistake  is  shown.  —  Clements  v.  Odorless,  109  U.  S.  641;  27 
L.  Ed.  1060;  3  S.  Ct.  525. 

Miller  v.  Brass  Co.  104  U.  S.  350;   James  v.  Campbell,  104  U.  S.  356. 

The  original  patent  was  issued  July  7,  1863.  Eleven  years  after,  in  1874, 
the  competition  of  the  appellant's  device  became  apparent  and  was  felt.  In 
1875,  application  was  made  for  the  reissue;  the  original  patent  was  sur- 
rendered and  the  patent  reissued  July  13,  1875.  Here  is  a  delay  of  nearly 
12  years,  without  the  offer  of  an  explanation  or  excuse,  without  even  the 
suggestion  of  inadvertence  or  mistake  in  the  original  application.  The  only 
inference  that  can  be  drawn  is,  that  the  discovery  and  experience  of  success- 
ful competition  in  1874  suggested  first  and  led  to  the  discovery  that  the 
original  claim  did  not  cover  everything  that  might  have  been  embraced  and 
was  not  broad  enough  to  maintain  the  monopoly  desired  but  not  secured.  — 
Turner  v.  Dover,  111  U.  S.  319;  28  L.  Ed.  442;  4  S.  Ct.  401. 

Miller  v.  Brass  Co.  104  U.  S.  350;    Clements  v.  Odorless,  109  U.  S.  641. 

If  the  claim  is  to  be  construed  so  broadly  as  to  cover  the  defendant's 
article,  it  is  wider  in  scope  than  the  original  actual  invention,  and  wider  than 
anything  indicated  in  the  specification  of  the  original  patent,  and  that,  if  it 
is  to  be  so  construed  as  to  cover  only  the  product  which  the  process  described 


786  THE    FIXED    LAW    OF    PATENTS  §  871 

in  it  will  produce  it  is  not  shown  that  the  defendant's  article  is  that  product 
or  can  be  practically  produced  by  that  process.  —  Cochrane  v.  Badische, 
111  U.  S.  293;  28  L.  Ed.  433;  4  S.  Ct.  455. 

It  is  plain  that  the  claims  mentioned  include  many  devices  not  covered  by 
the  original  patent,  and  are  void.  —  McMurray  v.  Mallory,  111  U.  S.  97; 
28  L.  Ed.  365;  4  S.  Ct.  375. 

GiU  v.  Wells,  22  Wall.  1;  Wood  Paper  Pat.  23  Wall.  566;  Powder  v.  Powder, 
98  U.  S.  126;  Ball  v.  Langles,  102  U.  S.  128;  Miller  v.  Brass  Co.  104  U.  S.  350; 
James  v.  Campbell,  104  U.  S.  356;  Heald  v.  Rice,  104  U.  S.  737;  Johnson  v. 
R.  R.  105  U.  S.  539;  Bantz  v.  Frantz,  105  U.  S.  160;  Wing  v.  Anthony,  106  U.  S. 
142. 

It  is  clear  on  the  face  of  the  patent  that  the  only  object  of  the  reissue  was 
to  enlarge  the  claims.  The  description  was  not  altered  in  the  least.  The 
claims  in  the  original  patent  were  clear  and  explicit,  one  of  these  being  sub- 
stantially retained  in  the  reissue.  Nothing  was  altered,  nothing  was  changed, 
but  to  multiply  the  claims  and  to  make  them  broader.  And  this  was  done, 
not  for  the  benefit  of  the  original  patentee  but  for  that  of  his  assignee ;  and 
was  done  after  the  lapse  of  nearly  four  years.  —  Mahn  v.  Harwood,  112  U.  S. 
354;  28  L.  Ed.  665;  5  S.  Ct.  174. 

Miller  v.  Brass  Co.  104  U.  S.  350. 

The  rule  in  Miller  v.  Brass  Co.  104  U.  S.  350,  and  James  v.  Campbell,  104 
U.  S.  356,  followed  and  approved.  —  Coon  v.  Wilson,  113  U.  S.  268;  28  L. 
Ed.  963;  5  S.  Ct.  537. 

Mahn  v.  Harwood,  112  U.  S.  354. 

The  first  claim  of  the  reissue  is  bad,  not  only  because  it  was  for  something 
the  patentee  had  expressly  disclaimed  in  the  original  patent,  but  because,  as 
the  evidence  clearly  shows,  there  was  nothing  new  in  the  dies  themselves.  — 
Beecher  v.  Atwater,  114  U.  S.  523;  29  L.  Ed.  232;  5  S.  Ct.  1007. 

The  suggestion  in  the  second  reissue  of  its  adaptability  to  a  certain  use, 
not  found  in  the  original  patent  or  in  the  first  reissue  is  new  matter,  so  far  as 
anything  in  it  can  be  invoked  to  confer  patentability  on  the  article.  — 
Gardner  v.  Herz,  118  U.  S.  180;  30  L.  Ed.  158;  6  S.  Ct.  1027. 

The  alterations,  it  is  said  in  argument,  had  the  effect  only  of  giving  a 
more  full,  complete,  and  accurate  description  of  the  same  mechanism;  but, 
in  point  of  fact,  the  alterations  changed  the  shape  of  the  specification  in  such 
a  way  as  to  admit  the  new  and  enlarged  claim  in  a  manner  in  which  it  could 
not  have  been  made  upon  the  original  description.  —  Hartshorn  v.  Saginaw, 
119  U.  S.  664;  30  L.  Ed.  539;  7  S.  Ct.  421. 

Broadening  by  claiming  a  different  thing  voids  the  patent.  —  Ives  v. 
Sargent,  119  U.  S.  652;  30  L.  Ed.  544;  7  S.  Ct.  436. 

Broadening  the  claims  voids  the  patent.  —  Newton  v.  Furst,  119  U.  S. 
373;  30  L.  Ed.  442;  7  S.  Ct.  369. 

As  the  patent  is  not  susceptible  of  a  broad  construction,  the  reissue  is  a 
material  expansion  and  enlargement  of  it.  As  such  expansion  appears  to 
be  the  only  object  of  the  reissue,  and  as  the  application  for  the  reissue  was  not 
made  until  nearly  five  years  after  the  original  was  granted,  the  case  comes 
within  the  ruling  of  Miller  v.  Brass  Co.  104  U.  S.  350.  —  White  v.  Dunbar, 
119  U.  S.  47;  30  L.  Ed.  303:  7  S.  Ct.  72. 


§  871  REISSUES  787 

The  design  manifest  is  to  cover  such  a  structure  as  that  of  the  defendants. 
No  inadvertence,  accident  or  mistake  is  shown.  This  reissue  patent  is 
invalid.  —  Worden  v.  Searls,  121  U.  S.  14;  30  L.  Ed.  853;  7  S.  Ct.  814. 

The  court  adheres  strictly  to  the  view,  that,  under  the  statute,  the  com- 
missioner has  no  jurisdiction  to  grant  a  reissued  patent  for  an  invention  sub- 
stantially different  from  that  embodied  in  the  original  patent,  and  that  a 
reissue  granted  not  in  accordance  with  that  rule  is  void.  —  Parker  v.  Yale, 
123  U.  S.  87;  31  L.  Ed.  100;  8  S.  Ct.  38. 

Burr  v.  Duryee,  68  U.  S.  531;  Seymour  v.  Osborne,  71  U.  S.  516;  Gill  v.  Wells, 
87  U.  S.  1;  Giant  v.  California,  98  U.  S.  126;  Mahn  v.  Harwood,  112  U.  S.  354; 
Coon  v.  Wilson,  113  U.  S.  268;  Ives  v.  Sargent,  119  U.  S.  652;  Corn  Planter 
Patent,  90  U.  S.  181. 

The  drawings  cannot  be  used,  even  on  an  application  for  a  reissue,  much 
less  on  a  disclaimer,  to  change  the  patent  and  make  it  embrace  a  different 
invention  from  that  described  in  the  specification.  —  Hailes  v.  Albany,  123 
U.  S.  582;  31  L.  Ed.  284;  8  S.  Ct.  262. 

Parker  v.  Yale,  123  U.  S.  87. 

General  rule  followed.  —  Dryfoos  v.  Wiese,  124  U.  S.  32;  31  L.  Ed.  362; 
8  S.  Ct.  354. 

The  general  rules  of  recent  cases  followed.  —  Yale  v.  James,  125  U.  S.  447; 

31  L.Ed.  807;  8  S.  Ct,  967. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Parker 
v.  Yale,  123  U.  S.  87;  Matthews  v.  Iron,  123  U.  S.  347;  Swain  v.  Ladd,  102  U.  S. 
408. 

When  it  does  not  appear  that  any  attempt  has  been  made  to  secure  by  the 
original  patent  the  inventions  covered  by  the  new  claims  in  the  reissue, 
those  inventions  must  be  regarded  as  having  been  abandoned  or  waived, 
so  far  as  the  reissue  was  concerned.  —  Hoskin  v.  Fisher,  125  U.  S.  217;  31 
L.  Ed.  759;  8  S.  Ct,  834. 

Parker  v.  Yale,  123  U.  S.  87. 

The  enlargement  of  the  claims  in  the  reissue,  so  as  to  embrace  machines 
not  containing  that  feature,  is  void.  —  Farmer's  v.  Challenge,  128  U.  S.  506; 

32  L.  Ed.  529;  9  S.  Ct.  146. 

It  is  well  settled  that  a  reissue  can  only  be  granted  for  the  same  invention 
intended  to  be  embraced  in  the  original  patent;  and  the  specification 
cannot  be  substantially  changed,  either  by  the  addition  of  new  matter  or  the 
omission  of  important  particulars,  so  as  to  enlarge  the  invention  as  intended 
to  be  originally  claimed.  —  Pattee  v.  Kingman,  129  U.  S.  294;  32  L.  Ed. 
700;  9  S.  Ct.  389. 

Where  it  appears  that  the  original  specification  was  not  defective  or 
insufficient  and  that  the  patent  was  not  inoperative;  and  where  it  was 
apparent  that  the  sole  object  of  the  reissue  was  to  obtain  an  enlarged  claim ; 
and  where  the  subject-matter  of  the  renewal  had  been  adjudicated  in  the 
Patent  Office  on  the  original  application  and  the  applicant  had  acquiesced 
in  such  adverse  action  by  the  Department,  the  effect  of  such  an  abandonment 
of  a  claim  upon  the  validity  of  a  reissue  has  been  often  adjudged  by  this  court 
as  fatal.  —  Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;   10  S.  Ct.  884. 

Leggett  v.  Avery,  101  U.  S.  256;  Mahn  v.  Harwood,  112  U.  S.  354;  Union  v. 
U.  S.  112  U.  S.  624;  Shepard  v.  Carrigan,  116  U.  S.  593;  Roemer  v.  Peddie,  132 
U.  S.  313. 


788  THE    FIXED   LAW   OF   PATENTS  §  871 

A  reissue  is  an  amendment  and  cannot  be  allowed  unless  the  imperfections 
in  the  original  patent  arose  without  fraud,  and  from  inadvertence,  accident  or 
mistake.  R.  S.  4916.  Hence  the  reissue  cannot  be  permitted  to  enlarge  the 
claims  of  the  original  patent  by  including  matter  once  intentionally  omitted. 
Acquiescence  in  the  rejection  of  a  claim,  its  withdrawal  by  amendment, 
either  to  save  the  application  or  to  escape  interference,  the  acceptance  of  a 
patent  containing  limitations  imposed  by  the  Patent  Office,  which  narrow 
the  scope  of  the  invention  as  at  first  described  and  claimed  —  an  instance  of 
such  omission.  —  Dobson  v.  Lees,  137  U.  S.  258;  34  L.  Ed.  652;  11  S.  Ct.  71. 

Union  v.  U.  S.  112  U.  S.  624;  Shepard  v.  Carrigan,  116  U.  S.  593;  Roemer  v. 
Peddie,  132  U.  S.  313;   Yale  v.  Berkshire,  135  U.  S.  342. 

The  applicant  having  withdrawn  a  similar  claim  in  his  original  applica- 
tion in  order  to  obtain  his  original  patent,  and  the  present  claim  being  for  a 
different  invention  from  that  covered  by  the  original  patent,  it  is  void.  — 
Dobson  v.  Lees,  137  U.  S.  258;  34  L.  Ed.  652;  11  S.  Ct.  71. 

Giant  v.  California,  98  U.  S.  126;  Leggett  v.  Avery,  101  U.  S.  256;  Swain  v. 
Ladd,  102  U.  S.  408;  Goodyear  v.  Davis,  102  U.  S.  122. 

Where  only  a  single  magnet  and  a  single  armature  were  shown,  applicant 
cannot  pluralize  these  terms  in  an  amended  claim.  —  Electric  v.  Boston, 
139  U.  S.  481;  35  L.  Ed.  250;   11  S.  Ct.  586. 

A  reissue  where  the  claims  are  extended  to  cover  new  matter  is  invalid 
regardless  of  the  promptness  in  applying  for  the  reissue.  —  Freeman  v. 
Asmus,  145  U.  S.  226;   36  L.  Ed.  685;    12  S.  Ct.  821. 

Mahn  v.  Harwood,  112  U.S.  354;  Coon  v.  Wilson,  113  U.S.  268;  Ives  v.  Sargent, 
119  U.  S.  652;  Parker  v.  Yale,  123  U.  S.  87;  Matthews  v.  Ironclad,  124  U.  S.  347; 
Hosk'm  v.  Fisher,  125  U.  S.  217;  Flower  v.  Detroit,  127  U.  S.  563;  Yale  v.  Berk- 
shire, 135  U.  S.  342;  Electric  v.  Boston,  139  U.  S.  481;  Topliff  v.  Topliff,  145 
U.  S.  156. 

Unless  a  clear  mistake  had  been  made  in  the  wording  of  the  claim,  a  reissue 
cannot  be  had  merely  to  enlarge  the  claim.  —  Huber  v.  Nelson,  148  U.  S. 
270;  37  L.  Ed.  447;   13  S.  Ct.  603. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Coon  v. 
Wilson,  113  U.  S.  268;  Burr  v.  Duryee,  68  U.  S.  531;  Gill  v.  Wells,  89  U.  S.  22. 

Expansion  of  claim  to  embrace  invention  not  specified  in  original  patent 
renders  claim  invalid.  —  Leggett  v.  Standard,  149  U.  S.  287;  31  L.  Ed.  737; 
13  S.  Ct.  902. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Wollen- 
sakv.  Reiher,  115  U.  S.  96. 

Applicant  having  withdrawn  rejected  claims  and  substituted  narrow 
claims  cannot  insist  on  construction  of  reissue  claim  to  cover  original  claim. 
—  Corbin  v.  Eagle,  150  U.  S.  38;  37  L.  Ed.  989;  14  S.  Ct.  28. 

Shepard  v.  Carrigan,  116  U.  S.  593;  Roemer  v.  Peddie,  132  U.  S.  313;  Royer 
v.  Coupe,  146  U.  S.  524. 

Patent  Office  having  rejected  a  claim  and  rejection  acquiesced  in,  applicant 
estopped  to  claim  such  construction.  —  Morgan  v.  Albany,  152  U.  S.  425 ; 
38  L.  Ed.  500;    14  S.  Ct.  627. 

Leggett  v.  Avery,  101  U.  S.  256;  Shepard  v.  Carrigan,  116  U.  S.  593;  Crawford 
v.  Heysinger,  123  U.  S.  589;   Union  Cartridge  Co.  v.  U.  S.  112  U.  S.  624. 

Rule  of  Miller  v.  Brass  Co.  104  U.  S.  350  applied.  —  Dunham  v.  Dennison, 
154  U.  S.  103:  38  L.  Ed.  924;   14  S.  Ct.  986. 


§  871  REISSUES  789 

Miller  0.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Topliff 
v  Topliff,  145  U.  S.  156;  Huber  v.  Nelson,  148  U.  S.  270;  Leggett  v.  Standard, 
149  U.  S.  287;   Corbin  v.  Eagle,  150  U.  S.  38. 

Where  in  the  reissue  the  construction  is  made  alternative  by  employing 
the  word  "  preferably  "  to  cover  structures  in  use,  such  alternative  broadens 
the  claims  based  thereon  and  defeats  the  patent.  —  Olin  v.  Timken,  155 
U.  S.  141;  39  L.  Ed.  100;  15  S.  Ct.  49. 

Huber  v.  Nelson,  148  U.  S.  270. 

Had  the  plaintiff,  in  his  reissue,  confined  himself  to  the  correction  of  an 
error  so  manifest,  we  should  have  found  little  difficulty  in  sustaining  it; 
but  in  his  application,  which  was  made  four  years  after  the  original  patent,  he 
makes  no  claim  that  his  patent  "  was  inoperative  or  invalid,  by  reason  of  a 
defective  or  insufficient  specification,"  or  by  reason  of  his  having  claimed 
"  more  than  he  had  a  right  to  claim  as  new,"  or  that  any  error  had  arisen, 
"  by  inadvertence,  accident  or  mistake,"  without  which  the  commissioner 
has  no  right  to  grant  a  reissue,  but  simply  prays  that  he  may  be  allowed  to 
surrender  his  original  patent,  and  that,  "  letters  patent  may  be  reissued 
to  him  for  the  same  invention,  upon  the  annexed  amended  specification." 
He  makes  no  reference  at  all  to  the  obvious  mistakes  in  his  first  claim,  and 
although  the  point  is  not  distinctly  made  in  the  briefs,  we  think  it  a  serious 
question,  whether  the  commissioner  of  patents  had  any  jurisdiction  under 
R.  S.  4916  to  consider  the  application  upon  the  bare  statement  that  the 
patentee  desired  to  surrender  his  patent  and  obtain  a  reissue.  —  Eby  v. 
King,  158  U.  S.  366;  39  L.  Ed.  1018;  15  S.  Ct.  972. 

By  removing  the  limitation  of  the  thickness  of  the  material,  contained  in 
the  original,  the  claim  was  broadened  so  as  to  void  the  patent.  —  American 
v.  Johnston,  52  Fed.  228;  3  C.  C.  A.  53. 

It  must  appear  by  the  description  in  the  original  patent  that  it  was  the 
purpose  of  the  patentee  to  secure  the  thing  specified  in  the  claim  of  the 
reissue,  and  a  patent  cannot  be  lawfully  reissued  unless  there  has  been  a 
clear  mistake,  inadvertently  committed,  in  the  wording  of  the  claim.  — 
Featherstone  v.  Bidwell,  57  Fed.  631 ;  6  C.  C.  A.  487. 

Parker  v.  Yale,  123  U.  S.  99;  Hoskin  v.  Fisher,  125  U.  S.  223;  Flower  v.  De- 
troit, 127  U.  S.  571;  Mahn  v.  Harwood,  112  U.  S.  354;  Plow  v.  Kingman,  129 
U.  S.  299. 

While  in  this  case  it  is  true,  that  the  fifth  claim  contains  four  elements, 
while  its  predecessor  contained  but  three,  and  therefore  it  is,  in  a  certain 
sense,  a  narrower  claim,  that  statement  contains  but  half  a  truth.  The 
remaining  half  is  that  the  new  claim  is  for  a  different  and  previously  un- 
recognized invention.  The  patent  had  been  in  existence  and  under  repeated 
examination  for  nine  years,  and  individuals  and  the  public  had  acquired 
adverse  interests,  which  would  be  destroyed  by  a  reconstruction  of  a  void 
claim.  —  Carpenter  v.  Searle,  60  Fed.  82;  8  C.  C.  A.  476. 

Parker  v.  Yale,  132  U.  S.  87. 

This  case  is  thought  to  mark  a  new  departure  by  the  Supreme  Court  in 
the  line  of  strict  construction  of  the  right  of  reissue.  It  must  be  interpreted 
in  the  light  of  the  special  circumstances  which  gave  rise  to  it,  of  the  evils  that 
had  grown  up  under  the  loose  practice  theretofore  prevailing,  and  the  remedy 
required  in  the  interest  of  the  public.  The  evil  to  be  corrected  was  this: 
unscrupulous  speculators,  watching  the  development  of  successful  inven- 
tions, could,  in  searching  the  records  of  prior  inventions,  find  one  which  might 


790  THE    FIXED   LAW   OF   PATENTS  §  872 

embody  the  same  principles,  and,  availing  themselves  of  the  opportunity, 
given  by  the  reissue  law,  embody  in  the  older  patent  claims  which  it  might 
have  had  but  did  not,  and  the  result  would  be  that  the  owner  of  the  later 
patent,  who  had  spent  time  and  money  in  the  development  of  a  profitable 
business,  would  be  confronted  with  a  patent  earlier  in  date  than  his,  but 
reissued  later,  which  would  completely  control  his  business.  This  evil  cer- 
tainly demanded  correction.  Again  there  was  a  presumption  —  and  generally 
it  was  a  fact  —  that  what  was  not  claimed  was  not  invented  by  the  patentee 
and  the  public  had  the  right  to  use  what  was  not  claimed,  either  because  it 
had  not  been  invented  by  the  patentee,  or  because  by  his  own  act  he  had  made 
it  public  property,  if  it  was  not  so  before.  —  Crown  v.  Aluminum,  108  Fed. 
845;  48  C.  C.  A.  72. 

The  introduction  in  a  reissued  patent  of  claims  for  inventions  which  are 
described,  but  which  the  patentee  neither  claimed  nor  intended  to  claim  by 
the  original  patent,  is  unauthorized  by  the  acts  of  congress,  and  such  claims 
are  void.  —  Ide  v.  Trorlicht,  115  Fed.  137;   53  C.  C.  A.  341. 

Topliff  v.  Topliff,  145  U.  S.  156;  Hubel  v.  Dick,  28  Fed.  132;  Carpenter  v. 
Searle,  60  Fed.  82. 

It  does  not  appear  from  the  original  specification  that  the  patentee  had 
any  idea  of  any  novel  means  for  obviating  the  self-induction  resistance  of 
alternating  currents.  The  claims  in  suit  of  the  reissue  cannot  be  sustained, 
because  the  description  in  the  original  patent  fails  to  show  that  the  invention 
covered  by  said  claims  was  intended  to  be  secured  in  the  original  patent.  — 
Weston  v.  Stevens,  134  Fed.  574 ;  67  C.  C.  A.  374. 

Walker  on  Pat.  sec.  233;  Hoskin  v.  Fisher,  125  U.  S.  217;  Pattee  v.  Kingman, 
129  U.  S.  294;   Featherstone  v.  Bidwell,  57  Fed.  631. 

A  different  doctrine  (from  that  requiring  prompt  action  for  reissue  upon 
defect  discovered)  would  go  far  to  defeat  the  object  of  the  rule  which  re- 
quires the  patentee  to  define  his  invention  with  such  distinctness  that 
other  inventors,  and  the  public  as  well,  may  know  its  scope  and  limitations. 
And  it  is  not  alone  these  persons  who  are  shown  to  have  taken  action  upon 
the  faith  that  the  patent  defines  the  character  of  the  invention  who  may 
raise  the  objection  to  a  change  in  its  claims  which  makes  it  cover  other 
ground  than  that  claimed  before.  The  rule  does  not  rest  upon  the  ground 
of  an  estoppel  in  favor  of  particular  persons.  —  Milloy  v.  Thomson-Houston, 
148  Fed.  843;  78  C.  C.  A.  533. 

White  v.  Dunbar,  119  U.  S.  47;   Walker  on  Pat.  sec.  226. 

§  872.     Broadening  —  Not  Permissible  —  Omitting  Elements. 

The  complainants  have  split  up  and  divided  the  elements  of  their  invention 
and  claimed  them  separately  and  not  in  combination.  Of  course  this  en- 
larges the  scope  of  their  patent.  The  separate  claims  embrace  fewer  elements 
in  combination  than  were  embraced  in  the  claim  of  the  original  patent.  No 
one  could  infringe  the  original  patent  unless  he  used  all  the  elements  of  the 
combination.  Anyone  will  infringe  the  reissue  who  uses  any  of  those  elements 
which  are  now  separately  claimed.  —  Matthews  v.  Boston,  105  U.  S.  54; 
26  L.  Ed.  1022. 

The  reissue  was  granted  13  years  and  8  months  after  the  date  of  the 
original  patent.  The  new  claim  covered  only  five  of  the  original  seven  ele- 
ments. Held,  invalid.  —  Gage  v.  Herring,  107  U.  S.  640;  27  L.  Ed.  601; 
2  S.  Ct.  819. 

Proutv  v.  Ruggles,  16  Pet.  336;  Vance  v.  Campbell,  1  Black.  427;  Gould  v. 
Rees,  15  Wall.  187;    Miller  v.  Brass  Co.  104  U.  S.  350;    James  v.  Campbell,  104 


§873  REISSUES  791 

U.  S.  356;  Heald  v.  Rice,  104  U.  S.  737;  Matthews  v.  Machine,  105  U.  S  54; 
Bantz  v.  Frantz,  105  U.  S.  160;  Johnson  v.  R.  R.  105  U.  S.  539;  Moffitt  v. 
Rogers,  106  U.  S.  423. 

If  the  effect  of  omitting  the  words  in  question  is  to  extend  the  claim,  the 
claim  is  enlarged  by  omitting  an  essential  element  of  the  patentee's  inven- 
tion and  the  reissue  is  invalid.  —  Matthews  v.  Ironclad,  124  U.  S.  347;  31 
L.  Ed.  477 ;  8  S.  Ct.  639. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Parker 
v.  Yale,  123  U.  S.  87. 

The  original  patent  and  the  first  reissue  having  been  distinctly  limited  to 
a  construction  shown,  the  second  reissue,  obtained  nearly  seven  years  latet, 
omitting  such  element  specifically  claimed,  is  an  inwarrantable  enlargement. 
—  Cornell  v.  Weidner,  127  U.  S.  261;   32  L.  Ed.  148;  8  S.  Ct.  1152. 

Yale  v.  James,  125  U.  S.  447. 

When  every  element  of  the  combination  claimed  in  the  original  patent  is 
thereby  made  material  to  such  combination,  a  reissue  omitting  one  of  such 
elements  is  for  a  different  combination  and  void.  —  Huber  v.  Nelson,  148 
U.  S.  270;  37  L.  Ed.  447;   13  S.  Ct,  603. 

Prouty  v.  Ruggles,  41  U.  S.  336;  Brooks  v.  Fiske,  56  U.  S.  212;  Burr  v.  Duryee, 
68  U.  S.  1;  Reckendorfer  v.  Faber,  92  U.  S.  347;  Gas  Light  Co.  v.  Boston,  139 
U.  S.  481;  Topliff  v.  Topliff,  145  U.  S.  156;  Fuller  v.  Yentzer,  94  U.  S.  288; 
Railway  Co.  v.  Sayles,  97  U.  S.  554;  Meter  Co.  v.  Desper,  101  U.  S.  332;  Eames 
v.  Godfrey,  68  U.  S.  78;  Case  v.  Brown,  69  U.  S.  320;  Gould  v.  Rees,  82  U.  S. 
187;  Gill  v.  Wells,  89  U.  S.  1;  Powder  Co.  v.  California,  98  U.  S.  126;  Leggett  v. 
Avery,  101  U.  S.  256;  James  v.  Campbell,  104  U.  S.  356;  Coon  v.  Wilson,  113 
U.  S.  268;    Parker  v.  Yale,  123  U.  S.  87. 

The  reissue  was  saved  from  the  fate  of  the  original  because  its  claims  have 
but  four  elements  whereas  the  claims  of  the  original  were  construed  to  have 
five.  We  cannot  now  read  into  the  claims  the  very  element,  the  omission 
of  which  gave  them  vitality.  If  these  claims  are  construed  to  include  a 
tension  device  they  are  void  for  double  patenting ;  if  construed  as  containing 
but  four  elements,  it  is  obvious  that  they  are  broader  than  the  claims  of  the 
original.  —  Thomson-Houston  v.  Western,  158  Fed.  813  (2d  case);  86  C. 
C.  A.  73. 

§  873.    Broadening  —  When  Permissible. 

It  is  the  right  of  the  patentee  and  his  representatives  to  enlarge  or  restrict 
the  claim  so  as  to  give  it  validity  and  secure  the  invention.  —  Rubber  v. 
Goodyear,  76  U.  S.  788;   19  L.  Ed.  566. 

Bat  tin  v.  Taggart,  17  How.  84. 

The  general  rules  are  (1)  That  the  reissue  cannot  cover  another  invention 
than  that  of  the  original;  (2)  That  the  reissue  cannot  recover  what  was 
described  but  not  claimed  after  long  delay;  (3)  That  while  a  reissue  claim 
may  be  enlarged  it  can  be  done  only  when  actual  mistake  has  occurred  and 
then  only  without  delay ;  (4)  That  in  reissues  for  enlarging  the  scope  of  a 
patent  the  rule  of  laches  should  be  rigidly  applied;  (5)  That  the  general 
purpose  of  the  statute  providing  for  reissues  was  to  correct  mistakes  and  errors, 
and  not  to  enable  the  inventor  from  time  to  time  to  extend  his  monopoly 
so  as  to  cover  progress  by  others  in  his  art.  —  Miller  v.  Brass  Co.  104  U.  S. 
350;    26  L.  Ed.  783. 

If  the  amended  specification  does  not  enlarge  the  scope  of  the  patent  by 
extending  the  claim  so  as  to  cover  more  than  was  embraced  in  the  original, 


792  THE    FIXED   LAW   OF   PATENTS  §  873 

and  thus  cause  the  patent  to  include  an  invention  not  in  the  original,  the 
rights  of  the  public  are  not  thereby  narrowed,  and  the  case  is  within  the 
remedy  intended  by  the  statute.  Those  cases  in  which  this  court  has  held 
reissues  to  be  invalid  were  of  a  different  character,  and  were  cases  where 
by  the  reissued  patent  the  scope  of  the  original  was  so  enlarged  as  to  cover 
and  claim  as  a  new  invention  that  which  was  either  not  in  the  original 
specification,  as  part  of  the  invention  described,  or  if  described,  was,  by  not 
being  claimed,  virtually  abandoned,  and  dedicated  to  public  use.  —  Eames 
v.  Andrews,  122  U.  S.  40;  30  L.  Ed.  1064;  7  S.  Ct.  1073. 

Distinguishing,  Russell  v.  Dodge,  93  U.  S.  460;  Morey  v.  Lockwood,  74  U.  S.  230. 

To  warrant  new  and  broader  claims,  such  claims  must  not  be  merely 
suggested  or  indicated  in  original  specification,  drawings  or  model,  but  it 
must  appear  that  they  were  constituent  parts  of  the  invention  sought  to  be 
covered. 

Nor  is  the  applicant  allowed  to  incorporate  in  his  reissue  claims  embracing 
what  has  been  rejected.  —  Corbin  v.  Eagle,  150  U.  S.  38;  37  L.  Ed.  989; 
14  S.  Ct.  28. 

Bantz  v.  Frantz,  105  U.  S.  160;  Heald  v.  Rice,  104  U.  S.  737;  Miller  v.  Brass 
Co.  104  U.  S.  350;  James  v.  Campbell,  104  U.  S.  356;  Topliff  v.  Topliff,  145  U.  S. 
156. 

The  Supreme  Court  of  the  United  States  has  held  that  while  this  section 
(4916)  liberally  construed,  would  only  authorize  reissue  to  correct  specifica- 
tions or  claims  defective  or  inoperative  because  too  broad,  it  would  construe 
the  section  liberally  to  give  the  commissioner  of  patents  power  to  grant  a 
reissue  to  expand  claims  which  had  been  made  too  narrow  by  reason  of 
accident,  inadvertence  or  mistake,  without  fraud.  But  it  has  been  held  in 
a  number  of  cases  that  the  commissioner  is  without  power  to  grant  a  reissue 
unless  it  shall  clearly  appear  that  the  patent,  as  originally  issued,  was  de- 
fective and  inoperative  for  the  invention  intended;  that  this  defect  and 
inoperativeness  arose  through  inadvertence  and  mistake;  and,  finally,  that 
the  patentee  had  not  by  lapse  of  time  and  laches,  abandoned  his  right  to 
have  the  correction  made.  —  Peoria  v.  Cleveland,  58  Fed.  227;  7  C.  C.  A. 
197. 

A  claim  which  made  that  which  was  no  part  of  the  invention  one  of  its 
elements,  and  consequently  essential  to  its  infringement,  was  therefore 
clearly  defective,  which  defect  was  properly  cured  by  omitting  the  proper 
element  from  the  reissue.  —  Gaskill  v.  Myers,  81  Fed.  854;  26  C.  C.  A.  642. 

Where  there  has  been  an  expansion  of  the  patent  to  describe  inventions 
substantially  different  from  the  original,  covering  nebulous  combinations 
not  exhibited  therein,  and  where  there  has  been  protracted  and  unreasonable 
delay  in  face  of  the  manufacture  of  articles  not  substantially  covered  by 
the  original  invention,  the  reissue  has  been  held  void;  but  the  courts,  recog- 
nizing the  fact  that  the  ordinary  inventor  is  not  usually  skilled  in  technical 
rules  of  construction,  and  is  apt  to  suppose  that  his  claims  protect  him  in 
the  essential  elements  mentioned  in  them,  and  that  these  claims  and  specifi- 
cations are  usually  drawn  by  men  who  are  strangers  to  and  ignorant  of  the 
art  within  which  they  lie,  and  that  even  skilled  solicitors  are  not  infallible 
in  framing  technical  documents,  have  sanctioned  reissues  which  permit  the 
framing  of  claims  adequate  to  secure  the  full  benefits  of  the  inventions 
designed  to  be  protected  by  the  patent  laws.  —  Crown  v.  Aluminum,  108 
Fed.  845;  48  C.  C.  A.  72. 

Grant  v.  Raymond,  6  Pet.  243. 


§  874  REISSUES  793 

This  case  (Miller  v.  Brass  Co.  104  U.  S.  350)  did  not  deny  that  a  claim 
might  be  enlarged,  in  a  reissued  patent,  but  held  that  there  must  be  a  bona 
fide  mistake,  and  that  there  must  not  be  unreasonable  delay;  any  con- 
siderable lapse  of  time  affording  opportunities  and  temptations  to  commit 
fraud.  —  Crown  v.  Aluminum,  108  Fed.  845;  48  C.  C.  A.  72. 

The  somewhat  recent  case  of  Topliff  v.  Topliff ,  145  U.  S.  56,  stated  that  the 
power  to  reissue  may  be  exercised  when  the  patent  is  inoperative,  because 
the  claims  were  narrower  than  the  actual  invention,  provided  the  error  arose 
from  inadvertence  or  mistake.  The  right,  however,  is  subject  to  certain 
limitations,  and  among  them  that  the  reissue  shall  be  for  the  same  invention, 
as  it  appears  from  the  specification  and  claims,  and  that  there  must  be  rea- 
sonable diligence  in  moving.  It  is  also  stated  as  something  to  be  regarded 
as  settled  by  the  Supreme  Court  that  the  court  will  not  review  the  decision 
of  the  Commissioner  of  Patents  upon  the  question  of  inadvertence,  accident 
or  mistake,  unless  the  matter  is  manifest  from  the  record.  The  application 
was  made  in  a  little  over  four  months,  which  ordinarily  would  be  accepted 
as  not  an  unreasonable  time,  provided  public  rights  had  not  intervened. 
The  specification  of  the  original  patent,  when  read  in  connection  with  the 
cuts,  manifestly  shows  that  the  patentee  intended  a  broader  invention  than 
that  stated  in  the  claims.  —  Houghton  v.  Whitin,  153  Fed.  740;  83  C.  C. 
A.  84. 

§  874.     Broadening  —  Miscellaneous  Rules. 

It  would  seem,  under  the  old  rule  and  former  statute  the  question  of  con- 
struction of  a  reissue,  whether  for  the  same  invention,  was  one  of  fact  for  the 
jury.  —  Battin  v.  Taggart,  58  U.  S.  77;  15  L.  Ed.  37. 

When  challenged  in  a  court  of  justice  as  too  broad,  the  words  "  substan- 
tially as  herein  described  "  may  be  resorted  to  as  qualifying  the  claim.  — 
Burr  v.  Duryee,  68  U.  S.  531 ;   17  L.  Ed.  750. 

Parol  testimony  is  not  admissible  in  an  application  for  a  reissue  to  enlarge 
the  scope  or  effect  beyond  what  was  described,  suggested  or  substantially 
indicated  in  the  original.  —  Union  v.  Vandeusen,  90  U.  S.  530;  23  L.  Ed. 
128. 

The  fact  that  the  patentee  has  not  been  able  to  establish  royalties  on  his 
original  patent,  and  after  four  years  obtained  a  reissue  with  broader  claims 
which  did  not  enable  him  to  establish  such  royalties  does  not  take  the  case 
outside  the  rule  of  reissue  patents.  —  Eby  v.  King,  158  U.  S.  366 ;  39  L.  Ed. 
1018;   15  S.  Ct.  972. 

White  v.  Dunbar,  119  U.  S.  47;  Ives  v.  Sargent,  119  U.  S.  652;  Dunham  v. 
Dennison,  154  U.  S.  103. 

The  drawings  and  descriptions  of  the  two  patents  are  identical,  as  are  all 
the  original  four  claims,  except  the  first,  which,  in  the  reissue,  is  broadened. 
The  scope  of  the  original  patent  is  further  broadened  by  the  addition  of  seven 
new  claims  in  the  reissue.  The  bill  alleges  infringement  of  all  the  claims  of 
the  reissue  patent,  and  the  demurrer  attacks  the  validity  of  the  reissued 
patent  as  a  whole.  We  are  of  opinion  that  the  validity  of  the  claims  in  the 
reissue  which  were  identical  with  those  of  the  original  patent  are  not  affected 
thereby.  —  Rawson  v.  Hunt,  147  Fed.  239;  77  C.  C.  A.  381. 

Walker  on  Pat.  sects.  201,  249;  Gage  v.  Herring,  107  U.  S.  640;  Yale  v.  Sar- 
gent, 117  U.  S.  536;  Leggett  v.  Standard,  149  U.  S.  287;  International  v.  Maurer, 
44  Fed.  618. 


794 


THE   FIXED   LAW   OF   PATENTS 


§§  875-876 


§  875.     Delay  —  Excusable. 

The  decision  of  the  Patent  Office  upon  the  question  of  delay  in  applying 
for  a  reissue  is  not  final.  —  Hoskin  v.  Fisher,  125  U.  S.  217;  31  L.  Ed.  759; 
8  S.  Ct.  834. 

WoUensak  v.  Reiher,  115  U.  S.  96. 

The  fact  that  reissue  was  applied  for  only  13  days  after  the  grant  of  the 
original  patent  does  not  establish  its  validity,  as  held  in  Coon  v.  Wilson, 
113  U.  S.  268.  —  Yale  v.  Berkshire,  135  U.  S.  342;  34  L.  Ed.  168;  10  S.  Ct. 
884. 

Ives  v.  Sargent,  119  U.  S.  652;  Parker  v.  Yale,  123  U.  S.  87. 

The  part  of  a  sentence  which  is  added  in  the  statement  of  the  object  of  an 
invention,  states  nothing  which  was  not  previously  obvious.  The  narrowed 
and  truthful  reissue  is,  therefore,  unobjectionable  except  that  it  was  belated;, 
and  upon  the  point  of  laches  in  obtaining  a  reissue,  the  Federal  courts  are 
now  sensitive.  Delay  in  this  regard  is  obnoxious,  because,  as  a  rule,  individ- 
uals and  the  public  have  acquired,  during  such  delay,  "  adverse  equities 
which  would  be  destroyed  by  a  re-construction  of  a  void  claim."  In  this  case, 
the  adverse  interests,  whatever  they  are,  arose  after  the  termination  of  the 
Gibson  litigation,  and  as  soon  as  they  came  into  being,  they  were  warned  by 
the  reissue  of  the  existence  of  a  patent  which  covered  the  attempted  infringe- 
ment. This  reissue  cannot  be  declared  void  by  reason  of  the  lapse  of  time 
after  the  original  was  issued,  without  establishing  a  new  rule  of  law  upon  the 
subject  of  reissued  patents.  —  Maitland  v.  Goetz,  86  Fed.  124;  29  C.  C.  A. 
607. 

In  this  class  of  cases  there  should  not  be  applied  a  stricter  rule  of  diligence 
than  that  applied  by  statute  in  case  of  public  use  before  application  for  the 
patent,  even  if  so  strict  a  limitation  as  that  is  applicable.  —  Crown  v.  Alumi- 
num, 108  Fed.  845;  48  C.  C.  A.  72. 


§  876.    Delay  —  Fatal. 

The  patent  on  its  face  is  notice  of  defects  therein;  and  unreasonable 
delay  will  render  the  reissue  void.  —  Wollensak  v.  Reiher,  115  U.  S.  96; 
29  L.  Ed.  350;  5  S.  Ct.  1137. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354. 

The  application  for  the  reissue  was  made  nearly  eleven  years  after  the 
original  patent  was  granted,  and  after  machines  effecting  the  shifting  by  other 
means  had  gone  into  use  subsequently  to  the  date  of  the  original  patent,  and 
no  sufficient  excuse  is  given  for  the  laches  and  delay.  —  Brown  v.  Davis,  116 
U.  S.  237;  29  L.  Ed.  659;  6  S.  Ct.  379. 

The  Washington  solicitor  failed  to  claim  the  vital  point  of  the  invention 
although  it  had  been  distinctly  stated  to  him  in  writing.  (As  a  certain  class 
of  patent  solicitors  are  liable  to  do.)  The  omission  was  plain  and  might  have 
been  discovered  by  a  single  reading  of  the  patent.  Held,  that  after  three 
years  and  after  the  event  of  infringement  the  conduct  of  the  Washington 
solicitor  as  an  excuse  for  the  fact  and  their  confidence  in  him  as  an  excuse 
for  the  delay  in  applying  for  the  reissue  was  insufficient.  —  Ives  v.  Sargent, 
119  U.  S.  652;  30  L.  Ed.  544;  7  S.  Ct.  436. 

The  reissue  was  taken  out  seven  years  after  the  original  patent,  and  a  year 
or  two  after  the  patentee  knew  that  the  defendant  was  making  such  an. 


§  876  REISSUES  795 

article  as  is  now  alleged  to  be  infringed  cannot  avail  complainant.  —  Mat- 
thews v.  Ironclad,  124  U.  S.  347;  31  L.  Ed.  477;  8  S.  Ct.  639. 

Unexplained  delay  in  applying  for  a  reissue  is  fatal  to  its  claims.  —  Electric 
v.  Boston,  139  U.  S.  481;  35  L.  Ed.  250;   11  S.  Ct.  586. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Clements  v.  Odorless,  109  U.  S.  641;  Marin  v. 
Harwood,  112  U.  S.  354;  Wollensak  v.  Reiher,  115  U.  S.  96;  Ives  v.  Sargent, 
119  U.  S.  652;    Hoskin  v.  Fisher,  125  U.  S.  217. 

While  it  was  ruled  in  Railway  v.  Sayles,  97  U.  S.  563 ;  Clements  v.  Odorless, 
109  U.  S.  649,  and  Electric  v.  Boston,  139  U.  S.  502,  that  in  cases  of  reissue 
and  enlargement  of  the  claims  could  not  avail  against  patents  granted,  or 
articles  made  and  sold,  between  the  time  of  the  original  application  and  the 
time  of  the  final  granting  of  the  reissued  patent,  it  does  not  cover  a  case  of 
reissue  where  there  were  new  or  different  claims  or  any  substantial  departure 
from  the  claims  first  made.  —  Hillborn  v.  Hale,  69  Fed.  958;  16  C.  C.  A.  569. 

Every  one  is  constructively  bound  with  notice  of  the  issue  of  a  patent,  and, 
if  actual  notice  of  the  original  issue  is  to  be  regarded  as  binding  the  possessor 
of  that  knowledge  with  notice  of  all  possibilities  of  reissue,  consistency 
requires  that  the  same  effect  be  allowed  to  that  constructive  notice  which  all 
are  bound  to  take  of  the  issue  of  a  patent;  and,  this  being  so,  there  can  be  no 
protection  for  intervenors  in  an  act  against  a  subsequent  reissue  of  a  patent, 
except  by  license  or  by  conditions  which  amount  to  an  equitable  estoppel. 
No  such  meaning  is  expressed  in,  or  can  be  fairly  implied  from  the  opinion  in 
Gaskill  v.  Myers.  —  American  v.  Swietusch,  85  Fed.  968;  26  C.  C.  A.  506. 

The  original  patent  was  granted  April  11,  1893.  The  application  for  the 
reissue  was  filed  Sept.  28,  1900.  In  the  meantime  various  persons  had  been 
acting  upon  the  supposed  invalidity  of  the  patent,  which  was  declared  invalid 
by  the  Circuit  Court  of  Appeals  for  the  Second  Circuit  in  July,  1897.  As 
early  as  1895  the  attention  of  the  patentee  was  directly  challenged  to  the 
specifications  of  the  patent,  and  they  were  elaborately  canvassed.  If  any 
error  had  been  committed  in  the  language  employed  or  in  claiming  more  than 
was  new,  it  was  discoverable  then  as  it  ever  became,  unless,  indeed,  a  patentee 
has  the  right  to  await  results  which  the  courts  may  reach  after  prolonged 
litigation  and  examination  of  the  subject.  We  cannot  think  that  a  patentee 
may  thus  experiment  with  his  patent.  On  the  contrary,  we  think  that,  when 
the  grounds  are  disclosed  for  thinking  there  may  be  an  error  or  mistake,  he 
is  bound  in  duty  to  the  public  to  correct  it  by  obtaining  a  reissue  or  to  adhere 
to  his  original  patent;  and,  if  he  declines  to  correct  it,  he  should  be  deemed 
to  be  standing  upon  it  as  the  measure  of  his  right.  —  Milloy  v.  Thomson- 
Houston,  148  Fed.  843;  78  C.  C.  A.  533. 

Section  4916  of  the  Revised  Statutes  authorizes  a  reissue  (quoting  the 
words  of  the  statute).  But  it  has  been  held,  on  grounds  of  public  policy, 
that  this  right  must  be  promptly  exercised  upon  the  discovery  of  the  error.  — 
Milloy  v.  Thomson-Houston,  148  Fed.  843;  78  C.  C.  A.  533. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  White  v. 
Dunbar,  119  U.  S.  47;  Ives  v.  Sargent,  119  U.  S.  652;  Parker  v.  Yale,  123  U.  S. 
87;  Dobson  v.  Lees,  137  U.  S.  258;  WoUensak  v.  Sargent,  151  U.  S.  221;  Walker 
on  Pat.  sec.  227. 

That  where  the  necessity  for  applying  for  a  reissue  became  apparent  from 
a  decision  of  the  circuit  court  of  appeals  on  an  appeal  from  an  interlocutory 
decree  granting  an  injunction,  and  the  complainant  waited  for  over  three 
years  until  the  question  could  be  decided  upon  appeal  from  a  final  decree. 


796  THE    FIXED   LAW   OF   PATENTS  §  877 

Held:  We  think  the  decree  in  question  was,  in  everything  but  name,  a  final 
decree.  The  complainant  could  not  have  received  a  more  definite  or  final 
information  regarding  the  invalidity  of  the  claims.  If  such  reasons  for  delay 
as  are  now  advanced  are  to  be  sanctioned,  the  rights  of  the  public  will  be 
seriously  jeoparded  and  the  door  opened  to  excuses  limited  only  by  the  in- 
genuity of  counsel.  —  Thomson-Houston  v.  Western,  158  Fed.  813  (2d  case); 
86  C.  C.  A.  73. 


§  877.     Delay  —  General  Rules. 

The  reissue  was  not  applied  for  until  nearly  five  years  after  the  date  of 
the  original  patent  and  not  until  another  inventor  had  made  a  substantial 
advance  in  the  art  which  was  sought  to  be  covered  by  the  reissue.  —  Torrent 
v.  Rodgers,  112  U.  S.  659;  28  L.  Ed.  842;  5  S.  Ct.  501. 

Gill  v.  Wells,  22  Wall.  1;  Wood  Paper  Pat.  23  Wall.  568;  Powder  v.  Powder, 
98  U.  S.  126;  Ball  v.  Langles,  102  U.  S.  128;  James  v.  Campbell,  104  U.  S.  356; 
Heald  v.  Rice,  104  U.  S.  737;  Miller  v.  Brass  Co.  104  U.  S.  350;  Johnson  v.  R.  R. 
105  U.  S.  539;  Bantz  v.  Frantz,  105  U.  S.  160;  Wing  v.  Anthony,  106  U.  S.  142; 
Clements  v.  Odorless,  109  U.  S.  641;  McMurray  v.  Mallory,  111  U.  S.  97;  Mahn  v. 
Harwood,  112  U.  S.  354. 

A  patent  cannot  lawfully  be  reissued  for  the  mere  purpose  of  enlarging  the 
claim  unless  there  has  been  a  clear  mistake  inadvertently  committed  in 
the  wording  of  the  claim  and  the  application  for  a  reissue  is  sued  within  a 
reasonably  short  time.  The  granting  of  such  reissues  after  the  lapse  of  long 
periods  of  time  is  an  abuse  of  the  power  and  is  founded  on  a  total  miscon- 
ception of  the  law.  The  rights  of  the  public  here  intervene,  which  are  totally 
inconsistent  with  such  tardy  reissues,  and  the  great  opportunity  and  tempta- 
tion to  commit  fraud  after  any  considerable  lapse  of  time,  when  the  circum- 
stances of  the  original  application  have  passed  out  of  mind,  and  the  monopoly 
has  proved  to  be  of  great  value,  make  it  imperative  on  the  courts,  as  a  dictate 
of  justice  and  public  policy,  to  hold  the  patentees  strictly  to  the  rule  of  rea- 
sonable diligence  in  making  applications  for  this  kind  of  reissues. 

No  precise  limit  of  time  can  be  fixed  and  laid  down  for  all  cases.  The 
courts  will  always  exercise  a  proper  liberality  in  favor  of  the  patentee.  But 
in  any  case  by  such  delay  as  the  court  may  deem  unnecessary  and  unreason- 
able, the  right  to  a  reissue  will  be  regarded  as  having  been  abandoned  and 
lost.  In  Miller  v.  Brass  Co.  by  analogy  to  the  law  of  public  use  before  an 
application  for  a  patent,  we  suggested  that  a  delay  of  two  years  should  be 
construed  equally  favorable  to  the  public.  But  this  was  a  mere  suggestion 
by  the  way  and  was  not  intended  to  lay  down  any  general  rule.  —  Mahn  v. 
Harwood,  112  U.  S.  354;  28  L.  Ed.  665;  5  S.  Ct.  174;  6  S.  Ct.  451. 

Where  the  reissue  is  for  the  purpose  of  expanding  the  claims,  and  a  delay 
of  two  years  or  more  has  taken  place,  which  is  unexplained,  the  question  of 
laches  is  a  question  of  law  arising  on  the  face  of  the  bill,  which  avails  as  a 
defense,  upon  a  general  demurrer,  for  want  of  novelty.  —  Wollensak  v. 
Reiher,  115  U.  S.  96;  29  L.  Ed.  350;  5  S.  Ct.  1137. 

When  the  reissue  expands  the  claims,  a  delay  of  two  years  or  more  in- 
validates the  reissue.  —  Wollensak  v.  Reiher,  115  U.  S.  96;  29  L.  Ed.  350; 
5  S.  Ct.  1137. 

While  no  general  rule  can  be  laid  down,  an  unexcused  delay  of  two  years, 
by  analogy  to  the  law  of  public  use,  will  defeat  a  reissue.  —  Ives  v.  Sargent, 
119  U.  S.  652;  30  L.  Ed.  544;  7  S.  Ct.  436. 

Wollensak  v.  Reiher,  115  U.  S.  96;  Mahn  v.  Harwood,  112  U.  S.  354. 


§  877  REISSUES  797 

When  there  is  delay  of  two  years  or  more  in  applying  for  a  reissue,  the  delay 
unless  excused,  invalidates  the  reissue.  —  Hoskin  v.  Fisher,  125  U.  S.  217; 
31  L.  Ed.  759;  8  S.  Ct.  834. 

Wollensak  v.  Reiher,  115  U.  S.  96. 

The  two  year  rule  explained  and  modified.  —  Topliff  v.  Topliff,  145  U.  S. 
156;  36  L.  Ed.  658;  12  S.  Ct.  825. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Johnson  v.  Flushing,  105  U.  S.  539;  Mahn 
v  Harwood,  112  U.  S.  354;  Matthews  v.  Boston,  105  U.  S.  54;  Bantz  v.  Frantz, 
105  U.  S.  160;  Wing  v.  Anthony,  106  U.  S.  142;  Moffitt  v.  Rogers,  106  U.  S.  423; 
Gage  v.  Herring,  107  U.  S.  640;  Clements  v.  Odorless,  109  U.  S.  641;  McMurray 
v  Mallory,  111  U.  S.  97;  White  v.  Dunbar,  119  U.  S.  47;  Parker  v.  Yale,  123 
U.  S  87;  Coon  v.  Wilson,  113  U.  S.  268;  Wollensak  v.  Reiher,  115  U.  S.  96; 
Electric  v.  Boston,  139  U.  S.  481;  Newton  v.  Furst,  119  U.  S.  373;  Ives  v.  Sargent, 
119  U.  S.  652;  Worden  v.  Searles,  121  U.  S.  14;  Matthews  v.  Iron,  124  U.  S.  347. 

It  is  declared  to  be  settled  that  while  no  invariable  rule  can  be  laid  down, 
a  delay  of  two  years  by  analogy  to  the  law  of  public  use  should  be  construed 
equally  favorably  to  the  public.  —  Wollensak  v.  Sargent,  151  U.  S.  221 ; 
38  L.Ed.  137;   14  S.  Ct.  291. 

Ives  v.  Sargent,  119  U.  S.  652;  Wollensak  v.  Reiher,  115  U.  S.  96;  Mahn  v. 
Harwood,  112  U.  S.  354. 

It  is  fair  to  presume,  therefore,  that  the  reissued  patent  was  applied  for 
and  obtained  because  the  patentee  himself  believed  that  the  claims  of  his 
original  patent,  when  fairly  construed  in  connection  with  other  parts  of  the 
specification,  could  not  be  made  to  embrace  the  new  form  of  pump,  with  a 
chamber  located  above  the  cylinder,  which  had  recently  come  into  use,  and 
that  it  was  necessary  to  alter  certain  parts  of  the  original  specification,  and 
to  recast  the  original  claims,  to  bring  the  new  pump  within  the  terms  of  his 
patent.  If  this  was  not  the  opinion  of  the  patentee,  or  of  those  who  acted  as 
his  advisers,  when  the  reissued  patent  was  taken  out,  then  we  fail  to  see 
what  was  the  purpose  which  induced  the  application  for  the  reissue.  It  is 
a  self-evident  proposition  that  the  invention  related  to  a  simple  structure, 
that  it  was  clearly  described  in  the  original  patent,  as  issued,  was  neither 
inoperative  nor  invalid  by  reason  of  any  defect  or  insufficiency  of  the  speci- 
fication, but  undoubtedly  secured  to  the  patentee  the  exclusive  right  to  manu- 
facture the  kind  of  pump  which  he  had  described  in  his  specification,  and 
illustrated  in  his  drawings.  In  short,  if  there  was  a  substantial  defect  in 
the  original  specification,  it  consisted  in  the  fact  that  it  was  not  so  drawn 
as  to  bring  within  its  claims  another  kind  of  pump,  that  had  come  into  use 
subsequent  to  the  date  of  the  original  patent,  which  the  patent  might  have 
been  made  to  cover,  if  the  patentee  had  foreseen  the  later  mode  of  construc- 
tion. For  these  reasons,  and  especially  in  view  of  the  conduct  of  the  patentee 
in  applying  for  a  reissue  when  there  was  no  occasion  for  such  application, 
unless  he  intended  to  enlarge  the  scope  of  his  patent,  we  concur  in  the 
conclusion  reached  by  the  trial  court  touching  the  construction  of  the 
claims  of  the  original  Bean  patent,  and  we  further  concur  in  the  view  that  the 
claims  of  that  patent  were  expanded  in  the  reissue. 

We  are  constrained  to  believe  that  the  expansion  of  the  claims  of  the 
original  patent  was  the  sole  purpose  of  applying  for  a  reissue. 

It  is  not  an  insuperable  objection  to  the  validity  of  a  reissued  patent  that 
the  original  claims  have  been  -enlarged  in  the  reissue.  Under  some  cir- 
cumstances, it  is  doubtless  true  that  a  patent  may  be  reissued  in  such  a  form 
as  to  extend  its  scope.  But  it  has  been  held  repeatedly  that,  to  warrant  such 
reissues,  they  must  be  applied  for  promptly,  and  that  the  application  for 
the  reissue  must  be  accompanied  with  satisfactory  proof  that,  solely  through 


798  THE   FIXED   LAW   OF   PATENTS  §§  878-880 

accident  or  mistake,  the  patentee  did  not  originally  obtain  all  that  he  was 
fairly  entitled  to.  —  Mast  v.  Iowa,  76  Fed.  816;  22  C.  C.  A.  586. 

Miller  v  Brass  Co.  104  U.  S.  350;  Mahn  v.  Harwood,  112  U.  S.  354;  Coon  v. 
Wilson,  113  U.  S.  268;  Parker  v.  Yale,  123  U.  S.  87;  Huber  v.  Mfg.  Co.  148  U.  S. 
270;    Peoria  v.  Cleveland,  58  Fed.  227. 

§  878.     Delay  —  Intervening  Rights. 

Where  complainant  delayed  six  months,  and  in  the  meantime  the  subject 
of  the  reissue  claims  has  gone  into  general  use,  such  reissue  is  an  attempt  to 
cover  what  had  come  into  general  use  by  others,  and  is  therefore  void.  — 
Parker  v.  Yale,  123  U.  S.  87;  31  L.  Ed.  100;  8  S.  Ct.  38. 

Mahn  v.  Harwood,  112  U.  S.  354;  Coon  v.  Wilson,  113  U.  S.  268;  Ives  v.  Sargent, 
119  U.  S.  652. 

We  have  here  the  case  of  an  application  for  the  reissue  of  a  patent  made 
after  an  acquiescence  of  more  than  12  years.  The  public  had  been  freely 
using  the  devices.  Upon  the  facts  disclosed  by  this  record,  it  seems  to  us 
that,  even  if  the  first  claim  of  the  reissue  were  otherwise  sustainable,  yet  it 
must  be  held  to  be  invalid  in  view  of  the  intervening  private  and  public 
rights  which  have  sprung  up,  and  the  unreasonable  delay  in  the  application  for 
the  reissue.  —  Horn  v.  Pelzer,  91  Fed.  665 ;  34  C.  C.  A.  45. 

Miller  v.  Brass  Co.  104  U.  S.  350;  Ives  v.  Sargent,  119  U.  S.  652;  Eby  v.  King, 
158  U.  S.  366;  Hubel  v.  Dick,  28  Fed.  132;  Peoria  v.  Cleveland,  58  Fed.  227; 
Machine  Co.  v.  Searles,  SO  Fed.  82. 

The  case  would  be  different  if  Painter  had  unreasonably  delayed  to  assert 
his  rights  to  reissue  after  such  notice  was  brought  home  to  him,  and  where 
his  silence  and  inaction  had  misled  other  parties  to  their  injury;  and  the  fact 
that  the  original  patent  contained  a  statement  of  his  invention  which  covered 
the  subject  matter  of  the  reissued  claim,  and  that  a  reissue  to  fully  secure  the 
invention  disclosed  was  authorized  by  law,  was  sufficient  notice  that  this 
patent  was  subject  to  such  right  of  reissue,  which  right  was  liable  to  be 
exercised  at  any  time  at  least  within  two  years.  —  Crown  v.  Aluminum  108 
Fed.  845;  48  C.  C.  A.  72. 

§  879.     Delay  —  Miscellaneous  Rules. 

The  question  whether  the  delay  has  been  reasonable  or  unreasonable  is 
for  the  court  to  determine;  and  it  cannot  substitute  the  decision  of  the 
patent  office  for  its  own.  —  Wollensak  v.  Reiher,  115  U.  S.  96;  29  L.  Ed. 
350;  5S.  Ct.  1137. 

The  question  of  delay  in  applying  for  a  reissue  is  a  question  of  law  for 
the  court.  —  Hoskin  v.  Fisher,  125  U.  S.  217;  31  L.  Ed.  759;  8  S.  Ct.  834. 
Wollensak  v.  Reiher,  115  U.  S.  96. 

§  880.     Decisions  of  Commissioner. 

Where  the  commissioner  accepts  a  surrender  of  an  original  patent  and 
grants  a  new  patent,  his  decision  in  the  premises,  in  a  suit  for  infringement, 
is  final  and  conclusive,  and  is  not  re-examinable  in  such  a  suit  in  the  circuit 
court  unless  it  is  apparent  upon  the  face  of  the  patent  that  he  has  exceeded 
his  authority,  that  there  is  such  a  repugnancy  between  the  old  and  the  new 
patent,  that  it  must  be  held,  as  matter  of  legal  construction,  that  the  new 
patent  is  not  for  the  same  invention  as  that  embraced  and  secured  in  the 
original  patent.  —  Seymour  v.  Osborne,  78  U.  S.  516;   20  L.  Ed.  33. 

Battin  v.  Taggart,  17  How.  83;  O'Reilly  v.  Morse,  15  How.  Ill;  Sickes  v. 
Evans,  2  Cliff.  222;  Allen  v.  Blunt,  3  Story,  744. 


§  880  REISSUES  799 

The  action  of  the  Commissioner  is  final  except  as  to  matters  of  legal 
construction.  —  Union  v.  Vandeusen,  90  U.  S.  530;  23  L.  Ed.  128. 

The  action  of  the  commissioner  is  final  as  to  question  of  fraud.  —  Brown 
v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

The  Commissioner  of  Patents  has  no  jurisdiction  to  grant  a  reissue  for  any- 
other  or  different  invention  than  that  of  the  original.  —  Ball  v.  Langles, 
102  U.  S.  128;  26  L.  Ed.  104. 

We  think  it  is  a  serious  question  whether  the  Commissioner  of  Patents  had 
any  jurisdiction,  under  R.  S.  4916,  to  consider  the  application  upon  the  bare 
statement  that  the  patentee  desired  to  surrender  his  patent  and  obtain  a 
reissue.  The  Commissioner  is  authorized  to  reissue  patents  in  certain  speci- 
fied cases,  and  if  the  petition  makes  no  pretense  of  setting  forth  facts  entitling 
the  patentee  to  a  reissue,  it  is  exceedingly  doubtful  whether  he  obtain  any 
jurisdiction  to  act  at  all.  —  Eby  v.  King,  158  U.  S.  366;  39  L.  Ed.  1018; 
15  S.  Ct.  972. 

In  the  case  under  consideration  the  examiner  acted  upon  the  application 
as  if  it  were  a  new  proceeding,  and  dealt  with  it  as  the  evidence  before  him 
seemed  to  warrant,  but  his  action  in  rejecting  some  of  the  claims  which  had 
been  repeated  from  the  original  patent  did  not  affect  the  patent.  It  is  true 
that  it  was  within  his  power  to  reject  any  claims  contained  in  the  application 
for  a  reissue  which  he  judged  to  be  invalid,  whether  contained  in  the  original 
patent  or  not.  It  is  also  true  that  the  reasons  given  for  the  rejection  of  such 
claims  might  apply  equally  to  the  same  claims  contained  in  the  original 
patent,  but  with  respect  to  such  claims  he  was  functus  officio.  His  opinion 
thereon  was  but  his  personal  opinion,  and,  however  persuasive  it  might  be, 
did  not  oust  the  jurisdiction  of  any  court  to  which  the  owner  might  apply 
for  an  adjudication  of  his  rights,  and,  as  the  examiner  had  no  authority  to 
affect  the  claims  of  the  original  patent,  no  appeal  was  necessary  from  his 
decision.  —  McCormick  v.  Aultman,  169  U.  S.  606;  42  L.  Ed.  875;  18  S.  Ct. 
443. 

If  by  reason  of  any  inadvertence  or  mistake  in  the  drawings  or  specifica- 
tions a  patent  is  rendered  in  part  inoperative,  and  the  patentee  promptly 
applies  for  a  reissue  and  no  substantial  rights  are  affected,  or  fraudulent 
intent  charged,  we  think  the  commissioner  has  the  right,  under  section 
4916  R.  S.,  to  cause  a  new  patent  to  issue,  and  that  under  the  circumstances, 
his  decision  is  conclusive.  We  know  of  no  authority  in  conflict  with  this 
proposition.  —  Beach  v.  Hobbs,  92  Fed.  146;  36  C.  C.  A.  248. 

It  is  said  that  the  legal  conclusion  is  closed  in  favor  of  the  appellants, 
because  it  must  be  presumed  that  before  the  reissue  was  issued,  there  was 
before  the  Patent  Office  satisfactory  evidence  that,  but  for  the  inadvertence 
or  mistake,  the  original  letters  would  have  taken  the  form  that  the  reissue  now 
employs.  That  some  such  presumption  properly  attaches  itself  to  the  reissue 
patent  we  may  admit.  At  most,  however,  it  is  a  prima  facie  presumption 
only.  It  is  not  a  presumption  that  debars  appellant  from  challenging  the 
validity  of  the  issue  by  showing  facts  that  would  overcome  the  presumption. 
The  reissue  is  before  us  just  as  it  was  before  the  Patent  Office  before  it  was 
allowed,  except  that  while  the  burden  of  proof  then  was  upon  the  appellants, 
the  burden  is  now  upon  the  appellees.  —  Franklin  v.  Illinois,  138  Fed.  58; 
70  C.  C.  A.  484. 


800  THE   FIXED   LAW   OF   PATENTS  §§881-883 

§  88 1.     Different  Invention. 

A  patent  issued  for  a  process  cannot  be  reissued  for  a  machine.  —  Heald 
v.  Rice,  104  U.  S.  737;  26  L.  Ed.  910. 
Powder  v.  Powder,  98  U.  S.  134. 

He  entitled  his  original  patent  as  for  a  new  and  useful  machine,  while 
with  equal  explicitness,  in  his  reissue,  he  declared  that  he  had  invented  a 
new  and  improved  process.  This  is  at  least  a  prima  facie  departure  from  the 
original  patent  which  would  seem  to  be  serious,  if  not  fatal,  under  a  law  which 
limits  the  power  of  the  Commissioner  of  Patents  so  as  to  issue  a  new  patent 
only  for  the  same  invention.  —  Eachus  v.  Broomall,  115  U.  S.  429;  29  L. 
Ed.  419;  6S.  Ct.  229. 

Powder  v.  Powder,  98  U.  S.  126. 

Where  the  original  patent  was  for  a  process  and  the  reissue  was  for  the 
article  of  manufacture,  the  new  article  of  manufacture  is  a  product  which 
results  from  the  use  of  the  process  described  in  the  patent,  and  not  one  which 
may  be  produced  in  any  other  way.  —  Plummer  v.  Sargent,  120  U.  S.  442; 
30  L.  Ed.  737;  7  S.  Ct.  640. 

§  882.     Disclaimer. 

It  is  not  competent  for  the  patentee  or  his  assignee,  by  merely  disclaiming 
all  the  changes  made  in  the  reissue  patent,  to  revive  and  restore  the  original 
patent.  This  could  be  done  only,  if  it  could  be  done  at  all,  by  surrender 
of  the  reissued  patent  and  the  grant  of  another  reissue.  —  McMurray  v. 
Mallory,  111  U.  S.  97;  28  L.  Ed.  365;  4  S.  Ct.  375. 

We  do  not  think  that  the  reissued  patent  as  it  stood  after  the  filing  of  the 
disclaimer,  was  open  to  the  objection  that  it  was  not  for  the  same  invention 
as  that  of  the  original  patent.  Whatever  there  was  of  objectionable  matter 
inserted  in  the  specification  or  the  first  claim  of  the  reissue,  when  it  was 
granted,  was  removed  by  the  disclaimer.  The  reissue  was  granted  within 
ten  months  of  the  original.  The  single  claim  of  the  original  patent  was 
repeated  in  the  reissue  as  the  second  claim  of  the  latter;  and  the  first  claim  of 
the  reissue,  as  it  stood  after  the  disclaimer  did  not  expand  beyond  the  claim 
of  the  original  what  was  claimed  in  the  reissue.  —  Hurlbut  v.  Schillinger,  130 
U.  S.  456;  32  L.  Ed.  1011;  9  S.  Ct.  584. 

§  883.     General  Rules. 

Patents,  when  inoperative  or  invalid,  may  in  certain  cases,  be  surrendered 
and  reissued ;  but  the  new  patent  in  such  case  must  be  for  the  same  inven- 
tion as  the  original  patent;  and  if  it  is  for  a  different  invention,  the  reissue 
is  invalid,  for  the  reason  that  it  was  granted  without  authority  of  law.  — 
Marsh  v.  Seymour,  97  U.  S.  348;  24  L.  Ed.  963. 

Sec.  4916  construed  in  Powder  v.  Powder,  98  U.  S.  126;  25  L.  Ed.  77. 

Reissued  letters  patent  must  be  for  the  same  invention  as  that  secured 
in  the  original  patent.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 
Seymour  v.  Osborne,  11  Wall.  546. 

The  general  rules  are,  (1)  that  the  reissue  cannot  cover  another  invention 
than  that  of  the  original;  (2)  that  the  reissue  cannot  recover  what  was 
described  but  not  claimed  after  long  delay ;  (3)  that  while  a  reissue  claim  may 
be  enlarged,  it  can  be  done  only  when  actual  mistake  has  occurred  and  then 


§  883  REISSUES  801 

only  without  delay;  (4)  that  in  reissues  for  enlarging  the  scope  of  a  patent, 
the  rule  of  laches  should  be  rigidly  applied;  (5)  that  the  general  purpose  of 
the  statute  providing  for  reissues  was  to  correct  mistakes  and  errors,  and  not 
to  enable  the  inventor  from  time  to  time  to  extend  his  monopoly  so  as  to 
cover  progress  by  others  in  his  art.  —  Miller  v.  Brass  Co.  104  U.  S. 
350;  26  L.  Ed.  783. 

The  case  of  Gage  v.  Herring,  107  U.  S.  640,  holds  that  the  invalidity  of 
a  new  claim  in  a  reissue  does  not  impair  the  validity  of  a  claim  in  it  which 
is  only  a  repetition  and  separate  statement  of  a  claim  in  the  original  patent. 
It  also  holds  that  a  reissue  patent  is  within  the  letter  and  spirit  of  sections 
4917  and  4922;  and  that  where  a  defendant  has  infringed  such  a  restated 
valid  claim  of  a  reissue,  the  plaintiff,  on  filing  a  disclaimer  of  the  new  and 
invalid  claims  of  the  reissue,  may  have  a  decree,  without  costs,  for  the  in- 
fringement of  such  valid  claim,  where  there  has  been  no  unreasonable  delay 
in  entering  the  disclaimer.  —  Yale  v.  Sargent,  117  U.  S.  536;  29  L.  Ed.  954; 
6  S.  Ct.  934. 

Reissues  are  subject  to  the  following  qualifications: 

1.  That  it  shall  be  for  the  same  invention  as  the  original  patent,  as  such 
invention  appears  from  the  specification  and  claims  of  such  original. 

2.  That  due  diligence  must  be  exercised  in  discovering  the  mistake  in 
the  original  patent,  and  that,  if  it  be  sought  for  the  purpose  of  enlarging  the 
claim,  the  lapse  of  two  years  will  ordinarily,  though  not  always,  be  treated 
as  evidence  of  an  abandonment  of  the  new  matter  to  the  public  to  the  same 
extent  that  a  failure  by  the  inventor  to  apply  for  a  patent  within  two  years 
from  the  public  use  or  sale  of  his  invention  is  regarded  by  the  statute  as  con- 
clusive evidence  of  an  abandonment  of  the  patent  to  the  public. 

3.  That  this  court  will  not  review  the  decision  of  the  Commissioner  upon 
the  question  of  inadvertence,  accident  or  mistake,  unless  the  matter  is  mani- 
fest from  the  record ;  but  that  the  question  whether  the  application  was  made 
within  a  reasonable  time  is,  in  most,  if  not  in  all  such  cases,  a  question  of 
law  for  the  court.  —  Topliff  v.  Topliff ,  145  U.  S.  156 ;  36  L.  Ed.  658 ;  12  S.  Ct. 
825. 

It  is  a  mistake  to  suppose  that  the  case  was  intended  to  settle  the  principle 
that,  under  no  circumstances,  would  a  reissue  containing  a  broader  claim  than 
the  original  be  supported.  We  have  no  desire  to  modify  in  any  respect  the 
views  expressed  in  that  and  subsequent  cases.  There  is  no  doubt  as  was  said 
in  Giant  v.  California,  98  U.  S.  126,  that  a  reissue  can  be  granted  only  for 
the  same  invention  which  formed  the  subject  for  the  original,  since  the  ex- 
press words  of  the  Act  are  "  a  new  patent  for  the  same  invention."  The 
specification  may  be  amended  so  as  to  make  it  more  clear  and  distinct ;  the 
claim  may  be  modified  so  as  to  make  it  more  conformable  to  the  exact  rights 
of  the  patentee,  but  the  invention  must  be  the  same.  —  Topliff  v.  Topliff, 
145  U.  S.  156;  36  L.  Ed.  658;  12  S.  Ct.  825. 

Explaining  and  limiting,  Miller  v.  Brass  Co.  104  U.  S.  350;  Giant  v.  California, 
98  U.  S.  126. 

The  plain  purpose  of  this  section  is  to  give  the  patentee  an  opportunity  to 
make  valid  and  operative  that  which  was  before  invalid  and  inoperative,  — 
invalid,  because  it  claimed  as  new  that  which  had  been  previously  invented 
or  used  by  the  public;  inoperative  because  the  specification  was  defective  or 
insufficient.  New  matter  cannot  be  introduced,  nor  can  the  scope  of  the 
invention  be  enlarged.  All  that  the  applicant  can  do  is  to  so  amend  his 
patent  as  to  enable  him  to  receive  some  practical  and  beneficial  result  from 
his  actual  invention,  of  which  he  had  been  deprived  by  defects  or  omissions 


802  THE    FIXED   LAW   OF    PATENTS  §§  884-885 

in  the  original  patent.  The  object  of  a  patentee  applying  for  a  reissue  is  not 
to  reopen  the  question  of  the  validity  of  the  original  patent,  but  to  rectify 
any  error  which  may  have  been  found  to  have  arisen  from  inadvertence  or 
mistake.  But  until  the  amended  patent  shall  have  been  issued  the  original 
stands  precisely  as  if  a  reissue  had  never  been  applied  for.  —  McCormick  v. 
Aultman,  169  U.  S.  606;  42  L.  Ed.  875;  18  S.  Ct.  443. 
Allen  v.  Culp,  166  U.  S.  501. 

§  884.     Grounds  for. 

When  a  patent  was  granted  to  the  wrong  person,  an  action  by  the  rightful 
inventor  will  lie  to  compel  a  surrender  and  reissue.  —  Appleton  v.  Bacon, 
67  U.  S.  699;  17  L.  Ed.  338. 

Where  the  applicant  has  been  led  into  an  error  or  mistake  by  the  com- 
missioner it  was  ground  for  a  reissue.  —  Morey  v.  Lockwood,  75  U.  S.  230; 
19  L.  Ed.  339. 

Now  whilst,  as  before  stated,  we  do  not  deny  that  a  claim  may  be  enlarged 
in  a  reissued  patent,  we  are  of  opinion  that  this  can  only  be  done  when  an 
actual  mistake  has  occurred ;  not  from  a  mere  error  of  judgment,  for  that  may 
be  rectified  by  appeal,  but  a  real  bona  fide  mistake,  inadvertently  committed; 
such  as  a  court  of  chancery  in  cases  within  its  ordinary  jurisdiction  will 
correct.  —  Miller  v.  Brass  Co.  104  U.  S.  350;  26  L.  Ed.  783. 

The  patent  has  been  the  subject  of  an  earnest  contest  in  the  Patent  Office 
for  four  years;  had  been  put  in  interference  with  five  other  devices,  and  it 
was  scarcely  possible  that,  after  this  long  litigation,  the  patentee  "should  not 
have  detected  defects  in  his  original  application,  and  have  taken  this  oppor- 
tunity of  correcting  them.  His  experience  in  this  litigation  had  doubtless 
appraised  him  of  the  weak  points  in  his  prior  specification  and  claims,  and  it 
was  perfectly  competent  for  him  to  restate  them,  provided  his  patent  was  not 
essentially  broadened  to  cover  intervening  devices.  —  Hobbs  v.  Beach,  180 
U.  S.  383;  45  L.  Ed.  586;  21  S.  Ct.  409. 

Defendant's  argument  against  the  validity  of  the  reissue  is  ingenious,  but 
the  facts  are  plain,  and  not  unusual.  The  device  of  the  specification  was 
recognized  as  an  invention  by  the  manufacturers  of  lighting  fixtures.  They 
became  licensees,  and  the  patent  was  acquiesced  in  and  respected  for  a  number 
of  years.  The  Gibson  litigation  showed  that  the  principal  claim  was  fatally 
loose  in  the  opinion  of  both  the  circuit  and  appellate  courts.  It  was  reissued 
so  as  to  make  the  claim  correspond  with  and  be  limited  to  the  description 
in  the  specification.  The  claim  was  narrowed  but  narrowed  to  conform  to 
the  specification,  and  to  state  the  same  invention  which  it  had  described. 
The  reissue  is  not  one  of  the  class  of  reissues  of  which  Machine  Co.  v.  Searle, 
60  Fed.  82,  is  an  example,  which  pretend  to  narrow  a  claim  but  which  in 
fact  describe  an  invention  of  an  independent  character  and  one  which  the 
patentee  either  did  not  make  or  omitted  to  describe,  but  which  he  now  finds 
"  lurking  "  somewhere  in  the  structure.  —  Maitland  v.  Goetz,  86  Fed.  124; 
29  C.  C.  A.  607. 

§  885.     Inadvertence,  Accident,  or  Mistake. 

The  applicant  obtained  his  original,  Apr.  14,  1863.  He  obtained  his  first 
reissue  Aug.  23,  1864.  He  obtained  his  second  reissue  Aug.  3,  1869.  He 
obtained  his  fourth  reissue  Oct.  4,  1870.  The  invention  was  a  simple  stamp 
cancelling  tool.  The  court  held  that  in  view  of  the  simplicity  of  the  patent 
on  the  one  hand  and  in  view  of  the  remarkable  efforts  of  the  inventor  to  make 


§  885  REISSUES  803 

his  patent  cover  all  future  improvements  from  time  to  time,  he  had  forfeited 
his  right  to  what  he  had  originally  invented. 

For  a  sharp  rebuke  to  designing  reissue  applicants,  see  this  case.  —  James 
v.  Campbell,  104  U.  S.  356;  26  L.  Ed.  786. 

An  error  due  to  inadvertence  or  mistake  apparent  on  the  face  of  the  patent 
may  be  cured  by  prompt  surrender  and  reissue,  but  such  a  right  will  be 
abandoned  by  unreasonable  delay.  —  Miller  v.  Brass  Co.  104  U.  S.  350;  26 
L.  Ed.  783. 

Two  applicants  some  nine  years  after  issue  discover  that  their  solicitor 
has  "  mixed  those  children  up,"  the  claims  of  the  one  being  issued  to  the 
other.  Therefore  they  obtained  a  reissue  separately.  Held,  that,  (1)  As 
to  the  patent  receiving  the  broadened  claim  under  the  reissue,  it  is  void  under 
the  rule  of  Miller  v.  Brass  Co.  104  U.  S.  350;  and  (2)  that  as  to  the  patent 
disclaiming  the  broader  claims,  that  it  covered  as  limited  only  a  mechanical 
improvement  upon  the  other.  —  Hartshorn  v.  Saginaw,  119  U.  S.  664; 
30  L.  Ed.  539;  7  S.  Ct.  421. 

The  misapprehension  of  the  applicant  as  to  the  efficiency  of  a  claim  does 
not  amount  to  inadvertence,  accident  or  mistake.  —  Yale  v.  James,  125 
U.  S.  447;  31  L.  Ed.  807;  8  S.  Ct.  967. 

Swain  v.  Ladd,  102  U.  S.  408. 

An  alleged  error  of  "  omission  of  claims  "  where  it  was  evident  that  the 
"  error  "  was  discovered  in  subsequent  inventions  is  not  ground  for  reissue. 
—  Electric  v.  Boston,  139  U.  S.  481;  35  L.  Ed.  250;  11  S.  Ct.  586. 

Clements  v.  Odorless,  109  U.  S.  641;  Mahn  v.  Harwood,  112  U.  S.  354;  Coon  v. 
Wilson,  113  U.  S.  268;  Newton  v.  Furst,  119  U.  S.  373;  Worden  v.  Searles,  121 
U.  S.  14;  Matthews  v.  Iron,  124  U.  S.  347. 

If  the  petition  does  not  set  forth  grounds  for  reissue  under  R.  S.  4916  the 
Commissioner  does  not  acquire  jurisdiction.  —  Eby  v.  King,  158  U.  S.  366; 
39  L.Ed.  1018;  15  S.  Ct.  972. 

There  are  cases  in  which  the  description  of  an  invention,  and  the  claims 
sought  to  be  founded  upon  it,  by  the  applicant  for  a  patent,  are  so  plain  and 
unequivocal  upon  the  face  of  the  application  itself,  that  the  judicial  mind 
cannot  be  convinced  that  he  intended  to  describe  and  claim  any  other 
invention  than  that  for  which  the  patent  was  granted;  and  in  such  cases  the 
courts  ought  not  to  hesitate  to  review  the  decision  of  the  commissioner  upon 
the  question  of  inadvertence,  accident  or  mistake,  and  should  refuse  to  be 
bound  by  it  when  the  record  upon  the  application  for  the  reissue  discloses  that 
no  explanatory  facts  or  circumstances,  adequate  to  account  for  the  error, 
were  brought  to  his  attention.  —  Featherstone  v.  Bidwell,  57  Fed.  631 ; 
6  C.  C.  A.  487. 

With  respect  to  the  proof  of  inadvertence,  accident  or  mistake,  the  action 
of  the  commissioner  is  conclusive ,  if  there  is  any  evidence  before  him  tending 
to  show  such  accident,  inadvertence  or  mistake,  as  will,  in  law,  warrant  a 
reissue.  With  respect  to  whether  the  original  patent  is  inoperative  and 
defective,  the  court  has  always  reserved  the  right  to  review  the  action  of  the 
commissioner.  If  it  shall  appear  from  an  examination  of  the  new  and  old 
patents  that  the  old  patent  was  not  defective  or  inoperative  but  was  for  a 
complete  invention,  and  that  the  reissue  was  taken  out  to  secure  another  and 
different  invention,  lurking  in  the  mechanical  arrangement  of  parts,  the 
Supreme  Court  has  always  held  the  reissue  void.    Parker  v.  Yale,  123  U.  S. 


804  THE    FIXED    LAW    OF    PATENTS  §§  886-887 

87.  Again,  if  an  examination  of  the  patent  office  record  discloses  that  there 
was  no  evidence  before  the  commissioner  of  accident,  inadvertence  or  mis- 
take, such  as  to  warrant  him  in  reissuing  the  patent,  or  that  there  was  record 
evidence  of  a  conclusive  character,  showing  that  there  could  have  been  no 
accident,  inadvertence  or  mistake,  the  Supreme  Court  has  not  hesitated  to 
hold  a  reissue  void.  —  Peoria  v.  Cleveland,  58  Fed.  227 ;  7  C.  C.  A.  197. 

Huber  v.  Mfg.  Co.  148  U.  S.  270;    Huber  v.  Mfg.  Co.  38  Fed.  836;    Mahn  v. 
Harwood,  112  U.  S.  354. 


§  886.     Scope  of. 

If  he  were  the  author  of  any  other  invention  than  that  which  he  specifically 
describes  and  claims,  though  he  might  have  asked  to  have  it  patented  at  the 
same  time  and  in  the  same  patent,  yet  if  he  had  not  done  so,  and  afterwards 
desired  to  secure  it,  he  is  bound  to  make  a  new  and  distinct  application  for 
that  purpose,  and  make  it  the  subject  of  a  new  and  different  patent.  When 
a  patent  fully  and  clearly,  without  ambiguity  or  obscurity,  describes  and 
claims  a  specific  invention,  complete  in  itself,  so  that  it  cannot  be  said  to  be 
inoperative  or  invalid  by  reason  of  a  defective  or  insufficient  specification, 
a  reissue  cannot  be  had  for  the  purpose  of  expanding  and  generalizing  the 
claim  so  as  to  make  it  embrace  an  invention  not  described  and  specified  in 
the  original.  —  James  v.  Campbell,  104  U.  S.  356;  26  L.  Ed.  786. 

Burr  v.  Duryee,  68  U.  S.  577;   Miller  v.  Brass  Co.  104  U.  S.  350. 

It  would  seem  on  the  authority  of  the  Goodyear  vulcanized  India  rubber 
patent  that  a  patent  covering  only  the  process,  where  both  process  and 
product  were  new,  may  be  reissued  to  cover  both  process  and  product.  — 
James  v.  Campbell,  104  U.  S.  356;  26  L.  Ed.  786. 

It  is  clearly  to  be  understood,  from  the  entire  language,  that  the  things  to 
be  included  are  only  the  things  which  properly  belonged  to  the  invention  as 
embodied  in  the  original  patent;  that  what  the  invention  was  is  to  be  ascer- 
tained by  consulting  the  original  patent ;  and  that,  while  the  new  description 
may  properly  contain  things  which  are  indicated  in  the  original  specification, 
drawings  or  patent  office  model  (though  not  sufficiently  described  in  the 
original  specification)  it  does  not  follow  that  what  was  indicated  in  the 
original  specification,  drawings  or  patent  office  model  is  to  be  considered  as 
a  part  of  the  invention,  unless  the  court  can  see,  from  a  comparison  of  the 
two  patents,  that  the  original  patent  embodied,  as  the  invention  intended 
to  be  secured  by  it,  what  the  claims  of  the  reissue  are  intended  to  cover.  — 
Parker  v.  Yale,  123  U.  S.  87;  31  L.  Ed.  100;  8  S.  Ct.  38. 

It  is  well  settled  that  no  construction  can  be  given  to  the  claims  of  the 
reissue  involved  in  this  suit  which  will  include  what  was  'covered  by  the 
rejected  claims  under  either  the  original  or  reissue  applications.  —  Fox  v. 
Perkins,  52  Fed.  205 ;   3  C.  C.  A.  32. 

Shepard  v.  Carrigan,  116  U.  S.  597;  Sutter  v.  Robinson,  119  U.  S.  530;  Dobson 
v.  Lees,  137  U.  S.  258;  Roemer  v.  Peddie,  132  U.  S.  313. 


§  887.     Surrender  —  Effect  of. 

A  surrender  of  the  patent  within  the  sense  of  the  provision  means,  an  act 
which,  in  judgment  of  law,  extinguishes  the  patent.  It  is  a  legal  cancella- 
tion of  it  and  hence  can  no  more  be  the  foundation  for  the  assertion  of  a  right 
after  the  surrender  than  could  a  repealed  act  of  Congress.  —  Moffitt  v.  Garr, 
66  U.  S.  273;   17  L.  Ed.  207. 


§  887  REISSUES  805 

The  surrender  of  a  patent  extinguishes  pending  suits.  —  Moffitt  v.  Garr,  66 
U.S.  273;  17  L.  Ed.  207. 

Surrenders  take  effect  when  the  amended  patent  is  issued,  and  from  that 
time  the  original  patent  ceases  to  be  operative  as  a  franchise  to  vest  in  the 
patentee  the  exclusive  right  to  make  and  use  the  invention,  and  vend  the 
same  to  others  to  be  used.  —  Reedy  v.  Scott,  90  U.  S.  352;  23  L.  Ed.  109. 

Surrendered  patents  cease  to  be  operative  when  the  new  patent  is  issued; 
from  which  it  follows  that  such  a  patent,  after  the  surrender,  is  not  the  proper 
foundation  for  an  action  to  recover  either  damages  or  profits  for  the  in- 
fringement of  the  invention.  —  Reedy  v.  Scott,  90  U.  S.  352;  23  L.  Ed.  109. 

The  surrender  of  the  patent  in  suit  after  final  judgment  and  decree  does 
not  affect  the  judgment  or  decree.  —  Mevs  v.  Conover,  131  U.  S.  cxlii,  app.; 
23  L.  Ed.  1008. 

A  patent  after  it  is  surrendered  cannot  be  the  foundation  of  any  suit. 
The  surrender  of  a  patent  pendente  lite  dismisses  the  suit.  —  Meyer  v. 
Pritchard,  131  U.  S.  ccix,  app.;   23  L.  Ed.  961. 

Moffitt  v.  Garr,  1  Black,  282;  Reedy  v.  Scott,  90  U.  S.  352;  Cleveland  v.  Cham- 
berlain, 1  Black,  426;  Lord  v.  Veazie,  8  How.  255. 

Under  the  Act  of  1837  the  surrender  of  a  patent  for  the  purpose  of  a  reissue 
extinguished  the  original  and  all  rights  or  claims  thereunder.  —  Peck  v. 
Collins,  103  U.  S.  660;   26  L.  Ed.  512. 

A  void  reissue  does  not  affect  original  application  on  which  patent  was 
granted.  —  Washburn  v.  Beat  Em  All,  143  U.  S.  275;  36  L.  Ed.  154;  12 
S.  Ct.  443. 

Where  a  patent  has  been  surrendered  and  reissued,  and  such  reissue  is  held 
void,  the  patentee  cannot  proceed  under  his  original  patent  nor  recover 
damages  thereunder.  —  Eby  v.  King,  158  U.  S.  366 ;  39  L.  Ed.  1018 ;  15 
S.  Ct.  972. 

Moffitt  v.  Garr,  66  U.  S.  273;  Reedy  v.  Scott,  90  U.  S.  352;  Peck  v.  Collins, 
103  U.  S.  660;  McMurray  v.  Mallory,  111  U.  S.  97;  Gage  v.  Herring,  107  U.  S.  640. 

It  is  true  that  in  making  his  surrender  the  patentee  declares  that  his 
patent  is  inoperative  and  invalid;  but  this  is  not  necessarily  so  for  all  pur- 
poses, but  for  the  purpose  for  which  he  desires  to  have  it  reissued.  Such  a 
patent  might  be  inoperative  and  invalid  as  against  certain  persons  who  had 
pirated  the  underlying  principle  of  the  patent,  and  avoided  infringing  the 
exact  language  of  the  claim,  and  yet  be  perfectly  valid  as  against  others 
who  were  making  machines  clearly  covered  by  their  language.  —  Allen  v. 
Culp,  166  U.  S.  501 ;  41  L.  Ed.  1093;  17  S.  Ct.  644. 

When  a  patent  is  thus  surrendered  there  can  be  no  doubt  that  it  continues 
to  be  a  valid  patent  until  it  is  reissued,  when  it  becomes  inoperative ;  but, 
if  a  reissue  be  refused,  it  is  entirely  clear  that  the  surrender  never  takes  effect, 
and  the  patent  stands  as  if  no  application  had  ever  been  made  for  a  reissue. 
Whether,  if  the  reissue  be  void,  the  patentee  may  fall  back  on  his  original 
patent  has  never  yet  been  decided  by  this  court,  although  the  question  was 
raised  in  Eby  v.  King,  158  U.  S.  366;  but,  as  the  original  patent  was  also 
held  to  be  void,  it  did  not  become  necessary  to  express  an  opinion  upon  the 
question.  But  if  the  original  application  for  a  reissue  be  rejected,  the  original 
patent  stands  precisely  as  though  a  reissue  had  never  been  applied  for, 


806 


THE    FIXED    LAW    OF    PATENTS 


unless,  at  least,  the  reissue  be  refused  upon  some  ground  equally  affecting 
the  original  patent.  —  Allen  v.  Culp,  166  U.  S.  501;  41  L.  Ed.  1093;  17  S. 
Ct,  644. 

To  attempt  to  cancel  a  patent  upon  an  application  for  reissue  when  the  first 
patent  is  considered  invalid  by  the  examiner  would  be  to  deprive  the  applicant 
of  his  property  without  due  process  of  law,  and  would  be  in  fact  an  invasion 
of  the  judicial  branch  of  the  government  by  the  executive.  —  McCormick 
v.  Aultman,  169  U.  S.  606;  42  L.  Ed.  875;   18  S.  Ct.  443. 

The  Circuit  Court  of  Appeals  certified  the  following  question  to  the  Supreme 
Court,  in  McCormick  v.  Aultman,  69  Fed.  371 : 

If  a  patentee  applies  for  a  reissue  of  his  patent,  and  includes  among  the 
claims  under  the  new  application  the  same  claims  as  those  which  were  in- 
cluded in  the  old  patent,  and  the  examiner  of  the  patent  office  rejects  some 
of  such  claims,  and  allows  others,  both  old  and  new,  does  the  patentee,  by 
abandoning  his  application  for  a  reissue,  and  by  procuring  a  return  of  his 
original  patent,  hold  his  patent  invalidated  as  to  those  claims  which  the 
examiner  rejected? 

The  Supreme  Court  answered  the  question  thus: 

The  fact  that  the  rules  of  the  patent  office  require  that  the  original  patent 
should  be  placed  in  its  custody  for  the  purpose  of  surrendering  it  upon  the 
issue  of  an  amended  patent  gives  that  department  no  right  to  the  possession 
of  it  upon  the  rejection  of  the  application  for  a  reissue.  If  the  patentee 
abandoned  his  application  for  a  reissue,  he  is  entitled  to  a  return  of  his 
original  patent  precisely  as  it  stood  when  such  application  was  made,  and  the 
Patent  Office  has  no  greater  authority  to  mutilate  it  by  rejecting  any  of  its 
claims  than  it  had  to  cancel  the  entire  patent.  —  McCormick  v.  Aultman, 
169  U.  S.  606;  42  L.  Ed.  875;  18  S.  Ct.  443. 

When  the  patentee  came  to  ask  for  a  reissue,  he  was  confronted  with 
certain  conditions  on  which  only  could  the  reissue  be  permitted.  One  was 
that  the  specifications  of  his  patent,  as  it  (they)  stood,  were  inoperative. 
He  was  obliged  to  aver  and  prove  that  they  were  so.  If  this  was  true,  the 
patentee  had  been  exploiting  a  patent  which,  though  it  might  have  contained 
the  germ  of  an  invention,  was  practically  useless  to  the  public,  for  a  patent 
which  does  not  disclose  a  way  to  work  or  use  the  invention  does  not  con- 
stitute the  expected  consideration  for  the  grant.  Having  averred  in  a  solemn 
manner,  and  to  induce  the  granting  of  a  reissue,  that  the  fact  was  as  just 
stated,  he  was  estopped  from  claiming  otherwise.  —  Coffield  v.  Fletcher, 
167  Fed.  321 ;  C.  C.  A. 

Moffitt  v.  Garr,  1  Black,  273;  Reedy  v.  Scott,  23  Wall.  352;  Peck  v.  Collins, 
103  U.  S.  660;  Gage  v.  Herring,  107  U.  S.  640;  Coon  v.  Wilson,  113  U.  S.  268; 
Eby  v.  King,  158  U.  S.  366;  McCormick  v.  Aultman,  169  U.  S.  606. 

Note:  This  certainly  is  a  holding  which  will  be  open  to  some  criticism 
in  view  of  the  decision  in  McCormick  v.  Aultman,  supra.  To  what  extent 
the  averments  in  an  application  for  a  reissue  may  be  regarded  as  an  estoppel 
is  a  serious  question,  and  one  which  cannot  be  regarded  as  finally  settled  by 
this  decision  for  all  cases. 

§  888.     Tests  of  Validity  of. 

The  construction  of  a  reissue  in  a  court  of  equity  is  a  question  to  be  de- 
termined by  a  comparison  of  the  original  and  reissue;  and  with  the  aid  of 
expert  testimony  in  cases  where  the  specification  is  technical.  —  Seymour  v. 
Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

Sickles  v.  Evans,  2  Cliff.  203;  Bischoff  v.  Wethered,  9  Wall.  812;  Betts  v. 
Menzies,  4  B.  &  S.  Q.  B.  999. 


§  889  REISSUES  807 

Equivalents  are,  doubtless,  allowed  to  a  patentee  or  owner  of  a  patent  to 
shut  out  infringements,  but  the  patent  act  furnishes  no  support  to  the  theory 
that  the  patentee  may  surrender  a  patent  for  an  invention  consisting  of  a 
combination  of  old  ingredients  and  amend  the  descriptive  parts  of  the 
specification  by  striking  out  the  entire  description  of  one  of  the  ingredients 
of  the  combination  and  inserting  in  lieu  thereof  a  full  description  of  several 
other  devices  without  any  allegation  that  they  are  the  equivalents  of  the  one 
whose  description  is  stricken  out,  or  any  explanation  whatever  showing  the 
reason  why  the  change  was  made.  —  Gill  v.  Wells,  89  U.  S.  1;  22  L.  Ed. 
699. 

When  the  reissue  is  clearly  void  by  comparison  with  the  original  as  a 
matter  of  law,  extensive  evidence  is  unnecessary;  but  where  such  evidence 
is  required  it  is  proper  that  it  should  be  considered.  —  Heald  v.  Rice,  104 
U.  S.  737;  26  L.  Ed.  910. 

James  v.  Campbell.  104  U.  S.  356;  Miller  v.  Brass  Co.  104  U.  S.  350;  Burr  v. 
Duryee,  68  U.  S.  531;  Powder  v.  Powder,  98  U.  S.  139;  Battin  v.  Taggart,  58 
U.  S.  77;   Bischoff  v.  Wethered,  76  U.  S.  812;   Seymour  v.  Osborne,  78  U.  S.  545. 

What  was  suggested  in  the  original  specification,  drawings  or  patent  office 
model  is  not  to  be  considered  as  a  part  of  the  invention  intended  to  have 
been  covered  by  the  original  patent,  unless  it  can  be  seen  from  a  comparison 
of  the  two  patents  that  the  invention,  which  the  original  patent  was  intended 
to  cover  embraced  the  things  thus  suggested,  or  indicated  in  the  original 
specification,  drawings,  or  patent  office  model,  and  unless  the  original 
specification  indicated  that  those  things  were  embraced  in  the  invention 
intended  to  have  been  secured  by  the  original  patent.  —  Flower  v.  Detroit, 
127  U.  S.  563;  32  L.  Ed.  175;  8  S.  Ct.  1291. 

Parker  v.  Yale,  123  U.  S.  87;  Hoskin  v.  Fisher,  125  U.  S.  217. 

We  are  of  opinion  that  the  circuit  court  committed  an  error  in  excluding 
the  original  patent.  It  was  relevant  evidence  upon  the  question  whether  the 
reissue  was  "  for  the  same  invention  "  as  the  original,  and  the  issue  on  that 
subject  was  sufficiently  raised  by  the  averment  of  the  complainant  and  the 
denial  in  the  answer.  —  Oregon  v.  Excelsior,  132  U.  S.  215;  33  L.  Ed.  344; 
10  S.  Ct.  54. 

§  889.     Miscellaneous  Rules. 

Under  the  general  statute,  which  did  not  specifically  provide  for  reissues, 
the  government  had  the  right,  incident  to  its  power  to  grant  a  patent,  to 
grant  a  reissue  in  case  of  accident  or  mistake.  —  Grant  v.  Raymond,  6  Pet. 
218;  8L.  Ed.  376. 

The  second  patent  being  a  continuation  of  the  first  one,  the  rights  of  the 
plaintiff  must  be  ascertained  by  the  law  under  which  the  original  application 
was  made.  —  Shaw  v.  Cooper,  7  Pet.  292;  8  L.  Ed.  689. 

Moneys  recovered  on  judgments  in  suits  or  voluntary  payment  under 
the  first  patent,  upon  the  surrender  cannot  be  recovered  back.  —  Moffitt  v. 
Garr,  66  U.  S.  273;  17  L.  Ed.  207. 

A  reissue  has  no  connection  with  or  bearing  upon  antecedent  suits;  it 
has  as  to  subsequent  suits.  —  Moffitt  v.  Garr,  66  U.  S.  273 ;  17  L.  Ed.  207. 

Upon  an  application  for  a  reissue  the  commissioner  should  pass  upon 
the  sufficiency  of  applicant's  title  to  apply  for  reissue.  —  Holloway  v.  Whiteley, 
71  U.  S.  522;   18  L.  Ed.  335. 


808  THE    FIXED    LAW    OF    PATENTS  §  889 

It  was  held  by  the  court,  in  view  of  the  Patent  Act  of  1832,  that  the  fact 
of  the  granting  of  the  reissued  patent  closed  all  inquiry  into  the  existence 
of  inadvertence,  accident  or  mistake,  and  left  open  only  the  question  of  fraud 
to  the  jury.  —  Seymour  v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 

R.  R.  v.  Stimpson,  4  How.  384. 

Note:  Under  the  later  law  and  more  recent  rulings,  this  is  regarded  too 
broad. 

Reissued  patents,  in  order  that  they  may  be  valid,  must  be  for  the  same 
invention  as  the  surrendered  originals.  The  express  provision  in  the  new 
Patent  Act  is  that  no  new  matter  shall  be  introduced  into  the  specification, 
and  that  in  the  case  of  a  patent  for  a  machine  neither  the  model  nor  drawings 
shall  be  amended,  except  each  by  the  other.  —  Gill  v.  Wells,  89  U.  S.  1 ;  22 
L.  Ed.  699. 

Pending  suits  are  defeated  when  it  appears  that  the  patent  on  which  the 
suit  is  founded  has  been  surrendered,  nor  is  a  supplemental  bill  setting  up 
the  reissued  patent  a  proper  pleading  to  revive  such  a  suit  in  equity,  as 
nothing  can  be  recovered,  either  as  damages  or  profits  for  infringement  of  the 
surrendered  patent.  —  Reedy  v.  Scott,  90  U.  S.  352;  23  L.  Ed.  109. 

Moffitt  v.  Garr,  1  Black,  273. 

The  reissue  together  with  the  corrected  specification  has  the  same  effect 
and  operation  in  law  on  the  trial  of  all  actions  for  causes  hereafter  (there- 
after) arising,  as  though  the  same  had  been  originally  filed  in  such  correct 
form.  —  Reedy  v.  Scott,  90  U.  S.  352;  23  L.  Ed.  109. 

The  defendant  must  overcome  the  presumption  against  him  arising  from 
the  decision  of  the  Commissioner  of  Patents  in  granting  the  reissue.  — 
Smith  v.  Goodyear,  93  U.  S.  486;  23  L.  Ed.  952. 

The  statute  in  force  at  the  time  of  the  issue  of  the  original  patent  authorized 
a  surrender  and  reissue  whenever  any  patent  was  "  inoperative  or  invalid 
by  reason  of  a  defective  or  insufficient  description  or  specification  or  by 
reason  of  the  patentee  claiming  in  his  specification  as  his  own  invention  more 
than  he  had  a  right  to  claim  as  new."  The  statute  in  force  at  the  time  of  the 
reissue  made  no  change  in  this  except  by  striking  out  the  words  "  descrip- 
tion or  "  Stat,  4th  July,  1836,  Ch.  357,  sec.  13  (5  Stat,  at  L,  117):  R.  S.  sec. 
4916.  —  Gage  v.  Herring,  107  U.  S.  640;   27  L.  Ed.  601;  2  S.  Ct,  819. 

It  was  never  lawful  to  cover,  by  the  claims  of  a  reissue,  an  improvement 
made  after  the  granting  of  the  original  patent.  —  Union  v.  U.  S.  112  U.  S. 
624;  28  L.  Ed.  828;  5  S.  Ct,  475. 

The  combination  covered  by  the  claim  in  the  reissued  patent  is,  in  law  and 
in  fact,  merely  a  mechanical  equivalent  for  that  which  was  already  covered 
by  the  C.  patent,  which  had  the  priority  of  invention.  For  this  reason  we 
hold  the  reissue  invalid.  —  Hartshorn  v.  Saginaw,  119  U.  S.  664;  30  L.  Ed. 
539;  7  S.  Ct.  421. 

The  patentee  having  imposed  words  of  limitation  upon  himself  in  his 
claims,  especially  when  so  required  by  the  patent  office  in  taking  out  his 
reissue,  is  bound  by  such  limitations,  in  subsequent  suits  on  the  reissued 
patents.  —  Crawford  v.  Heysinger,  123  U.  S.  589;  31  L.  Ed.  269;  8  S. 
Ct.  399. 

Leggett  v.  Avery,  101  U.  S.  256;  Goodyear  v.  Davis,  102  U.  S.  222;  Fay  v. 
Cordesman,  109  U.  S.  408;    Mahn  v.  Harwood,  112  U.  S.  354;    U.  S.  v.  Union, 


§  889  REISSUES  809 

112  U.  S.  624;  Sargent  v.  Hall,  114  U.  S.  63;  Shepard  v.  Carrigan,  116  U.  S.  593; 
White  v.  Dunbar,  119  U.  S.  47;  Sutter  v.  Robinson,  119  U.  S.  530;  Bragg  v. 
Fitch,  121  U.  S.  478;   Snow  v.  Lake  Shore,  121  U.  S.  617. 

A  reissue  applied  for  subsequent  to  the  expiration  of  a  foreign  patent 
upon  the  original  is  invalid.  —  Commercial  v.  Fairbank,  135  U.  S.  176; 
34  L.  Ed.  88;  10  S.  Ct.  972. 

Claims  of  a  reissue  patent  must  be  limited  to  the  specific  mechanism 
claimed  in  the  original  patent.  —  Electric  v.  Boston,  139  U.  S.  481 ;  35  L. 
Ed.  250;   11  S.  Ct.  586. 

Sutter  v.  Robinson,  119  U.  S.  530. 

Where  an  application  was  made  on  the  ground  of  a  defect  in  the  "  omis- 
sion of  claims,"  and  it  appears  that  the  real  object  of  the  reissue  was  to  cover 
apparatus  covered  by  subsequent  patents,  the  reissue  claim  was  held  invalid. 
—  Electric  v.  Boston,  139  U.  S.  481 ;  35  L.  Ed.  250;  11  S.  Ct.  586. 

Does  not  invalidate  original  claim  when  it  is  repeated  in  reissue.  —  Leggett 
v.  Standard,  149  U.  S.  287;  37  L.  Ed.  737;  13  S.  Ct.  902. 
Gage  v.  Herring,  107  U.  S.  640 

In  that  case  (Gaskill  v.  Myers)  too,  there  was  no  change  whatever  in  the 
specification.  In  this  case  a  change  was  introduced,  which  was  not  only 
different  from,  but  essentially  inconsistent  with,  the  original  specification.  — 
American  v.  Swietusch,  85  Fed.  968 ;  29  C.  C.  A.  506. 

Distinguishing  Gaskill  v.  Myers,  81  Fed.  854. 

In  the  original  application  a  part  was  shown  and  described  as  a  hole  which 
should  have  been  a  slot.  This  rendered  the  device  absolutely  inoperative. 
The  error  was  caused  by  oversight  and  was  unconnected  with  the  gist  of  the 
invention,  though  its  adoption  rendered  the  machine  inoperative.  No  change 
was  made  or  needed  in  the  claim.  If  the  patentee  made  a  meritorious  inven- 
tion, he  ought  not  to  lose  the  benefit  of  it  by  reason  of  a  defect  so  narrow  and 
technical.  —  Hart  v.  Anchor,  92  Fed.  657;  34  C.  C.  A.  606. 

It  is  urged  that  the  success  of  the  appellee  in  procuring  the  reissue  is 
in  the  nature  of  a  fraud.  The  defect  of  this  argument  is  that  it  assumes  that 
we  have  before  us  (on  injunction  proceeding),  in  this  case,  all  the  facts  that 
the  commissioner  had  before  him  in  the  application  for  a  reissue ;  and  that 
we  can,  in  a  collateral  proceeding,  declare  the  patent  fraudulent,  on  account 
of  the  supposed  imposition  on  the  commissioner.  —  Justi  v.  Clark,  108  Fed. 
659;  47  C.  C.  A.  565. 

If  the  claims  in  a  reissue  are  valid  which  were  contained  in  the  original, 
notwithstanding  its  new  claims  are  invalid,  it  would  seem  to  follow  that, 
where  there  are  no  new  claims  in  the  reissue,  all  the  claims  should  be  valid, 
although  in  attempting  to  correct  a  mistake  the  commissioner  has  done 
nothing  more  than  to  introduce  unimportant  changes  into  the  description.  — 
Thomson-Houston  v.  Black  River,  135  Fed.  759;  68  C.  C.  A.  461. 

It  suffices  for  present  purposes  that  the  patentee  not  only  described  the 
same  invention  as  is  described  in  the  reissue  (with  amplification  now  omitted 
as  to  the  details  of  construction  and  arrangement  of  the  tension  device)  but 
also  endeavored  to  claim  the  combination  now  claimed.  Unless  a  reissue  is 
invalid  because  unimportant  changes  are  made  in  the  descriptive  matter 
and  the  language  of  the  claims  so  as  to  express  beyond  any  chance  of  mis- 


810  THE   FIXED   LAW   OF   PATENTS  §§890-891 

apprehension  what  the  patentee  intended  to  claim  in  the  original,  there  is 
nothing  to  militate  against  the  present  reissue.  It  is  urged  for  the  appellee 
that  there  was  no  statutory  ground  for  a  reissue,  because  the  specification 
for  the  original  was  not  in  any  sense  defective.  If  it  should  be  conceded  that 
the  changes  in  the  description  of  the  reissue  are  of  no  materiality,  and  that 
the  claims  are  identically  such  as  some  of  the  claims  of  the  original,  the 
circumstances  would  not  impeach  their  validity.  In  many  cases  where  the 
new  claims  in  a  reissue  have  been  held  invalid,  the  claims  repeated  from  the 
original  have  been  sustained.  —  Thomson-Houston  v.  Black  River,  135  Fed. 
759;  68  C.  C.  A.  461. 
Gage  v.  Herring,  107  U.  S.  640;  Mahn  v.  Harwood,  112  U.  S.  354. 


REOPENING  CASE. 

After  Decree  on  Appeal  §  890 
Newly  Discovered  Evidence  §  891 
Miscellaneous  Rules  §  892 


See  —  Adjudication  §  35;  Appeals 
§  109;  Decrees  §  301;  Pleading  and 
Practice  §  788;  Rehearings  §  868 


§  890.    After  Decree  on  Appeal. 

The  question  of  due  diligence,  as  well  as  the  materiality  of  the  newly  dis- 
covered evidence,  is,  we  think,  a  question  for  decision  by  this  court  upon  an 
application  for  leave  to  review  a  decree  of  the  Circuit  Court,  entered  in  pur- 
suance of  the  decree  of  this  court.  —  Kisinger-Ison  v.  Bradford,  123  Fed. 
91;  59  C.  C.  A.  221. 

Society  v.  Watson,  77  Fed.  512;  Jourolmon  v.  Ewing,  85  Fed.  103;  Rubber  v. 
Ewing,  9  Wall.  805. 

That  where  a  case  is  on  appeal,  before  final  decree,  the  appellate  court 
may  dismiss  the  appeal  without  prejudice,  on  request  of  the  court  below,  for 
the  purpose  of  further  pleading  and  proofs,  see  Mossberg  v.  Nutter,  124 
Fed.  966;  60  C.  C.  A.  98. 

Distinguishing  Roemer  v.  Simon,  91  U.  S.  149. 

On  an  interlocutory  decree,  like  the  one  now  before  us,  the  Circuit  Court 
has  the  case  in  its  own  breast,  and  on  the  dismissal  of  an  appeal  without 
prejudice  can  reopen  any  interlocutory  proceedings  if  justice  requires  it.  — 
Greene  v.  United,  124  Fed.  961 ;  60  C.  C.  A.  93. 

That  a  complainant-appellant  may  not  ask  the  appellate  court  to  instruct 
the  circuit  court  to  allow  complainant  to  reopen  the  case  and  amend  so  as  to 
bring  in  the  proper  parties  defendant,  see — National  v. Stolts,  135  Fed.  534; 
68  C.  C.  A.  84. 

§  891.    Newly  Discovered  Evidence. 

It  is  a  settled  rule  in  this  class  of  cases  "  that  the  matter  must  not  only 
be  new,  but  such  as  the  party,  by  the  use  of  reasonable  diligence,  could  not 
have  known;  for  if  there  be  any  laches  or  negligence  in  this  respect,  that 
destroys  the  title  to  the  relief."  Story  Eq.  PI.  sec.  414.  —  Providence  v. 
Goodyear,  76  U.  S.  805;  19  L.  Ed.  828. 

Whether  such  an  application  shall  be  granted  or  refused,  rests  in  the 
sound  discretion  of  the  court.  —  Providence  v.  Goodyear,  76  U.  S.  805; 
19  L.  Ed.  828. 

The  decision  and  decree  of  this  court  did  not  amount,  indeed,  technically 
speaking,  to  a  final  judgment,  because  the  matter  of  accounting  still  remained 


1891  REOPENING    CASE  811 

to  be  disposed  of.  Humiston  v.  Stainthorp,  2  Wall.  106;  Smith  v.  Iron 
Works,  165  U.  S.  518.  But  they  constitute  an  adjudication  by  this  court  of 
all  questions,  whether  of  law  or  of  fact,  involved  in  the  conclusion  that  the 
letters  patent  of  the  plaintiff  were  valid,  and  had  been  infringed.  Applying 
the  rule  stated  at  the  beginning  of  this  opinion,  the  questions  of  novelty 
and  infringement  were  before  this  court,  and  disposed  of  by  its  decree,  and 
must  therefore  be  deemed  to  have  been  finally  settled,  and  could  not  after- 
wards be  reconsidered  by  the  circuit  court.  When  the  merits  of  the  case 
have  been  once  decided  by  this  court  on  appeal,  the  circuit  court  has  no 
authority  without  express  leave  of  this  court  to  grant  a  new  trial,  a  rehearing 
or  a  review,  or  to  permit  new  defenses  on  the  merits  to  be  introduced  by 
amendment  of  the  answer.  —  In  re  Potts,  166  U.  S.  263;  41  L.  Ed.  994; 
17  S.  Ct.  520. 

Ex  Parte  Story,  12  Pet.  339;  Southard  v.  Russell,  16  How.  547;  Ex  Parte 
Du  Buque,  1  Wall.  69;  Stewart  v.  Solomon,  97  U.  S.  361;  Gaines  v.  Rugg,  148 
U.  S.  228. 

The  refusal  of  the  court  of  leave  to  the  defendants  to  take  further  proof 
is  assigned  for  error,  but  this  assignment  has  not  been  seriously  pressed  by 
counsel.  The  rebuttal  proofs  in  the  case  had  been  closed,  and  leave  was 
denied  on  the  ground  of  lack  of  due  diligence,  and  because  it  was  not  clear 
that  the  new  evidence  was  material.  The  disposition  of  the  motion  was, 
however,  in  the  discretion  of  the  court,  and  in  general  such  motions  are  not 
appealable.  —  Pittsburgh  v.  Roberts,  71  Fed.  706;    18  C.  C.  A.  302. 

Stimes  v.  Franklin,  14  Wall.  22. 

While  the  views  which  we  have  expressed  in  respect  to  stare  decisis, 
public  policy,  and  laches,  do  not  operate  strictly  as  an  estoppel  under  the 
circumstances  of  this  case,  such  considerations  have  operated  to  create  and 
sustain  the  rule  which  requires  that  the  newly  discovered  evidence,  in  order 
to  be  controlling,  shall  fully,  clearly  and  unmistakably  establish,  in  connec- 
tion with  the  other  evidence  in  the  case,  that  the  former  decisions  between  the 
same  parties  were  wrong.  —  Bresnahan  v.  Tripp,  99  Fed.  280;  39  C.  C.  A.  508. 

The  decisions  (and  there  are  many)  all  go  at  least  to  the  extent  of  saying 
that  the  new  evidence,  to  warrant  it,  must  be  so  cogent  and  persuasive  as  to 
impress  the  court  with  the  conviction  that,  if  it  had  been  presented  and  con- 
sidered on  the  original  hearing,  it  would  have  clearly  produced  a  contrary 
conclusion  from  the  one  there  reached.  There  are  some  cases  where  it  is 
held  that,  if  the  claim  is  made  that  the  newly  discovered  evidence  or  patents 
anticipate  the  patent  previously  sustained  upon  bona  fide  and  strenuous 
contest,  the  anticipation  must  be  described  in  full,  clear  and  exact  terms.  — 
Bresnahan  v.  Tripp,  99  Fed.  280;  39  C.  C.  A.  508. 

That  a  searcher  was  sent  to  examine  the  Patent  Office  for  the  purpose  of 
obtaining  all  matter  which  was  material  to  the  defense  of  want  of  patentable 
novelty,  and  that  this  searcher  did  not  come  across  these  particular  patents, 
is  not  such  an  extraordinary  circumstance  as  would  justify  the  review  of  a 
decree  sustaining  the  validity  of  the  patent.  Such  evidence  is  of  a  cumulative 
character.  These  patents  were  public  records,  and  accessible  if  the  search 
had  been  sufficiently  diligent.  The  discovery  of  other  patents  bearing  upon 
the  question  of  anticipation  should  not  be  made  the  basis  for  a  bill  of  review, 
in  the  absence  of  some  very  peculiar  circumstance.  —  Kisinger-Ison  v. 
Bradford,  123  Fed.  91;  59  C.  C.  A.  221. 

Re  Gamewell,  73  Fed.  908. 


812  THE    FIXED    LAW    OF    PATENTS  §§  892-893 

That  a  party  is  entitled  to  a  reasonable  time  after  the  discovery  of  new 
evidence  to  verify  and  substantiate  such  evidence  before  moving  to  reopen 
the  case,  see  —  Kelley  v.  Diamond,  136  Fed.  855;  69  C.  C.  A.  599. 

The  petition  seems  to  us  to  be  for  leave  to  open  up  the  case,  not  so  much  to 
introduce  evidence  newly  discovered,  as  to  introduce  old  evidence  the 
materiality  of  which  has  been  newly  discovered.  The  disturbance  of  a  final 
judgment  between  given  parties  on  such  a  ground  would  be  contrary  to  all 
the  adjudged  cases.  It  would  destroy  the  finality  of  nearly  every  decree 
handed  down.  —  Lafferty  v.  Acme,  143  Fed.  321 ;  74  C.  C.  A.  521. 

§  892.     Miscellaneous  Rules. 

The  decree  in  this  case  under  consideration  is  not  final,  within  the  de- 
cisions of  this  court.  The  injunction  prayed  for  was  made  perpetual,  but 
there  was  a  reference  to  a  master  to  ascertain  the  damages  by  reason  of  the 
infringement;  the  bill  was  not  dismissed,  nor  was  there  a  decree  for  costs. 
No  point  is  better  settled  in  this  court,  than  that  an  appeal  may  be  prosecuted 
only  from  a  final  decree.  The  cases  are  numerous  where  appeals  have  been 
dismissed,  because  the  decree  of  the  circuit  court  was  not  final.  It  is  supposed 
there  was  a  departure  from  this  uniform  course  of  decision,  at  the  last  term 
in  case  of  Forgay  v.  Conrad,  6  How.  201.  —  Barnard  v.  Gibson,  7  How.  650; 
12  L.  Ed.  857. 

The  record  contains  no  warrant  for  more  than  nominal  damages  at  any 
time.  We  cannot  reopen  the  taking  of  evidence  simply  because  the  com- 
plainant has  failed  to  make  a  case.  —  Baker  v.  Crane,  138  Fed.  60;  70  C. 
C.  A.  486. 

Appellant,  after  the  decision  of  the  case,  moved  to  reopen  it,  in  order  to 
show  that  it  used  fire-brick  and  did  not  use  chamotte,  within  the  meaning 
given  to  it  by  the  court  in  its  opinion.  This  motion  was  rightly  denied. 
The  new  evidence  sought  to  be  introduced  might  have  been  brought  before 
the  court  at  the  original  hearing.  —  Panzl  v.  Battle  Island,  138  Fed.  48; 
70  C.  C.  A.  474. 


RES  JUDICATA. 

Conclusiveness  §  893 
Former  Suit  §  894 
Patent  Office  Decisions  §  895 
Miscellaneous  Rules  §  896 


See  —  Adjudication  §  28;  Comity 
§  250;  Estoppel  §  381;  Injunction  §§ 
561,  570,  575;  Interferences  §  580; 
Pleading  and  Practice  §  788 


§  893.     Conclusiveness. 

The  judgment  rendered  in  that  (the  former)  suit,  while  it  remains  in  force, 
and  for  the  purpose  of  maintaining  its  validity,  is  conclusive  of  all  the  facts 
properly  pleaded  by  the  plaintiffs.  But  when  it  is  presented  as  testimony  in 
another  suit,  the  inquiry  is  competent  whether  the  same  issue  has  been 
tried  and  settled  by  it.  —  Packet  Co.  v.  Sickles,  65  U.  S.  333;  16  L.  Ed.  650. 

Merriam  v.  Whittemore,  5  Gray,  316;   Hughes  v.  Alexander,  5  Duer,  488. 

A  recovery  for  an  infringement  of  one  claim  of  the  patent  is  not  of  itself 
conclusive  of  an  infringement  of  that  other  claim  and  there  was  no  extrinsic 
evidence  offered  to  remove  the  uncertainty  upon  the  record;  it  is  left  to 
conjecture  what  was  in  fact  litigated  and  determined.  The  verdict  may  have 
been  for  an  infringement  of  the  first  claim ;  it  may  have  been  for  the  infringe- 


§893  RES   JUDICATA  813 

ment  of  the  second;  it  may  have  been  for  an  infringement  of  both.  The 
validity  of  the  patent  was  not  necessarily  involved,  except  with  respect  to 
the  claim  which  was  the  basis  of  recovery.  —  Russell  v.  Place,  94  U.  S.  606; 
24  L.  Ed.  214. 

It  is  undoubtedly  settled  law  that  a  judgment  of  a  competent  court  of 
jurisdiction,  upon  a  question  directly  involved  in  one  suit,  is  conclusive  as  to 
that  question  in  another  suit  between  the  same  parties.  But  to  this  opera- 
tion of  the  judgment  it  must  appear,  either  upon  the  face  of  the  record  or  be 
shown  by  extrinsic  evidence,  that  the  precise  question  was  raised,  and  deter- 
mined in,  the  former  suit.  If  there  be  any  uncertainty  on  this  head  in  the 
record  —  as,  for  example,  if  it  appear  that  several  distinct  matters  may  have 
been  litigated,  upon  one  or  more  of  which  the  judgment  may  have  passed 
without  indicating  which  of  them  was  thus  litigated,  and  upon  which  the 
judgment  was  rendered  —  the  whole  subject-matter  of  the  action  will  be  at 
large  and  open  to  a  new  contention,  unless  this  uncertainty  be  removed  by 
extrinsic  evidence.  —  Russell  v.  Place,  94  U.  S.  606;  24  L.  Ed.  214. 

The  jury  did  not  find  that  the  alleged  infringing  machines  combined  in 
their  "  structure  and  operation  the  substance  of  the  invention"  described 
in  the  letters  patent.  Curt,  sec.  308;  but  found  the  identity  of  the  three 
exhibits  in  the  case.  If  the  invention  of  the  patent  was  not  used,  it  is  im- 
material how  similar  the  two  machines  were  in  other  respects.  The  question 
whether  the  invention  of  the  patent  was  used  by  the  defendant  was  not 
actually  determined  by  the  state  court,  although  it  could  have  been;  but 
it  is  only  in  respect  to  matters  actually  in  litigation  and  determined  that 
the  judgment  is  conclusive  in  another  action.  —  Brusie  v.  Peck,  54  Fed.  820; 
4  C.  C.  A.  597. 

Cromwell  v.  Sac,  94  U.  S.  351. 

A  decision  of  another  circuit  court  of  appeals  to  be  res  judicata  and  a 
binding  precedent  must  have  been  upon  the  merits  of  the  same  patent,  and 
not  upon  others  co-related  with  it.  —  Boyden  v.  Westinghouse,  70  Fed.  816; 
17  C.  C.  A.  430. 

The  decree  in  the  Toledo  Case  awarded  a  perpetual  injunction,  but  with  an 
order  of  reference  to  a  master  to  ascertain  the  damages  by  reason  of  infringe- 
ment, and  for  that  purpose  the  suit,  it  is  conceded,  is  still  pending.  It  is 
therefore  only  an  interlocutory  decree,  and  not  available  as  an  estoppel  in 
respect  to  any  issue  in  these  suits.  Barnard  v.  Gibson,  7  How.  650;  Humiston 
v.  Stainthorp,  2  Wall.  106;  McGourkey  v.  Ry.  Co.  146  U.  S.  545;  Bradley  v. 
Eagle,  57  Fed.  980;  Jones  v.  Munger,  50  Fed.  785;  Richmond  v.  Atwood, 
52  Fed.  10;  Marden  v.  Campbell,  67  Fed.  809;  Bissell  v.  Goshen,  72  Fed. 
545.  —  Brush  v.  Western,  76  Fed.  761 ;  22  C.  C.  A.  543. 

The  decision  of  this  court  in  the  case  of  Wheaton  v.  Norton,  70  Fed.  833, 
was  upon  the  merits;  and  it  was  there  adjudged  that  the  same  machine,  the 
use  of  which  constitutes  the  alleged  infringement  by  the  defendant  in  the 
present  suit,  was  not  an  infringement  of  the  patent  sued  on  by  the  com- 
plainants; and  the  judgment  of  the  trial  court,  entered  in  pursuance  of  the 
mandate  of  this  court,  was  an  adjudication  conclusively  binding,  not  only 
upon  the  parties  to  that  suit,  but  upon  their  privies.  Johnson  Steel  v. 
Wharton,  152  U.  S.  252;  Last  Chance  v.  Tyler,  157  U.  S.  683;  Railroad  v. 
National,  102  U.  S.  14;  Stout  v.  Lye,  103  U.  S.  66.  The  judgment  is 
affirmed.  —  Norton  v.  San  Jose,  79  Fed.  793;   25  C.  C.  A.  194. 

While  we  appreciate  fully  that  the  doctrine  of  res  judicata  is  a  salutary 
one,  intended  to  mitigate  the  evils  which  follow  prolonged  and  repeated 


814 


THE   FIXED   LAW   OF   PATENTS 


§894 


litigations,  still  the  decisions  show  that  the  courts  have  always  restricted 
its  application  to  cases  where,  among  other  identities,  the  subject  matter 
was  the  same.  —  Norton  v.  Jensen,  90  Fed.  415;  33  C.  C.  A.  141. 

Cromwell  v.  Sac,  94  U.  S.  351;  Russell  v.  Place,  94  U.  S.  606;  Lumber  Co.  v. 
Buchtel,  101  U.  S.  638;  Wilson  v.  Deen,  121  U.  S.  525;  Bissell  v.  Spring,  124 
U.  S.  231. 

The  defendant  here  was  a  mere  user.  The  infringing  manufacturer,  the 
Diamond  Meter  Co.,  was  not  a  party  to  the  prior  adjudication  but  un- 
doubtedly furnished  the  defense.  Held:  The  proofs  as  a  whole  satisfy  us 
that  the  purpose  of  the  Diamond  Meter  Co.  was  to  maintain  such  an  attitude 
with  reference  to  the  prior  suit  that  it  might  have  the  direct  benefit  of  the 
decree  if  favorable  to  the  defendants  therein,  and  yet  not  be  concluded 
should  the  decree  be  adverse  to  the  defendant.  But  if  the  Diamond  Meter 
Co.  desired  that  the  decree  in  the  prior  suit  should  operate  as  an  estoppel 
in  its  favor,  it  was  bound  by  avowal  or  open  action  to  place  itself  in  such  an 
unequivocal  position  that  the  decree  should  be  mutually  binding  as  res 
adjudicata  upon  itself  and  upon  the  complainant.  —  Jefferson  v.  Westing- 
house,  139  Fed.  385;  71  C.  C.  A.  481. 

Litchfield  v.  Goodnow's,  123  U.  S.  549;  Andrews  v.  National,  76  Fed.  166; 
Cramer  v.  Singer,  93  Fed.  636;  Lane  v.  Welds,  99  Fed.  286. 

An  adjudication  that  the  patent  was  void  would  protect  defendant  against 
a  new  attack  by  plaintiff  on  the  same  patent.  But  an  adjudication  that  the 
defendant  was  doing  something  that  did  not  infringe  a  valid  patent  would  not 
justify  defendant  in  doing  something  else  that  does  infringe.  —  Robinson 
v.  American,  150  Fed.  331;  80  C.  C.  A.  127. 

If  courts  are  to  examine  defenses  in  patent  cases  de  novo,  as  often  as  they 
are  presented,  litigation  will  continue  until  the  resources  of  the  defendants 
or  the  patience  of  the  complainant,  and  possibly  the  patience  of  the  court, 
are  exhausted.  —  Consolidated  v.  Diamond,  162  Fed.  892;  89  C.  C.  A.  582. 


§  894.     Former  Suit. 

It  was  not  necessary  as  between  parties  and  privies  that  the  record  should 
show  that  the  question  upon  which  the  right  of  the  plaintiff  to  recover,  or 
the  validity  of  the  defense,  depended  for  it  to  operate  conclusively ;  but  only 
that  the  same  matter  in  controversy  might  have  been  litigated,  and  that 
extrinsic  evidence  would  be  admitted  to  prove  that  the  particular  question 
was  material  and  was,  in  fact,  contested  and  that  it  was  referred  to  the 
decision  of  the  jury.  —  Packet  Co.  v.  Sickles,  65  U.  S.  333;  16  L.  Ed.  650. 

Although  one  infringer  may  succeed  in  defeating  a  patent  by  one  of  the 
statutory  defenses,  such  action  does  not  prevent  another  from  being  sued, 
or  mulcted,  in  case  he  fails  to  produce  the  requisite  evidence  to  maintain  his 
defense.  —  United  States  v.  Am.  Bell,  128  U.  S.  315;  32  L.  Ed.  450;  9  S. 
Ct.  90. 

As  the  prior  action  was  between  the  same  parties,  and  was  based  in  part 
at  least,  and  principally,  upon  the  same  patent,  it  would  appear  that  the 
judgment  of  the  court  dismissing  the  petition  would  operate  as  a  complete 
estoppel  to  the  present  suit,  unless  the  proceedings  subsequent  to  the  judg- 
ment in  the  former  suit  in  some  way  deprived  the  judgment  of  its  force  and 
effect  res  judicata.  —  Hubbell  v.  U.  S.  171  U.  S.  203;  43  L.  Ed.  136;  18  S. 
Ct.  828. 

3  Rob.  Pat.  sec.  1017. 


§894  RES   JUDICATA  815 

The  presumption  is  that  the  issues  were  the  same,  and,  if  they  were  in  part 
different,  it  was  incumbent  upon  the  claimant  to  show  that  the  prior  case  was 
decided  upon  questions  not  involved  herein.  —  Hubbell  v.  U.  S.  171  U.  S. 
203;  43  L.  Ed.  136;   18  S.  Ct.  828. 

The  patentee  cannot  bring  suit  against  an  infringer  upon  a  certain  state  of 
facts,  and,  after  dismissal  of  his  action,  bring  another  suit  against  the  same 
party  upon  the  same  state  of  facts,  and  recover  upon  a  different  theory.  The 
judgment  in  the  first  action  is  a  complete  estoppel  in  favor  of  the  successful 
party  in  a  subsequent  action  upon  the  same  state  of  facts.  —  Hubbell  v. 
U.  S.  171  U.  S.  203;  43  L.  Ed.  136;   18  S.  Ct.  828. 

Walker  Pat.  468;  DuBois  v.  Railroad,  5  Fish.  208,  Fed.  Cas.  4109;  Bradley  v. 
Eagle,  57  Fed.  989. 

This  is  a  second  action  upon  the  same  claim  or  demand,  to  wit,  upon  the 
claim  for  a  monopoly  granted  by  patent;  and  that  the  former  decree,  the 
question  being  necessarily  involved  and  at  issue  in  that  case,  determines 
conclusively  and  for  all  time,  as  between  the  parties  thereto  and  their  privies, 
the  validity  of  the  patent.  It  can  no  more  be  made  the  subject  of  contention 
between  them.  —  Bradley  v.  Eagle  Mfg.  Co.  57  Fed.  980;  6  C.  C.  A.  661. 

Cromwell  v.  Sac,  94  U.  S.  351;  Davis  v.  Brown,  94  U.  S.  423;  Campbell  v. 
Rankin,  99  U.  S.  281;  Block  v.  Commissioners,  99  U.  S.  686;  Wilson  v.  Deen, 
121  U.  S.  525;  Bissell  v.  Spring  Valley,  124  U.  S.  225;  Nesbit  v.  Independent,  144 
U.  S.  610;  Railroad  v.  Alsbrook,  146  U.  S.  279;  McComb  v.  Frink,  149  U.  S.  629; 
Lumber  Co.  v.  Buchtel,  101  U.  S.  638;  Insurance  Co.  v.  Bangs,  103  U.  S.  780; 
Elgin  v.  Marshall,  106  U.  S.  578. 

The  defendant  there  was  the  agent  of  the  present  appellant  in  the  sale 
of  the  infringing  machines.  The  defense  of  the  suit  then  was  assumed  and 
prosecuted  by  the  appellant  here.  The  appellant  was  in  fact  the  real  party  to 
that  litigation,  and  so  far  as  the  decree  there  is  res  adjudicata  is  as  effectively 
concluded  thereby  as  if  it  were  the  actual  defendant  of  record.  —  Bradley 
v.  Eagle  Mfg.  Co.  57  Fed.  980;  6  C.  C.  A.  661. 

Lovejoy  v.  Murray,  3  Wall.  1;   Robbins  v.  Chicago,  4  Wall.  657. 

That  the  decree  was  interlocutory  at  the  bringing  of  this  suit,  and  subse- 
quently ripened  into  a  final  decree,  does  not  impair  its  efficiency  or  con- 
clusiveness when  properly  presented  in  this  suit.  The  relative  time  of  in- 
stitution of  suit,  or  the  relative  date  of  final  decree,  is  not  of  consequence 
if  the  merits  of  the  controversy  be  thereby  fully  and  finally  determined,  and 
the  record  thereof  is  properly  brought  to  the  attention  of  the  court.  —  Brad- 
ley v.  Eagle  Mfg.  Co.  57  Fed.  980;  6  C.  C.  A.  661. 

Duffy  v.  Lytle,  5  Watts.  120;  Casebeer  v.  Mowry,  55  Pa.  St.  422;  Child  v. 
Powder  Works,  45  N.  H.  547. 

The  rule  of  res  judicata  has  never  been  disturbed  that  where,  in  a  prior 
suit,  it  appears  of  record  that  any  particular  question  has  been  actually 
adjudicated,  the  prior  judgment  is  to  that  extent  conclusive  in  any  subsequent 
suit  between  the  same  parties  or  their  privies,  relating  to  an  instrument  which 
forms  the  basis  of  litigation  in  each.  Here  we  find  in  the  prior  judgment  a 
solemn  and  express  adjudication  in  favor  of  the  validity  of  the  patent.  If 
in  that  particular  the  court  went  beyond  its  province,  its  action  was  not  void, 
and  the  remedy  for  the  respondents  was  to  apply  to  have  its  decree  amended. 
As,  therefore,  we  find  in  the  record  here,  matter  which,  as  far  as  we  are 
concerned,  conclusively  establishes  that  the  court  having  cognizance  of  the 
prior  suit  had  expressly  adjudicated  the  validity  of  the  patent  as  between  the 
parties  in  privity  with  those  now  before  us,  we  have  no  power  to  permit 


816  THE   FIXED   LAW   OF   PATENTS  §  895 

that  question  to  be  litigated  again.  —  Empire  v.  American,  74  Fed.  864; 
21  C.  C.  A.  152. 

Bradley  v.  Eagle,  57  Fed.  980;  Russell  v.  Place,  84  U.  S.  351;  Bissell  v.  Spring, 
124  U.  S.  225;  Howlett  v.  Tarte,  10  C.  B.  N.  S.  813;  Roberts  v.  Railroad,  158 
U.  S.  1;  DeSollarv.  Hanscome,  158  U.  S.  216;  Last  Chance  v.  Tyler,  157  U.  S.  683; 
Lumber  v.  Buchtel,  101  U.  S.  638. 

The  prior  suit  was  brought  against  defendant  company  and  its  agent.  The 
company  had  the  bill  dismissed  against  it  for  want  of  jurisdiction,  but 
furnished  the  funds  for  the  defense.  That  suit  having  been  decided  in  favor 
of  the  agent,  the  defendant  company  now  pleads  that  suit  as  estoppel  on  the 
ground  that  it  sustained  the  expense  of  the  former  suit  for  its  agent.  Held: 
The  open  dismissal  of  the  Singer  Company  from  that  suit  upon  its  own  motion 
was  significant  of  its  withdrawal  from  the  litigation,  and  of  its  purpose  not 
to  be  bound  by  the  judgment  to  be  rendered  therein.  —  Singer  v.  Cramer, 
109  Fed.  652;  48  C.  C.  A.  588. 

The  plea  does  meet  the  declaration  (that  of  infringement),  for  it  alleges 
that  the  acts  for  which  defendant  is  now  sought  to  be  held  are  merely  a 
continuation  of  the  very  same  acts  which  were  involved  in  the  former  litiga- 
tion and  were  adjudged  not  to  constitute  a  cause  of  action.  But  this  allega- 
tion was  expressly  denied  in  the  replication.  So  an  issue  of  fact  was  framed, 
for  the  determination  of  which  plaintiff  was  entitled  to  a  jury  trial.  —  Robin- 
son v.  American,  150  Fed.  331 ;  80  C.  C.  A.  127. 

In  the  former  case  Heller  testified  that  he  was  interested  in  the  defense 
financially  and  otherwise.  Whether  intended  to  be  so  or  not,  there  is  no 
doubt  that  the  suit  against  the  N.  Y.  Baking  Powder  Co.  was,  in  fact,  a  test 
case  and  is  controlling  in  this  court  upon  all  questions  there  decided.  We 
are  of  the  opinion  that  their  participation  in  the  defense  of  the  test  suit  made 
the  defendants  Heller  and  the  N.  Y.  Hygienic  Co.  parties  privy  to  that  suit 
and  that  the  testimony  of  Clotworthy  given  therein  may  properly  be  read 
against  these  defendants  —  Clotworthv  having  died  prior  to  the  hearing.  — 
Rumford  v.  Hygienic,  159  Fed.  436;  86  C.  C.  A.  416. 

Each  plea  states  with  abundant  particularity  the  issues  raised,  heard,  and 
decided  in  the  prior  equity  suit  referred  to  between  the  parties,  and  specifies 
their  identity  with  the  subject-matter  in  controversy  here.  The  prior  ad- 
judication was  clearly  brought  within  the  elementary  rule  which  bars  a 
second  action  upon  the  same  claim  or  demand.  —  Robinson  v.  American, 
159  Fed.  131;  86  C.  C.  A.  321. 

Cromwell  v.  County,  94  U.  S.  351. 

§  895.     Patent  Office  Decisions. 

It  would  seem  that  a  defendant  cannot  set  up  an  interference  adjudication 
and  rely  upon  it  as  res  adjudicata  when  sued  for  infringement.  —  Garratt  v. 
Siebert,  98  U.  S.  75;  25  L.  Ed.  84. 

The  question  of  judicial  interpretation  of  a  doubtful  question  before  the 
Patent  Office  is  not  to  be  regarded  as  res  judicata  by  that  department.  — 
Andrews  v.  Hovey,  124  U.  S.  694;  31  L.  Ed.  557;  8  S.  Ct.  676. 

In  a  subsequent  suit  between  the  same  parties  to  the  decision  of  the  patent 
office  upon  the  question  of  priority,  the  decision  there  made  must  be  accepted 
as  controlling  upon  the  question  of  fact  in  a  subsequent  suit,  unless  the 


§§  S96-897  ROYALTIES  817 

contrary  is  established  by  testimony  which,  in  character  and  amount,  carries 
thorough  conviction.  —  Ecaubert  v.  Appleton,  67  Fed.  917;  15  C.  C.  A.  73. 
Morgan  v.  Daniels,  153  U.  S.  120. 

It  has  not  been  the  tendency  of  the  decisions  either  of  the  Supreme  Court 
or  of  the  circuit  courts  of  appeal  to  extend  the  effect  of  interference  decisions 
as  final  adjudications,  and  we  concur  with  the  circuit  court  in  the  con- 
clusion that  "  while  the  decision  in  interference  may  be  res  judicata  as  to 
priority,  it  does  not  preclude  defendant  from  raising  other  questions  not  in 
issue  in  said  proceedings."  —  Nationals.  Wheeler,  79  Fed.  432;  24  C.  C.  A. 
663. 

No  intimation  is  intended  that  such  decision  is  res  adjudicata  or  con- 
clusive in  the  present  controversy  (between  the  same  parties  on  motion  for 
preliminary  injunction)  or  of  other  than  persuasive  effect  in  reference  to 
the  facts  thus  involved.  —  Scott  v.  Laas,  150  Fed.  764;  80  C.  C.  A.  500. 

§  896.     Miscellaneous  Rules. 

To  make  the  judgment  available  as  a  plea  in  bar  or  as  conclusive  evidence, 
it  must  appear  that  the  parties  were  the  same  or  in  privity.  The  situation 
must  have  been  such  that  the  Hanks  Dental  Association  (defendant  below) 
would  have  been  estopped  from  asserting  the  validity  of  the  patent  had  the 
judgment  been  against  Bennett.  The  mere  fact  that  Bennett  and  defendant 
are  members  of  an  association  which  has  contributed  to  the  defense  of  each, 
does  not  warrant  the  conclusion  that  a  judgment  in  favor  of  one  inures  to 
the  benefit  of  the  other  in  the  absence  of  knowledge  by  the  plaintiff  of  the 
true  relations  between  them.  The  plaintiff  must  have  known  at  the  time  that 
the  Hanks  Company  was  contributing  to  the  defense  of  the  Bennett  suit.  — 
Hanks  v.  International,  122  Fed.  74;  58  C.  C.  A.  180. 

The  defendant  sought,  by  showing  the  invalidity  of  the  patent,  to  ter- 
minate the  contract.  That  issue  having  been  raised  and  merged  in  the 
judgment,  it  is  clear  that  in  a  suit  between  the  same  parties  for  subsequent 
installments  under  the  same  contract  the  same  question  cannot  be  raised  and 
litigated  a  second  time.  —  Wilcox  v.  Sherborne,  123  Fed.  875;  59  C.  C.  A. 
363. 


ROYALTIES. 

General  Statement  and  the  Decisions  I       See  —  Assignment    §    149;    Damages 
§  897  I       §  294;   License  §  760;    Profits  §  825 

§  897.     General  Statement  and  the  Decisions. 

Royalties  arise  out  of  contract  and  agreement.  A  patent  is  personal  prop- 
erty, and  rights  arising  out  of  contract  and  agreement  are  subject  to  the 
general  rules  relating  thereto.  So  long  as  it  is  borne  in  mind  that,  unless 
otherwise  specified  in  the  assignment,  joint  owners  are  tenants  in  common, 
and  not  by  the  entirety,  there  will  be  little  difficulty  in  applying  the  general 
principles  underlying  contracts  to  the  subject  of  royalties. 

The  question  of  an  established  royalty  furnishes  a  measure  of  damages 
and  a  factor  for  the  computation  of  profits.    See  Damages  and  Profits. 

To  occasionally  take  promissory  notes  from  licensees  in  lieu  of  cash  for 
accrued  royalties  would,  if  done  in  good  faith,  not  be  so  far  out  of  the  course  of 
ordinary  business  transactions  as  to  render  the  licensee  liable  for  losses  oc- 
curring through  the  insolvency  of  any  of  its  licensees.    In  the  absence  of 


818  THE    FIXED    LAW    CF    PATENTS  §  897 

any  guarantee  only  diligence  and  good  faith  are  required.  —  Thorn  v.  Wash- 
burn, 159  U.  S.  423;  40  L.  Ed.  205;  16  S.  Ct,  94. 

That  where  the  license  is  founded  upon  a  pending  application  which  is 
being  prosecuted  by  the  licensee,  with  the  result  that  some  of  the  claims  are 
rejected  by  the  Patent  Office  and  the  licensee  notifies  the  licensor  that  the 
claims  that  can  be  secured  are  not  "  worth  a  pinch  of  snuff,"  but  at  the 
same  time  retains  his  license  privilege  and  neither  surrenders  the  contract 
nor  the  patent  application,  is  bound  to  account  for  articles  manufactured 
under  the  contract  and  embodying  the  invention  as  understood  at  the  time 
the  contract  was  made,  see  —  Eclipse  v.  Farrow,  199  U.  S.  581 ;  50  L.  Ed.  317 ; 
26  S.  Ct.  150. 

U.  S.  v.  Harvey,  196  U.  S.  310. 

The  decree  declares  in  general  terms  the  rights  of  the  plaintiff  to  royalties 
upon  all  devices  manufactured  by  the  defendant  and  embodying  the  inven- 
tions mentioned  in  the  contract,  and  directs  an  accounting  in  accordance 
with  the  decree.  We  are  of  opinion  that  these  terms  warranted  the  auditor 
in  charging  royalties  upon  any  device  found  to  come  within  the  contract. 
—  Eclipse  v.  Farrow,  199  U.  S.  581 ;  50  L.  Ed.  317 ;  26  S.  Ct.  150. 

Until  the  attorney's  authority  was  revoked  and  the  defendants  had  knowl- 
edge of  it,  their  settlements  with  him  were  a  discharge  of  liability.  —  Union 
v.  Johnson,  61  Fed.  940;  10  C.  C.  A.  176. 

That  where  the  license  contract  covered  a  period  extending  beyond  the 
term  of  the  patent  under  which  a  part  of  the  royalties  arose,  in  the  absence 
of  specific  agreement  to  the  contrary,  the  royalties  arising  out  of  such  patent 
cease  with  the  expiration  of  that  patent,  although  the  contract  continues  in 
force  as  to  other  patents,  see— Holmes  v.  McGill,  108  Fed-  238;  47  CCA.  296. 

That  the  fact  that  a  licensee  has  inextricably  complicated  and  confused  the 
profits  or  returns  accruing  from  sub-letting  or  territorial  sales  under  a  specific 
royalty  agreement  with  a  licensor  cannot  defeat  the  right  of  the  licensor  to 
his  royalties,  see  —Western  Union  v.  Am.  BeU,  125  Fed.  342;  60  C  C  A.  220. 

Royalties  are  commonly  understood  as  meaning  something  proportionate 
to  the  use  of  a  patented  device;  in  other  words,  a  kind  of  excise.  Bouvier's 
Law  Dictionary,  "  Royalty."  In  its  more  ordinary  meaning  it  would  not 
literally  include  the  shares  of  stock  for  which  an  accounting  is  demanded. 
In  some  of  its  uses  it  is  a  broader  word  than  "  rentals,"  and  yet  in  other 
aspects  "  rentals  "  is  a  broader  word  than  "  royalties. "  Rentals  in  their 
ordinary  signification  are  not  limited  as  royalties  in  their  ordinary  significa- 
tion; that  is,  something  proportionate  to  the  use  of  the  patented  device. 
The  word  "  ordinarily  "  means  specific  sums  paid  annually,  or  at  other  stated 
periods,  for  the  right  to  use  a  patented  device,  whether  it  is  used  much  or 
little  or  not  at  all.  —  Western  Union  v.  Am.  Bell,  125  Fed.  342;  60  C  C  A. 
220. 

It  is  argued  that  although  the  contract  requires  the  payment  of  royalties 
on  all  machines  "  sold  or  delivered,"  the  intent  of  the  parties  was  that  pay- 
ment should  be  limited  to  machines  "  sold  and  delivered  "  and  that  the  court 
should  have  so  interpreted  the  contract.  We  cannot  accede  to  this  view. 
There  is  no  ambiguity  about  the  contract;  its  language  is  perfectly  plain. 
In  the  short  clause  providing  for  the  payment  of  royalties  the  words  "  sold 
or  delivered  "  are  twice  used.  There  is  no  room  for  interpretation.  —  Con- 
fectioners' v.  Panoualias,  134  Fed.  393;  67  C  C  A.  391. 


§§  898-899  SECRET    PROCESS   OR   MACHINE  819 

That  in  an  action  to  recover  royalties  under  a  contract  which  confined 
the  licensee  to  manufacture  and  sell  the  patented  device  and  no  other, 
it  is  not  necessary  for  the  licensor  to  prove  that  the  devices  made  and  sold 
conformed  to  the  claims  of  the  patent,  see  —  Clifford  v.  Capell,  165  Fed.  193; 
C.  C.  A. 


SECRET  PROCESS  OR  MACHINE. 

General  Rule  §  898 

See —  Abandonment  §  1;    Unpatented  Invention  §  930 

§  898.     General  Rule. 

One  who  makes  or  vends  an  article  which  is  made  by  a  secret  process  or 
private  formula  cannot  appeal  to  the  protection  of  any  statute  creating  a 
monopoly  in  his  product.  He  has  no  special  property  in  either  a  trade  secret 
or  a  private  formula.  The  process  or  the  formula  is  valuable  only  so  long  as 
he  keeps  it  secret.  The  public  is  free  to  discover  it  if  it  can  by  fair  and  honest 
means,  and,  when  discovered,  anyone  has  the  right  to  use  it.  —  Park  v. 
Hartman,  153  Fed.  24;  82  C.  C.  A.  158. 

Chadwick  v.  Covell,  151  Mass.  190;  Tabor  v.  Hoffman,  118  N.  Y.  30;  Peabody 
v.  Norfolk,  98  Mass.  452;  Vulcan  v.  American,  58  Atl.  290. 


SALE  OF  PATENTED  ARTICLE. 

General    Statement    and     Holdings  I       See  —  Assignment     §  149;      License 
§  899  I       §  749 

§  899.     General  Statement  and  Holdings. 

The  distinctions  between  the  sale  of  a  patented  article  and  the  sale  of  any 
right  under  a  patent  are  to  be  noted.  Since  the  owner  of  a  patent  has  a  close 
monopoly,  he  may,  provided  he  gives  the  proper  notice  so  that  the  public 
is  not  ensnared,  sell  or  otherwise  dispose  of  articles  covered  by  his  monopoly 
with  such  restrictions  as  he  may  impose.  While  this  subject  is  related  to  that 
of  license,  it  differs  from  it  in  that  a  license,  generally  speaking,  deals  with 
some  right  under  the  patent,  while  the  sale  and  purchase  of  a  patented  ar- 
ticle with  restrictions  deals  with  the  product  of  the  patent,  rather  than  the 
patent  itself. 

The  condition  against  sales  to  retail  dealers  who  do  not  sign  a  similar 
agreement  governing  sales  by  them  was  imposed  by  complainant  in  the  ex- 
ercise of  its  property  right  in  the  monopoly,  and  for  the  purpose  of  rendering 
it  valuable.  The  complainant  had  the  same  right  to  require  that  such  an 
agreement  be  exacted  from  defendants'  vendees  that  it  had  to  demand  it 
from  defendants.  Any  sale  by  defendants  outside  of  the  terms  of  their 
under-license  or  contract  was  an  invasion  of  complainant's  lawful  monopoly. 
—  National  v.  Schlegel,  128  Fed.  733;  64  C.  C.  A.  594. 

Undoubtedly,  the  general  rule  is  that  if  a  patentee  make  a  structure  em- 
bodying his  invention,  and  unconditionally  make  a  sale  of  it;  the  buyer 
acquires  the  right  to  use  the  machine  without  restrictions,  and,  when  such 
machine  is  lawfully  made  and  unconditionally  sold,  no  restriction  upon  its 
use  will  be  implied  in  favor  of  the  patentee.  By  such  unconditional  sale  the 
machine  passes  without  the  limit  of  the  monopoly.  Adams  v.  Burke,  17  Wall. 
453;  Mitchell  v.  Hawley,  16  Wall.  544.  That  the  complainant  has  attempted 
to  state  a  case  not  within  this  rule  is  very  obvious,  for  it  charges  that  every 
sale  has  been  under  an  express  restriction  as  to  the  use  of  the  invention 


820  THE    FIXED    LAW    OF    PATENTS  §  899 

embodied  in  the  machine.    In  view  of  the  conspicuous  character  of  both  the 
machine  and  the  notice  permanently  affixed  thereon,  everyone  buying  must  be 
conclusively  presumed  to  have  notice  that  the  owners  of  the  patents  intended 
by  the  inscription  on  the  machine  to  grant  only  a  restricted  license  for 
its  use,  and  it  is  difficult  to  see  why  such  purchaser  is  not  to  be  regarded  as 
acquiring  and  accepting  the  structure  subject  to  this  restriction.    The  buyer 
of  the  machine  undoubtedly  obtains  the  title  to  the  materials  embodying 
the  invention,  subject  to  a  reverter  in  case  of  violation  of  the  conditions 
of  the  sale.     But,  as  to  the  right  to  use  the  invention,  he  is  obviously  a 
mere  licensee,  having  no  interest  in  the  monopoly  granted  by  the  letters 
patent.    A  license  operates  only  as  a  waiver  of  the  monopoly  as  to  the  li- 
censee, "  and  estops  the  licensor  from  exercising  its  prohibitory  powers  in 
derogation  of  the  privileges  conferred  by  them  upon  the  licensee."     Rob. 
Pat.  sees.  806-808.    It  has  been  said  that  the  sole  matter  conveyed  in  a  li- 
cense is  the  right  not  to  be  sued.    Hawks  v.  Swett,  4  Hun.  146.    A  licensee 
is  one  who  is  not  the  owner  of  an  interest  in  the  patent,  but  who  has,  by  con- 
tract, acquired  a  right  to  make  or    use  or    sell  machines    embodying   the 
invention.    Gaylor  v.  Wilder,  10  How.  477;   Oliver  v.  Chemical,  109  U.  S. 
75.     All  alienations  of  a  mere  right  to  use  the  invention  operate  only  as 
licenses.      It  must  follow,  therefore,  that  the  purchaser   of   one   of   com- 
plainant's machines  subject  to  a  restricted  use  takes  the  structure  with  a 
license  to  use  the  invention  only  with  staples  made  by  the  patentee.  That  the 
complainant  sells  the  machine  through  jobbers  and  not  directly  to  those 
who  buy  or  use  is  immaterial,  under  the  facts  stated  on  the  face  of  the  bill. 
The  jobber  buys  and  sells  subject  to  the  restriction,  and  both  have  notice 
of  the  conditional  character  of  the  sale,  and  of  the  restriction  on  the  use. 
Supply  Co.  v.  Bullard,  Fed.  Cas.  294;  Cotton  v.  Simmons,  106  U.  S.  89.    That 
the  buyer  enters  into  an  implied  agreement  that  he  will  not  use  the  machine 
contrary  to  the  terms  of  his  license,  and  that  there  is  in  the  agreement  a 
provision  for  the  reverter  of  the  title  to  the  structures,  may  operate  to 
give  the  patentee  a  remedy  under  general  principles  of  law  as  for  damages 
for  breach  of  contract  or  for  recovery  of  the  machine.     It  may  be  that  a 
suit  for  breach  of  contract  would  not  be  a  suit  depending  on  the  patent  laws, 
and  would  therefore  be  cognizable  by  the  state  courts,  as  intimated  in  Hart- 
ell  v.  Tilghman,  99  U.  S.  547,  and  White  v.  Rankin,  144  U.  S.  628.      The 
remedy  of  complainant  may  be  a  double  one;   for  liability  may  rest  either 
upon  the  broken  contract,  or  for  the  tortious  use  of  the  invention.     Rob. 
Pat.  sees.  1225-1250  &  n.     If  a  patentee  may  lawfully  make  and  sell  ma- 
chines embodying  his  invention,  and  restrict  the  use  of  the  invention  in 
respect  of  territory  or  time  or  business,  or  purposes  to  which  it  may  be  put,  or 
material  to  be  used  in  conjunction  therewith,  it  would  seem  very  obvious 
that  the  effect  of  the  restrictions  and  limitations  on  the  use  would  operate  to 
prevent  the  machine  from  passing,  as  in  the  case  of  an  unconditional  sale, 
beyond  the  monopoly  of  the  patent.    The  control  reserved  by  the  patentee 
as  to  the  use  of  the  machine  has  the  effect  of   continuing  it  within  the  pro- 
hibition of  the  monopoly.     The  license  defines  the  boundaries  of  a  lawful 
use,  and  estops  the  licensor  from  the  assertion  of  his  monopoly  contrary  to  its 
terms.  On  the  other  hand,  a  use  prohibited  by  the  license  is  a  use  in  defiance 
of  the  monopoly  reserved  by  the  patentee,  and  necessarily  an  unlawful  inva- 
sion of  the  rights  secured  to  him  by  his  patent.     The  license  would  be  no 
defense  for  a  suit  for  infringement  by  a  use  in  excess  of  its  terms.     The 
patentee  has  the  exclusive  right  of  use,  except  in  so  far  as  he  has  parted  with 
it  by  his  license.     The  essence  of  the  monopoly  conferred  by  the  grant  of 
letters  patent  is  the  exclusive  right  to  use  the  invention  or  discovery  de- 
scribed in  the  patent.     This  exclusive  right  of  use  is  a  true  and  absolute 
monopoly,  and  it  is  granted  in  derogation  of  the  common  right,  and  this  right 
to  monopolize  the  use  of  the  invention  or  discovery  is  the  substantial  property 


§§  900-901 


SPECIFICATION 


821 


right  conferred  by  law,  and  which  the  public  is  under  obligation  to  respect 
and  protect.  "  The  rights  to  make  and  use  or  sell,  are  completely  severable 
rights,  and  involve  the  right  to  confer  on  others  such  qualified  privilege, 
whether  of  making,  of  selling  to  others  or  of  using,  as  he  sees  fit,  whether 
within  specified  limits,  or  under  limitations  of  quantity  or  numbers,  or 
restricted  use."  Dorsey  v.  Bradley,  Fed.  Cas.  4,015.  In  Adams  v.  Burke, 
17  Wall.  453,  the  court  said,  "  The  right  to  manufacture,  the  right  to  sell, 
and  the  right  to  use,  are  each  substantive  rights,  and  may  be  granted  sepa- 
rately, or  conferred  together  by  the  patentee."  —  Heaton  v.  Eureka,  77 
Fed.  288;  25  C.  C.  A.  267. 


SPECIFICATION. 

Statutory  Requirements  §  900 
General  Statement  §  901 
Amendment  §  902  (see  §  52) 
Construction  §  903 
Defective  §  904 
Sufficiency 

Accuracy  §  905 

Alternative  Constructions  §  906 

Ambiguity  §  907 

Distinguishing  New  from  Old  §  908 

Equivalents  §  909  {see  §  373) 

Excessive  §  910 

Function  §  911  (see  §  426) 


Immaterial  Error  §  912 
Old  Parts  §  913 
Process  §  914  (see  §  813) 
Rules  for  Determining  §  915 
Scientific  Knowledge  §  916 
Unambiguousness  §  917 
Two  Inventions,  One  Patent  §  918 
Miscellaneous  Rules  §  919 
See  —  Amendment    §    52;     Attorneys 
§  178;   Claims  §§  212,  223;  Defenses 
§§  309,  317;    Drawings  §  362;    Oath 
§779     , 


§  900.     Statutory  Requirements. 

Before  any  inventor  or  discoverer  shall  receive  a  patent  for  his  invention 
or  discovery,  he  shall  make  application  therefor,  in  writing,  to  the  Com- 
missioner of  Patents,  and  shall  file  in  the  Patent  Office  a  written  description 
of  the  same,  and  of  the  manner  and  process  of  making,  constructing,  com- 
pounding and  using  it,  in  such  full,  clear,  concise,  and  exact  terms  as  to 
enable  any  person  skilled  in  the  art  or  science  to  which  it  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make,  construct,  compound,  and  use 
the  same;  and  in  case  of  a  machine  he  shall  explain  the  principle  thereof, 
and  the  best  mode  in  which  he  has  contemplated  applying  that  principle, 
so  as  to  distinguish  it  from  other  inventions;  and  he  shall  particularly  point 
out  and  distinctly  claim  the  part,  improvement,  or  combination  which  he 
claims  as  his  invention  or  discovery.  The  specification  and  claim  shall  be 
signed  by  the  inventor  and  attested  by  two  witnesses.    R.  S.  4888. 

Every  patent  shall  contain  a  short  title  or  description  of  the  invention  or 
discovery,  correctly  indicating  its  nature  and  design,  and  a  grant  to  the 
patentee,  his  heirs  or  assigns  for  the  term  of  seventeen  years,  of  the  exclusive 
right  to  make,  use  and  vend  the  invention  or  discovery  throughout  the  United 
States  and  the  Territories  thereof,  referring  to  the  specification  for  the 
particulars  thereof.  A  copy  of  the  specification  and  drawings  shall  be  an- 
nexed to  the  patent  and  be  a  part  thereof.  —  R.  S.  4884. 

Sections  490  and  491  provide  for  the  printing,  publication  and  depositing 
of  patent  specifications  in  state  capitols,  district  court  clerk's  offices  and  the 
Library  of  Congress. 

§  901.     General  Statement. 

The  term  "  specification  "  is  used  in  a  two-fold  and  confusing  manner. 
As  used  in  the  statutes  it  means  both  the  descriptive  portion  and  the  claims. 


822  THE    FIXED    LAW   OF    PATENTS  §§  902-903 

As  commonly  used  by  the  Patent  Office  and  by  patent  attorneys  it 
means  the  descriptive  portion  alone.  The  courts  use  the  term  in  both  ways, 
but  the  tendency  in  the  more  recent  decisions  is  to  mark  the  distinction  as 
the  Patent  Office  has  done.  Instances  will  be  found,  moreover,  where  the 
courts  have  made  the  term  cover  description,  claim,  and  drawings  as  well. 

The  relation  of  the  descriptive  portion  —  the  specification  in  the  more 
restricted  sense  —  to  the  claims,  may  not  be  established  in  a  brief  statement. 
While  it  is  a  general  rule  that  the  claims  may  not  be  broadened  by  reference 
to  the  specification,  it  is  none  the  less  true  that,  in  applying  the  doctrine 
of  equivalents  in  the  case  of  a  patent  for  a  generic  invention,  this  rule  is 
often  winked  at.  On  the  other  hand,  the  large  service  of  the  specification 
is  to  locate  the  invention  with  reference  to  the  prior  art,  to  enable  the  courts 
to  delimit  the  claims. 

In  the  examination  of  a  patent  it  is  always  to  be  borne  in  mind  that  it  is 
the  common  practice  of  patent  solicitors  to  draw  the  specification  in  broad 
terms  and  to  submit  to  the  Patent  Office  claims  of  undue  scope.  The  claims 
are  amended,  pruned  and  restricted,  and  often  cover  only  a  fragment  of  the 
subject-matter  of  the  specification.  The  bad  practice  prevails  in  the  Patent 
Office  of  allowing  the  specification  to  stand  with  its  broad  disclosure;  so 
that  it  generally  remains  for  the  lawyer  or  the  court  to  discover,  by  reference 
to  the  claims  and  to  the  file  wrapper  contents,  the  true  scope  of  the  specifi- 
cation. 

This  title,  generally  speaking,  needs  to  be  considered  in  connection  with 
Claims  (§§  187-249)  and  Equivalents  (§§374-380). 

§  902.     Amendment. 

The  fact  that  there  were  changes  made  in  the  specification  does  not  imply 
a  different  invention  disclosed.  (This  applied  to  changes  in  specification 
on  reissue  under  the  old  law  and  does  not  apply  under  the  act  of  1870). 
—  O'Reilly  v.  Morse,  15  How.  62;  14  L.  Ed.  601. 

A  change  in  the  specification  as  filed  in  the  first  instance,  on  the  subse- 
quent filing  for  a  new  one,  whereby  a  patent  is  still  sought  for  the  substance 
of  the  invention  as  originally  claimed,  or  a  part  of  it,  cannot  in  any  wise 
affect  the  sufficiencv  of  the  original  application  or  the  legal  consequence 
flowing  from  it.  —  Godfrey  v.  Eames,  68  U.  S.  317 ;  17  L.  Ed.  684. 

§  903.     Construction. 

Specifications  are  to  be  construed  liberally,  in  accordance  with  the  design 
of  the  constitution  and  patent  laws,  to  promote  the  progress  of  the  useful  arts, 
and  allow  inventors  to  retain  to  their  own  use,  not  anything  which  is  matter 
of  common  right,  but  what  they  have  themselves  created.  —  Winans  v. 
Denmead,  15  How.  330;   14  L.  Ed.  717. 

Grant  v.  Raymond.  6  Pet.  218;  Ames  v.  Howard,  1  Sumn.  482;  Blanchard  v. 
Sprague,  3  Sumn.  535;  Davoll  v.  Brown,  1  Wood.  &  M.  53;  Parker  v.  Haworth, 
4  McLean,  372;  LeRoy  v.  Tatham,  14  How.  181;  Neilson  v.  Hartford,  1  Web. 
P.  C.  341;  Russell  v.  Cowley,  1  Web.  P.  C.  470;  Burden  v.  Winslow,  15  How.  683. 

Doubtless  a  claim  is  to  be  construed  in  connection  with  the  explanation 
contained  in  the  specification,  and  it  may  be  so  drawn  as  in  effect  to  make 
the  specification  an  essential  part  of  it;  but  since  the  inventor  must  particu- 
larly specify  and  point  out  the  part,  improvement  or  combination  which 
he  claims  as  his  own  invention  or  discovery,  the  specification  and  drawings 
are  usually  looked  at  for  the  purpose  of  better  understanding  the  meaning 
of  the  claim,  and  certainly  not  for  the  purpose  of  changing  it  and  making  it 


§  903  SPECIFICATION  823 

different  from  what  it  is.  —  Howe  v.  National,  134  U.  S.  388;    33  L.  Ed. 
963;  10  S.Ct.  570. 

White  v.  Dunbar,  119  U.  S.  47. 

Change  through  disclaimer  cannot  change  interpretation  of  invention.  — 
Grant  v.  Walter,  148  U.  S.  547;  37  L.  Ed.  552;  13  S.  Ct.  699. 

The  patent  is  not  addressed  to  lawyers,  or  even  to  the  public  generally, 
but  to  the  manufacturers  of  steel;  and  any  description  which  is  sufficient 
to  apprise  them  in  the  language  of  the  art  of  the  definite  feature  of  the 
invention,  and  to  serve  as  a  warning  to  others  of  what  the  patent  claims  as  a 
monopoly,  is  sufficiently  definite  to  sustain  the  patent.  He  may  assume  that 
what  was  already  known  in  the  art  of  manufacturing  steel  was  known  to 
them.  —  Carnegie  v.  Cambria,  185  U.  S.  403;  46  L.  Ed.  968;  22  S.  Ct.  698. 

Loom  Co.  v.  Higgins,  105  U.  S.  580. 

In  the  reissue  this  function  of  the  removable  cap  is  omitted  from  the  de- 
scription. The  drawings  remain  the  same,  but  the  retention  there  of  the 
parts  omitted  from  the  description  does  not  help  the  effect  of  the 
omission.  —  Adee  v.  Mott,  55  Fed.  876;  5  C.  C.  A.  288. 

James  v.  Campbell,  104  U.  S.  356. 

While  it  is  admitted,  both  as  to  the  drawings  and  as  to  the  written  specifi- 
cations, that  such  variations  in  an  apparatus,  in  form,  shape  and  propor- 
tions, as  common  sense  or  mechanical  skill  would  suggest  to  one  skilled  in  the 
art  are  inferred,  still  it  carries  the  doctruje  to  its  very  verge;  and,  if  the 
drawings  and  specifications  faii  to  indicate  the  device  to  those  conversant 
with  the  art  and  having  the  mechanical  skill  peculiar  thereto  they  are  in- 
sufficient and  the  patent  does  not  include  the  device.  —  Michigan  v.  Con- 
solidated, 67  Fed.  121 ;  14  C.  C.  A.  232. 

It  may  not  be  denied  that  the  specification  and  the  first  claim  of  the  patent 
are  couched  in  unskilful  language;  but  in  the  case  of  a  novel  and  useful 
invention,  the  terms  employed  should,  if  possible,  receive  a  construction 
which  will  uphold  and  not  defeat  the  patentee's  right  to  that  which  he  has  in 
fact  invented.  —  Red  Jacket  v.  Davis,  82  Fed.  432;  27  C.  C.  A.  204. 

The  language  of  the  Booth  patent  which  we  are  called  upon  to  consider 
is  of  easy  comprehension.  The  following  observations  of  the  Supreme  Court 
are  here  pertinent. 

"  The  words  used  are  not  technical,  either  as  having  a  special  sense  by 
commercial  usage,  nor  as  having  a  scientific  meaning  different  from  their 
popular  meaning.  They  are  the  words  of  common  speech,  and,  as  such,  their 
interpretation  is  within  the  judicial  knowledge,  and  therefore  matter  of 
law."       Marvel  v.  Merritt,  116  U.  S.  11,  12,  6  Sup.  Ct.  207. 

In  Norton  v.  Jensen,  49  Fed.  859,  the  circuit  court  of  appeals  for  the  Ninth 
circuit  well  said: 

"  If  the  reasons  given  by  the  expert  witness  are  deemed  reasonable  and 
satisfactory,  the  court  may  adopt  them ;  but,  if  they  are  unsatisfactory,  the 
court  will  discard  the  testimony,  and  act  upon  its  own  knowledge  and  judg- 
ment. It  is  always  the  duty  of  the  courts  to  construe  the  patent  by  reference 
to  the  language  of  the  claims  and  an  examination  of  the  specification  and 
drawings  accompanying  the  same." 

In  National  v.  Belcher,  71  Fed.  876,  this  court  speaking  by  Judge  Butler, 
in  refusing  to  give  controlling  effect  to  the  testimony  of  a  competent  me- 
chanic, who  stated  that,  by  following  the  directions  of  an  earlier  patent,  he 
had  made  a  device  identical  with  the  one  in  controversy,  said : 


824  THE    FIXED    LAW    OF    PATENTS  §  904 

"  If  a  valuable  patent  might  be  overthrown  in  this  manner  by  the  testi- 
mony of  an  expert,  without  careful  inquiry  into,  and  virtual  demonstra- 
tion of,  its  correctness,  the  rights  of  patentees  would  rest'  upon  the  testi- 
mony of  such  witnesses,  rather  than  the  judgment  of  the  court."  — 
Hanifen  v.  Godshalk,  84  Fed.  649;  28  C.  C.  A.  507. 

It  is  well  settled  that  a  description  in  a  specification  of  details  which  the 
claim  does  not  make  elements  of  the  combination,  and  which  are  not  essen- 
tial to  it,  is  to  be  held  as  onlv  pointing  out  the  better  method  of  using  the 
combination.  —  Boston  v.  Allen,  91  Fed.  248;  33  C.  C.  A.  485. 

In  the  construction  of  a  patent,  the  omission  of  the  patentee  to  point  out 
or  refer  in  his  specifications  or  claims,  to  the  special  feature  which  he  sub- 
sequently maintains  is  the  most  important  part  of  his  invention,  is  very 
significant,  and  should  be  carefullv  scrutinized.  —  MacColl  v.  Knowles,  95 
Fed.  982;  37  C.  C.  A.  346. 

Union  v.  Keith,  139  U.  S.  530;  McClain  v.  Ortmayer,  141  U.  S.  419; 
Deering  v.  Harvester,  155  U.  S.  286;  White  v.  Dunbar,  119  U.  S.  47;  Burns  v. 
Meyer,  100  U.  S.  671. 

A  careful  study  of  the  great  mass  of  words  with  which  the  draughtsman 
of  the  patent  seems  to  have  sought  to  magnify  the  invention,  shows  how 
extremely  slight  is  the  improvement  upon  which  complainant  relies.  — 
Lyons  v.  Drucker,  106  Fed.  416;  45  C.  C.  A.  368. 

The  suggestion  that  the  description  commencing  with  the  words  "  in 
earning  out  my  process  practically  I  proceed  as  follows,"  is  only  one  specific 
example  of  the  invention  is  not  to  be  accepted.  There  is  nothing  in  the  patent 
to  support  the  suggestion.  Undoubtedly  the  specification,  as  a  whole,  evinces 
that  the  invention  is  limited  to  the  para  product.  We  cannot  see  that 
Matheson  v.  Campbell,  78  Fed.  910,  decides  anything  favorable  to  the  con- 
tention of  this  appellant.  The  facts  there  differed  radically  from  the  facts 
in  this  case.  The  patent  (in  suit)  unlike  the  patent  involved  in  Matheson  v. 
Campbell  is  distinctly  limited  to  one  individual  product,  fully  described  and 
unmistakably  identified.  —  Maurer  v.  Dickerson,  113  Fed.  870;  51  C.  C.  A. 
494. 

Where  an  alleged  element  or  characteristic  feature  of  an  invention  is  not 
necessarily  inherent  in  ^he  invention  itself,  the  failure  of  the  patentee  to 
refer  to  such  alleged  feature  is  persuasive  evidence  that  it  is  not  within  the 
scope  of  his  invention,  and,  not  being  disclosed  to  the  public,  it  should  not  be 
read  into  the  patent.  —  Edison  v.  Crouse,  152  Fed.  437;  81  C.  C.  A.  579. 

As  he  describes  only  one  organization  of  means  for  that  purpose,  he  is 
restricted  to  that,  or  substantially  that.  The  liberality  of  construction 
which  we  think  may  be  given  to  his  claim  for  the  purpose  of  interpreting  it 
cannot  be  extended  to  include  all  means  which  might  be  devised  to  accom- 
plish even  a  like  result,  without  such  a  perversion  of  the  rule  applied  as  would 
disturb  other  well-settled  doctrines  of  the  patent  law.  —  American  v.  Cleve- 
land, 158  Fed.  978;  86  C.  C.  A.  182. 

§  904.     Defective. 

The  principle  is  this :  the  omission  to  mention  in  the  specification  something 
which  contributes  only  to  the  degree  of  benefit,  providing  the  apparatus 
would  work  beneficially  and  be  worth  adopting  without  it,  is  not  fatal, 


§  904  SPECIFICATION  825 

while  the  omission  of  what  is  known  to  be  necessary  to  the  enjoyment  of 
the  invention  is  fatal.  —  Sewall  v.  Jones,  91  U.  S.  171 ;  23  L.  Ed.  275. 
Curtis,  sec.  248. 

If  this  were  a  blunder  of  an  ignorant  solicitor,  they  had  ample  opportunity 
to  correct  it  by  reissue ;  but,  having  allowed  it  to  stand  in  their  patent,  they 
must  be  held  to  their  declaration  that  reducing  agents  will  produce  this  re- 
sult. It  has  been  suggested  that  since  the  evidence  shows  that  alpha- 
naphthaline  would  not  be  formed  out  of  the  product  of  the  patent  by  re- 
ducing agents,  and  that  persons  skilled  in  the  art  would  know  that  fact, 
the  entire  test  may  be  rejected  as  nonsensical  surplusage.  But  there  must  be 
some  limit  to  a  court's  functions  in  rewriting  patents.  Assuming  that  all 
the  imperfections  in  this  patent  were  due  to  an  ignorant  solicitor,  remote 
from  his  clients,  —  and  it  may  be  noted  that  there  is  no  evidence  of  this,  — 
it  does  not  follow  that  all  should  be  disregarded.  We  held,  as  to  the  error  and 
omission  of  paragraph  4,  that  the  omission  was  really  supplied  elsewhere 
in  the  patent;  that  the  error  was  harmless,  since  the  skilled  workman 
would  himself  substitute  "  nitrite  "  for  "  nitrate;  "  and  that,  although  the 
error  must  stand  in  the  patent  where  the  patentee's  careless  solicitor  had 
placed  it,  we  would  not  infer  from  its  presence  that  it  was  due  to  a  fraudulent 
design  to  mislead,  formed  and  carried  out  by  the  patentees.  But  here  there 
has  been  an  identifying  test  put  into  the  patent  by  the  solicitor;  the  patentee 
accepts  such  patent,  and  applies  for  no  reissue,  alleging  no  mistake;  and 
the  court  is  asked  to  strike  out  the  test  altogether,  as  ridiculous  surplusage. 
In  the  absence  of  any  authority  for  such  action,  we  are  unwilling  to  establish 
the  precedent.  But  what  their  solicitors  do,  patentees  should  abide.  If 
they  are  dissatisfied  with  the  letters  patent  their  solicitors  obtain,  they  may, 
in  proper  cases,  apply  for  a  reissue;  but  when  they  accept  their  original 
patents  without  objection,  they  must  be  assumed  to  have  assented  to  such 
changes  as  were  made  by  their  solicitors  in  specification  or  claim  while  their 
application  was  on  its  way  through  the  patent  office.  —  Matheson  v.  Campbell, 
78  Fed.  910;  24  C.  C.  A.  284. 

The  applicants  for  this  patent  were  in  Europe  and  their  solicitor  here 
evidently  knew  little,  if  anything,  about  the  chemistry  of  azo  products; 
and  there  is  nothing  in  the  record  to  suggest  that  the  changes  which  the  so- 
licitor made  were  due  to  anything  except  his  own  ignorance,  or  that  he  had 
any  intent  to  mislead  or  to  conceal.  It  is  not  doubted  that  an  applicant 
is  bound  by  the  acts  of  his  solicitor,  but  this  contention  seems  to  go  beyond 
this  wholesome  rule  when  it  seeks  to  void  a  patent,  upon  the  theory  of  a 
fraudulent  concealment  or  fraudulent  misrepresentation  because,  through 
the  solicitor's  ignorance,  the  specifications,  when  describing  the  process  of 
manufacture,  contain  some  immaterial  error  or  omission,  which  could  not 
mislead  a  person  skilled  in  the  art.  —  Matheson  v.  Campbell,  7S  Fed.  910; 
24  C.  C.  A.  284. 

An  immaterial  error  in  the  specification  of  a  patent  which  would  not  mis- 
lead one  skilled  in  the  art  will  not  invalidate  the  patent.  —  Matheson  v. 
Campbell,  78  Fed.  910;  24  C.  C.  A.  284. 

There  is  a  lack  of  anything  in  the  record  showing  what  is  the  pith  of  the 
alleged  invention  or  what  was  the  real  advance  in  the  art,  if  any,  which  it 
accomplished.  The  specification  of  the  patent  was  equally  lacking.  In 
holding  the  patent  bad,  the  court  said:  whether  these  changes  cover  anything 
of  a  substantial  character,  or  whether  they  relate  to  mere  detail  of  form, 
or  to  mere  convenience,  or  to  mere  matter  of  fancy,  the  proofs  in  this  record 
do  not  show.  —  Nutter  v.  Brown,  98  Fed.  892;  39  C.  C.  A.  332. 


826  THE    FIXED    LAW    OF    PATENTS  §  905 

Mfg.  Co.  v.  Holtzer,  67  Fed.  907;  Masten  v.  Hunt,  55  Fed.  78;  Fastener  Co. 
v.  Edgarton,  96  Fed.  4S9. 

No  proportions  are  given,  and,  indeed,  not  a  word  is  said  in  the  patent 
from  which  any  one  desiring  to  use  the  process  described  therein  can  deter- 
mine the  "  definite  quantity  "  or  the  "  exact  quantity  "  referred  to  in  the 
claims.  In  the  absence  of  specific  information  upon  the  subject,  the  desired 
quantity  can,  in  the  nature  of  things,  be  determined  only  by  experiment.  — 
De  Lamar  v.  De  Lamar,  117  Fed.  240:  54  C.  C.  A.  272. 

Mitchell  v.  Tilghman,  19  Wall.  287;  Bene  v.  Jeantet,  129  U.  S.  683;  Howard 
v.  Stove  Works,  150  U.  S.  164;  Schneider  v.  Lovell,  10  Fed.  666;  Welling  v. 
Crane,  14  Fed.  571;  Lockwood  v.  Faber,  27  Fed.  63;  Chemical  v.  Raymond,  71 
Fed.  179. 

Note:  On  this  proposition,  as  applied,  both  Gilbert  and  Morrow,  JJ. 
dissented  from  the  opinion  of  Ross,  J.  There  is  not  the  slightest  doubt  but 
that  the  dissent  was  well  founded. 

If  this  information  (the  volume  of  air  required  and  what  is  meant  by  a 
practically  closed  grate)  can  be  obtained  only  by  experiment,  as  the  experts 
all  agree,  the  defect  is  fatal  to  the  claim.  —  Germer  v.  Art,  150  Fed.  141 ;  80 
C.  C.  A.  9. 

Incandescent  Lamp  Pat.  159  U.  S.  465;   Goodyear  v.  Rubber,  116  Fed.  363. 

If  his  had  been  the  first  of  such  burners,  perhaps  this  would  have  been 
sufficient.  But  in  the  then  state  of  the  art  he  was  bound  to  differentiate  his 
structure  from  those  which  preceded  him ;  and  especially  is  this  so  when  the 
whole  merit  of  his  invention  depends  upon  some  peculiarity  in  the  elements 
he  employs.  We  think  it  may  be  affirmed  as  a  rule  resting  upon  the  funda- 
mental principles  of  patent  law  that,  when  the  essence  of  the  invention  is 
the  location,  form,  size,  or  any  other  characteristic  of  the  means  employed, 
the  patentee  must  distinctly  specify  the  peculiarities  in  which  his  invention 
is  to  be  found.  —  American  v.  Steward,  155  Fed.  731 ;  84  C.  C.  A.  157. 

Store  Co.  v.  Store  Co.  150  Fed.  141;   Bullock  v.  Gen.  Elect.  149  Fed.  409. 

Note:  A  questionable  decision  —  refusing  to  follow  C.  C.  A.  2nd  Circ. 
128  Fed.  599. 

§  905.     Sufficiency  —  Accuracy. 

There  are  some  further  and  laudable  objects  in  having  exactness,  to  this 
extent,  so  as,  when  the  specification  is  presented,  to  enable  the  commissioner 
of  patents  to  judge  correctly  whether  the  matter  claimed  is  new  or  too 
broad;  to  enable  courts,  when  it  is  contested  afterwards  before  them,  to 
form  a  like  judgement;  that  the  public  may  be  able  to  understand  what 
the  patent  is  and  refrain  from  its  use.  —  Hogg  v.  Emerson,  6  How.  437;  12 
L.  Ed.  505. 

3  Wheat.  454;  3  Brod.  &  Bingh,  5;  1  Starkie  N.  P.  199;  1  Starkie  N.  P.  192; 
Web.  on  Pat.  86;  11  East.  105;  3  Merivale,  161;  Evans  v.  Eaton,  3  Wash.  453; 
4  Wash.  9;   Bovill  v.  Moore,  Davis  Cas.  361;   Lowell  v.  Lewis,  1  Mas.  182. 

When  a  man  supposes  he  has  made  an  invention  or  discovery  useful  in  the 
arts  and,  therefore,  the  proper  subject  of  a  patent,  it  is,  nine  times  out  of 
ten,  an  improvement  on  some  existing  article,  process  or  machine,  and  is 
useful  only  in  connection  with  it.  It  is  necesssary,  therefore,  for  him,  in  his 
application  to  the  Patent  Office  to  describe  that  upon  which  he  engrafts 
his  invention,  as  well  as  the  invention  itself;  and,  in  cases  where  the  invention 
is  a  new  combination  of  old  devices,  he  is  bound  to  describe  with  particu- 
larity all  these  old  devices,  and  then  the  new  mode  of  combining  them,  for 
which  he  desires  a  patent.     It  thus  occurs  that,  in  every  application  for  a 


§  905  SPECIFICATION  827 

patent,  the  descriptive  part  is  necessarily  largely  occupied  with  what  is 
not  new,  in  order  to  an  understanding  of  what  is  new.  —  Merrill  v.  Yeomans, 
94  U.  S.  568;  24  L.  Ed.  235. 

Inventors,  before  they  can  receive  a  patent,  are  required  to  file  in  the 
Patent  Office  a  written  description  of  their  invention,  and  of  the  manner  and 
process  of  making  and  using  the  same,  in  such  full,  clear,  concise  and  exact 
terms  as  to  enable  a  person  skilled  in  the  art  to  make,  construct  and  use  the 
same.  —  Bates  v.  Coe,  98  U.  S.  31 ;  25  L.  Ed.  68. 

Accurate  description  of  the  invention  is  required  by  law  for  several  im- 
portant purposes.  (1)  That  the  government  may  know  what  is  granted  and 
what  will  become  public  property  when  the  monopoly  expires.  (2)  That 
licensed  persons  desiring  to  practise  the  invention  may  know,  during  the 
term,  how  to  make,  construct  and  use  the  invention.  (3)  That  other  inventors 
may  know  what  part  of  the  field  of  invention  is  unoccupied.  —  Bates  v.  Coe, 
98  U.  S.  31;  25  L.Ed.  68. 

Gill  v.  Wells,  22  Wall.  27. 

When  the  question  is  whether  a  thing  can  be  done  or  not,  it  is  always  easy 
to  find  persons  ready  to  show  how  not  to  do  it.  But  it  stands  composed 
that  the  thing  has  been  done ;  that  is  to  say,  the  contrivance  which  Webster 
claims  in  his  patent  has  been  applied  and  very  successfully  so.  If  the  thing 
could  not  be  understood  without  the  exercise  of  inventive  power,  it  is  a  little 
strange  that  it  should  have  been  so  easily  adapted  to  looms  on  which  it  has 
been  used  and  produced  such  striking  results.  —  Loom  Co.  v.  Higgins,  105 
U.S.  580;  26  L.  Ed.  1177. 

The  direction  given  in  the  patent  is,  that  the  flange  or  lip  is  to  be  sepa- 
rated from  the  valve  seat  by  about  one  sixty-fourth  of  an  inch  for  an  ordi- 
nary spring,  with  less  space  for  a  strong  spring  and  more  space  for  a  weak 
spring,  to  regulate  the  escape  of  the  steam,  as  required.  As  matter  of  law, 
this  description  is  sufficient  within  the  rule  laid  down  in  Wood  v.  Underhill, 
5  How.  1,  and  it  is  not  shown  to  be  insufficient,  as  a  matter  of  fact.  —  Con- 
solidated v.  Crosby,  113  U.  S.  157;  28  L.  Ed.  939;  5  S.  Ct.  513. 

The  provisions  of  the  law  regulating  the  granting  of  patents,  which  require 
an  inventor  to  advise  the  world  of  his  invention  by  a  specific  description 
thereof,  and,  by  a  definite  claim,  to  obtain  property  in  just  so  much  of  the 
invention  as  he  seeks  to  appropriate,  are  essential  that  it  may  be  known  how 
much  he  has  acquired  as  his  own,  and  how  far  the  public  are  to  be  restricted 
in  the  use  of  the  invention.  This  specific  description  is  open  to  be  examined 
by  all  having  occasion  to  enter  that  field  of  use  or  invention.  —  Ross-Moyer 
v.  Randall,  104  Fed.  355;  43  C.  C.  A.  578, 

Fay  v.  Cordesman,  109  U.  S.  420. 

That  in  the  description  of  a  basic  electrical  process,  mere  relative  state- 
ments of  the  amount  of  power  required  are  sufficient,  see  —  Electric  v.  Pitts- 
burg, 125  Fed.  926;  20  C.  C.  A.  636. 

Inasmuch  as  the  term  "  fire-brick,"  if  used  in  the  patent,  would  not  have 
sufficiently  identified  the  peculiar  product  to  enable  one  skilled  in  the  art 
to  produce  the  patented  product,  but  would  have  obliged  him  to  experiment 
with  various  materials  known  under  said  name,  we  think  the  patentee  was 
justified  in  the  use  of  the  said  word  (chamotte) ;  that  it  may  even  have  been 
necessary  to  a  full  disclosure  of  his  alleged  invention ;  and  that,  in  view  of 
the  evidence,  the  court  correctly  found  that  fire-brick  was  not  necessarily 


828  THE    FIXED    LAW    OF    PATENTS  §§  906-908 

the  equivalent  of  chamotte.  —  Panzl  v.  Battle  Island,  138  Fed.  48 ;  70  C.  C.  A. 
474. 

§  906.     Sufficiency  —  Alternative  Constructions. 

Accordingly  when  the  inventor  says,  "  I  recommend  the  following  method  " 
he  does  not  thereby  constitute  such  method  a  portion  of  his  patent.  His 
patent  may  be  infringed  though  the  party  does  not  follow  his  recommenda- 
tion, but  accomplishes  the  same  end  and  by  another  method.  —  Sewall  v. 
Jones,  91  U.  S.  171 ;  23  L.  Ed.  275. 

The  fact  that  the  inventor  said  he  preferred  one  of  two  methods  de- 
scribed and  claimed  does  not  limit  him  to  that  one  method.  —  Telephone 
Cases,  126  U.  S.  1 ;  31  L.  Ed.*863;  8  S.  Ct.  778. 

It  seems  to  have  been  the  effort  of  the  draftsman  to  frame  the  specifica- 
tions and  claims  so  that  any  desirable  limited  or  broad  construction  may  be 
placed  upon  several  of  the  claims,  and  thus  defeat  a  defense  of  anticipation 
or  of  noninfringement  (a  multiplicity  of  constructions  are  shown  in  the 
drawings).  If  their  enumeration  serves  any  purpose  except  to  point  out  the 
adaptability  of  the  cap  to  use  with  such  parts,  it  can  only  be  to  so  restrict 
the  claim  that  the  making  of  the  cap,  or  its  use  without  them,  would  not 
infringe  the  patent.  —  Crown  v.  Standard,  136  Fed.  841 ;  69  C.  C.  A.  200. 

§  907.     Sufficiency  —  Ambiguity. 

Although  the  specification  may  describe  the  invention  in  technical  terms 
which  would  be  understood  only  by  one  skilled  in  that  particular  art,  and 
although  the  specification  presupposes  a  familiarity  with  the  class  of  machines 
to  which  the  invention  belongs,  and  does  not  describe  the  elements  or  func- 
tions of  such  machine  so  long  as  the  specification  is  technically  intelligible 
it  is  not  open  to  the  attack  of  ambiguity  or  insufficiency.  —  Loom  Co.  v. 
Higgins,  105  U.  S.  580;  27  L.  Ed.  1177. 

§  908.     Sufficiency  —  Distinguishing  New  from  Old. 

In  all  cases  where  his  claim  is  for  an  improvement  on  a  machine  it  will 
be  incumbent  on  him  to  show  the  extent  of  his  improvement,  so  that  a  person 
understanding  the  subject  may  comprehend  distinctly  in  what  it  consists. 
—  Evans  v.  Eaton,  3  Wheat.  454;  4  L.  Ed.  433. 

While  it  is  true  that  the  patentee  is  not  required  to  point  out  and  describe 
in  express  language  what  he  has  invented  that  is  new,  or  the  principle  of  his 
invention,  and  that  it  is  sufficient  if  they  can  be  gathered  by  implication 
from  what  is  not  set  forth,  yet  the  implications  ought  to  be  clear,  so  that 
it  may  not  be  left  in  obscurity  and  doubt  whether  the  patentee  has  in  reality 
invented  and  produced  something  new  if  nothing  appears  by  express  dec- 
laration or  reasonably  clear  implication,  to  show  that  the  patentee  has  made 
some  new  and  valuable  discovery,  has  thrown  a  light  into  a  place  which  before 
was  dark,  and  illumined  what  was  inert,  there  is  nothing  in  the  patent  law 
to  give  him  any  standing.  —  Wells  v.  Curtis,  66  Fed.  318;  13  C.  C.  A.  494. 

Rob.  Pat.  sec.  79. 

A  fatal  defect  in  claim  2  arises  out  of  the  words  "  at  or  near."  We  have 
seen  that  there  is  nothing  in  the  specification  to  limit  the  indefinite  nature 
of  these  words.  Consequently,  there  is  not  enough  in  the  patent  to  meet 
the  requirements  of  the  statute,  pointing  out  the  method  by  which  a  success- 
ful last  can  be  made  in  accordance  with  the  claim,  and  no  useful  last  without 


§§  909-911  SPECIFICATION  829 

a  holder  was  ever  made  until  the  respondent  came  into  the  field.  —  Miller  v. 
Mawhinney,  105  Fed.  523;  44  C.  C.  A.  581. 

It  is  the  duty  of  the  patentee  to  disclose  his  invention,  that  the  public  may 
be  able  to  practise  it  when  the  monopoly  expires.  This  disclosure  should 
include  the  mode  of  operation  as  well  as  a  method  of  construction.  —  Good- 
year v.  Rubber,  116  Fed.  363;  53  C.  C.  A.  583. 

Bates  v.  Coe,  98  U.  S.  31;  Wells  v.  Curtis,  66  Fed.  318;  Kelly  v.  Clow,  89  Fed. 
297. 

If  it  was  an  essential  part  of  his  invention  to  so  weaken  the  enclosing 
head  that  the  entire  head  will  yield,  it  was  his  duty  under  the  statute  to 
distinctly  so  state.  —  Neptune  v.  National,  127  Fed.  563;  62  C.  C.  A.  345. 

Incandescent  Lamp  Pat.  159  U.  S.  465;  Chemical  v.  Raymond,  71  Fed.  179. 

Suppose  the  artisan  wishes  to  construct  a  device  and  does  not  wish  to 
use  that  of  the  patent,  how  shall  he  know  in  what  manner  he  shall  avoid 
the  patent?  Or  suppose  a  purchaser  wishes  to  buy  one.  He  must  look 
out  for  the  patent.  By  what  test  or  comparison  shall  he  be  guided?  These 
inquiries  enforce  the  rule  that  the  patentee  must  describe  with  sufficient  cer- 
tainty the  particulars  of  his  invention  so  that  the  artisan  and  the  public 
may  know  the  character  and  limits  of  it,  and  how  it  is  to  be  distinguished 
from  others  which  the  one  may  name,  or  the  other  purchase  in  safety.  — 
Bullock  v.  General,  149  Fed.  409;  79  C.  C.  A.  229. 

Guidet  v.  Brooklyn,  105  U.  S.  550;  Preston  v.  Manard,  116  U.  S.  661;  Howard 
v.  Detroit,  150  U.  S.  168;    Incandescent  Lamp  Pat.  159  U.  S.  465. 

§  909.     Sufficiency  —  Equivalents. 

An  inventor  cannot  "  speculate  on  the  equivalents  of  his  claimed  invention, 
and  thereby  oblige  the  public  to  resort  to  experiments  in  order  to  determine 
the  scope  of  the  claims  of  his  patent."  —  Panzl  v.  Battle  Island,  138  Fed. 
48;  70  C.  C.  A.  474. 

Matheson  v.  Campbell,  69  Fed.  597;  Matheson  v.  Campbell,  78  Fed.  910. 

The  patentee  took  pains  to  point  out  that  "  the  specific  construction  of 
the  mechanism  shown  is  not  essential."  This  was  unnecessary  precaution; 
the  law  gave  him  ample  protection  in  this  regard.  —  International  v.  Dey, 
142  Fed.  736;  74  C.  C.  A.  68. 

Machine  v.  Murphy,   97  U.  S.  120. 

§  910.     Sufficiency  —  Excessive. 

An  excessive  description  does  not  injure  the  patent  unless  the  addition 
be  fraudulent.  —  Sewall  v.  Jones,  91  U.  S.  171 ;  23  L.  Ed.  275. 
Curtis,  sec.  248. 

§  91 1.     Sufficiency  —  Function. 

If  any  separate  function  had  been  performed  by  the  combination  it  should 
have  been  pointed  out  in  the  specification.  —  Union  v.  Keith  139  U.  S. 
530;  35  L.  Ed.  261;  11  S.  Ct.  621. 

It  is  not  material  that  Gorham  did  not  describe  in  full  all  the  beneficial 
functions  to  be  performed  by  the  parts  of  his  machine,  if  those  functions 
are  evident  in  the  practical  operation  thereof,  and  are  seen  to  contribute 
to  the  success  of  his  device.  It  is  difficult  to  believe  that  a  man  of  Gorham's 
inventive  genius  did  not  perceive  the  useful  functions  which  the  parts  of 


830  THE    FIXED    LAW    OF    PATENTS  §§  912-914 

his  machine  so  well  performed,  even  though  he  did  not  specifically  mention 
them  all.  —  McCormick  v.  Aultman,  69  Fed.  371 ;  16  C.  C.  A.  259. 
Eames  v.  Andrews,  122  U.  S.  40. 

It  is  not  material  that  the  inventor  did  not  describe  in  full  all  the  beneficial 
functions  to  be  performed  by  the  parts  of  his  machine,  if  those  functions 
are  evident  in  the  practical  operation  thereof,  and  are  seen  to  contribute 
to  the  success  of  his  device.  —  McCormick  v.  Aultman,  69  Fed.  371 ;  16 
C.  C.  A.  259. 

Eames  v.  Andrews,  122  U.  S.  40. 

An  inventor  is  not  required  to  describe  in  full  all  the  beneficial  functions 
to  be  performed  by  his  machine.  If  the  thing  accomplished  is  a  necessary 
consequence  of  the  improvement  made  and  described,  making  it  obvious 
that  the  inventor  intended  the  thing  accomplished,  though  not  specifically 
pointed  out,  he  is  entitled  to  the  benefit  thereof  in  construing  his  patent. 
—  Stilwell-Bierce  v.  Eufaula,  117  Fed.  410;  54  C.  C.  A.  584. 

Goshen  v.  Bissell,  72  Fed.  67;   Dowagiac  v.  Superior,  115  Fed.  886. 

It  is  objected  that  there  is  no  reference  in  the  specification  to  the  fact 
that  the  object  of  the  invention  was  to  produce  a  fabric  capable  of  being 
fleeced.  But  it  is  well  settled  that  the  patentee  is  not  obliged  to  state  all 
the  objects  of  his  invention,  and  that  he  is  protected  in  all  the  beneficial 
uses  thereof  within  its  scope;  and  here  no  statement  as  to  fleecing  was 
necessary.  —  Scott  v.  Fisher,  145  Fed.  915;  76  C.  C.  A.  447. 

§  912.     Sufficiency  —  Immaterial  Error. 

If  the  current  moves  and  escapes  just  as  the  inventor  provided  it  should, 
and  by  the  means  he  had  provided,  and  produces  the  useful  result  he  intended, 
can  it  make  any  difference  in  the  validity  of  the  patent  that  he  was  mis- 
taken in  his  explanation  of  the  physical  causes  of  the  downward  direction 
of  the  currents?  —  Emerson  v.  Nimocks,  99  Fed.  737;  40  C.  C.  A.  87. 

§  913.     Sufficiency  —  Old  Parts. 

He  need  not  describe  particularly  and  disclaim  all  the  old  parts.  —  Hogg 
v.  Emerson,  6  How.  437;  12  L.  Ed.  505. 

There  is  nothing  in  the  patent  law  which  compels  the  applicant  to  point 
out  what  elements  are  or  are  not  new  in  the  combination  claimed. — 
Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

§  914.     Sufficiency  —  Process. 

The  specification  must  be  in  such  full,  clear  and  exact  terms  as  to  enable 
one  skilled  in  the  art  to  which  it  appertains  to  compound  and  use  the  inven- 
tion ;  that  is  to  say,  to  compound  and  use  it  without  making  any  experiments 
of  his  own.  —  Wood  v.  Underhill,  5  How.  1 ;  12  L.  Ed.  23. 

Now,  a  machine  which  consists  of  a  combination  of  devices  is  the  subject 
of  invention,  and  its  effects  may  be  calculated  a  priori;  while  a  discovery 
of  a  new  substance  by  means  of  chemical  combinations  of  known  materials 
is  empirical,  and  discovered  by  experiment.  Where  patent  is  claimed  for 
such  discovery,  it  should  state  the  component  parts  of  the  new  manufacture 
claimed  with  clearness  and  precision,  and  not  leave  the  person  attempting  to 
use  the  disco  very  to  find  out  by  experiment.  —  Tvler  v.  Boston,  74  U.  S.  327; 
19  L.  Ed.  93. 


§  915  SPECIFICATION  831 

A  process,  though  new  and  useful,  in  order  that  the  patent  thereon  may  be 
valid  must  describe  the  steps  in  such  full  and  exact  terms,  avoiding  unneces- 
sary prolixity,  as  to  enable  a  person  skilled  in  the  art  to  employ  the  same.  — 
Mowry  v.  Whitney,  81  U.  S.  20;  620  L.  Ed.  860. 

Every  patent  for  a  product  or  composition  of  matter  must  identify  it  so 
that  it  can  be  recognized  aside  from  the  description  of  the  process  for  making 
it,  or  else  nothing  can  be  held  to  infringe  the  patent  which  is  not  made  by 
that  process.  —  Cochrane  v.  Badische,  111  U.  S.  293;  28  L.  Ed.  433;  4  S.  Ct. 
455. 

It  is  immaterial  that  the  philosophy  of  this  process  is  better  understood 
to-day  than  it  was  when  the  patent  was  issued,  so  long  as  the  requirements 
of  the  patent  would  not  be  complied  with  by  one  skilled  in  the  art  unless 
he  did  in  fact  so  use  the  process.  —  Edison  v.  U.  S.  52  Fed.  300;  3  C.  C.  A. 
83. 

Patents  (such  as  this)  should  be  so  plain  under  the  statute  as  that  an 
ordinary  manufacturer  of  aniline  colors,  having  such  ordinary  knowledge 
as  would  exist  in  this  country  at  the  date  of  the  patent,  should  be  enabled 
by  the  instructions  of  that  patent  to  carry  out  successfully  its  processes.  — 
Matheson  v.  Campbell,  78  Fed.  910;  24  C.  C.  A.  284. 

The  statement  of  a  process  upon  the  part  of  a  patentee,  to  be  sustainable, 
must  not  only  clearly  distinguish  the  old  from  the  new,  so  that  the  novelty 
claimed  is  obvious,  but  must  point  out  the  new  steps  so  definitely,  that  one 
wishing  to  use  the  process  for  the  production  of  the  desired  product,  will 
have  a  clear  chart  before  his  eyes.  —  Cerealine  v.  Bates,  101  Fed.  272;  41 
C.  C.  A.  341. 

The  patentee  having  fully  described  one  method  of  conducting  the  process, 
it  is  at  least  questionable  whether  that  is  sufficient  to  secure  them  against 
the  invasion  of  the  broad  process  set  forth  in  the  description  by  a  resort 
to  any  other  methods  of  practising  it.  —  Electric  v.  Carborundum,  102  Fed. 
618;   42  C.  C.  A.  537. 

Tilghman  v.  Proctor,  102  U.  S.  707. 

It  is  well  settled  that  when  a  patent  contains  a  sufficient  disclosure  of  the 
claimed  invention,  it  will  not  be  invalidated  either  by  the  failure  of  the  pa- 
tentee to  state  the  causes  which  produce  the  operation,  or  by  a  mistaken 
statement  as  to  the  reasons  therefor.  The  sufficiency  of  the  disclosure  and 
the  novelty  and  utility  of  the  result  are  the  sufficient  considerations  for  the 
grant.  —  Hemolin  v.  Hardway,  138  Fed.  54;  70  C.  C.  A.  480. 

Inasmuch  as  the  discovery  of  a  new  substance  by  means  of  chemical  com- 
bination is  empirical,  and  results  from  experiment,  the  law  requires  that  the 
description  in  a  patent  should  be  specially  clear  and  distinct.  —  Panzl  v. 
Battle  Island,  138  Fed.  48;  70  C.  C.  A.  474. 

Tyler  v.  Boston,  7  Wall.  327;  Moody  v.  Fiske,  2  Mason,  112;  Matheson  v. 
Campbell,  69  Fed.  597. 

§  915.     Sufficiency  —  Rules  for  Determining. 

We  do  not  say  that  the  party  is  bound  to  describe  the  old  machine ;  but 
we  are  of  opinion  that  he  ought  to  describe  what  his  own  improvement  is, 
and  to  limit  his  patent  to  such  improvement.  —  Evans  v.  Eaton,  7  Wheat. 
356;  5  L.  Ed.  472. 


832  THE    FIXED   LAW   OF   PATENTS  §  915 

The  specification  has  two  objects:  one  is  to  make  known  the  manner  of 
construction  so  as  to  enable  the  artisans  to  make  and  use  it,  and  thus  to  give 
the  public  the  full  benefit  of  the  discovery  after  the  expiration  of  the  patent. 
The  other  is  to  put  the  public  in  possession  of  what  the  party  claims  as  his 
invention,  so  as  to  ascertain  if  he  claims  anything  that  is  in  common  use, 
or  is  already  known,  and  to  guard  against  prejudice  or  injury  from  the  use 
of  an  invention,  which  the  party  may  otherwise  innocently  suppose  not  to 
be  patented.  It  is  therefore,  for  the  purpose  of  warning  an  innocent  pur- 
chaser, or  other  persons  using  a  machine,  of  his  infringement  of  the  patent; 
and  at  the  same  time  taking  from  the  inventor  the  means  of  practising  upon 
credulity,  or  the  fears  of  other  persons  by  pretending  that  his  invention  is 
for  more  than  what  it  really  is,  or  different  from  its  ostensible  objects.  — 
Evans  v.  Eaton,  7  Wheat.  356;  5  L.  Ed.  472. 

The  specification  is  an  integral  part  of  the  letters  patent  under  our  system. 
—  Hogg  v.  Emerson,  6  How.  437 ;  12  L.  Ed.  505. 

Whoever  discovers  that  a  certain  useful  result  will  be  produced,  in  any 
art,  machine,  manufacture  or  composition  of  matter,  by  the  use  of  certain 
means,  is  entitled  to  a  patent  for  it ;  provided  he  specifies  the  means  he  uses  in 
a  manner  so  full  and  exact  that  anyone  skilled  in  the  science  to  which  it 
appertains,  can,  by  using  the  means  he  specifies,  without  any  addition  to 
or  subtraction  from  them,  produce  precisely  the  results  he  describes.  And  if 
this  cannot  be  done  by  the  means  he  describes,  the  patent  is  void.  —  O'Reilly 
v.  Morse,  15  How.  62;   14  L.  Ed.  601. 

It  is  evident  that  the  definiteness  of  a  specification  must  vary  with  the 
■^        nature  of  its  subject.    Addressed  as  it  is  to  those  skilled  in  the  art,  it  may 
leave  something  to  their  skill  in  applying  the  invention,  but  it  should  not 
mislead  them.  —  Mowry  v.  Whitney,  81  U.  S.  620;  20  L.  Ed.  860. 

It  is  required  by  R.  S.  488S  that  the  application  shall  contain  "  a  written 
description  of  the  device  and  of  the  manner  and  process  of  making,  con- 
structing, compounding  and  using  it  in  such  full,  clear,  concise  and  exact 
terms  as  to  enable  any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains or  with  which  it  is  most  nearly  connected,  to  make,  construct,  com- 
pound and  use  the  same."  The  object  of  this  is  to  apprise  the  public  of 
what  the  patentee  claims  as  his  own,  the  courts  of  what  they  are  called  upon  to 
construe,  and  competing  manufacturers  and  dealers  of  what  they  are  bound 
to  avoid.  If  the  description  be  so  vague  and  uncertain  that  no  one  can  tell, 
except  by  independent  experiments,  how  to  construct  the  patented  device, 
the  patent  is  void.  —  Incandescent  Lamp  Pat.  159  U.  S.  465;  40  L.  Ed.  221 ; 
16  S.  Ct.  75. 

Grant  v.  Raymond,  31  U.  S.  218;  Wood  v.  Underhill,  46  U.  S.  1;  Tyler  v. 
Boston,  74  U.  S.  327;  Bene  v.  Jeantet,  129  U.  S.  683;  Howard  v.  Detroit,  150 
U.  S.  164;   Schneider  v.  Lovell,  10  Fed.  666;   Welling  v.  Crane,  14  Fed.  571. 

It  is  true  that  by  a  practice  which  seems  to  have  somewhat  gained  favor 
in  the  courts,  and  which  appears  to  be  preferred  by  some  patent  solicitors, 
a  description  is  held  sufficient,  if  from  it,  aided  by  the  drawings,  the  model, 
and  the  other  parts  of  the  application,  the  invention  can  be  fully  ascertained. 
Rob.  Pat.  sec.  489,  n.  1.  In  other  words,  the  position  seems  to  be  that  what 
can  be  made  certain  by  any  reasonable  amount  of  skill  is  of  itself  certain.  — 
B.  &  S.  Fastener  v.  B.  G.  Fastener,  58  Fed.  818;  7  C.  C.  A.  498. 

He  had  not,  perhaps,  discovered  all  the  materials  or  all  the  matter,  or  all 
the  compositions  which  contained  this  force,  and  which  were  capable  of 
performing  the  necessary  functions,  but  as  to  such  as  he  had  discovered  and 


§§  916-917  SPECIFICATION  833 

put  in  operative  form,  and  such  as  he  could  describe  with  reasonable  clear- 
ness, he  was  entitled  to  protection.  Some  of  these  compositions  stood  the 
test  better,  made  better  linings  and  did  the  work  more  successfully  than 
others;  and  as  to  such  as  he  used,  such  as  he  described,  and  such  as  those 
skilled  in  the  art  could  understand,  he  is  entitled  to  protection.  —  American 
v.  Howland,  80  Fed.  395;  25  C.  C.  A.  500, 

§  916.     Sufficiency  —  Scientific  Knowledge. 

An  inventor  may  be  ignorant  of  the  scientific  principle,  or  he  may  think 
he  knows  it  and  yet  be  uncertain,  or  he  may  be  confident  as  to  what  it  is 
and  others  may  think  differently.  All  this  is  immaterial,  if  by  the  specifica- 
tion the  thing  to  be  done  is  so  set  forth  that  it  can  be  reproduced.  —  Eames  v. 
Andrews,  122  U.  S.  40;  30  L.  Ed.  1064;  7  S.  Ct.  1073. 

The  improvement  consisted  in  a  successful  attempt  to  simplify  the  ma- 
chinery and  lessen  the  large  amount  of  breakage.  It  is  perfectly  true  that 
the  description  in  the  specification  is  confined  to  the  purely  mechanical 
feature  of  construction,  and  other  operative  mechanisms,  and  that  the 
patentee  nowhere  told  why  his  improvement  diminished  breakage.  He 
did  not  know,  or  he  did  not  tell,  why  the  new  method  would  produce  better 
results.  He  simply  told  how  to  construct  a  machine  which  accomplished 
the  end;  but  he  ought  not  to  lose  the  statutory  benefits  which  would  cer- 
tainly belong  to  him,  if  he  had  seen  and  described  the  philosophy  of  his 
machine  accurately.  —  Dixon-Woods  v.  Pfeifer,  55  Fed.  390;  5  CCA.  148. 

If  the  fact  be  that  his  construction  does  effect  the  results,  and  they  are 
beneficial,  he  is  none  the  less  entitled  to  the  benefit  of  his  invention  though 
he  may  not  have  correctly  understood  the  principles  of  its  operation.  — 
Cleveland  v.  Detroit,  131  Fed.  853;  68  C  C.  A.  233. 

Andrews  v.  Cross,  19  Blatchf.  294;  Eames  v.  Andrews,  122  U.  S.  40. 

The  language  of  the  patent  fails  to  state  any  theory  of  the  patentee  as 
to  the  presence  of  air  below  the  screen-plates.  But  where  a  patent  discloses 
means  by  which  a  novel  and  successful  result  is  secured,  it  is  immaterial 
whether  the  patentee  understands  or  correctly  states  the  theory  or  philo- 
sophical principles  of  the  mechanism  which  produces  the  new  result.  —  Van 
Epps  v.  United,  143  Fed.  869;  75  C  C  A.  77. 

Walker  on  Pat.  sec.  175;  Dixon-Woods  v.  Pfeifer,  55  Fed.  390;  National  v. 
Thomson,  106  Fed.  531. 

§  917.     Sufficiency  —  Unambiguousness. 

In  patents  for  machines  the  sufficiency  of  the  description  must,  in  general, 
be  a  question  of  fact  to  be  determined  by  the  jury,  and  this  must  also  be  the 
case  in  compositions  of  matter.  —  Wood  v.  Underhill,  5  How.  1 ;  12  L.  Ed. 
23. 

Modern  inventions  very  often  consist  merely  of  a  new  combination  of  old 
elements  or  devices,  where  nothing  is  or  can  be  claimed  except  the  new  com- 
bination. Such  a  combination  is  sufficiently  described  to  constitute  a  compli- 
ance with  the  letter  and  spirit  of  the  Act  of  Congress  if  the  devices  of  which  it 
is  composed  are  specifically  named,  their  mode  of  operation  given,  and  the 
new  and  useful  result  to  be  accomplished  is  pointed  out,  so  that  those  skilled 
in  the  art  and  the  public  may  know  the  extent  and  nature  of  the  claim  and 
what  the  parts  are  which  cooperate  to  do  the  work  claimed  for  the  inven- 
tion. —  Parks  v.  Booth,  102  U.  S.  96;  26  L.  Ed.  54. 


834  THE   FIXED   LAW   OF   PATENTS  §§  918-919 

Sufficiently  clear  and  descriptive  when  expressed  in  terms  intelligible 
to  persons  skilled  in  the  art.  —  Seabury  v.  Am.  Ende,  152  U.  S.  561 ;  38 
L.Ed.  553;  14S.Ct.683. 

A  specification  is  sufficiently  clear  and  descriptive  when  expressed  in 
terms  intelligible  to  a  person  skilled  in  the  art  to  which  it  relates.  —  Dowagiac 
v.  Superior,  115  Fed.  886;  53  C.  C.  A.  36. 

Loom  Co.  v.  Higgins,  105  U.  S.  580;  Telephone  Cases,  126  U.  S.  1. 

It  is  not  necessary  that  the  description  should  be  clear  to  one  not  skilled 
in  the  art.  —  Wolff  v.  Du  Pont,  134  Fed.  862;  67  C.  C.  A.  488. 
Loom  Co.  v.  Higgins,  105  U.  S.  580. 

§  918.     Two  Inventions,  One  Patent. 

That  an  inventor  may  include  several  separate  inventions  in  a  single  patent 
—  see  Evans  v.  Eaton,  3  Wheat.  454;  4  L.  Ed.  433. 

A  patent  embracing  more  than  one  invention,  if  the  inventions  are  kindred, 
is  not  void.  —  Hogg  v.  Emerson,  11  How.  587;  13  L.  Ed.  824. 

§  919.     Miscellaneous  Rules. 

The  invention  claimed  is  an  improvement  on  an  old  machine,  and  it  is 
properly  taken  for  granted  that  the  practical  mechanic  is  acquainted  with 
the  machine  in  which  the  improvement  is  made.  —  Ives  v.  Hamilton,  92 
U.S.  426;  23  L.  Ed.  494. 

The  patentee  did  not  show  the  court  the  real  advantages  and  extent  of 
his  alleged  improvement,  and  therefore  the  court  was  unable  to  find  in- 
fringement in  anything  which  did  not  respond  precisely  to  the  form  and 
letter  of  the  patent.  —  B.  &  S.  Fastener  v.  Edgarton,  96  Fed.  489 ;  37  C.  C.  A. 
523. 

An  inventor  is  not  called  upon  to  state  in  his  specifications  or  claims 
for  a  patent  all  the  functions  of  his  device,  or  all  the  uses  to  which  his  in- 
vention may  be  put.  When  he  has  plainly  described  and  claimed  his  machine 
or  combination,  and  has  secured  a  patent  for  it,  he  has  the  right  to  every  use 
to  which  his  device  can  be  applied,  and  to  every  way  in  which  it  can  be 
utilized  to  perform  its  function,  whether  or  not  he  was  aware  of  all  these  uses 
or  methods  of  use  when  he  claimed  and  secured  his  monopoly.  —  National 
v.  Interchangeable,  106  Fed.  693;  45  C.  C.  A.  544. 

Roberts  v.  Ryer,  91  U.  S.  150;  Miller  v.  Mfg.  Co.  151  U.  S.  186;  Goshen  v. 
Bissell,  72  Fed.  67;  Stearns  v.  Russell,  85  Fed.  218;  Mfg.  Co.  v.  Neal,  90  Fed. 
725;  Tire  Co.  v.  Lozier,  90  Fed.  732. 

The  specification  fails  to  express  the  state  of  the  art  or  the  nature  or 
purpose  of  the  invention  in  any  comprehensible  manner.  It  deals  with 
numerous  small  details  of  machinery,  and  points  out  the  purpose  in  such 
general  terms  as  not  to  be  practically  useful.  The  record  also  fails  to  explain 
in  a  clear  manner  what  is  thus  omitted  from  the  specification.  (The  patent 
was  held  substantially  bad).  —  U.  S.  Peg- Wood  v.  Sturtevant,  125  Fed. 
378;  60  C.  C.  A.  244. 

The  brevity  and  simplicity  of  his  specification  and  claim  do  not  detract 
from  the  merit  and  validity  of  his  patent,  and  are  a  refreshing  contrast  to 
the  verbosity  of  the  patent  in  suit.  —  Crown  v.  Standard,  136  Fed.  841 ; 
69  C.  C.  A.  200. 


§  920       STATE    STATUTES    AFFECTING    PATENT   RIGHTS        835 

An  inventor  is  not  called  upon  to  describe  every  use  to  which  his  invention 
may  be  put.  If  he  discloses  it  fully  and  clearly  in  one  environment,  the 
change  requiring  no  inventive  skill,  cannot  escape  infringement.  —  Sanitary 
v.  Sprickerhoff,  139  Fed.  801 ;  71  C.  C.  A.  565. 

It  does  not  follow  that,  because  the  patentee  did  not  state  all  the  advan- 
tages of  his  invention,  he  was  ignorant  of  them.  But  if  he  was,  yet  if  those 
advantages  were  really  present,  they  might  properly  be  taken  into  account 
in  estimating  the  novelty  and  utility  of  the  invention.  In  a  number  of  opin- 
ions of  this  court  it  has  been  held  that  it  is  not  necessary  for  the  patentee 
to  describe  in  detail  all  the  beneficial  functions  which  he  claims  will  result 
from  his  invention.  It  is  enough  if  those  functions  are  evident  and 
obviously  contribute  to  the  success  of  the  invention.  —  General  v.  Bullock, 
152  Fed.  427;  81  C.  C.  A.  569. 

McCormick  v.  Aultman,  69  Fed.  371;  Goshen  v.  Bissell,  72  Fed.  67;  Dowagiac 
v.  Superior,  115  Fed.  886;  Goodyear  v.  Rubber,  116  Fed.  363;  Stilwell  v.  Eufaula, 
117  Fed.  410. 


STATE    STATUTES    AND    REGULATIONS    AFFECTING    PATENT 
RIGHTS. 

General   Statement     and   Decisions 


§  920 

See  —  Jurisdiction    §    724;     Letters 


Patent    §    746;     Sale    of    Patented 
Article  §  899 


§  920.     General  Statement  and  Decisions. 

Since  the  right  to  issue  patents  is  specially  delegated  to  the  Federal  Gov- 
ernment by  section  eight  of  article  one  of  the  Constitution,  it  follows  that 
no  state  may  grant  a  patent.  But  it  will  be  seen  from  the  following  decisions 
that  the  Supreme  Court  is  generally  disposed  to  leave  to  the  state  legisla- 
tures and  courts  the  enactment  and  enforcement  of  regulations  affecting  the 
exercise  of  the  patent  monopoly  in  the  protection  of  business  and  morals, 
so  long  as  such  action  does  not  interfere  with  vested  rights  and  the  exercise 
of  legitimate  activity. 

The  right  conferred  upon  the  patentee  and  his  assigns  to  use  and  vend  the 
corporeal  thing  or  article,  brought  into  existence  by  the  application  of  the 
patented  discovery,  must  be  exercised  in  subordination  to  the  police  regu- 
lations which  a  state  has  established.  It  is  not  to  be  supposed  that  Congress 
intended  to  authorize  or  regulate  the  sale  within  a  state  of  tangible  personal 
property  which  the  state  declares  to  be  unfit  and  unsafe  for  use  and  by 
statute  has  prohibited  from  being  sold  or  offered  for  sale  within  its  limits. 
—  Patterson  v.  Commonwealth,  97  U.  S.  501 ;  24  L.  Ed.  1115. 

Gibbons  v.  Ogden,  9  Wheat.  1;  License  Cases,  5  How.  504;  Gilman  v.  Phila- 
delphia, 3  Wall.  713;  Henderson  v.  Mayor,  92  U.  S.  259;  R.  R.  v.  Husen,  95 
U.  S.  465;  Beer  Co.  v.  Mass.  95  U.  S.  25;  U.  S.  v.  Dewitt,  9  Wall.  41;  Com.  v. 
Alger,  7  Cush.  53;  Stephens  v.  Cady,  14  How.  530;  Stevens  v.  Gladding,  17  How. 
453;  Miller  v.  Taylor,  4  Burr,  2303;  Jordan  v.  Overseers,  4  Ohio,  295;  Vasuini 
v.  Paine,  1  Har.  64;  Livingstone  v.  Van  Ingen,  9  Johns,  507. 

That  a  state  may  prohibit  by  statute  the  use  or  sale  of  an  injurious  or 
dangerous  product,  although  the  product  of  a  patent  is  clear.  —  Patterson  v. 
Commonwealth,  97  U.  S.  501 ;  24  L.  Ed.  1115. 

It  is  only  the  right  to  the  invention  or  discovery,  the  incorporeal  right, 
which  the  State  cannot  interfere  with.  Congress  never  intended  that  the 
patent  laws  should  displace  the  police  powers  of  the  states,  meaning  by  that 


836  THE    FIXED    LAW    OF    PATENTS  §  920 

term  those  powers  by  which  the  health,  good  order,  peace  and  general  wel- 
fare of  the  community  are  promoted.  Whatever  rights  are  secured  to  in- 
ventors must  be  enjoyed  in  subordination  to  this  general  authority  of  the 
State  over  all  property  within  its  limits.  —  Webber  v.  Virginia,  103  U.  S. 
344;   26  L.  Ed.  565. 

Patterson  v.  Kentucky,  97  U.  S.  501. 

The  right  conferred  by  the  patent  laws  to  inventors  to  sell  their  inven- 
tions and  discoveries  does  not  take  the  tangible  property,  in  which  the  in- 
vention or  discovery  may  be  exhibited  or  carried  into  effect,  from  the  opera- 
tion of  the  tax  and  license  laws  of  the  State.  The  combination  of  different 
materials  so  as  to  produce  a  new  and  valuable  product  or  result,  or  to  pro- 
duce a  well  known  product  or  result  more  rapidly  and  better  than  before, 
which  constitutes  the  invention  or  discovery,  cannot  be  forbidden  by  the 
State,  nor  can  the  sale  of  the  article  or  machine  produced  be  restricted,  ex- 
cept as  the  production  and  sale  of  other  articles  for  the  manufacture  of  which 
no  invention  or  discovery  is  patented  or  claimed,  may  be  forbidden  or  re- 
stricted. —  Webber  v.  Virginia,  103  U.  S.  344;  26  L.  Ed.  565. 


We  can  find  no  objection  to  the  legislation  of  Virginia  in  requiring 
a  license  for  the  sale  of  sewing  machines,  by  reason  of  the  grant  of  letters 
patent  for  the  invention ;  but  there  is  no  objection  arising  from  its  discrim- 
inating against  non-resident  merchants  and  their  agents.  —  Webber  v. 
Virginia,  103  U.  S.  344;  26  L.  Ed.  565. 

We  think  the  state  has  the  power  (certainly  until  Congress  legislates 
on  the  subject)  with  regard  to  the  provision  which  shall  accompany  the 
sale  or  assignment  of  rights  arising  under  a  patent,  to  make  reasonable 
regulations  concerning  the  subject  calculated  to  protect  its  citizens  from 
fraud.  And  we  think  Congress  has  not  so  legislated  by  the  provisions  regard- 
ing an  assignment  contained  in  the  acts  referred  to.  (R.  S.  4898.)  If  there 
is  a  special  evil,  unusually  frequent  and  easily  perpetrated  when  parties  are 
dealing  in  the  sale  of  rights  existing  or  claimed  to  exist  under  a  patent, 
we  do  not  see  why  a  state  may  not,  in  the  bona  fide  exercise  of  its  powers, 
enact  some  special  statutory  provision  which  may  tend  to  arrest  such  evil, 
and  may  omit  to  enact  the  same  provision  concerning  the  disposal  of  other 
property.  There  is  no  discrimination  which  can  be  properly  so-called,  against 
property  in  patent  rights,  exercised  in  such  legislation.  It  is  simply  an  at- 
tempt to  protect  the  citizen  against  frauds  and  impositions,  which  can  be 
more  readily  perpetrated  in  such  cases  than  in  cases  of  the  sale  or  assign- 
ment of  ordinary  property.  —  Allen  v.  Riley,  203  U.  S.  347;  51  L.  Ed.  216; 
27  S.  Ct.  95. 

Pinney  v.  Bank,  68  Kan.  223;  Brechbill  v.  Randall,  102  Ind.  528;  New  v. 
Walker,  108  Ind.  365;  Tod  v.  Wick,  36  Ohio  370;  Haskell  v.  Jones,  86  Pa.  173; 
Herdic  v.  Roessler,  109  N.  Y.  27;  Wyatt  v.  Wallace,  67  Ark.  575;  State  v.  Cook, 
107  Tenn.  499.  States  in  which  similar  legislation  has  been  held  unconstitutional, 
see,  Holliday  v.  Hunt,  70  111.  109;  Cranson  v.  Smith,  37  Mich.  309;  Wilch  v. 
Phelps,  14  Neb.  134;  State  v.  Lockwood,  43  Wis.  405;  Patterson  v.  Kentucky, 
97  U.  S.  501;   Webber  v.  Virginia,  103  U.  S.  344. 


That  a  state  has  power  to  enact  laws  regulating  the  sale  of  patent  rights 
and  the  giving  of  evidences  of  indebtedness  therefor,  see  —  Woods  v.  Carl,  203 
U.  S.  358;  51  L.  Ed.  219;  27  S.  Ct.  99. 

Allen  i7.  Riley,  203  U.  S.  347. 


§  921  STATUTE   OF   LIMITATIONS  837 

That  the  provisions  of  a  state  law  cannot  affect  rights  acquired  under  a 
patent  of  the  United  States,  is  too  plain  to  require  discussion.  —  U.S.  Con- 
solidated v.  Griffin,  126  Fed.  364;  61  C.  C.  A.  334. 

Columbia  v.  Freeman,  71  Fed.  302. 

A  state  cannot  subtract  from  the  right  conferred  upon  a  patentee  and  his 
assigns  by  the  Federal  laws.  Columbia  v.  Freeman,  71  Fed.  302;  U.  S.  v. 
Griffin,  126  Fed.  364.  For  the  protection  of  the  physical  or  moral  health  of  its 
citizens  a  state  may  restrain  the  use  of  "  the  corporeal  thing  or  article  brought 
into  existence  by  the  application  of  the  patented  discovery."  Patterson  v. 
Kentucky,  97  U.  S.  501,  but  such  a  laying  on  of  hands  does  not  touch  the 
monopoly  of  the  Federal  grant.  —  Rubber  Tire  v.  Milwaukee,  154  Fed.  358; 
83  C.  C.  A.  336. 

STATUTE  OF   LIMITATIONS. 

General    Statement    and    Decisions  I      -See  —  Damages  §  278;   Profits  §  825 
§  921  ' 

§  921.    General  Statement  and  Decisions. 

Prior  to  Jan.  1,  1898,  there  was  no  statutory  limitation  as  to  the  time  of 
recovery  of  profits  or  damages.  By  the  act  of  Mar.  3,  1897,  in  effect  Jan.  1, 
1898,  the  following  was  added  to  sec.  4921 : 

But  in  any  suit  or  action  brought  for  the  infringement  of  any  patent  there 
shall  be  no  recovery  of  profits  or  damages  for  any  infringement  committed 
more  than  six  years  before  the  filing  of  the  bill  of  complaint  or  the  issuing 
of  the  writ  in  such  suit  or  action,  and  this  provision  shall  apply  to  existing 
causes  of  action. 

The  patent  had  some  twelve  years  to  run  after  the  date  of  this  contract. 
The  substance  of  this  contract  is,  that  the  defendants  are  to  pay  in  money 
a  certain  proportion  of  the  ascertained  value  of  the  fuel  saved  at  stated 
intervals  throughout  the  period  of  twelve  years,  if  the  boat  to  which  the 
cut-off  is  attached  should  last  as  long.  The  result  is  that  the  contract  is 
void,  not  being  in  writing.  It  is  a  contract  not  to  be  performed  within  the 
year,  subject  to  a  defeasance  by  the  happening  of  a  certain  event  which  might 
or  might  not  occur  within  that  time.  —  Packet  Co.  v.  Sickles,  72  U.  S.  580; 
18  L.  Ed.  550. 

When  there  is  an  alleged  promise  or  contract  set  up,  a  delay  of  15  years 
brings  the  case  within  the  statute.  —  Leggett  v.  Standard,  149  U.  S.  287; 

37  L.  Ed.  737;  13  S.  Ct.  902. 

McLean  v.  Fleming,  96  U.  S.  245;  Speidel  v.  Henrici,  120  U.  S.  377;  Galliher 
v.  Cadwell,  145  U.  S.  368. 

State  statutes  of  limitations  apply  to  an  action  at  law  for  infringement. 
This  case  is  the  leading  case  upon  this  subject,  and  for  the  first  time  this 
question  has  been  settled  in  the  affirmative  by  the  Supreme  Court.  —  Camp- 
bell v.  Haverhill,  155  U.  S.  601 ;  39  L.  Ed.  280;  15  S.  Ct.  217. 

Hayden  v.  Oriental,  15  Fed.  605;  Bricknall  v.  Hartford,  49  Fed.  372;  Bauser- 
man  v.  Blunt,  147  U.  S.  647;  Metcalf  v.  Watertown,  153  U.  S.  671;  Balkam  v. 
Woodstock,  154  U.  S.  177;  Rudd  v.  Burrows,  91  U.  S.  426;  Indianapolis  v. 
Horst,  93  U.  S.  291;  Phelps  v.  Oaks,  117  U.  S.  236;  Keshkonong  v.  Burton,  104 
U.  S.  668;  Wheeler  v.  Jackson,  137  U.  S.  245;  Adams  v.  Woods,  6  U.  S.  336; 
Bell  v.  Morrison,  26  U.  S.  351;  Vance  v.  Campbell,  66  U.  S.  427;  Hausskencht 
v.  Claypool,  66  U.  S.  431;   Wright  v.  Bales,  67  U.  S.  535;   McElmoyle  v.  Coehn, 

38  U.  S.  312;    Andrea  v.  Redfield,  98  U.  S.  225;    Barney  v.  Oelrichs,  138  U.  S. 
529;  Barton  v.  White,  144  Mass.  281;  Re  Reach,  14  R.  I.  571;  Beatty  v.  Burnes, 


838  THE    FIXED   LAW   OF   PATENTS  §§  922-924 

12  U.  S.  98;  M'Cluny  v.  Silliman,  28  U.  S.  270;  Patterson  v.  Kentucky,  97  U.  S. 
501;  Webber  v.  Virginia,  103  U.  S,  344;  Ager  v.  Murray,  105  U.  S.  126;  Ash- 
croft  v.  Walworth,  1  Holmes,  152. 

We  are  of  opinion  that  the  Court  of  Claims  ruled  correctly  that  the  statute 
of  limitations  was  a  bar  to  any  recovery  for  the  use  of  the  patented  invention 
prior  to  six  years  before  the  action  was  commenced.  —  U.  S.  v.  Berdan,  156 
U.  S.  552;  39  L.  Ed.  530;  15  S.  Ct.  420. 

STATUTES  RELATING  TO  PATENTS  —  THE  PATENT  STATUTE. 


General  Statement  §  922 

Decisions  Relating  to  the  Statutes 

§  923 


See  —  The  Patent  Statute  Digested 
and  Provided  With  the  Patent  Office 
Annotations,  page  849 


§  922.     General  Statement. 

An  elaborate  history  of  the  Patent  Act  will  be  found  in  Root  v.  Railway, 
105  U.  S.  189.  While  all  the  more  important  sections  which  have  been  con- 
nected with  appellate  decisions  are  quoted  at  the  beginning  of  the  several 
titles,  the  entire  Act  has  been  digested  and  arranged  on  the  same  lines  as  the 
decisions,  provided  with  the  Patent  Office  annotations,  and  added  as  a 
separate  chapter. 

§  923.    Decisions  Relating  to  the  Statutes. 

The  object  of  4917  is  to  enable  the  patentee  to  disclaim  what  he  has  not 
invented ;  and  4922  is  to  legalize  and  uphold  suits  brought  on  patents  men- 
tioned in  4917.  —  Hailes  v.  Albany,  123  U.  S.  582;  31  L.  Ed.  284;  8  S.  Ct. 
262. 

A  patent  statute  cannot  be  judicially  settled  until  passed  upon  by  the 
Supreme  Court.  —  Andrews  v.  Hovey,  124  U.  S.  694;  31  L.  Ed.  557;  8  S.  Ct. 
676. 

Wilson  v.  City,  84  U.  S.  473;   Ex  Parte  Wilson,  114  U.  S.  417. 

Sec.  4887  fully  discussed  historically  and  construed  in  Bate  v.  Sulzberger, 
157  U.  S.  1 ;  39  L.  Ed.  601 ;  15  S.  Ct.  508. 
See  also  Bate  v.  Hammond,  129  U.  S.  151. 

To  hold  that  a  treaty  could  not  abrogate  a  prior  statute  regarding  patents 
because  this  particular  legislative  power  is  committed  to  Congress  could  not 
be  permitted  so  long  as  the  general  rule  as  to  statutes  superseding  treaties, 
and  vice  versa,  declared  by  the  Supreme  Court  in  the  way  we  have  pointed 
out  exists.  The  rules  wThich  we  have  explained  with  reference  to  the  relation 
of  treaties  to  statutes,  and  as  to  treaties  becoming  immediately  effective  are 
the  necessary  sequence  of  the  decisions  explained  in  U.  S.  v.  Lee.  185  U.  S. 
213.  —  United  v.  Duplessis,  155  Fed.  842;  84  C.  C.  A.  76. 

THREATS. 

General  Statement  §  924 

§  924.     General  Statement. 

Notice  is  one  thing,  a  threat  quite  another.  A  threat  is  never  justifiable; 
a  notice  may  be  justifiable  or  it  may  amount  to  a  threat.  See  Adriance  v. 
National,  121  Fed.  827,  under  §  516. 


§§  925-926  TITLE  839 

Where  notices  are  given  or  circulars  distributed  in  good  faith  to  warn 
against  infringement,  no  wrong  whatever  is  committed ;  but  where  as  is  here 
averred,  they  are  not  made  or  issued  with  such  intent,  but  in  bad  faith, 
and  solely  for  the  purpose  of  destroying  the  business  of  another,  a  very  dif- 
ferent case  is  presented.  In  such  a  case  property  rights  are  fraudulently 
assailed,  and  a  court  of  chancery,  whose  interposition  is  invoked  for  their 
protection,  should  not  refuse  to  accord  it.  —  Farquhar  v.  National,  102 
Fed.  714;  42  C.  C.  A.  600. 

Emack  v.  Kane,  34  Fed.  46;  Kelly  v.  Mfg.  Co.  44  Fed.  23;  Casey  v.  Union,  45 
Fed.  135;  Toledo  v.  Penn.  54  Fed.  730;  Computing  v.  National,  79  Fed.  962; 
Lewin  v.  Light  Co.  81  Fed.  904;  Railway  v.  McConnell,  82  Fed.  65;  Adriance  v. 
National,  98  Fed.  118;   In  re  Debs,  158  U.  S.  564;  Herbert  v.  Rainey,  54  Fed.  248. 


TITLE. 

General  Statement  §  925 
Actionable  §  926 
Miscellaneous  Rules  §  927 
See —  Abatement  §   21;    Assignment 
§  149;    Bankruptcy  §  182;    Corpora- 
tions §  271;   Defenses  §  306;   Injunc- 


tion §  571;  Letters  Patent  §  746; 
License  §  749;  Licensor  and  Licensee 
§  766;  Mortgage  §  778;  Pleading  and 
Practice  §§  801,  806;  Sale  of  Patented 
Article  §  899 


§  925.     General  Statement. 

It  has  been  shown  under  Assignment  and  License  (§§  150  and  750)  what 
constitutes  a  title  interest  in  a  patent  and  what  constitutes  a  license  interest 
under  a  patent.  The  rule  in  the  Waterman  Case  there  quoted  is  definitive. 
The  statute  makes  no  specific  provision  on  the  subject.  Joint  owners  are 
tenants  in  common,  and  an  accounting  does  not  lie  between  them.  —  Black- 
ledge  v.  Weir,  108  Fed.  71,  infra,  and  cases  cited  thereunder. 

§  926.     Actionable. 

The  holder  of  the  legal  title  only  can  maintain  an  action  against  a  third 
party  who  commits  an  infringement  upon  it.  —  Gayler  v.  Wilder,  10  How. 
477;   13  L.  Ed.  504. 

Nemo  dat  quod  non  habet  applies  to  titles  to  patent  interests.  —  Mitchell 
v.  Hawley,  83  U.  S.  544;  21  L.  Ed.  322. 

Foxley's  case,  5  Co.  109;  2  Black.  Com.  449;  2  Kent's  Com.  224; 
Williams  v.  Merle,  11  Wend.  80;  Syone  v.  Marsh,  6  B.  &  C.  551;  Marsh  v. 
Keating,  1  Bing.  N.  C.  198;  Benj.  Sales,  4;  White  v.  Spettigue,  13  Mus  &  W.  603. 

Inasmuch  as  four  years  have  elapsed  since  the  assignment  was  executed, 
and  the  corporation  has  shown  no  disposition  to  question  its  validity,  and 
inasmuch  as  the  assignment  under  which  the  complainant  derives  title  is  good 
and  sufficient  in  form  to  transfer  a  legal  title  to  the  patent,  we  think  that  no 
third  party  —  not  even  a  person  who  has  a  lien  on  certain  stock  of  the  cor- 
poration —  should  be  permitted  to  challenge  the  validity  of  the  assignment 
in  a  collateral  proceeding.  —  Kansas  City  v.  Devol,  81  Fed.  726;  26  C.  C.  A. 
578. 

2  Morr.  Corp.  sec.  619,  626  and  631. 

In  view  of  the  fact  that  the  infringers  have  no  interest  or  claim  to  said 
patent,  and  that  they  do  not  assert  any  legal  or  equitable  title  to  said  patent 
is  asserted  by  any  one  else,  or  is  in  fact  now  outstanding  in  any  one  else,  it 
might  be  sufficient  to  hold  for  the  purpose  of  this  case,  and  as  against  mere 
infringers,  the  prima  facie  record  title  should  be  sufficient  to  warrant  a 
decree.  —  Goss  v.  Scott,  108  Fed.  253;  47  C.  C.  A.  302. 


840  THE    FIXED    LAW    OF    PATENTS  §927 

The  assignor  was  sole  patentee.  It  will  be  noticed  that  the  assignor  is 
one  of  the  assignees.  But  no  criticism  is  made  upon  that  circumstance. 
We  think  the  objection  stated  is  hypercritical,  and  that  the  intent  and  effect 
of  the  assignment  was  to  transfer  a  one-half  interest  to  the  other  partner, 
nothing  appearing  to  show  that  the  partners  stood  upon  unequal  terms.  — 
Canda  v.  Michigan,  124  Fed.  486;  61  C.  C.  A.  194. 

Suit  by  an  assignee  for  infringement  is  authorized  only  when  the  assign- 
ment is  complete  within  the  statutory  requirement.  The  rights  of  the  pa- 
tentees cannot  be  adjudicated  in  their  absence,  and  the  claimant  of  an  equi- 
table title  or  interest  cannot  maintain  suit  for  infringement  upon  such  title 
alone.  —  Milwaukee  v.  Brunswick-Balke,  126  Fed.  171 ;  61  C.  C.  A.  175. 

Rob.  Pat.  sec.  771;  Curt.  Pat.  sees.  171-2;  Regan  v.  Pacific,  49  Fed.  68; 
Waterman  v.  Mackenzie,  138  U.  S.  252;  Pope  v.  Gormully,  144  U.  S.  248;  Rob. 
Pat.  sec.  1099;    Stimpson  v.  Rogers,  4  Blatchf.  333. 

Whether  the  transfer  of  a  title  to  a  patent  as  a  pledge  for  a  debt  is  such 
alienation  as  will  prevent  the  patentee  from  maintaining  an  action  for 
infringement,  see  —  Westmoreland  v.  Hogan,  167  Fed.  327;  C.  C.  A. 

§  927.     Miscellaneous  Rules. 

The  commissioner  should  decide  upon  the  sufficiency  of  the  title  of  the 
applicant,  and  having  done  so,  the  right  of  applicant  to  compel  issue  is  by 
appeal  and  not  mandamus.  —  Holloway  v.  Whiteley,  71  U.  S.  522 ;  18  L.  Ed. 
335. 

Difference  between  right  to  vend  and  right  to  use.  Rule  (old)  stated  in 
Mitchell  v.  Hawley,  83  U.  S.  544;  21  L.  Ed.  322. 

Bloomer  v.  McQuewan,  14  How.  549;    Chaffee  v.  Belting  Co.  22  How.  223. 

In  the  nature  of  things  lawful  purchase  of  a  patented  article  carries  with  it 
the  lawful  right  to  use  without  restriction  of  time  or  place.  —  Adams  v. 
Burks,  84  U.  S.  453;  21  L.  Ed.  700. 

Bloomer  v.  McQuewan,  14  How.  549;    Mitchell  v.  Hawley,  83  U.  S.  544. 

It  does  not  lie  in  the  mouth  of  an  alleged  infringer  to  set  up  the  right  of 
the  assignee  as  against  a  title  from  the  bankrupt  acquired  with  the  consent 
of  such  assignee.  —  Sessions  v.  Romadka,  145  U.  S.  29;  36  L.  Ed.  609; 
12  S.  Ct.  799. 

When  the  patentee  has  not  parted,  by  assignment,  with  any  of  his  original 
right  but  chooses  himself  to  make  and  vend  a  patented  article  of  manufac- 
ture, it  is  obvious  that  a  purchaser  can  use  the  article  in  any  part  of  the 
United  States,  and,  unless  restrained  by  contract  with  the  patentee,  can 
sell  and  dispose  of  the  same.  It  has  passed  outside  of  the  monopoly,  and  is 
no  longer  under  the  peculiar  protection  granted  to  patented  rights.  —  Keeler 
v.  Standard,  157  U.  S.  659;  39  L.  Ed.  848;  15  S.  Ct.  738. 

Goodyear  v.  Beverly,  1  Cliff.  348. 

The  sale  of  a  patent  right  contains  an  implied  warranty  as  to  title,  and 
an  after  acquired  title  obtained  by  the  vendor  inures  to  the  vendee .  — 
Brush  v.  California,  52  Fed.  945;  3  C.  C.  A.  368. 

Faulks  v.  Kamp,  3  Fed.  989;  Curran  v.  Burdsall,  20  Fed.  835;  Gottfried  v. 
Miller,  104  U.  S.  520;   Smith  v.  Sheley,  12  Wall.  358. 

That  a  legal  title  acquired  with  notice  of  a  prior  equitable  title,  is  inferior 
thereto,  see  — Carroll  v.  Goldschmidt,  83  Fed.  508;  27  C.  C.  A.  566. 


3  928  TRADEMARKS  841 

That  the  acquirement  of  a  title  which  would  protect  a  defendant  against  a 
charge  of  infringement  committed  subsequent  thereto,  cannot  be  made  to 
relate  back  to  acts  done  prior  to  such  acquisition,  see  —  Keene  v.  Barratt,  100 
Fed.  590;   40  C.  C.  A.  571. 

Now,  it  is  certainly  settled  that  partners  may  acquire  legal  title  to  personal 
property  under  a  purchase  made  in  the  firm  name;  and  it  is  not  material 
whether  such  firm  name  is  wholly  fanciful  or  whether  it  contains  the  names 
of  one  or  more  of  the  members  of  the  firm.  —  Fresno  v.  Fruit,  101  Fed.  826; 
42  C.  C.  A.  43. 

Manghaum  v.  Sharpe,  17  C.  B.  (N.  S.)  443. 

It  was  stipulated  between  the  parties  that  if,  on  the  reference,  it  appeared 
that  the  complainant  had  the  full  legal  title,  the  balance  of  the  royalty  should 
be  then  paid.  A  hearing  was  had  before  the  referee  and  he  decided,  in  sub- 
stance, as  the  court  below  held,  that  the  title  was  not  an  absolutely  perfect 
title,  but  was  a  perfectly  good  marketable  title.  Held:  sufficient.  —  Deer- 
ing  v.  Kelly,  103  Fed.  261 ;  43  C.  C.  A.  225. 

The  use  of  an  invention  by  one  of  co-owners  or  by  his  licensees  is  not  the 
exercise  of  the  entire  monopoly  conferred  by  the  patent.  That  can  be 
effected  only  by  the  joint  or  concurrent  action  of  all  owners.  The  separate 
action  of  any  one  owner  or  his  licensees  can  be  an  exercise  or  use  only  of  his 
individual  right,  which,  though  exclusive  of  all  besides,  is  not  exclusive 
of  the  other  patentees,  their  assignees  or  licensees.  On  principle,  therefore, 
there  can  be  no  accountability  on  the  part  of  a  part  owner  of  an  invention 
to  other  owners  for  profits  made  by  the  exercise  of  his  individual  right, 
whether  it  be  by  engaging  in  the  manufacture  and  sale,  or  by  granting 
to  others  licenses,  or  by  assigning  interests  in  the  patent.  —  Blackledge  v . 
Weir,  108  Fed.  71 ;  47  C.  C.  A.  212. 

Clum  v.  Brewer,  Fed.  Cas.  2,909;  Mfg.  Co.  v.  Gill,  32  Fed.  697;  Bloomer  v. 
McQuew&n,  14  How.  539;  Mathers  v.  Green,  34  Beav.  170;  Steers  v.  Rogers,  62 
Law.  J.  Ch.  671;  Vose  v.  Singer,  4  Allen,  226;  Dunham  v.  Railroad,  Fed.  Cas. 
4,151.    (See  also  long  fist  of  cases  cited  in  the  briefs.) 

Joint  owners  of  a  patent  are  at  the  mercy  of  each  other.  Each  may  use 
or  license  others  to  use  the  invention  without  the  consent  of  his  fellows 
and  without  responsibility  to  such  fellows  for  the  profits  arising  from  such 
use  or  license.  —  McDuffee  v.  Hestonville,  162  Fed.  36;  89  C.  C.  A.  76. 

Clum  v.  Brewer,  2  Curt.  523;   Aspinwall  v.  Gill,  32  Fed.  697;   Walk  Pat.  §  294. 

TRADEMARKS. 

General  Statement  and  Cases  Relating  to  Patents  §  928 

§  928.     General  Statement  and  Cases  relating  to  Patents. 

The  trademark  right  is  one  which  arises  by  occupation  under  the  common 
law,  and  is  a  right  wholly  distinct  from  the  right  to  a  patent,  which  arises 
only  under  the  statute  and  in  contravention  of  the  common  law  right.  The 
Federal  law  with  reference  to  the  registration  of  trademarks  creates  no 
monopoly,  but  gives  the  registrant  certain  advantages  in  the  protection 
of  his  right,  all  being  matters  with  which  the  patent  law  is  not  concerned. 

General  rule,  held:  The  generic  right  to  trademark  founded  on  a  patent 
expires  with  the  patent;  but  another  using  it  must  distinguish  his  mark 
to  avoid  unfair  trade.  —  Singer  v.  June,  163  U.  S.  169;  41  L.  Ed.  118;  16 
S.  Ct,  1002. 


842  THE   FIXED   LAW   OF   PATENTS  §  929 

That  the  right  to  a  trademark  founded  upon  a  patent  expires  with  the 
patent,  see  —  Holzapfels  v.  Rahtjens,  183  U.  S.  51; 46  L.Ed. 49;  22  S.Ct.6. 

It  is  true  that  during  the  life  of  the  patent  the  name  of  the  thing  may  also 
be  indicative  of  the  manufacturer,  because  the  thing  can  then  be  manu- 
factured only  by  the  single  person ;  but  when  the  right  to  manufacture  and 
sell  becomes  universal,  the  right  to  the  use  of  the  name  by  which  the  name  is 
known  becomes  equally  universal.  It  matters  not  that  the  inventor  coined 
the  word  by  which  the  thing  has  become  known.  It  is  enough  that  the 
public  has  accepted  that  word  as  the  name  of  the  thing,  for  thereby  the  word 
has  become  incorporated  as  a  noun  into  the  English  language,  and  the  com- 
mon property  to  all.  Whatever  doubts  may  theretofore  have  existed  on  this 
proposition  have  been,  for  the  federal  courts,  put  at  rest  by  the  recent 
decision  of  the  Supreme  Court  in  the  case  of  Singer  v.  June,  163  U.  S.  169.  — 
Centaur  v.  Heinsfurter,  84  Fed.  955 ;  28  C.  C.  A.  581. 

Canal  Co.  v.  Clark,  13  WaU.  311;  Chemical  Co.  v.  Meyer,  139  U.  S.  540;  Mfg. 
Co.  v.  Nairn,  7  Ch.  Div.  834;   Mfg.  Co.  v.  Shakespear,  39  Law.  J.  Ch.  36. 

That  the  right  to  use  a  trade  name  or  designation  specifically  indicating 
the  article  made  under  the  patent,  terminates  with  the  licensee  see  —  Stimpson 
v.  Stimpson,  104  Fed.  893;  44  C.  C.  A.  241. 

The  designers  of  articles  of  manufacture  not  otherwise  entitled  to  receive 
design  patents  cannot  justify  the  issuance  of  such  patents  on  any  theory 
that  the  design  is  a  trade-mark.  —  Rowe  v.  Blodgett,  112  Fed.  61 ;  50  C.  C  A. 
120. 

In  an  action  for  unfair  competition  and  infringement  of  trademark  the 
facts  were  that  defendant,  while  connected  with  complainant,  had  obtained 
a  patent  relating  to  the  product  trademarked  by  the  name  of  the  inventor, 
but  that  he  had  made  no  assignment  of  the  patent,  and  that  complainant 
had  secured  no  rights  thereunder.  The  court  held  that,  defendant  having 
established  an  independent  business,  complainant  could  not  mark  its  articles 
"  patented  "  or  "  owned  by  "  as  referring  to  such  patent,  but  could  use  the 
mark.  —  Hygienic  v.  Way,  137  Fed.  592;  70  C.  C.  A.  553. 

That  a  mere  assignment  of  a  patent  does  not  carry  with  it  a  trade-mark 
formerly  used  to  advertise  the  patented  article,  and  that  when  the  patentee's 
name  is  some  part  of  such  mark,  in  using  his  name  in  connection  with  sub- 
sequent patents  on  similar  articles,  he  must  clearly  distinguish  from  the  pre- 
vious mark,  see  — Reed  v.  Frew  162  Fed.  887;  89  C.  C.  A.  577. 


UNFAIR  TRADE. 

General  Statement  and  Cases  §  929    |       See  —  Pleading  §  794 

§  929.     General  Statement  and  Cases. 

As  will  be  seen  from  the  following  cases,  this  subject  is  a  recent  one  in 
connection  with  patents.  Much  law  is  yet  to  be  made  upon  the  subject. 
It  would  seem  to  the  writer  that  it  must  be  decided  ultimately  that,  as  in 
the  case  of  a  trademark  which  is  the  designation  of  a  patented  article,  the 
right  to  that  which  relates  to  appearance  must  expire  with  the  patent.  It 
would  seem,  also,  that  a  bill  for  infringement  and  for  unfair  trade  would  be 
multifarious,  notwithstanding  the  ruling  in  Adam  v.  Folger,  120  Fed.  260 
(see  §  795). 


§  930  UNPATENTED    INVENTIONS  843 

But  the  trial  judge  seems  to  put  his  conclusion  on  another  ground  —  unfair 
competition  in  trade.  What  is  above  said  applies  to  this  point  in  the  opin- 
ion. Defendants  seem  to  be  acting  in  good  faith,  and  allege  their  ability 
to  respond  in  damages,  which  is  not  questioned.  Bouchat  believes  he  has 
made  an  improvement  in  coat  pads  entitling  him  to  a  patent.  He  has 
obtained  letters  patent  therefor.  This  cost  something,  and  a  company  has 
been  organized  to  manufacture  coat  pads  under  these  letters  patent.  Is  this 
unfair  competition  in  trade?  If  so,  no  improvement  in  a  patented  article 
could  ever  be  made  by  one  versed  in  the  art.  Bouchat  had  worked  at  the 
trade  of  making  coat  pads,  became  familiar  with  the  art,  experienced  in  the 
business,  and  knew  the  demands  of  the  trade.  True,  this  was  when  he  was  a 
stockholder,  owning  one  share,  and  an  employee  of  a  corporation  using  the 
Goldman  patent,  when  he  probably  saw  the  defects  in  the  coat  pads  manu- 
factured under  the  patent,  and  devised  what  he  conceived  to  be  an  improve- 
ment in  coat  pads.  Is  the  fact  that  he  was  such  stockholder  and  employee 
of  a  corporation  using  a  patent  to  deprive  him  of  the  benefit  of  supposed 
inventive  genius?  If  so  no  one  would  probably  ever  make  any  improvements 
on  patented  articles.  —  American  v.  Phoenix,  113  Fed.  629;  51  C.  C.  A.  339. 

Upon  the  claim  made  for  the  appellant,  it  would  be  impossible,  without 
invading  complainant's  right,  to  construct  and  sell  a  book-case  having  the 
most  desirable  characteristics.  Nor  is  it  competent  for  one  person  to  ap- 
propriate to  his  own  purposes  any  common  and  general  characteristics 
of  the  goods  he  manufactures  to  such  an  extent  that  another  shall  be  im- 
pleaded or  embarrassed  in  his  free  right  to  the  use  of  such  characteristics. 
(The  claim  was  unfair  trade  in  making  sectional  book-cases  which  could  be 
used  in  stack  with  those  of  the  complainant).  —  Globe- Wernicke  v.  Macey, 
119  Fed.  696;  56  C.  C.  A.  304. 

The  name  "  Victor  "  was  adopted  to  denote  the  heater  manufactured  in 
accordance  with  the  specifications  of  the  patent.  It  would  be  a  fraud  upon 
the  public,  during  the  life  of  the  patent,  to  permit  a  stranger  to  palm  off  a 
spurious  article  for  the  patented  article  by  means  of  the  identifying  and  gen- 
eric name  of  the  latter.  —  Adam  v.  Folger,  120  Fed.  260;  56  C.  C.  A.  540. 

Singer  v.  June,  163  U.  S.  169;  HolzapfePs  v.  Rahtjens,  183  U.  S.  1;  Centaur  v. 
Heinsfurter,  84  Fed.  955;  Gaily  v.  Mfg.  Co.  30  Fed.  118;  Stimpson  v.  Stimpson, 
104  Fed.  893. 

Of  course  in  this  suit  for  infringement  of  a  patent  we  cannot  inquire  into 
the  apparently  unfair  devices  in  the  way  of  get  up,  ornamentation,  etc.,  by 
which  it  is  suggested  that  the  defendants  are  seeking  to  deceive  the  public  into 
a  belief  that  their  bells  are  those  of  the  complainant.  —  New  Departure  v. 
Sargent,  127  Fed.  152;  62  C.  C.  A.  266. 


UNPATENTED    INVENTIONS. 

Statutory  Provision  §  930 

Assignment  §  931 

Construction  or  Sale  Before  Patent 

§  932 

Employee  §  933 


Non-Assignable  §  934 
Miscellaneous  §  935 
See  ^Abandonment    §    1;     License 
§    756;    Secret   Process   or   Machine 
§  898 


§  930.     Statutory  Provision. 

Every  person  who  purchases  of  the  inventor  or  discoverer,  or,  with  his 
knowledge  and  consent,  constructs  any  newly  invented  or  discovered  machine, 
or  other  patentable  article,  prior  to  the  application  by  the  inventor  or  dis- 
coverer for  a  patent,  or  who  sells  or  uses  one  so  constructed,  shall  have  the 


844  THE    FIXED    LAW    OF    PATENTS  §§  931-934 

right  to  use,  and  vend  to  others  to  be  used,  the  specific  thing  so  made  or 
purchased,  without  liability  therefor.     R.  S.  4899. 

In  addition  to  the  foregoing  certain  rights  in  the  nature  of  shop  licenses 
or  implied  licenses  may  arise  out  of  conditions  of  employment.  See  §  756, 
also  §  366. 

§  931.     Assignment. 

While  it  is,  perhaps,  not  necessary  to  decide  whether  in  any  case  a  sale  of 
an  invention  which  is  never  patented  carries  with  it  anything  of  value, 
we  are  of  opinion  that  the  rights  growing  out  of  an  invention  may  be  sold, 
and  that  in  the  present  case  the  sale,  with  the  right  to  use  it  in  connection 
with  the  existing  patent  and  its  reissues  or  renewals,  protects  defendants 
from  liability.  —  Hammond  v.  Mason,  92  U.  S.  724;  23  L.  Ed.  767. 

A  court  of  chancery  cannot  decree  specific  performance  of  an  agreement 
to  convey  property  which  has  no  existence  or  to  which  defendant  has  no 
title.  —  Kennedy  v.  Hazleton,  128  U.  S.  667;  32  L.  Ed.  576;  9  S.  Ct.  202. 

§  932.    Construction  or  Sale  Before  Patent. 

Under  section  4899  the  following  have  an  implied  license  to  a  machine  made 
before  patent :  (1)  every  person  "  who  purchases  of  the  inventor"  the  machine 
before  his  application  for  a  patent;  (2)  every  person  who  "  with  his  knowl- 
edge and  consent  constructs  "  the  machine  before  application ;  (3)  every 
person  who  sells  a  machine  "  so  constructed,"  that  is  to  say,  which  has  been 
constructed  with  the  knowledge  and  consent  of  the  inventor  by  another 
person;  (4)  every  person  "who  uses  one  so  constructed,"  that  is  to  say, 
constructed  with  the  inventor's  knowledge  and  consent  by  another  person. 

In  order  to  entitle  a  person  to  any  of  these  four  classes  to  use  and  vend 
the  machine,  under  this  section,  the  machine  must  originally  have  been  either 
purchased  from  the  inventor  or  else  constructed  with  his  knowledge  and 
consent  before  his  application  for  a  patent;  and  it  may  well  be  that  a  fraud- 
ulent or  surreptitious  purchase  or  construction  is  insufficient.  —  Wade  v. 
Metcalf,  129  U.  S.  202;  32  L.  Ed.  661 ;  9  S.  Ct.  271. 

Kendall  v.  Winsor,  62  U.  S.  522;  Andrews  v.  Hovey,  124  U.  S.  694. 

When  machine  was  constructed  by  partnership,  of  which  inventor  was  a 
member,  an  implied  license  arises  in  favor  of  the  machine  as  constructed. 
Quaere.  —  Wade  v.  Metcalf,  129  U.  S.  202;  32  L.  Ed.  661 ;  9  S.  Ct.  271. 

§  933.     Employee. 

Where  the  inventor  in  employ  of  defendant  allowed  his  unpatented  in- 
vention to  be  used  with  his  knowledge  and  consent,  according  to  the  terms 
of  the  statute  defendant  has  a  right  to  continue  to  use  those  machines  with- 
out compensation.  —  Dable  v.  Flint,  137  U.  S.  41;  34  L.  Ed.  618;  11 
S.  Ct.  8. 

§  934.     Non- Assignable. 

The  inventor  of  a  new  and  useful  improvement  certainly  has  no  exclusive 
right  to  it,  until  he  obtains  a  patent.  This  right  is  created  by  the  patent, 
and  no  suit  can  be  maintained  by  the  inventor  against  anyone,  for  using  it 
before  the  patent  is  issued.  But  the  discoverer  of  a  new  and  useful  im- 
provement is  vested  by  law  with  an  inchoate  right  to  its  exclusive  use, 
and  which  he  may  perfect  and  make  absolute  by  proceeding  in  the  manner 
which  the  law  requires.  —  Gayler  v.  Wilder,  10  How.  477;    13  L.  Ed.  504. 


§§  935-937  WORDS   AND    PHRASES  845 

The  inventor  who  designedly  and  with  a  view  to  applying  it  indefinitely 
and  exclusively  for  his  own  benefit  withholds  his  invention  from  the  public 
comes  not  within  the  policy  or  objects  of  the  Constitution.  Hence,  if,  during 
such  concealment,  an  invention  similar  to  or  identical  with  his  own  should 
be  made  or  patented  or  brought  into  use  without  a  patent,  the  latter  could 
not  be  inhibited  nor  restricted.  Moreover,  that  which  is  once  given  to  or 
is  invested  in  the  public  cannot  be  recalled  nor  taken  from  them.  —  Kendall 
v.  Winsor,  62  U.  S.  322;  16  L.  Ed.  165. 

In  the  absence  of  protection  by  patent,  no  person  can  monopolize  or  ap- 
propriate to  the  exclusion  of  others  elements  of  mechanical  construction 
which  are  essential  to  the  successful  practical  operation  of  a  manufacture, 
or  which  primarily  serve  to  promote  its  efficiency  for  the  purpose  to  which  it  is 
devoted.  Unfair  competition  is  not  established  by  proof  of  similarity  of  form, 
dimensions,  or  general  appearance  alone.  —  Marvel  v.  Pearl,  133  Fed.  160; 
66  C.  C.  A.  226. 

§  935.     Miscellaneous. 

The  right  of  Duncan  to  the  inventions,  if  they  were  inventions,  existed 
prior  to,  and  continued  independently  of,  the  issuing  of  the  patents.  — 
Siemens-Halske  v.  Duncan,  142  Fed.  157;  73  C.  C.  A.  375. 

Fuller  v.  Berger,  120  Fed.  274;    Victor  v.  The  Fair    123  Fed.  424. 


WORDS  AND  PHRASES. 

"  Means  "  §  936 

"  Substantially,"  etc.  §  937 

"  Whereby  "  Clause  §  938 


See  — Claims  §§  214,  229;    Equiva- 
lents §  373;  Specification  §  900 


§  936.     "  Means." 

Of  course  an  inventor  cannot  by  the  mere  use  of  the  word  "  means,"  in 
reference  to  the  accomplishment  of  a  designated  function  in  a  combination 
claim,  appropriate  any  and  all  kinds  of  mechanism  or  devices  which  may  per- 
form the  specified  function,  or  any  other  mechanism  or  device  than  that 
which  is  described  in  the  patent,  or  which  is  its  equivalent.  Reference  must 
be  had  to  the  specifications  to  ascertain  the  means  which  are  made  an  ele- 
ment of  the  claim  and  are  protected  by  the  patent.  —  American  v.  Hickmott, 
142  Fed.  141 ;  73  C.  C.  A.  359. 

Jones  v.  Munger,  49  Fed.  61;  Williams  v.  Steam,  47  Fed.  322. 

While  the  claims  specify  the  physical  elements  of  the  combinations,  they 
do  not  specify  the  means  whereby  those  elements  perform  their  intended 
functions,  but  call  for  "  means  "  generally  for  performing  them.  By  this 
is  not  meant  all  possible  means  for  accomplishing  the  result.  Such  compre- 
hensiveness of  claim  would  not  be  patentable.  The  claims  in  question  by 
direct  terms  refer  to  the  specification  for  the  means  by  which  the  function, 
purpose,  or  object  of  the  invention  is  to  be  accomplished,  and  to  that  we 
must  look  for  them.  —  Union  v.  Diamond,  162  Fed.  148;  89  C.  C.  A.  172. 

Dryfoos  v.  Wiese,  124  U.  S.  32. 

§  937.     "  Substantially,"  etc. 

The  words  "  substantially  as  set  forth,"  "  substantially  as  described  " 
refer  to  the  specification,  and  tend  to  make  the  claim  specific.  —  Seymour 
v.  Osborne,  78  U.  S.  516;  20  L.  Ed.  33. 


846  THE    FIXED    LAW   OF    PATENTS  §  937 

Expressions  such  as  "  substantially  as  described  "  refer  to  the  specifica- 
tion and  make  the  claim  specific.  —  Railroad  v.  DuBois,  79  U.  S.  47;  20 
L.  Ed.  265. 

Qualifies  the  claim  in  the  light  of  the  specification  to  the  means  pointed 
out.  —  Brown  v.  Guild,  90  U.  S.  181 ;  23  L.  Ed.  161. 

The  words  "  substantially  as  described  "  found  in  each  of  the  first  two 
claims  of  the  original  patent,  properly  confined  those  claims  to  the  shifting 
mechanism  described.  —  Brown  v.  Davis,  116  U.  S.  237;  29  L.  Ed.  659; 
6  S.  Ct.  379. 

The  clause  "  substantially  as  described  "  are  words  of  limitation,  limiting 
the  combination  to  the  specific  elements  described.  —  Pope  v.  Gormully, 
144  U.  S.  248;  36  L.  Ed.  423;  12  S.  Ct.  641. 

Without  determining  what  particular  meaning,  if  any,  should  be  given 
to  these  words  ("  substantially  as  described  or  set  forth  ")  we  are  of  opinion 
that  they  are  not  to  be  construed  as  limiting  the  patentee  to  the  exact 
mechanism  described;  but  that  he  is  still  entitled  to  the  benefit  of  the  doc- 
trine of  equivalents.  —  Hobbs  v.  Beach,  180  U.  S.  383;  45  L.  Ed.  586;  21  S. 
Ct.  409. 

Morley  v.  Lancaster,  129  U.  S.  263;  Discussing,  Seymour  v.  Osborne,  11  Wall. 
516;  Cornplanter  Pat.  23  Wall.  181;  Westinghouse  v.  Boyden,  170  U.  S.  537; 
Mitchell  v.  Tilghman,  19  Wall.  287. 

The  words  "  substantially  as  described,"  do  not  warrant  the  insertion  of 
an  additional  element  in  the  claim.  The  words  must  relate  to  the  matter 
designated.  —  Boynton  v.  Morris,  87  Fed.  225;  30  C.  C.  A.  617. 

Lake  Shore  v.  National,  110  U.  S.  229. 

The  use  of  the  words  "  to  operate  substantially  as  described  "  did  not  serve 
to  read  into  this  claim  every  element  of  the  entire  structure  set  forth  in  the 
specification  precisely  as  described,  and  thus  limit  the  patentee  to  the 
exact  mechanism  described  therein.  —  General  v.  International,  126  Fed. 
755 ;  61  C.  C.  A.  329. 

Hobbs  v.  Beach,  180  U.  S.  383;  Penfield  v.  Potts,  126  Fed.  475;  McCarty  v. 
Lehigh,  160  U.  S.  110. 

The  "  spacing  members  "  are  not  described  in  the  claims  except  by  refer- 
ence to  the  specifications  by  the  words  "  substantially  as  described  "  at 
the  end  of  each  claim.  This  carries  to  the  claims  the  description  of  the  speci- 
fication. —  Sanders  v.  Hancock,  128  Fed.  424;  63  C.  C.  A.  166. 

Soehner  v.  Favorite,  84  Fed.  182;  Stilwell-Bierce  v.  Eufaula,  117  Fed.  410; 
Lamb  v.  Lamb,  120  Fed.  267;   Canda  v.  Michigan,  124  Fed.  486. 

Claims  3  and  8  close  with  the  words  "  substantially  as  set  forth  "  and 
"  substantially  as  described,"  respectively.  This  language  brings  into  the 
claim  the  particular  description  of  the  structure  contained  in  the  specifi- 
cations, and  the  drawings  to  which  they  refer.  —  Lackawanna  v.  Davis- 
Colby,  131  Fed.  68;  65  C.  C.  A.  306. 

The  words  "  as  set  forth  "  in  the  claims  may  grammatically  refer  to  any- 
thing which  precedes  them.  Therefore,  in  view  of  the  just  and  liberal  rules 
of  construction  stated  in  Reece  v.  Globe,  61  Fed.  958,  they  should  not  be  held 
as  restrictive,  or  as  limiting  anything  in  the  claims,  so  as  to  render  ineffectual 


$  938  WORDS   AND    PHRASES  847 

any  part  of  the  conception  involved  in  the  portion  of  the  specification  which 
we  have  quoted.  —  Westinghouse  v.  Stanley,  133  Fed.  167;  68  C.  C.  A.  523. 

Where  there  are  two  claims  in  a  patent  for  two  distinct  improvements 
invented  to  accomplish  different  results,  the  words  "  substantially  as  speci- 
fied "  mean  substantially  as  specified  relative  to  the  subject  matter  of  the 
claim,  and  do  not  necessarily  import  the  description  or  claim  of  either  im- 
provement into  the  claim  for  the  other.  Lake  Shore  v.  Car-Brake,  110  U.  S. 
229;  Page  v.  Land,  49  Fed.  936.  But  these  words  ordinarily  refer  back  to 
and  point  out  elements  in  the  combination  claimed  which  have  sub- 
stantially the  construction  and  operation  described  in  the  specifica- 
tion. Westinghouse  v.  Boyden,  170  U.  S.  537;  Singer  v.  Cramer, 
192  U.  S.  265.  Cases  may  be  found  where  an  element  described  in  the  speci- 
fication which  is  essential  to  the  operation,  in  the  way  portrayed  in  the  speci- 
fication, of  a  combination  or  device  claimed,  has  been  read  into  the  claim 
from  the  specification.  Westinghouse  v.  Boyden,  supra;  Wellman  v.  Mid- 
land, 106  Fed.  221.  The  converse  of  this  proposition,  that  elements  or  de- 
vices described  in  the  specification  may  not  be  imported  into  the  claim,  is 
equally  well  established.  Boynton  v.  Morris,  87  Fed.  227;  General  v.  Inter- 
national, 126  Fed.  755;  Walker  on  Pat.  sec.  182;  Temple  v.  Mfg.  Co.,  30 
Fed.  442.  Nor  are  decisions  wanting  which  have  limited  the  general  lan- 
guage of  a  claim  to  an  element  or  device,  its  construction,  and  operation  as 
set  forth  in  the  specification.  White  v.  Dunbar,  119  U.  S.  47;  Vance  v. 
Campbell,  1  Black,  427;  Stirrat  v.  Mfg.  Co.,  61  Fed.  980;  Adams  v.  Lindell, 
77  Fed.  432.  —  Jewell  v.  Jackson,  140  Fed.  340;  72  C.  C.  A.  304. 

These  words  refer  to  the  whole  claim,  and  import  nothing  into  it  not 
already  there,  either  to  narrow  it,  so  as  to  escape  anticipation,  or  to  broaden 
it  so  as  to  establish  infringement.  The  words  mean  "  substantially  as  speci- 
fied "  in  regard  to  the  combination  which  is  the  subject  of  the  claim.  — 
American  v.  Hickmott,  142  Fed.  141 ;  73  C.  C.  A.  359. 

Lake  Shore  v.  Car-Brake,  110  U.  S.  229. 

These  words  are  sometimes  used  to  limit  a  claim  and  sometimes  to  enlarge 
its  operation,  but  seldom  to  practically  defeat  what  was  the  real  invention 
of  the  patentee.  —  Draper  v.  American,  161  Fed.  728;  88  C.  C.  A.  588. 


§  938.    "  Whereby  "  Clause. 

On  referring  to  the  specification  we  find  it  there  expressly  declared  that 
the  invention  consisted  "  in  the  construction  and  combination  of  parts  herein- 
after fully  described  and  claimed,  reference  being  had  to  accompanying  draw- 
ing." Nowhere,  either  expressly  or  by  reasonable  inference,  is  it  asserted 
that  simply  the  best  or  preferable  construction  of  the  whole  or  any  part 
of  the  combination  is  what  is  described.  —  Singer  v.  Cramer,  192  U.  S.  265; 
48  L.  Ed.  437;  24  S.  Ct.  291. 

Note:  It  would  seem  that  this  holding  carries  the  rule  of  words  of  limita- 
tion farther  than  any  other  case,  making  it  include  the  stock  phrases  above 
quoted. 

The  evidence  demonstrates  —  and  quite  likely  Russell  understood  —  that 
some  cement  mixtures,  commercially  speaking,  were  more  desirable  than 
others;  and  the  word  "cement,"  used  in  the  claims  must  be  understood 
when  considered  in  connection  with  the  statutory  description  as  referring 
generally  to  cementitious  mixtures  having  the  qualities  which  he  describes. 
—  American  v.  Howland,  80  Fed.  395;  25  C.  C.  A.  500. 


848  THE   FIXED   LAW   OF   PATENTS  §  938 

We  are  not  permitted  in  litigations  of  this  character,  to  give  any  word 
a  particular  interpretation  when  it  is  fairly  capable  of  another  one  which 
will  enable  the  patent  to  cover  the  actual  invention.  —  Hatch  v.  Electric, 
100  Fed.  975;  41  C.  C.  A.  133. 

To  ignore  the  express  functional  limitation  of  the  claim,  viz.  "  whereby 
they  are  enabled  to  fold  back  into  the  case  side  by  side,"  would  be  to  create 
a  new  claim;  not  interpret  one  granted.  —  Anthony  v.  Ginnert,  108  Fed. 
396;  47  C.  C.  A.  426. 

The  specification  states  that  they  are  "  preferably  "  of  the  same  area, 
and  that  they  are  "  preferably  "  to  overlap  completely,  in  order  to  eliminate 
any  limitation  that  might  be  implied  if  these  terms  had  not  been  used  and 
thus  to  save  the  claim  from  being  narrowed  so  that  a  can  otherwise  like  that 
described  would  not  be  covered  by  its  terms.  —  Ironclad  v.  Dairyman's,  143 
Fed.  512;  74  C.  C.  A.  372. 


THE  PATENT  STATUTE  DIGESTED 

AND   PROVIDED   WITH  THE  PATENT  OFFICE  ANNO- 
TATIONS. 

ABANDONMENT 
Application  —  Delay  for  One  Year. 

All  applications  for  patents  shall  be  completed  and  prepared 
for  examination  within  one  year  after  the  filing  of  the  application, 
and  in  default  thereof,  or  upon  failure  of  the  applicant  to  prosecute 
the  same  within  one  year  after  an  action  thereon,  of  which  notice 
shall  have  been  given  to  the  applicant,  they  shall  be  regarded  as 
abandoned  by  the  parties  thereto,  unless  it  be  shown  to  the  satis- 
faction of  the  Commissioner  of  Patents  that  the  delay  was  unavoid- 
able. —  R.  S.  4894  (Amend.  Mar.  3,  1897). 

Note:  The  Act  of  Mar.  3,  1897,  changed  the  period  of  time 
from  "  two  years  "  to  one  year. 

Bar  to  Patent. 

Any  person  who  has  invented  *  *  *  unless  the  same  is  proved 
to  have  been  abandoned,  may  *  *  *  obtain  a  patent  therefor.  — 
R.  S.  4866  (Amend.  Mar.  3,  1897). 

Delay  for  One  Year  —  Unavoidable  —  Excuses. 

(In  sound  discretion  of  Commissioner).  —  R.  S.  4894. 

Renewal  Applications  —  Question  of  Fact. 

*  *  *  And  upon  the  hearing  of  renewed  applications  preferred 
under  this  section,  abandonment  shall  be  considered  as  a  question 
of  fact.  —  R.  S.  4897. 

ACTIONS 
Equity  —  Questions  of  Fact  —  Trial  by  Jury. 

Sec.  2.  That  said  courts  (U.  S.  circuit  courts)  when  sitting  in 
equity  for  the  trial  of  patent  causes,  may  empanel  a  jury  of  not  less 
than  five  and  not  more  than  twelve  persons,  subject  to  such  general 
rules  in  the  premises  as  may,  from  time  to  time,  be  made  by  the 
Supreme  Court,  and  submit  to  them  such  questions  of  fact  arising 
in  such  causes  as  such  circuit  court  shall  deem  expedient. 

And  the  verdict  of  such  jury  shall  be  treated  and  proceeded 
upon  in  the  same  manner  and  with  the  same  effect  as  in  the  case 


850 


THE    FIXED    LAW    OF    PATENTS 


of  issues  sent  from  chancery  to  a  court  of  law  and  returned  with 
such  findings.  —  R.  S.  4921  (Amend.  Mar.  3,  1897). 

Equity  —  To  Compel  Issue  of  Patent. 

Whenever  a  patent  on  application  is  refused,  either  by  the 
Commissioner  of  Patents  or  by  the  Supreme  Court  of  the 
District  of  Columbia  upon  appeal  from  the  Commissioner,  the 
applicant  may  have  remedy  by  bill  in  equity;  and  the  court  having 
cognizance  thereof,  on  notice  to  adverse  parties  and  other  due  pro- 
ceedings had,  may  adjudge  that  such  applicant  is  entitled,  according 
to  law,  to  receive  a  patent  for  his  invention,  as  specified  in  his 
claim,  or  for  any  part  thereof,  as  the  facts  in  the  case  may  appear. 
And  such  adjudication,  if  it  be  in  favor  of  the  right  of  the  applicant, 
shall  authorize  the  Commissioner  to  issue  such  patent  on  the  appli- 
cant filing  in  the  Patent  Office  a  copy  of  the  adjudication,  and  other- 
wise complying  with  the  requirements  of  law.  In  all  cases,  where 
there  is  no  opposing  party,  a  copy  of  the  bill  shall  be  served  on 
the  Commissioner;  and  all  the  expenses  of  the  proceeding  shall  be 
paid  by  the  applicant,  whether  the  final  decision  is  in  his  favor  or 
not.    [See  §  629,  If  9.]—  R.  S.  4915. 


In  what  district  the  bill  should  be 
brought  considered.  —  Butterworth  v. 
Hill,    114  U.  S.,   128-133. 

On  what  questions  bill  in  equity  is 
appropriate.  —  Butterworth  v.  Hoe, 
112  U.  S.,  50-60. 

Bill  in  equity  is  governed  by  the  rules 
of  delay  specified  in  sec.  4894.  —  Gandy 
v.  Marble,  122  U.  S.,  432-440. 


Invention  must  be  patentable  to  get 
favorable  decision.  —  Hill  v.  Wooster, 
132  U.  S.,  693. 

May  raise  new  questions.  —  Christie 
v.  Seybold,  55  F.  R.,  69. 

Canceled  claims,  burden  of  proof  of 
invention.  —  Durham,  6  App.  D.  C, 
78;    71  O.  G.,  601. 


Expedition  of  —  By  Heads  of  Departments  of  Government. 

(See  Application  —  Expedition  of)  —  (Act  Mar.  3,  1897). 

Infringement  —  Action  on  the  Case. 

Damages  for  the  infringement  of  any  patent  may  be  recovered 
by  action  on  the  case,  in  the  name  of  the  party  interested  either 
as  patentee,  assignee,  or  grantee.  And  whenever  in  any  such  action 
a  verdict  is  rendered  for  the  plaintiff,  the  court  may  enter  judgment 
thereon  for  any  sum  above  the  amount  found  by  the  verdict  as 
the  actual  damages  sustained,  according  to  the  circumstances  of 
the  case,  not  exceeding  three  times  the  amount  of  such  verdict, 
together  with  the  costs.  —  R.  S.  4919. 

Infringement  —  Plea. 
(See  Defenses,  R,  S.  4920). 

Interfering  Patents. 

(See  Interfering  Patents,  R.  S.  4918). 

Qui  Tarn  Actions  —  Jurisdiction  —  Penalty. 

(See  Marking  Articles  Patented,  R.  S.  4901). 


THE    PATENT   STATUTE   DIGESTED  851 

ADMINISTRATOR 
Oath  by. 

(See  Executor). 

AFFIDAVITS  AND  DEPOSITIONS 

(See  Interferences,  R.  S.  4905). 

AMENDMENT 
Application  —  Reissue. 
(See  Reissue,  R.  S.  4916). 

Disclaimer. 

R.  S.  4917. 

Duty  of  Commissioner. 

R.  S.  481. 

Examination  of  Application. 

R.  S.  4893. 

Requirement  —  General. 

R.  S. 


Rules  for  Patent  Office  Practice. 

R.  S.  483. 

When  to  be  Made. 

R.  S.  4894. 

ANNUAL  REPORT 

Commissioner  of  Patents. 

(See  Commissioner  of  Patents). 

ANTICIPATION 
General  Provision. 

R.  S.  4886. 

Prior  Foreign  Invention  —  When  Not. 

Whenever  it  appears  that  a  patentee,  at  the  time  of  making 
his  application  for  the  patent,  believed  himself  to  be  the  original 
and  first  inventor  or  discoverer  of  the  thing  patented,  the  same  shall 
not  be  held  to  be  void  on  account  of  the  invention  or  discovery, 
or  any  part  thereof,  having  been  known  or  used  in  a  foreign  country, 
before  his  invention  or  discovery  thereof,  if  it  had  not  been  patented 
or  described  in  a  printed  publication.  —  R.  S.  4923. 


852  THE    FIXED   LAW   OF    PATENTS 

APPEALS 

Applications  —  Examiners-in-Chief . 

Every  applicant  for  a  patent  or  for  the  reissue  of  a  patent,  any 
of  the  claims  of  which  have  been  twice  rejected,  and  every  party 
to  an  interference,  may  appeal  from  the  decision  of  the  primary 
examiner,  or  of  the  examiner  in  charge  of  interferences  in  such  case, 
to  the  board  of  examiners-in-chief;  having  once  paid  the  fee  for 
such  appeal.  —  R.  S.  4909. 

Certiorari  —  Supreme  Court. 

And  excepting  that  in  any  such  case  as  is  hereinbefore  made 
final  in  the  circuit  court  of  appeals  it  shall  be  competent  for  the 
Supreme  Court  to  require,  by  certiorari  or  otherwise,  any  such  case 
to  be  certified  to  the  Supreme  Court  for  its  review  and  determina- 
tion with  the  same  power  and  authority  in  the  case  as  if  it  had  been 
carried  by  appeal  or  writ  of  error  to  the  Supreme  Court.  —  C.  C.  A. 
Act,  Feb.  19,  1897. 

Circuit  Court  of  Appeals. 

Sec.  2.  That  there  is  hereby  created  in  each  circuit  a  circuit 
court  of  appeals,  which  shall  consist  of  three  judges,  of  whom  two 
shall  constitute  a  quorum,  and  which  shall  be  a  court  of  record 
with  appellate  jurisdiction,  as  is  hereafter  limited  and  established. 

Sec.  4.  That  no  appeal,  whether  by  writ  of  error  or  otherwise, 
shall  hereafter  be  taken  or  allowed  from  any  district  court  to  the 
existing  circuit  courts,  and  no  appellate  jurisdiction  shall  hereafter 
be  exercised  or  allowed  by  said  existing  circuit  courts,  but  all 
appeals  by  writ  of  error  or  otherwise,  from  said  district  courts,  shall 
only  be  subject  to  review  in  the  Supreme  Court  of  the  United 
States  or  in  the  circuit  court  of  appeals  hereby  established,  as  is 
hereinafter  provided,  and  the  review,  by  appeal,  by  writ  of  error, 
or  otherwise,  from  the  existing  circuit  courts,  shall  be  had  only  in 
the  Supreme  Court  of  the  United  States  or  in  the  circuit  courts  of 
appeals  hereby  established  according  to  the  provisions  of  this 
act  regulating  the  same. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives,  of 
the  United  States  of  America  in  Congress  assembled,  That  the 
second  section  of  an  Act  to  establish  circuit  courts  of  appeals, 
passed  March  third,  eighteen  hundred  and  ninety-one,  be  amended 
so  that  the  clause  therein  which  now  reads,  "  The  costs  and  fees 
in  the  Supreme  Court  now  provided  for  by  law  shall  be  costs  and 
fees  in  the  circuit  courts  of  appeals,"  shall  read,  "  The  costs  and 
fees  in  each  circuit  court  of  appeals  shall  be  fixed  and  established  by 
said  court  in  a  table  of  fees,  to  be  adopted  within  three  months 
after  the  passage  of  this  Act:  Provided,  That  the  costs  and  fees  so 
fixed  by  any  court  of  appeals  shall  not,  with  respect  to  any  item, 
exceed  the  costs  and  fees  now  charged  in  the  Supreme  Court." 
Each  circuit  court  of  appeals,  shall,  within  three  months  after  the 


THE  PATENT  STATUTE  DIGESTED 


853 


fixing  and  establishing  of  costs  and  fees  as  aforesaid,  transmit 
said  table  to  the  Chief  Justice  of  the  United  States,  and  within  one 
year  thereof  the  Supreme  Court  of  the  United  States  shall  revise 
said  table,  making  the  same,  so  far  as  may  seem  just  and  reason- 
able, uniform  throughout  the  United  States.  The  table  of  fees, 
when  so  revised,  shall  thereupon  be  in  force  for  each  circuit. 

Sec.  6.  That  the  circuit  courts  of  appeals  established  by  this 
act  shall  exercise  appellate  jurisdiction  to  review  by  appeal  or  by 
writ  of  error  final  decision  in  the  district  court  and  the  existing 
circuit  courts  in  all  cases  other  than  those  provided  for  in  the 
preceding  section  of  this  act,  unless  otherwise  provided  by  law, 
and  the  judgments  or  decrees  of  the  circuit  courts  of  appeals  shall 
be  final  in  all  cases  in  which  the  jurisdiction  is  dependent  entirely 
upon  the  opposite  parties  to  the  suit  or  controversy,  being  aliens 
and  citizens  of  the  United  States  or  citizens  of  different  States; 
also  in  all  cases  arising  under  the  patent  laws,  under  the  revenue 
laws,  and  under  the  criminal  laws  and  in  admiralty  cases,  excepting 
that  in  every  such  subject  within  its  appellate  jurisdiction  the  circuit 
court  of  appeals  at  any  time  may  certify  to  the  Supreme  Court 
of  the  United  States  any  questions  or  propositions  of  law  concern- 
ing which  it  desires  the  instruction  of  that  court  for  its  proper 
decision.  And  thereupon  the  Supreme  Court  may  either  give  its 
instruction  on  the  questions  and  propositions  certified  to  it,  which 
shall  be  binding  upon  the  circuit  courts  of  appeals  in  such  case, 
or  it  may  require  that  the  whole  record  and  cause  may  be  sent  up 
to  it  for  its  consideration,  and  thereupon  shall  decide  the  whole 
matter  in  controversy  in  the  same  manner  as  if  it  had  been  brought 
there  for  review  by  writ  of  error  or  appeal. 

And  excepting  that  in  any  such  case  as  is  hereinbefore  made 
final  in  the  circuit  court  of  appeals  it  shall  be  competent  for  the 
Supreme  Court  to  require,  by  certiorari  or  otherwise,  any  such  case 
to  be  certified  to  the  Supreme  Court  for  its  review  and  determina- 
tion with  the  same  power  and  authority  in  the  case  as  if  it  had  been 
carried  by  appeal  or  writ  of  error  to  the  Supreme  Court. 

In  all  cases  not  hereinbefore,  in  this  section,  made  final  there 
shall  be  of  right  an  appeal  or  writ  of  error  or  review  of  the  case 
by  the  Supreme  Court  of  the  United  States  where  the  matter  in 
controversy  shall  exceed  one  thousand  dollars  besides  costs.  But 
no  such  appeal  shall  be  taken  or  writ  of  error  sued  out  unless 
within  one  year  after  the  entry  of  the  order,  judgment,  or  decree 
sought  to  be  reviewed.  —  Act  Mar.  3,  1891,  amend.  Feb.  19, 
1897. 


Will  not  be  allowed  from  court  of 
appeals  in  regard  to  the  registration  of  a 
trade-mark.  —  South  Carolina  v.  Sey- 
mour, 153  U.  S.,  353. 

Actual  defendants  may  appeal  with- 
out special  consent  of  nominal  defen- 
dants.— Andrews  t>.Thum,64  F.  R.,  149. 

Appeal  on  interlocutory  motions.  — 
Columbus  v.  Robbins,  52  F.  R.,  337; 
148  U.  S.,  266. 

Rule  of  comity  between  appeal  court 


and  circuit  court.  —  Wanamaker  v. 
Mfg.  Co.,  53  F.  R.,  791. 

Interlocutory  order  or  decree  and  final 
decree  defined.  —  Standard  v.  Crane, 
77  O.  G.,  811. 

Appeal  must  be  taken  within  thirty 
days.  —  Raymond  v.  Royal,  76  F.  R., 
465. 

Jurisdiction  on  appeal.  —  Boston  v. 
Pullman,  51  F.  R.,  305.  Richmond  v. 
Atwood,  48  F.  R.,  910. 


854  THE    FIXED    LAW    OF    PATENTS 

Court  of  Appeals,  D.  C. 

That  the  determination  of  appeals  from  the  decision  of  the 
Commissioner  of  Patents,  now  vested  in  the  general  term  of  the 
Supreme  Court,  of  the  District  of  Columbia,  in  pursuance  of  the 
provisions  of  section  780  of  the  Revised  Statutes  of  the  United 
States  relating  to  the  District  of  Columbia,  shall  hereafter  be  and 
the  same  is  hereby  vested  in  the  court  of  appeals  created  by  this 
act. 

And  in  addition  any  party  aggrieved  by  a  decision  of  the  Com- 
missioner of  Patents  in  any  interference  case  may  appeal  there- 
from to  said  court  of  appeals.  —  Sec.  9,  Act  of  Feb   9,  1893. 

Examiners-in-Chief  —  Duties  of. 

*  *  *  On  the  written  petition  of  the  appellant,  to  revise  and 
determine  upon  the  validity  of  the  adverse  decisions  of  examiners 
upon  applications  for  patents,  and  for  reissues  of  patents,  and  in 
interference  cases  *  *  *  —  R.  S.  482. 

Examiners-in-Chief  to  Commissioner  of  Patents. 

If  such  party  is  dissatisfied  with  the  decision  of  the  Examiners- 
in-Chief,  he  may,  on  payment  of  the  fee  prescribed,  appeal  to  the 
Commissioner  in  person. 

Interferences  —  From   Examiner    of   Interferences  —  From  Ex- 
aminers-in-Chief. 

Whenever  an  application  is  made  for  a  patent  which,  in  the 
opinion  of  the  Commissioner,  would  interfere  with  any  pending 
application,  or  with  any  unexpired  patent,  he  shall  give  notice 
thereof  to  the  applicants,  or  applicant  and  patentee,  as  the  case 
may  be,  and  shall  direct  the  primary  examiner  to  proceed  to  deter- 
mine the  question  of  priority  of  invention.  And  the  Commissioner 
may  issue  a  patent  to  the  party  who  is  adjudged  the  prior  inventor, 
unless  the  adverse  party  appeals  from  the  decision  of  the  primary 
examiner,  or  of  the  board  of  examiners-in-chief,  as  the  case  may  be, 
within  such  time,  not  less  than  twenty  days,  as  the  Commissioner 
shall  prescribe.  —  R.  S.  4904. 

Interferences  —  To  Examiners-in-Chief. 

Every  applicant  for  a  patent  oi\  for  the  reissue  of  a  patent, 
any  of  the  claims  which  have  been  twice  rejected,  and  every  party 
to  an  interference,  may  appeal  from  the  decision  of  the  primary 
examiner,  or  of  the  examiner  in  charge  of  interferences  in  such  case, 
to  the  board  of  examiners-in-chief,  having  once  paid  the  fee  for 
such  appeal.  —  R.  S.  4909. 

Interferences  —  Time  Allowed. 

(See  R.  S.  4904). 

Jurisdiction  —  Circuit  Court  of  Appeals  and  Supreme  Court. 

That  no  appeal,  whether  by  writ  of  error  or  otherwise,  shall 
hereafter  be  taken  or  allowed  from  any  district  court  to  the  existing 


THE    PATENT    STATUTE    DIGESTED  855 

circuit  courts,  and  no  appellate  jurisdiction  shall  hereafter  be 
exercised  or  allowed  by  said  existing  circuit  courts,  but  all  appeals 
by  writ  of  error  or  otherwise,  from  said  district  courts,  shall  only  be 
subject  to  review  in  the  Supreme  Court  of  the  United  States  or  in 
the  circuit  court  of  appeals  hereby  established,  as  is  hereinafter 
provided,  and  the  review,  by  appeal,  by  writ  of  error,  or  other- 
wise, from  the  existing  circuit  courts,  shall  be  had  only  in  the 
Supreme  Court  of  the  United  States  or  in  the  circuit  courts  of 
appeals  hereby  established  according  to  the  provisions  of  this  act 
regulating  the  same.  —  C.  C.  A.  Act,  Feb.  19,  1897. 

Patent  Causes  —  Regardless  of  Amount  Involved. 

A  writ  of  error  may  be  allowed  to  review  any  final  judgment  at 
law,  and  an  appeal  shall  be  allowed  from  any  final  decree  in  equity 
hereinafter  mentioned,  without  regard  to  the  sum  or  value  in 
dispute: 

First.  Any  final  judgment  at  law  or  final  decree  in  equity  of 
any  circuit  court,  or  of  any  district  court  acting  as  a  circuit  court, 
or  of  the  supreme  court  of  the  District  of  Columbia,  or  of  any  Terri- 
tory, in  anv  case  touching  patent-rights  or  copyrights.  —  R.  S. 
699. 

Writ  of  error  to  a  State  court  con-  I  293-297.  Felix  v.  Scharnweber,  125 
sidered.  —  Wood  v.  Skinner,  139  U.  S.,  |  U.  S.,  54-60.        * 

Rejected  Applications  —  Supreme  Court,  D.  C. 

If  such  party,  except  'a  party  to  an  interference,  is  dissatisfied 
with  the  decision  of  the  Commissioner,  he  may  appeal  to  the 
Supreme  Court  of  the  District  of  Columbia,  sitting  in  banc.  —  R. 
S.  4911. 

Sec.  9.  That  the  determination  of  appeals  from  the  decision 
of  the  Commissioner  of  Patents,  now  vested  in  the  general  term 
of  the  supreme  court  of  the  District  of  Columbia,  in  pursuance 
of  the  provisions  of  section  780  of  the  Revised  Statutes  of  the 
United  States,  relating  to  the  District  of  Columbia,  shall  hereafter 
be  and  the  same  is  hereby  vested  in  the  court  of  appeals  created 
by  this  act. 

And  in  addition  any  party  aggrieved  by  a  decision  of  the  Com- 
missioner of  Patents  in  any  interference  case  may  appeal  therefrom 
to  said  court  of  appeals.  —  Act  Feb.  9,  1893,  (R.  S.  D.  C.  780). 

Supreme  Court,  D.  C.  —  Notice  of  to  Commissioner. 

When  an  appeal  is  taken  to  the  Supreme  Court  of  the  District 
of  Columbia,  the  appellant  shall  give  notice  to  the  Commissioner, 
and  file  in  the  Patent  Office  within  such  time  as  the  Commissioner 
shall  appoint,  his  reasons  of  appeal,  specifically  set  forth  in  writing. 
—  R.  S.  4912. 

Supreme  Court,  D.  C.  —  Notice  —  Proceedings  —  Evidence. 

The  court  shall,  before  hearing  such  appeal,  give  notice  to  the 
Commissioner  of  the  time  and  place  of  the  hearing,  and  on  receiving 


856 


THE    FIXED    LAW    OF    PATENTS 


such  notice  the  Commissioner  shall  give  notice  of  such  time  and 
place  in  such  manner  as  the  court  may  prescribe,  to  all  parties  who 
appear  to  be  interested  therein.  The  party  appealing  shall  lay 
before  the  court  certified  copies  of  all  the  original  papers  and  evi- 
dence in  the  case,  and  the  Commissioner  shall  furnish  the  court 
with  the  grounds  of  his  decision,  fully  set  forth  in  writing,  touching 
all  the  points  involved  by  the  reasons  of  appeal.  And  at  the  request 
of  any  party  interested,  or  of  the  court,  the  Commissioner  and  the 
examiners  may  be  examined  under  oath,  in  explanation  of  the 
principles  of  the  thing  for  which  a  patent  is  demanded.  —  R.  S. 
4913. 

Supreme  Court,  D.  C.  —  Return  —  Certificate  entered  in  P.  0. 

The  court,  on  petition,  shall  hear  and  determine  such  appeal, 
and  revise  the  decision  appealed  from  in  a  summary  way,  on  the 
evidence  produced  before  the  Commissioner,  at  such  early  and 
convenient  time  as  the  court  may  appoint;  and  the  revision  shall 
be  confined  to  the  points  set  forth  in  the  reasons  of  appeal.  After 
hearing  the  case  the  court  shall  return  to  the  Commissioner  a 
certificate  of  its  proceedings  and  decision,  which  shall  be  entered 
of  record  in  the  Patent  Office,  and  shall  govern  the  further  proceed- 
ings in  the  case.  But  no  opinion  or  decision  of  the  court  in  any 
such  case  shall  preclude  any  person  interested  from  the  right  to 
contest  the  validity  of  such  patent  in  any  court  wherein  the  same 
may  be  called  in  question.  —  R.  S.  4914. 

APPLICANT 
Notice  to  —  Of  Interference. 

(See  Interference  —  Notice  of,  R.  S.  4904). 

Oath  of  —  Before  whom  Taken. 

(See  Oath,  R.  S.  4892). 

APPLICATION 
General  Provisions  —  Requirements. 

Before  any  inventor  or  discoverer  shall  receive  a  patent  for 
his  invention  or  discovery,  he  shall  make  application  therefor, 
in  writing,  to  the  Commissioner  of  Patents,  and  shall  file  in  the 
Patent  Office  a  written  description  of  the  same,  and  of  the  manner 
and  process  of  making,  constructing,  compounding,  and  using  it, 
in  such  full,  clear,  concise,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  or  with  which 
it  is  most  nearly  connected,  to  make,  construct,  compound,  and 
use  the  same;  and  in  case  of  a  machine,  he  shall  explain  the  prin- 
ciple thereof,  and  the  best  mode  in  which  he  has  contemplated 
applying  that  principle,  so  as  to  distinguish  it  from  other  inventions; 
and  he  shall  particularly  point  out  and  distinctly  claim  the  part, 
improvement,  or  combination  which  he  claims  as  his  invention  or 
discovery.  The  specification  and  claim  shall  be  signed  by  the 
inventor  and  attested  by  two  witnesses.  —  R.  S.  4888. 


THE    PATENT    STATUTE    DIGESTED 


857 


Application  must  be  made  by  the  in- 
ventor. —  Kennedy  v.  Hazelton,  128 
U.  S.,  667. 

Claim  limited  by  description.  —  Mit- 
chell v.  Tilghman,  19  Wall.,  287 
Hailes  v.  Van  Womer,  29  Wall.,  353 
Fuller  v.  Yentzer,  94  U.  S.,  288,  299 
Merrill  v.  Yeomans,  94  U.  S.,  568 
R.  R.  Co.  v.  Mellon,  104  U.  S.,  112;  Yale 
v.  Greenleaf,  117  U.  S.,  554;  White  v. 
Dunbar,  119  U.  S.,  47;  Snow  v.  Lake 
Shore,  121  U.  S.,  617;  Haines  v.  Mc- 
Laughlin, 135  U.  S.,  584;  Howe  v. 
National,  134  U.  S.,  388;  McClain  v. 
Ortmayer,  141  U.  S.,  419;  Knapp  v. 
Morss,  150  U.  S.,  221;  Am.  Fibre  v. 
Port  Huron,  72  F.  R.,  516;  Gould  v. 
Trojan,  74  F.  R.,  794;  Groth  v.  Inter- 
national, 61  F.  R.,  284. 

Composition  of  matter;  how  identified 
in  claim.  —  Cochrane  v.  Badische, 
111  U.  S.,  293. 

Claims  defined  and  construed.  —  Estey 
v.  Burdett,  109  U.  S.,  633-640;  Bus- 
sey  v.  Excelsior,  110  U.  S.,  131;  Rail- 
way v.  Car  Brake,  110  U.  S.,  229;  Con- 
solidated v.  Kunkle,  119  U.  S.,  45; 
Dryfoos  v.  Wiese,  124  U.  S.,  32;  Bragg 
v.  Fitch,  121  U.  S.,  478;  Plummer  v. 
Sargent,  120  U.  S.,  442.  Joyce  v. 
Chillicothe,  127  U.  S.,  557;  Sargent  v. 
Burgess,  129  U.  S.,  19;  Crescent  v. 
Gottfried,  128  U.  S.,  158;  Boyden  v. 
Westinghouse,  70  F.  R.,  816;  McCor- 
mick  v.  Aultman,  73  O.  G.,  1999.  Na- 
tional v.  Am.,  53  F.  R.,  367;  Sayre  v. 
Scott,  55  F.  R.,  971;  Judd  v.  Fowler,  61 
F.  R.,  821;  Le  Favour  v.  Rice,  62 
F.  R.,  393;  Kilbourne  v.  Bingham,  50 
F.  R.,  697;  Norton  v.  Jensen,  49  F.  R., 
859;   Illinois  v.  Robbins,  52  F.  R.,  215. 

Claims  to  pioneer  invention  con- 
strued. —  Morley  v.  Lancaster,  129 
U.  S.,  263;  Tuttle  v.  Claflin,  76  F.  R., 
227;  Dederick  v.  Siegmund,  51  F.  R., 
233. 

Claims    construed     by    prior     art.  — 
Washing  Mach.  v.  Tool  Co.,  20  Wall. 
342.     Zane  v.  Soffe,   110  U.   S.,   200 
Thompson  v.  Boisselier,  114  U.  S.,  1 
Grier  v.  Wilt,  120  U.  S.,  412;    Wollen- 
sack  v.  Reiher,  115  U.  S.,  87;    Deering 
v.  Winona,  155  U.  S.,  286;    Schuyler  v. 
Elec,  66  F.  R.,  313;    Fox  v.  Perkins, 
52  F.  R.,  205;    West.  Elec.  v.  Sperry, 
58  F.  R.,  186;    Blount  v.  Bardsley,  75 
F.  R.,  674. 

Definiteness  of  specificatio  n. — 
Mowry  v.  Whitney,  14  Wall.,  620; 
Sewall  v.  Jones,  91  U.  S.,  171;    Eames 


v.  Andrews,  122  U.  S.,  40;  Telephone 
Cases,  126  U.  S.,  1;  Bene  v.  Jeantet, 
129  U.  S.,  683;  Western  v.  Ansonia, 
114  U.  S.,  447;  Lawther  v.  Hamilton, 
124  U.  S.,  1;  Lalance  v.  Habermann, 
53  F.  R.,  375;  Dixon  Woods  v.  Pfeifer, 
55  F.  R.,  390;  Long  v.  Pope,  75  F.  R., 
835;   Edison  v.  U.  S.,  52  F.  R.,  300. 

Deceptive  patent  void.  —  Carlton  v. 
Bokee,  17  Wall.,  463. 

Effect  of  words  "  substantially  as 
described  "  considered.  —  Brown  v. 
Davis,  116  U.  S.,  237;  Columbus  v. 
Robbins,  64  F.  R.,  384;  Westinghouse 
v.  Edison,  63  F.  R.,  588;  Campbell  v. 
Richardson,  76  F.  R.,  576. 

Effect  of  words  "  for  the  purpose  set 
forth  "  considered.  —  Day  v.  Fair 
Haven,  132  U.  S.,  98. 

Elements  not  imported  into  a  claim 
by  construction  to  make  out  a  case  of 
novelty  or  infringement.  —  Wollensack 
v.  Sargent,  151  U.  S.,  221;  McCarty  v. 
Lehigh,  160  U.  S.,  110. 

Element  positively  included  in  the 
claim  is  made  essential.  —  Fay  v. 
Cordesman,  109  U.  S.,  408;  Yale  v. 
Sargent,  117  U.  S.,  373;  Watson  v. 
Cincinnati,  132  U.  S.,  161;  Wright  v. 
Yuengling,  155  U.  S.,  47;  Coupe  v. 
Royer,  155  U.  S.,  565. 

Indefinite  claim,  patent  invalid.  — 
Electric  v.  McKeesport,  159  U.  S., 
465. 

Interpretation  of  specification  and 
drawing.  —  Caverly  v.  Deere,  66  F.  R., 
305. 

Limitations  in  patent  resulting  from 
answer  to  requirement  of  Office.  —  Sar- 
gent v.  Hall,  114  U.  S.,  63;  Sutter  v. 
Robinson,  119  U.  S.,  530;  Shepard  v. 
Carrigan,  116  U.  S.,  593;  McCormick 
v.  Graham,  129  U.  S.,  1;  Phoenix  v. 
Spiegel,  133  U.  S.,  360;  Roemer  v. 
Peddie,  132  U.  S.,  313;  Morgan  v. 
Albany,  152  U.  S.,  425;  Lehigh  v. 
Kearney,  158  U.  S.,  461;  American  v. 
Pennock,  17  S.  C.  Reporter,  1;  Reece  v. 
Globe,  61  F.  R.,  958. 

Must  be  claimed  as  well  as  shown.  — 
Roemer  v.  Bernheim,  132  U.  S.,  103. 

New  matter  introduced  by  amendment 
condemned.  —  Eagleton  v.  Mfg.  Co., 
Ill  U.  S.,  490;  Chicago  v.  Sayles,  97 
U.  S.,  554;  Michigan  v.  Consolidated, 
67  F.  R.,  121;  Long  v.  Pope,  75  F.  R., 
835. 

Useful  application  test  of  a  patent's 
validity.  —  Klein  v.  Russell,  19  Wall., 
433. 


Completion  of. 

All  applications  for  patents  shall  be  completed  and  prepared 
for  examination  within  one  year  after  the  filing  of  the  application, 


858 


THE    FIXED    LAW    OF    PATENTS 


and  in  default  thereof,  or  upon  failure  of  the  applicant  to  prosecute 
the  same  within  one  year  after  any  action  therein,  of  which  notice 
shall  have  been  given  to  the  applicant,  they  shall  be  regarded  as 
abandoned  by  the  parties  thereto,  unless  it  be  shown  to  the  satis- 
faction of  the  Commissioner  of  Patents  that  such  delay  was  un- 
avoidable. —  R.  S.  4894. 


Statutes  in  regard  to  delay  apply  to 
bill  in  equity  under  sec.  4915.  —  Gandy 
v.  Marble,  122  U.  S.,  432-440. 


Decision  of  Office  final.  —  West  Elec. 
v.  Sperry,  58  F.  R.,  186. 


Drawings  —  When  Required. 

When  the  nature  of  the  case  admits  of  drawings,  the  applicant 
shall  furnish  one  copy  signed  by  the  inventor  or  by  his  attorney 
in  fact,  and  attested  by  two  witnesses,  which  shall  be  filed  in  the 
Patent  Office;  and  a  copy  of  the  drawing,  to  be  furnished  by  the 
Patent  Office,  shall  be  attached  to  the  patent  as  a  part  of  the  speci- 
fication. —  R.  S.  4889. 


Examination  of  —  Novelty  —  Utility  —  Importance. 

On  the  filing  of  any  such  application  and  the  payment  of  the 
fees  required  by  law,  the  Commissioner  of  Patents  shall  cause  an 
examination  to  be  made  of  the  alleged  new  invention  or  discovery; 
and  if  on  such  examination  it  shall  appear  that  the  claimant  is 
justly  entitled  to  a  patent  under  the  law,  and  that  the  same  is 
sufficiently  useful  and  important,  the  Commissioner  shall  issue  a 
patent  therefor.  —  R.  S.  4893. 


Mandamus  to  compel  Commissioner 
to  sign  patent,  if  his  judgment  and  dis- 
cretion are  to  issue  it  —  Supervision  of 


Secretary  of  Interior  not  applicable  to  this 
matter.  —  Butterworth  v.  Hoe,  112 
U.  S.,  50-60. 


Examination  and  Rejection  —  Reconsideration. 

Whenever,  on  examination,  any  claim  for  a  patent  is  rejected, 
the  Commissioner  shall  notify  the  applicant  thereof,  giving  him 
briefly  the  reasons  for  such  rejection,  together  with  such  information 
and  references  as  may  be  useful  in  judging  of  the  propriety  of 
renewing  his  application  or  of  altering  his  specification;  and  if, 
after  receiving  such  notice,  the  applicant  persists  in  his  claim  for  a 
patent,  with  or  without  altering  his  specifications,  the  Commissioner 
shall  order  a  re-examination  of  the  case.  —  R.  S.  4903. 


Amendment  may  be  made  by  attorney 
after  inventor's  death.  —  De  la  Vergne 


v.  Featherstone,  147  U.  S.,  209. 


Executor  or  Administrator  —  When  and  How  Made. 

(See  Executor  and  Administrator,  R.  S.  4896). 


Execution  of  —  Oath. 

(See  Oath.  —  By  Inventor  if  Living,  R.  S.  4895). 


THE    PATENT    STATUTE    DIGESTED  859 

Expedition  of  —  Request  by  Head  of  Department  of  Government. 

That  in  every  case  where  the  head  of  any  Department  of  the 
Government  shall  request  the  Commissioner  of  Patents  to  expedite 
the  consideration  of  an  application  for  a  patent  it  shall  be  the  duty 
of  such  head  of  a  Department  to  be  represented  before  the  Com- 
missioner in  order  to  prevent  the  improper  issue  of  a  patent.  — 
Sec.  7  of  Act  of  Mar.  3,  1897. 

Lapse  of  —  Failure  to  Pay  Final  Fee. 

*  *  *  If  the  final  fee  is  not  paid  within  that  period  (six  months 
from  the  time  at  which  it  was  passed  and  allowed  and  notice 
thereof  was  sent  to  the  applicant  or  his  agent)  the  patent  shall  be 
withheld.  —  R,  S.  4885. 

Oath  —  By  Inventor  if  Living. 

*  *  *  And  in  all  cases  of  an  application  by  an  assignee  for  the 
issue  of  a  patent,  the  application  shall  be  made  and  the  specifica- 
tion sworn  to  by  the  inventor  or  discoverer,  and  in  all  cases  of  an 
application  for  a  reissue  of  any  oatent,  the  application  must  be 
made  and  the  corrected  specification  signed  by  the  inventor  or 
discoverer,  if  he  is  living  *  *  *  —  R.  S.  4895. 

Reissue  —  By  Whom  Made. 

*  *  *  And  in  all  cases  of  an  application  for  a  reissue  of  any 
patent,  the  application  must  be  made  and  the  corrected  speci- 
fication signed  by  the  inventor  or  discoverer,  if  he  is  living  *  *  *  — 
R.  S.  4895. 

Renewal  —  Failure  to  Pay  Final  Fee. 

Any  person  who  has  an  interest  in  an  invention  or  discovery, 
whether  as  inventor,  discoverer,  or  assignee,  for  which  a  patent 
was  ordered  to  issue  upon  the  payment  of  the  final  fee,  but  who 
fails  to  make  payment  thereof  within  six  months  from  the  time  at 
which  it  was  passed  and  allowed,  and  notice  thereof  was  sent  to 
the  applicant  or  his  agent,  shall  have  a  right  to  make  an  applica- 
tion for  a  patent  for  such  invention  or  discovery  the  same  as  in  the 
case  of  an  original  application.  But  such  second  application  must 
be  made  within  two  years  after  the  allowance  of  the  original  appli- 
cation. But  no  person  shall  be  held  responsible  in  damages  for  the 
manufacture  or  use  of  any  article  or  thing  for  which  a  patent  was 
ordered  to  issue  under  such  renewed  application  prior  to  the  issue 
of  the  patent.  And  upon  the  hearing  of  renewed  applications  pre- 
ferred under  this  section,  abandonment  shall  be  considered  as  a 
question  of  fact.  —  R.  S.  4897. 

Requirements  Regarding  —  Specifications  and  Claims. 

(See  Specifications  —  Requirements,  R.  S.  4888). 

Right  of  Purchaser  —  Before  Application  is  Made. 

Every  person  who  purchases  of  the  inventor  or  discoverer,  or, 
with  his  knowledge  and  consent,  constructs  any  newly  invented 


860 


THE    FIXED    LAW    OF   PATENTS 


or  discovered  machine,  or  other  patentable  article,  prior  to  the 
application  by  the  inventor  or  discoverer  for  a  patent,  or  who 
sells  or  uses  one  so  constructed,  shall  have  the  right  to  use,  and 
to  vend  to  others  to  be  used,  the  specific  thing  so  made  or  pur- 
chased, without  liability  therefor.  —  R.  S.  4899. 

Who  May  Make  —  Assignment  Before  Issue. 

*  *  *  In  all  cases  of  an  application  by  an  assignee  for  the  issue 
of  a  patent,  the  application  shall  be  made  and  the  specification 
sworn  to  by  the  inventor  or  discoverer;  and  in  all  cases  of  an  appli- 
cation for  a  reissue  for  any  patent,  the  application  must  be  made 
and  the  corrected  specification  signed  by  the  inventor  or  discoverer, 
if  he  is  living.  *  *  *  —  R.  S.  4895. 

ART 

Patentability  of. 

R.  S.  4886. 

ASSIGNEES 

Renewal  Applications  —  Default  in  Paying  Final  Fee. 

(May  make  such  application  under  restrictions  and  limitations, 
R.  S.  4897). 

ASSIGNMENT 
General  Provision. 

Every  patent  or  any  interest  therein  shall  be  assignable  in 
law  by  an  instrument  in  writing,  and  the  patentee  or  his  assigns 
or  legal  representatives  may  in  like  manner  grant  and  convey 
an  exclusive  right  under  his  patent  to  the  whole  or  any  specified 
part  of  the  United  States.  An  assignment,  grant,  or  conveyance 
shall  be  void  as  against  any  subsequent  purchaser  or  mortgagee 
for  a  valuable  consideration,  without  notice,  unless  it  is  recorded 
in  the  Patent  Office  within  three  months  from  the  date  thereof. 

If  any  such  assignment,  grant,  or  conveyance  of  any  patent 
shall  be  acknowledged  before  any  notary  public  of  the  several 
States  or  Territories  or  the  District  of  Columbia,  or  any  commis- 
sioner of  the  United  States  circuit  court,  or  before  any  secretary  of 
legation  or  consular  officer  authorized  to  administer  oaths  or  per- 
form notarial  acts  under  section  seventeen  hundred  and  fifty  of  the 
Revised  Statutes,  the  certificate  of  such  acknowledgment,  under  the 
hand  and  official  seal  of  such  notary  or  other  officer,  shall  be  prima 
facie  evidence  of  the  execution  of  such  assignment,  grant,  or  con- 
veyance. —  R.  S.  4898. 


Assignment  and  license  defined.  — 
Nicholson  v.  Jenkins,  14  Wall.,  452; 
Adams  v.  Burks,  17  Wall.,  453;  Little- 
field  v.  Perry,  21  Wall.,  205;  Burdell  v. 
Denig,  92  U.  S.,  716.  Hayward  v.  An- 
drews, 106  U.  S.,  672;   Oliver  v.  Chem. 


Works,  109  U.  S.,  75;  Laver  v.  Dennitt, 
109  U.  S.,  90;  Solomons  v.  U.  S.,  137 
U.  S.,  342;  Waterman  v.  Mackenzie, 
138  U.  S.,  252;  St.  Paul  v.  Starling,  140 
U.  S.,  184;  Dalzell  v.  Watch  Co.,  149 
U.  S.,  315;    Lane  v.  Locke,  150  U.  S., 


THE  PATENT  STATUTE  DIGESTED 


861 


193;  Heaton  v.  Eureka,  78  0.  G.,  171. 
Anderson  v.  Eiler,  50  F.  R.,  775. 

Construction  of  contract.  —  National 
v.  Willcox,  74  F.  R.,  557. 

Verbal  license  is  void  as  against  subse- 
quent assignee  without  notice.  —  Gates 
v.  Frazier,  153  U.  S.,  332. 

An  agreement  not  to  dispute  the  valid- 
ity of  a  patent  not  directly  involved  in  the 
agreement  is  against  public  policy.  — 
Pope  v.  Gormuliy,  144  U.  S.,  224  et  seq. 

Authority  of  attorney  to  execute  assign- 
ment. —  Chauche  v.  Pare,  75  F.  R., 
283. 

Assignment  for  extension.  —  R.  R.  v. 
Trimble,  10  Wall.,  367.  Nicholson  v. 
Jenkins,  14  Wall.,  452. 

Conditional  assignment.  —  Atkins  v. 
Parke,  61  F.  R.,  953. 

Future  invention,  contract  to  assign. 
—  Regan  v.  Pacific,  49  F.  R.,  68. 

Implied  license,  employer  and  em- 
ployee.—  Hapgood  v.  Hewitt,  119 
U.  "S.,  226-234. 

Specific  performance  of  contract  to 
assign  invalid  patent.  —  Kennedy  v. 
Hazelton,  128  U.  S.,  667-673. 

Assignment  construed.  —  Rude  v. 
Westcott,  130  U.  S.,  152. 

Effect  of  subsequent  contract  on  abso- 


lute assignment.  —  Boesch  v.  Graff, 
133  U.  S.,  697. 

Licensee's  liability.  —  U.  S.  v.  Burns, 
12  Wall.,  246.  Paper  Bag  Cases,  105 
U.  S.,  766. 

License,  escrow.  —  Mellon  v.  R.  R. 
Co.,  21  O.  G.,  1616. 

Mortgage,  notice.  —  Waterman  v. 
Shipman,  55  F.  R.,  982. 

One  inventor  as  trustee  for  another.  — 
Ambler  v.  Whipple,  20  Wall.,  546. 

Patented  machine  is  purchaser's  prop- 
erty.—  Mitchell  v.  Hawley,  16  Wall., 
544.  Paper  Bag  Cases,  105  U.  S., 
766. 

Purchase  of  article  may  give  license 
to  use  process.  —  Vt.  v.  Gibson,  56 
F.  R.,  143. 

Right  to  purchase  patented  article.  — 
Hobbie  v.  Jennison,  149  U.  S.,  355. 

Recording  assignments,  effect  of;  ivhat 
instruments  recorded.  —  Standard  v. 
Crane,  77  O.  G.,  811. 

Seal.  —  Gottfried  v.  Miller,  104  U.  S., 
521. 

Separate  claims  of  a  patent  are  not 
assignable.  —  Pope  v.  Gormuliy,  144 
U.  S.,  248. 

Successors  of  assignees.  —  Hammond 
v.  Mason,  92  U.  S.,  724. 


Bankruptcy  —  Vests  Patent  Property. 

All  property  conveyed  by  the  bankrupt  in  fraud  of  his  creditors; 
all  rights  in  equity,  choses  in  action,  patent  rights,  and  copyrights; 
all  debts  due  him,  or  any  person  for  his  use,  and  all  liens  and  securi- 
ties therefor;  and  all  his  rights  of  action  for  property  or  estate, 
real  or  personal,  and  for  any  cause  of  action  which  he  had  against 
any  person  arising  from  contract  or  from  the  unlawful  taking  or 
detention,  or  injury  to  the  property  of  the  bankrupt;  and  all  his 
rights  of  redeeming  such  property  or  estate;  together  with  the  like 
right,  title,  power  and  authority  to  sell,  manage,  dispose  of,  sue  for, 
and  recover  or  defend  the  same,  as  the  bankrupt  might  have  had  if  no 
assignment  had  been  made,  shall,  in  virtue  of  the  adjudication  of 
bankruptcy  and  the  appointment  of  his  assignee,  but  subject  to 
the  exception  stated  in  the  preceding  section,  be  at  once  vested  in 
such  assignee. 

Sec.  70.  Title  to  Property.  The  trustee  of  the  estate  of  a  bank- 
rupt, upon  his  appointment  and  qualification,  and  his  successor 
or  successors,  if  he  shall  have  one  or  more,  upon  his  or  their  appoint- 
ment and  qualification,  shall  in  turn  be  vested  by  operation  of  law 
with  the  title  of  the  bankrupt,  as  of  the  date  he  was  adjudged  a 
bankrupt,  except  in  so  far  as  it  is  to  property  which  is  exempt, 
to  all  (1)  documents  relating  to  his  property;  (2)  interests  in 
patents,  patent  rights,  copyrights,  and  trade-marks.  —  R.  S.  5046, 
and  Sec.  70,  Act  July  1,  1898. 

Before  Application  —  Implied  License. 

(See  R.  S.  4899). 


862  THE    FIXED   LAW   OF    PATENTS 

Before  Issue  —  Application  to  be  made  by  Inventor. 

Patents  may  be  granted  and  issued  or  reissued  to  the  assignee  of 
the  inventor  or  discoverer;  but  the  assignment  must  first  be 
entered  of  record  in  the  Patent  Office.  And  in  all  cases  of  an 
application  by  an  assignee  for  the  issue  of  a  patent,  the  application 
shall  be  made  and  the  specification  sworn  to  by  the  inventor  or 
discoverer;  and  in  all  cases  of  an  application  for  a  reissue  of  any 
patent,  the  application  must  be  made  and  the  corrected  specifi- 
cation signed  by  the  inventor  or  discoverer,  if  he  is  living.  *  *  *  — 
R.  S.  4895. 

Fees  for  Recording. 

(See  Fees). 

By  Instrument  in  Writing  —  Execution  and  Recording. 

Every  patent  or  any  interest  therein  shall  be  assignable  in  law 
by  an  instrument  in  writing,  and  the  patentee  or  his  assigns  or 
legal  representatives  may  in  like  manner  grant  and  convey  an 
exclusive  right  under  his  patent  to  the  whole  or  any  specified  part 
of  the  United  States.  An  assignment,  grant,  or  conveyance  shall 
be  void  as  against  any  subsequent  purchaser  or  mortgagee  for  a 
valuable  consideration,  without  notice,  unless  it  is  recorded  in 
the  Patent  Office  within  three  months  from  the  date  thereof. 

If  any  such  assignment,  grant,  or  conveyance  of  any  patent 
shall  be  acknowledged  before  any  notary  public  of  the  several  States 
and  Territories  or  the  District  of  Columbia,  or  any  commissioner 
of  the  United  States  circuit  court,  or  before  any  secretary  of  legation 
or  consular  officer  authorized  to  administer  oaths  or  perform 
notarial  acts  under  section  1750  of  the  Revised  Statutes,  the  certif- 
icate of  such  acknowledgment  under  the  hand  and  official  seal  of 
such  notary  or  other  officer,  shall  be  prima  facie  evidence  of  the 
execution  of  such  assignment,  grant,  or  convevance.  —  R.  S.  4898, 
and  Act  Mar.  3,  1897. 

Note  :  The  last  paragraph  added  by  Act  Mar.  3,  1897. 

By  Instrument  in  Writing  —  Prima  Facie. 
(SeeR.  S.  4898  supra). 

Recording  —  Must  be  Within  Three  Months. 
(See  R.  S.  4898  supra). 

Recording  —  Must  be  Recorded  in  Patent  Office  —  When. 

(See  Assignment  Before  Issue,  R.  S.  4895). 


ASSISTANT  COMMISSIONER 
Appointment  of. 

(See  R.  S.  476). 


THE    PATENT    STATUTE   DIGESTED  863 

ATTORNEYS 

Recognition  Refused  —  Gross  Misconduct. 

For  gross  misconduct  the  Commissioner  of  Patents  may  refuse 
to  recognize  any  person  as  a  patent-agent,  either  generally  or  in 
any  particular  case;  but  the  reasons  for  such  refusal  shall  be  duly 
recorded,  and  be  subject  to  the  approval  of  the  Secretary  of  the 
Interior.  —  R.  S.  487. 

BANKRUPTCY 
Assignments  in  —  Vests  Patent  Property  in  Assignee. 

(See  Assignments  —  Bankruptcy,  R.  S.  5046). 

BILL 
In  Equity  —  To  Compel  Issue  of  Patent. 

(See  Actions  —  Equity,  R.  S.  4915). 

CAVEATS 

Who  May  File  —  Force  and  Effect  of  —  Aliens. 

Any  person  who  makes  any  new  invention  or  discovery  and  desires 
further  time  to  mature  the  same  may,  on  payment  of  the  fees  re- 
quired by  law,  file  in  the  Patent  Office  a  caveat  setting  forth  the 
design  thereof  and  of  its  distinguishing  characteristics  and  praying 
protection  of  his  right  until  he  shall  have  matured  his  invention. 
Such  caveat  shall  be  filed  in  the  confidential  archives  of  the  office 
and  preserved  in  secrecy,  and  shall  be  operative  for  the  term  of 
one  year  from  the  filing  thereof;  and  if  application  is  made  within 
the  year  by  any  other  person  for  a  patent  with  which  such  caveat 
would  in  any  manner  interfere  the  Commissioner  shall  deposit  the 
description,  specification,  drawings,  and  model  of  such  application 
in  like  manner  in  the  confidential  archives  of  the  office  and  give 
notice  thereof  by  mail  to  the  person  by  whom  the  caveat  was  filed. 
If  such  person  desires  to  avail  himself  of  his  caveat  he  shall  file  his 
description,  specifications,  drawings,  and  model  within  three  months 
from  the  time  of  placing  the  notice  in  the  post-office  in  Washington, 
with  the  usual  time  required  for  transmitting  it  to  the  caveator 
added  thereto,  which  time  shall  be  indorsed  on  the  notice.  —  R.  S. 
4902. 

CERTIFIED  COPIES 
Foreign  Patents. 

(See  Evidence  —  Foreign  Letters  Patent,  R.  S.  893). 

Records  and  Papers  —  Patent  Office. 

(See  Evidence  —  Copies  of  Patents  and  Records.  R.  S.  892). 

For  Supreme  Court  —  Furnished  by  Whom. 
(See  Appeals  —  Supreme  Court,  R.  S.  4913). 


864  THE   FIXED   LAW   OF   PATENTS 

CERTIORARI 

Supreme  Court  —  From  Circuit  Court  of  Appeals. 

And  excepting  that  in  any  such  case  as  is  hereinbefore  made  final 
in  the  circuit  court  of  appeals  it  shall  be  competent  for  the  Supreme 
Court  to  require,  by  certiorari  or  otherwise,  any  such  case  to  be 
certified  to  the  Supreme  Court  for  its  review  and  determination 
with  the  same  power  and  authority  in  the  case  as  if  it  had  been 
carried  by  appeal  or  writ  of  error  to  the  Supreme  Court.  —  C.  C.  A. 
Act,  Feb.  19,  1897. 

CIRCUIT  COURT  OF  APPEALS 

(See  Appeals). 

CLAIM 

What  to  Cover. 

(See  Application  —  Requirements,  R.  S.  4888). 

CLERK  OF  U.  S.  COURT. 

Summoning  Witnesses  —  Interference  Cases. 

(See  Witnesses,  R.  S.  4906). 

COMMISSIONER  OF  PATENTS 
General  Provision. 

There  shall  be  in  the  Patent  Office  a  Commissioner  of  Patents, 
one  Assistant  Commissioner,  and  three  examiners-in-chief,  who 
shall  be  appointed  by  the  President,  by  and  with  the  advice  and 
consent  of  the  Senate.  All  other  officers,  clerks,  and  employes 
authorized  by  law  for  the  Office  shall  be  appointed  by  the  Secretary 
of  the  Interior,  upon  the  nomination  of  the  Commissioner  of 
Patents.    [See  §  169.]  — R.  S.  476. 

Annual  Report  of  —  Shall  Contain  What. 

The  Commissioner  of  Patents  shall  lay  before  Congress,  in  the 
month  of  January,  annually,  a  report,  giving  a  detailed  statement 
of  all  moneys  received  for  patents,  for  copies  of  records  or  drawings, 
or  from  any  other  source  whatever;  a  detailed  statement  of  all 
expenditures  for  contingent  and  miscellaneous  expenses,  a  list  of 
all  patents  which  were  granted  during  the  preceding  year;  desig- 
nating under  proper  heads  the  subjects  of  such  patents;  an  alpha- 
betical list  of  all  the  patentees  with  their  places  of  residence;  a  list 
of  all  patents  which  have  been  extended  during  the  year;  and  such 
other  information  of  the  condition  of  the  Patent  Office  as  may  be 
useful  to  Congress  or  the  public.  —  R.  S.  494. 

Appeal  to. 

If  such  party  is  dissatisfied  with  the  decision  of  the  examiners- 
in-chief,  he  may,  on  payment  of  the  fee  prescribed,  appeal  to  the 
Commissioner  in  person.  —  R.  S.  4910. 


THE  PATENT  STATUTE  DIGESTED  865 

Applications  —  Examination  of. 

(See  Application  —  Examination  of,  R.  S.  4893). 

Bond  —  Chief  Clerk. 

The  Commissioner  of  Patents  and  the  chief  clerk,  before  entering 
upon  their  duties,  shall  severally  give  bond,  with  securities,  to 
the  Treasurer  of  the  United  States,  the  former  in  the  sum  of  ten 
thousand  dollars  and  the  latter  in  the  sum  of  five  thousand  dollars, 
conditioned  for  the  faithful  discharge  of  their  respective  duties, 
and  that  they  shall  render  to  the  proper  officers  of  the  Treasury 
a  true  account  of  all  money  received  by  virtue  of  their  office.  — 
R.  S.  479. 

Countersignature  to  Patents. 

(See  Letters  Patent  —  Issuance,  R.  S.  4883). 

Duties  of. 

The  Commissioner  of  Patents,  under  the  direction  of  the  Secre- 
tary of  the  Interior,  shall  superintend  or  perform  all  duties  respect- 
ing the  granting  and  issuing  of  patents  directed  by  law;  and  he  shall 
have  charge  of  all  books,  records,  papers,  models,  machines,  and 
other  things  belonging  to  the  Patent  Office.  —  R.  S.  481. 

Duties  of  Commissioner.  —  Butterworth  v.  Hoe,  112  U.  S.,  50. 

Examination  Under  Oath  —  Supreme  Court,  D.  C. 

*  *  *  And  at  the  request  of  any  party  interested,  or  of  the  court, 
the  Commissioner  and  the  examiners  may  be  examined  under  oath, 
in  explanation  of  the  principles  of  the  thing  for  which  a  patent  is 
demanded.  —  R.  S.  4913. 

How  Appointed. 

(See  Patent  Office  —  Officers,  R.  S.  476). 

Notice  of  Hearings  —  Supreme  Court,  D.  C. 

(See  Appeals  —  Supreme  Court,  D.  C,  R.  S.  4913). 

Rules  and  Regulations  —  Established  by. 

(See  Rules  and  Regulations,  R.  S.  483). 

Rules  for  Taking  Evidence  —  Patent  Office  Cases. 

The  Commissioner  of  Patents  may  establish  rules  for  taking 
affidavits  and  depositions  required  in  cases  pending  in  the  Patent 
Office,  and  such  affidavits  and  depositions  may  be  taken  before  any 
officer  authorized  by  law  to  take  depositions  to  be  used  in  the  courts 
of  the  United  States  or  of  the  State  where  the  officer  resides.  — 
R.  S.  4905. 

COMPOSITION  OF  MATTER 
Patentability  of. 

R.  S.  4886. 


866  THE    FIXED    LAW   OF   PATENTS 

Specimens  to  be  Furnished  —  When  and  How. 

When  the  invention  or  discovery  is  of  a  composition  of  matter, 
the  applicant,  if  required  by  the  Commissioner,  shall  furnish  speci- 
mens of  ingredients  and  of  the  composition,  sufficient  in  quantity 
for  the  purpose  of  experiment.  —  R.  S.  4890. 

CONGRESS 
Powers  of. 

[The  constitutional  provision.  —  The  Congress  shall  have  power 
*  *  *  to  promote  the  progress  of  Science  and  Useful  Arts,  by 
securing  for  limited  Times  to  Authors  and  Inventors  the  exclusive 
Right  to  their  respective  Writings  and  Discoveries.]  —  Art.  I, 
Sec.  VIII. 

COSTS 

Complainants  —  Actions  for  Infringement. 

(See  R.  S.  4919). 

Defendants  —  Actions  for  Infringement. 

(See  R.  S.  4920). 

Disclaimer  —  Failure  to  File. 

When  judgment  or  decree  is  rendered  for  the  plaintiff  or  com- 
plainant, in  any  suit  at  law  or  in  equity,  for  the  infringement  of 
a  part  of  a  patent,  in  which  it  appears  that  the  patentee,  in  his 
specification,  claimed  to  be  the  original  and  first  inventor  or  dis- 
coverer of  any  material  or  substantial  part  of  the  thing  patented, 
of  which  he  was  not  the  original  and  first  inventor,  no  costs  shall 
be  recovered,  unless  the  proper  disclaimer,  as  provided  by  the  patent 
laws,  has  been  entered  at  the  Patent  Office  before  the  suit  was 
brought.     (See  4917,  4922).  —  R.  S.  973. 

Failure  to  Disclaim  —  When. 

*  *  *  But  in  every  such  case  in  which  a  judgment  or  decree  shall 
be  rendered  for  the  plaintiff,  no  costs  shall  be  recovered  unless 
the  proper  disclaimer  has  been  entered  at  the  Patent  Office  before 
the  commencement  of  the  suit.  *  *  *  —  R.  S.  4922. 

COURT  OF  APPEALS,   D.  C. 
General  Act  —  Jurisdiction  &c. 

Be  it  enacted,  &c,  That  there  shall  be,  and  there  is  hereby,  estab- 
lished in  the  District  of  Columbia  a  court,  to  be  known  as  the 
court  of  appeals  of  the  District  of  Columbia. 

Sec.  6.  That  the  said  court  of  appeals  shall  establish  a  term  of 
the  court  during  each  and  every  month  in  each  year  excepting  the 
months  of  July  and  August. 

Sec.  8.  That  any  final  judgment  or  decree  of  the  said  court  of 
appeals  may  be  reexamined  and  affirmed,  reversed,  or  modified  by 
the  Supreme  Court  of  the  United  States,  upon  writ  of  error  or 


THE  PATENT  STATUTE  DIGESTED 


867 


appeal,  in  all  causes  in  which  the  matter  in  dispute,  exclusive  of 
costs,  shall  exceed  the  sum  of  five  thousand  dollars,  in  the  same 
manner  and  under  the  same  regulations  as  heretofore  provided  for 
in  cases  of  writs  of  error  on  judgment  or  appeals  from  decrees 
rendered  in  the  supreme  court  of  the  District  of  Columbia; 

And  also  in  cases,  without  regard  to  the  sum  or  value  of  the  matter 
in  dispute,  wherein  is  involved  the  validity  of  any  patent  or  copy- 
right, or  in  which  is  drawn  in  question  the  validity  of  a  treaty  or 
statute  of  or  an  authority  exercised  under  the  United  States. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  in  any 
case  heretofore  made  final  in  the  court  of  appeals  of  the  District 
of  Columbia  it  shall  be  competent  for  the  Supreme  Court  to  require, 
by  certiorari  or  otherwise,  any  such  case  to  be  certified  to  the 
Supreme  Court  for  its  review  and  determination,  with  the  same 
power  and  authority  in  the  case  as  if  it  had  been  carried  by  appeal 
or  writ  of  error  to  the  Supreme  Court. 

Sec.  9.  That  the  determination  of  appeals  from  the  decision 
of  the  Commissioner  of  Patents,  now  vested  in  the  general  term 
of  the  supreme  court  of  the  District  of  Columbia,  in  pursuance  of 
the  provisions  of  section  seven  hundred  and  eighty  of  the  Revised 
Statutes  of  the  United  States,  relating  to  the  District  of  Columbia, 
shall  hereafter  be  and  the  same  is  hereby  vested  in  the  court  of 
appeals  created  by  this  act; 

And  in  addition  any  party  aggrieved  by  a  decision  of  the  Com- 
missioner of  Patents  in  any  interference  case  may  appeal  therefrom 
to  said  court  of  appeals.  —  Act  Feb.  9,  1893,  and  Act  Mar.  3,  1897. 


Section  9  does  not  permit  appeals  in 
trade-mark  interferences.  —  Einstein  v. 
Sawhill,  2  App.  D.  C,  10. 

Right  of  appeal  in  ex  parte  and  priority 
cases  distinct.  —  Hisey  v.  Peters,  6  App. 
D.  C,  68. 

United  States  Supreme  Court  will  not 
take  jurisdiction.  —  Durham,  74  O.  G., 
1731. 

Jurisdiction.  —  Milton  v.  Kingsley, 
75  O.  G.,  2193. 

Compliance  with  requirements.  — 
Drawbaugh,  77  O.  G.,  313. 


Rules  of  court  must  be  followed.  — 
Bryant,  77  O.  G.,  1599.  Hien  v.  Pungs, 
77  O.  G.,  1600.  Pelton  v.  Evered,  77 
O.  G.,  1600.  Ross  v.  Loewer,  77  O.  G., 
2141. 

Motion  for  rehearing  will  not  stay  time 
for  appeal.  —  Ross  v.  Loewer,  77  O.  G., 
2141. 

Motion  for  rehearing  condemned.  — 
Hien  v.  Pungs,  78  O.  G.,  484. 

Costs.  —  Wells  v.  Reynolds,  5  App. 
D.  C,  20;  Roseburgh  v.  Holman,  78 
O.  G.,  1258. 


DAMAGES 

General  Provision. 

Damages  for  the  infringement  of  any  patent  may  be  recov- 
ered by  action  on  the  case,  in  the  name  of  the  party  interested 
either  as  patentee,  assignee,  or  grantee.  And  whenever  in  any  such 
action  a  verdict  is  rendered  for  the  plaintiff,  the  court  may  enter 
judgment  thereon  for  any  sum  above  the  amount  found  by  the 
verdict  as  the  actual  damages  sustained,  according  to  the  circum- 
stances of  the  case,  not  exceeding  three  times  the  amount  of  such 
verdict,  together  with  the  costs.  —  R.  S.  4919. 


868 


THE    FIXED   LAW   OF   PATENTS 


Actual  damages,  rule  in  law  actions.  — 
Birdsall  v.  Coolidge,  93  U.  S.,  64. 

Anticipation,  question  for  jury  in  law 
action.  —  Harper  &  Reynolds  Co.  v. 
Wilgus,  56  F.  R.,  587. 

Conspiracy,  action  at  law.  —  Ambler 
v.  Choteau,  107  U.  S.,  586. 

Infringement.  —  Fermentation  v. 
Maus,  122  U.  S.,  413;  Safety  Valve  v. 
Steam  Gage,  113  U.  S.,  157;  Lake 
Shore  v.  Nat'l.,  110  U.  S.,  229;  Morley 
v.  Lancaster,  129  U.  S.,  263;  Hurlbuti;. 
Schillinger,  130  U.  S.,  456;  Plummer  v. 
Sargent,  120  U.  S.,  442.  Wollensack  v. 
Sargent,  151  U.  S.,  221;  Deering  v. 
Winona,  155  U.  S.,  286;  Dubois  v. 
Kirk,  158  U.  S.,  58;  National  v. 
Boston,  156  U.  S.,  502;  Potts  v. 
Creager,  155  U.  S.,  597;  Belknap  v. 
Schild,  16  U.  S.,  10;  Griswold  v. 
Harker,  62  F.  R.,  389;  Devlin  v. 
Paynter,  64  F.  R.,  398;  Am.  v.  Na- 
tional, 51  F.  R.,  229;  Gurney  v.  Oakes, 
66  F.  R.,  1007;  Capital  v.  Natl.,  70 
F.  R.,  709;  Lalance  v.  Habermann,  53 
F.  R.,  375;  Celluloid  v.  Arlington,  52 
F.  R.,  740;  Adee  v.  Mott,  55  F.  R., 
876. 

Infringement  doubtful,  injunction  re- 
fused. —  Ertel  v.  Stahl,  65  F.  R.,  517; 
Schwarzwalder  v.  N.  Y.,  66  F.  R.,  152. 

Infringement  of  apparatus  which  de- 
livers perishable  article.  —  Morgan  v. 
Albany,  152  U.  S.,  425. 

Infringement  by  purchaser  from  as- 
signee. —  Keeler  v.  Standard,  157  U.  S., 
659. 

Infringement,  pioneer  invention.  — 
Westinghouse  v.  N.  Y.,  63  F.  R.,  962; 
Norton  v.  Jensen,  49  F.  R.,  859.    _ 

Noninfringement.  —  Coon  v.  Wilson, 
113  U.  S.,  268;  Blake  v.  San  Francisco, 

113  U.S.,  679;  Thompson  v.  Boisselier, 

114  U.  S.,  1;  Sargent  v.  Hall,  114  U.  S., 
63;  McMurray  v.  Mallory.  Ill  U.  S., 
97;  Voss  v.  Fisher,  113  U.  S.,  213; 
Grier  v.  Wilt,  120  U.  S.,  412;  Fay  v. 
Cordesman,  109  U.  S.,  408;  Estey  v. 
Burdett,  109  U.  S.,  633;  Clements  v. 
Excavating,  109  U.  S.,  641;  Bussey  v. 
Excelsior,  110  U.  S.,  131;  Zane  v. 
Soffe,  110  U.  S.,  200;  Shepard  v.  Car- 
rigan,  116  U.  S..  593;  Yale  v.  Sargent. 
117  U.  S.,  373;  Consold.  v.  Kunkle,  119 
U.  S.,  45;  California  v.  Schalicke,  119 
U.  S.,  401;  Sutter  v.  Robinson.  119 
U.  S.,  530;  Sharp  v.  Riessner,  119  U.  S. 

Designs. 

(See  Designs). 

In  Equity  —  Trebling  Damages. 

*  *  *  The  complainant  shall  be  entitled  to  recover,  in  addition 
to  the  profits  to  be  accounted  for  by  the  defendant,  the  damages 


631;  Hartshorn  v.  Saginaw  Co.,  119 
U.  S.,  664;  Crawford  v.  Heysinger,  123 
U.  S.,  589;  Dryfoos  v.  Wiese,  124  U.  S., 
32;  Yale  v.  James,  125  U.  S.,  447; 
Clark  v.  Beecher,  115  U.  S.,  79;  Wol- 
lensak  v.  Reiher,  115  U.  S.,  87;  Field 
v.  De  Comeau,  116  U.  S.,  187;  Brown  v. 
Davis,  116  U.  S.,  237;  Worden  v. 
Searls,  121  U.  S.,  14;  McCormick  v. 
Whitmer,  129  U.  S.,  1;  Sargent  v.  Bur- 
gess, 129  U.  S.,  19;  Peters  v.  Active, 
129  U.  S.,  530;  Bene  v.  Jeantet,  129 
IT.  S.,  683;  Hendy  v.  Golden,  127  U.  S., 
370;  Cook  v.  Sandusky,  15  Brodix, 
120;  Wright  v.  Yuengling,  155  U.  S., 
47;  United  States  v.  Berdan,  156  U.  S., 
552.  Miller  v.  Eagle,  151  U.  S.,  186; 
McCarty  v.  Lehigh,  160  U.  S.,  110; 
Elec.  v.  McKeesport,  159  U.  S.,  465; 
Lehigh  v.  Kearney,  158  U.  S.,  461; 
Boyd  v.  Janesville,  158  U.  S.,  260; 
Black  Diamond  v.  Excelsior,  156  U.  S., 
611;  Roller  Mill  v.  Barnard,  156  U.  S., 
261;  Dashiell  v.  Grosvenor,  162  U.  S., 
425;  Kinzel  v.  Luttrell,  67  F.  R.,  926; 
Wright  v.  Clinton,  67  F.  R.,  790;  Bon- 
sak  v.  Elliott,  69  F.  R.,  335;  Jensen  v. 
Norton,  67  F.  R.,  236;  Thomson-Hous- 
ton v.  West,  70  F.  R.,  69;  Gould  v. 
Trojan,  74  F.  R.,  794;  Brush  v.  West- 
em,  76  F.  R.,  761;  Stirratt  v.  Excelsior, 
61  F.  R.,  980;  Cornell  v.  Bataille,  61 
F.  R.,  684;  Pacific  v.  Cons.  Co.,  62 
F.  R.,  288. 

Noninfringement  —  Article  made  by 
particular  process.  —  Cochrane  v.  Ba- 
dische,  111  U.  S.,  293. 

Noninfringement  of  combination 
claim.  —  Rowell  v.  Lindsay,  113  U.  S., 
97;  Elec.?;.  Signal,  114  U.S.,  87;  Bragg 
v.  Fitch,  121  U.  S.,  478;  Snow  v.  Lake 
Shore,  121  U.  S.,  617;  Thomson- 
Houston  v.  Kelsey,  75  F.  R.,  1005. 

Evidence  of  novelty ;  discretion  of 
lower  court.  —  St.  Paul  v.  Starling,  140 
U.  S.,  184. 

Patent  for  improvement  does  not  convey 
right  to  use  broad  invention.  —  Cantrell 
v.  Wallick,  117  U.  S.,  689. 

Patent  rights  reached  by  creditor's 
bill.  —  Ager  v.  Murray,  105  U.  S.,  126. 

Contributory  infringement.  —  Heaton 
v.  Eureka,  77  F.  R.,  288. 

Repairing  patented  device.  —  Shickle 
v.  St.  Louis,  77  O.  G.,  2142.  (Consult 
also  citations  under  sec.  4886.) 


THE    PATENT   STATUTE   DIGESTED  869 

the  complainant  has  sustained  thereby;  and  the  court  shall  assess 
the  same  or  cause  the  same  to  be  assessed  under  its  direction.  And 
the  court  shall  have  the  same  power  to  increase  such  damages, 
in  its  discretion,  as  is  given  to  increase  the  damages  found  by- 
verdicts  in  actions  in  the  nature  of  actions  of  trespass  on  the 
case.  *  *  *  —  R.  S.  4921. 


Failure  to  Mark  Articles  "  Patented  "  —  When  a  Bar. 

*  *  *  And  in  any  suit  for  infringement,  by  the  party  failing  so 
to  mark,  no  damages  shall  be  recovered  by  the  plaintiff,  except 
on  proof  that  the  defendant  was  duly  notified  of  the  infringement, 
and  continued,  after  such  notice,  to  make,  use,  or  vend  the  article 
so  patented.  —  R.  S.  4900. 

Infringement  —  Trebling  Damages. 

(In  actions  at  Law,  see  R.  S.  4919). 

In  any  action  for  infringement  the  defendant  may  plead  the 
general  issue,  and,  having  given  notice  in  writing  to  the  plaintiff 
or  his  attorney  thirty  days  before,  may  prove  on  trial  any  one  or 
more  of  the  following  special  matters: 

First.  That  for  the  purpose  of  deceiving  the  public  the  descrip- 
tion and  specification  filed  by  the  patentee  in  the  Patent  Office  was 
made  to  contain  less  than  the  whole  truth  relative  to  his  invention 
or  discovery,  or  more  than  is  necessary  to  produce  the  desired 
effect;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained  the 
patent  for  that  which  was  in  fact  invented  by  another,  who  was 
using  reasonable  diligence  in  adapting  and  perfecting  the  same;  or, 

Third.  That  it  has  been  patented  or  described  in  some  printed 
publication  prior  to  his  supposed  invention  or  discovery  thereof, 
or  more  than  two  years  prior  to  his  application  for  a  patent  therefor; 

Fourth.  That  he  was  not  the  original  and  first  inventor  or  dis- 
coverer of  any  material  and  substantial  part  of  the  thing  patented; 
or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this  country 
for  more  than  two  years  before  his  application  for  a  patent,  or  had 
been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge,  or 
use  of  the  thing  patented,  the  defendant  shall  state  the  names  of 
the  patentees  and  the  dates  of  their  patents,  and  when  granted, 
and  the  names  and  residences  of  the  persons  alleged  to  have  invented 
or  to  have  had  the  prior  knowledge  of  the  thing  patented,  and  where 
and  by  whom  it  had  been  used;  and  if  any  one  or  more  of  the 
special  matters  alleged  shall  be  found  for  the  defendant,  judgment 
shall  be  rendered  for  him  with  costs.  And  the  like  defenses  may 
be  pleaded  in  any  suit  in  equity  for  relief  against  an  alleged  infringe- 
ment; and  proofs  of  the  same  may  be  given  upon  like  notice  in  the 
answer  of  the  defendant,  and  with  the  like  effect.  —  R.  S.  4920. 

Note:  Amendment  of  Mar.  3,  1897,  in  italics. 


870 


THE    FIXED   LAW   OF   PATENTS 


Complainants  must  prove  infringe- 
ment. —  Fuller  v.  Yentzer,  94  U.  S., 
288,  299;   Bates  v.  Coe,  98  U.  S.,  31. 

Damages  must  be  proved.  —  Robert- 
son v.  Blake,  94  U.  S.,  728. 

Defenses  to  suit  not  confined  to  those 
mentioned  in  this  statute.  —  Gardiner 
v.  Herz,  118  U.  S.,  180. 

Defense  of  priority.  —  Clark  v.  Wil- 
limantic,  140  U.  S.,  481. 

Defense  of  prior  patent  must  be  made 
below.  —  Andrews  v.  Thum,  67  F.  R., 
911. 

Defense  that  complainant  has  no  in- 
terest. —  Paine  v.  Trask,  56  F.  R.,  233. 

Delay  as  an  estoppel.  —  Thorne  Co.  v. 
Washburn,  159  U.  S.,  423. 

Denial  of  utility.  —  Gandy  v.  Belt 
Co.,  143  U.  S.,  587. 

Denial  of  validity.  —  Western  v. 
La  Rue,  139  U.  S.,  601. 

Estoppel  by  former  recovery.  —  Rus- 
sell v.  Place,  94  U.  S.,  606. 

Estoppel  by  decree  pro  confesso.  — 
Thomson  v.  Wooster,  114  U.  S.,  104. 

Estoppel  by  assignment.  —  Babcock 
v.  Clarkson,  63  F.  R.,  607. 

Estoppel  of  assignor.  —  Martin  v: 
Martin,  67  F.  R.,  786. 

No  estoppel  by  application  for  patent. 
—  Haughey  v.  Lee,  151  U.  S.,  282. 

Exceptions  to  judge's  charge  to  the 
jury.  —  Haines  v.  McLaughlin,  135 
U.  S.,  584. 

Expert  testimony  necessary.  —  Water- 
man v.  Shipman,  55  F.  R.,  982. 

Estoppel  by  interference  proceedings 
in  Office.  —  Shoemaker  v.  Merrow,  61 
F.  R.,  945;  Fassett  v.  Ewart,  62  F.  R., 
404. 

Fraudulent  patents.  —  Railroad  v. 
Dubois,  12  Wall.,  47. 

General  purpose  of  the  statute.  —  Root 
v.  Ry,  105  U.  S.,  189;  Albright  v.  Teas, 
106  U.  S.,  613;  Dolan  v.  Jennings,  139 
U.  S.,  385;  White  v.  Rankin,  144  U.S, 
628. 

Government  needs  no  defense.  —  Cam- 
meyer  v.  Newton,  94  U.  S.,  225;  U.  S. 
v.  Burns,  12  Wall.,  246.  U.  S.  v. 
McKeever,  23  O.  G.,  1525-1530.  Hol- 
lister  v.  Benedict,  113  U.  S.,  59. 
United  States  v.  Palmer,  128  U.  S., 
262.  Solomons  v.  United  States,  137 
U.  S.,  342;  Schillinger  v.  United  States, 

155  U.  S.,  163;  Belknap  v.  Schild,  161 
U.  S.,  10. 

Judicial  notice.  —  Brown  v.  Piper, 
91  U.  S.,  37;  Terhune  v.  Phillips,  99 
U.  S.,  592.  Slawson  v.  R.  R.,  107  U. 
S.,  649;  Black  Diamond  v.  Excelsior, 

156  U.  S..  611;  Richards  v.  Chase,  159 
U.  S..  477;  Am.  Fibre  v.  Buckskin, 
72  F.  R.,  508.  Butte  City  v.  Pacific, 
60  F.  R.,  410. 


Jurisdiction  in  equity,  general  de- 
murrer. —  McCoy  v.  Nelson,  121  IT.  S., 
484. 

Infringement  is  question  for  jury.  — 
Tucker  v.  Spaulding,  13  Wall.,  453. 

Licensee  estoppel.  —  Dueber  v.  Rob- 
bins,  75  F.  R.,  17. 

Law  or  equity  procedure.  —  Cochrane 
v.  Deener,  94  U.  S.,  780;  Hayward  v. 
Andrews,  106  U.  S.,  672;  Clark  v. 
Wooster,  119  U.  S.,  322;  Germain  v. 
Wilgus,  67  F.  R.,  597. 

New  matter  in  patent  need  not  be  spe- 
cifically set  forth,  in  the  answer.  — 
Eagleton  v.  Mfg.  Co.,  Ill  U.  S.,  490. 

No  suit  under  original  after  reissue.  — 
Reedy  v.  Scott,  23  Wall.,  352. 

Ownership.  —  Cammeyer  v.  Newton, 
94  U.  S.,  225. 

Patentee  need  not  notify  intending 
infringer.  —  Railroad  v.  Dubois,  12 
Wall.,  47. 

Patentee  the  original  inventor.  —  Sew- 
all  v.  Jones,  91  U.  S.,  171;  Loom  Co. 
v.  Higgins,  105  U.  S.,  580  ;  Atlantic 
v.  Brady,  107  U.  S.,  192. 

Patentee  bound  by  his  patent.  —  Key- 
stone i'.  Phoenix,  95  U.  S.,  274. 

Patents  not  set  up  in  answer  may  be 
introduced  to  aid  in  construction  of 
claims.  —  Grier  v.  Wilt,  120  U.  S.,  412. 

Point  of  void  reissue  must  be  made  in 
lower  court  (Klein  v.  Russell,  19  Wall., 
433),  and  must  be  by  defendant.  — 
Smith  v.  Goodyear,  93  U.  S.,  486;  Bates 
v.  Coe,  98  U.  S.,  31. 

Proof  of  invalidity  upon  defendants.  — 
Seymour  v.  Osborne,  11  Wall.,  516; 
Reckendorfer  v.  Faber,  92  U.  S.,  347; 
Roemer  v.  Simon,  95  U.  S.,  214;  Im- 
haeuser  v.  Buerk,  101  U.  S.,  647. 

Questions  for  court  and  those  for  jury 
considered.  —  Market  v.  Rowley,  155 
U.  S.,  621;  Coupe  v.  Royer,  155  U.  S., 
565;  Lumber  v.  Rodgers,  112  U.  S., 
659;  Keyes  v.  Grant,  118  U.  S.,  25; 
Humiston  v.  Wood,  124  U.  S.,  12. 
Royer  v.  Schultz,  135  U.  S.,  319; 
Miller  v.  Eagle,  151  U.  S.,  186. 

Res  ad  judicata.  —  Johnson  v.  Whar- 
ton, 152  U.  S.,  252;  Lyon  v.  Perrin, 
125  U.  S.,  698;  Bradley  v.  Eagle,  58 
F.  R.,  721;  Elec.  v.  Brush,  52  F.  R., 
130. 

Reconstruction  may  be  infringement. 

—  Am.  v.  Simmons,  106  U.  S.,  89. 
Statutes  of  limitations  of  the  several 

States  apply  to  patent  suits.  —  Campbell 
v.  Haverhill,  155  U.  S.,  610. 

Under  general  denial  prior  knowledge 
may  be  shown.  —  Zane  v.  Soffe,  110 
U.  S.,  200. 

Validity  and  infringement  must  be 
clear  to  warrant  preliminary  injunction. 

—  Stand,  v.  Crane,  56  F.  R.,  718 


THE    PATENT    STATUTE    DIGESTED 


871 


Want  of  patentability  need  not  be 
specifically  pleaded.  —  May  v.  Juneau, 
137  U.  S.,  408;  Hendy  v.  Golden,  127 
U.  S.,  370;  Richards  v.  Chase,  158 
U.  S.,  299. 


Technical  questions  can  not  be  raised 
on  appeal  where  not  raised  below.  — 
Tuttle  v.  Claflin,  76  F.  R.,  227;  Smith 
v.  Mellon,  58  F.  R.,  705. 


DESIGNS 

General  Provisions. 

Any  person  who  has  invented  any  new,  original,  and  orna- 
mental design  for  an  article  of  manufacture,  not  known  or  used  by 
others  in  this  country  before  his  invention  thereof,  and  not  patented 
or  described  in  any  printed  publication  in  this  or  any  foreign  country 
before  his  invention  thereof,  or  more  than  two  years  prior  to  his 
application,  and  not  in  public  use  or  on  sale  in  this  country  for  more 
than  two  years  prior  to  his  application,  unless  the  same  is  proved 
to  have  been  abandoned,  may,  upon  payment  of  the  fees  required 
by  law  and  other  due  proceedings  had,  the  same  as  in  cases  of 
invention  or  discoveries  covered  by  section  forty-eight  hundred  and 
eighty-six,  obtain  a  patent  therefor.  —  R.  S.  4929. 


Y. 


Whit- 


Doubtfvl    patentability.  —  N. 
N.  J.,  137  U.  S.,  445. 

Utility  in  designs.  —  Smith  v. 
man,  148  TJ.  S.,  674. 

Novelty  determined  by  ocular  compari- 
son. —  Braddock  v.  Macbeth,  64  F.  R., 
118. 

Double    use     not    patentable.  —  Un- 


termeyer  v.   Freund,    58  F.    R.,    205. 

Invention.  —  Caldwell  v.  Powell,  73 
F.  R.,  488. 

Lack  of  invention.  —  Krick  v.  Jan- 
sen,  61  F.  R.,  847;  Paine  v.  Snowden, 
50  F.  R.,  776. 

Must  be  ornamental.  —  Rowe  v. 
Blodgett,  98  O.  G.,  1286. 


The  Commissioner  may  dispense  with  models  of  designs  when 
the  design  can  be  sufficiently  represented  by  drawings  or  photo- 
graphs. —  R.  S.  4930. 

Patents  for  designs  may  be  granted  for  the  term  of  three  years 
and  six  months,  or  for  seven  years,  or  for  fourteen  years,  as  the 
applicant  may,  in  his  application,  elect.  —  R.  S.  4931. 

Patentees  of  designs  issued  prior  to  the  second  day  of  March, 
eighteen  hundred  and  sixty-one,  shall  be  entitled  to  extension  of 
their  respective  patents  for  the  term  of  seven  years,  in  the  same 
manner  and  under  the  same  restrictions  as  are  provided  for  the 
extension  of  patents  for  inventions  or  discoveries  issued  prior 
to  the  second  day  of  March,  eighteen  hundred  and  sixty-one.  — 
R.  S.  4932. 

All  the  regulations  and  provisions  which  apply  to  obtaining 
or  protecting  patents  for  inventions  or  discoveries  not  inconsistent 
with  the  provisions  of  this  Title,  shall  apply  to  patents  for  designs. — 
R.  S.  4933. 

Be  it  enacted,  etc.,  That  hereafter,  during  the  term  of  letters 
patent  for  a  design,  it  shall  be  unlawful  for  any  person  other  than 
the  owner  of  said  letters  patent,  without  the  license  of  such  owner, 
to  apply  the  design  secured  by  such  letters  patent,  or  any  colorable 
imitation  thereof,  to  any  article  of  manufacture  for  the  purpose 
of  sale,  or  to  sell  or  expose  for  sale  any  article  of  manufacture  to 
which  such  design  or  colorable  imitation  shall,  without  the  license 


872  THE    FIXED    LAW    OF   PATENTS 

of  the  owner,  have  been  applied,  knowing  that  the  same  has  been 
so  applied.  Any  person  violating  the  provisions,  or  either  of  them, 
of  this  section,  shall  be  liable  in  the  amount  of  two  hundred  and 
fifty  dollars;  and  in  case  the  total  profit  made  by  him  from  the 
manufacture  or  sale,  as  aforesaid,  of  the  article  or  articles  to  which 
the  design,  or  colorable  imitation  thereof,  has  been  applied,  exceeds 
the  sum  of  two  hundred  and  fifty  dollars,  he  shall  be  further  liable 
for  the  excess  of  such  profit  over  and  above  the  sum  of  two  hundred 
and  fifty  dollars;  and  the  full  amount  of  such  liability  may  be 
recovered  by  the  owner  of  the  letters  patent,  to  his  own  use,  in 
any  circuit  court  of  the  United  States  having  jurisdiction  of  the 
parties,  either  by  action  at  law  or  upon  a  bill  in  equity  for  an  in- 
junction to  restrain  such  infringement. 

Sec.  2.  That  nothing  in  this  act  contained  shall  prevent,  lessen, 
impeach,  or  avoid  any  remedy  at  law  or  in  equity  which  any  owner 
of  letters  patent  for  a  design,  aggrieved  by  the  infringement  of  the 
same,  might  have  had  if  this  act  had  not  been  passed;  but  such 
owner  shall  not  twice  recover  the  profit  made  from  the  infringe- 
ment. —  Act  Feb.  4,  1887. 

Profit  meant  is  total  profit.  —  Untermeyer  v.  Freund,  58  F.  R.,  205. 

DISCLAIMER 
General  Provision. 

Whenever,  through  inadvertence,  accident,  or  mistake,  and  with- 
out any  fraudulent  or  deceptive  intention,  a  patentee  has  claimed 
more  than  that  of  which  he  was  the  original  or  first  inventor  or 
discoverer,  his  patent  shall  be  valid  for  all  that  part  which  is  truly 
and  justly  his  own,  provided  the  same  is  a  material  or  substantial 
part  of  the  thing  patented;  and  any  such  patentee,  his  heirs  or 
assigns,  whether  of  the  whole  or  any  sectional  interest  therein, 
may,  on  payment  of  the  fee  required  by  law,  make  disclaimer  of 
such  parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or 
to  hold  by  virtue  of  the  patent  or  assignment,  stating  therein  the 
extent  of  his  interest  in  such  patent.  Such  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office;  and  it  shall  thereafter  be  considered  as  part  of  the 
original  specification  to  the  extent  of  the  interest  possessed  by  the 
claimant  and  by  those  claiming  under  him  after  the  record  thereof. 
But  no  such  disclaimer  shall  affect  any  action  pending  at  the  time 
of  its  being  filed,  except  so  far  as  may  relate  to  the  question  of 
unreasonable  neglect  or  delay  in  filing  it. 

[See  sees.  973,  4922.]  —  R.  S.  4917. 


Costs,  effect  of  disclaimer  on.  —  Ses- 
sions v.  Romadka,  145  U.  S.,  29. 

Disclaimer  of  reissue  claim.  —  Gage 
v.  Herring,  107  U.  S.,  640;  McMurray 
v.  Mallory,  111  U.  S.,  97;  Hurlbut 
v.  Schillinger,  130  U.  S.,  456. 

Disclaimer  made  to  obviate  having 
included  too  many  devices.  —  Sessions 
v.  Romadka,  145  U.  S.,  29. 


Disclaimer  part  of  specification.  — 
Dunbar  v.  Meyers,  94  U.  S.,  187; 
Schwarzwalder  v.  N.  Y.,  66  F.  R.,  152. 

Disclaimer  filed  after  bill.  —  Smith 
v.  Nichols,  21  Wall.,  112. 

Purpose  of  disclaimer.  —  Hailes  v. 
Albany,  123  U.  S.,  582;  Union  v. 
U.  S.,  112  U.  S.,  624-645;  Collins  v. 
Coes,  130  U.  S.,  56-69. 


THE  PATENT  STATUTE  DIGESTED         873 

Failure  to  File  —  Bars  Costs. 

(See  Costs  —  Disclaimer  —  Failure  to  file,  R.  S.  973). 

Laches  —  When  Failure  to  File  is. 

*  *  *  But  no  patentee  shall  be  entitled  to  the  benefits  of  this 
section  if  he  has  unreasonably  neglected  or  delayed  to  enter  a 
disclaimer.  —  R.  S.  4922. 

DISCOVERY 
Patentability  of. 

Any  person  who  has  invented  or  discovered  any  new  and  useful 
art,  machine,  manufacture  or  combination  of  matter,  or  any  new 
and  useful  improvement  thereof  *  *  *  may  *  *  *  obtain  a  patent 
therefor.  —  R.  S.  4886. 

DRAWINGS 

General  Provision. 

When  the  nature  of  the  case  admits  of  drawings,  the  applicant 
shall  furnish  one  copy  signed  by  the  inventor  or  his  attorney  in 
fact,  and  attested  by  two  witnesses,  which  shall  be  filed  in  the 
Patent  Office;  and  a  copy  of  the  drawing,  to  be  furnished  by 
the  Patent  Office,  shall  be  attached  to  the  patent  as  a  part  of  the 
specification.  —  R.  S.  4889. 

In  Reissue  —  How  Amended. 

(See  Reissue  —  When  and  How  Granted,  R.  S.  4916). 

Part  of  Patent. 

(See  Letters  Patent  —  Drawing,  R.  S.  4884). 

DRAWING  AND  SPECIFICATION 

(See  Letters  Patent  —  Contents,  R.  S.  4884). 

DIVISION  OF  PATENT 
Reissue. 
(See  Reissue). 

EMPLOYEES 
Government  —  Right  to  Obtain  a  Patent. 

The  Secretary  of  the  Interior  and  the  Commissioner  of  Patents 
are  authorized  to  grant  any  officer  of  the  Government,  except 
officers  and  employees  of  the  Patent  Office,  a  patent  for  any  inven- 
tion of  the  classes  mentioned  in  section  4886  of  the  Revised  Statutes 
when  such  invention  is  used  or  to  be  used  in  the  public  service, 
without  payment  of  any  fee:  Provided,  That  the  applicant  in 
his  application  shall  state  that  the  invention  described  therein, 
if  patented,  may  be  used  by  the  Government,  or  any  of  its  officers 
or  employees  in  prosecution  of  work  for  the  Government,  or  by 


874 


THE    FIXED    LAW    OF    PATENTS 


any  other  person  of  the  United  States,  without  the  payment  to 
him  of  any  royalty  thereon,  which  stipulation  shall  be  included 
in  the  patent.  —  R.  S.  sub.  4886  (Mar.  3,  1883). 

Patent  Office  —  Cannot  Acquire  Interest  in  Patent. 

All  officers  and  employees  of  the  Patent  Office  shall  be  incapable, 
during  the  period  for  which  they  hold  their  appointments,  to 
acquire  or  take,  directly  or  indirectly,  except  by  inheritance  or 
bequest,  any  right  or  interest  in  any  patent  issued  by  the  Office.  — 
R.  S.  480. 


United  States  —  Royalties  to  Barred. 

No  royalty  shall  be  paid  by  the  United  States  to  any  one  of  its 
officers  or  employees  for  the  use  of  any  patent  for  the  system,  or 
any  part  thereof,  mentioned  in  the  preceding  section,  nor  for  any 
such  patent  in  which  said  officers  or  employees  may  be  directly  or 
indirectly  interested.  —  R.  S.  1673. 

EQUITY 

Damages  and  Profits. 

(See  Profits,  R.  S.  4921). 

EQUITY  ACTIONS 
Jury  Trials. 

(See  Sec.  2,  R.  S.  4921). 

EVIDENCE 

Copies  of  Patents  and  Records  —  Certified  Copies. 
Written  or  printed  copies  of  any  records,  books,  papers,  or 
drawings  belonging  to  the  Patent  Office,  and  of  letters  patent 
authenticated  by  the  seal  and  certified  by  the  Commissioner  or 
Acting  Commissioner  thereof,  shall  be  evidence  in  all  cases  wherein 
the  originals  could  be  evidence;  and  any  person  making  application 
therefor,  and  paying  the  fee  required  by  law,  shall  have  certified 
copies  thereof.  —  R.  S.  892. 


Certified  copy  of  patent  as  evidence.  — 
Oregon  v.  Excelsior,  132  U.  S.,  215- 
216. 


Certified  copy  of  record  of  assignment 
as  evidence.  —  Am.  v.  Mayor,  60  F.  R., 
1016. 


Foreign  Letters  Patent.  —  Evidence  of  What. 

Copies  of  the  specifications  and  drawings  of  foreign  letters  patent 
certified  as  provided  in  the  preceding  section,  shall  be  prima  facie 
evidence  of  the  fact  of  the  granting  of  such  letters  patent,  and  of  the 
date  and  contents  thereof.  —  R.  S.  893. 

Printed    Copies    Specifications    and    Drawings  —  Certified    and 
gratuitously  Distributed. 

The  printed  copies  of  specifications  and  drawings  of  patents, 
which   the   Commissioner   of   Patents   is   authorized  to  print  for 


THE  PATENT  STATUTE  DIGESTED         875 

gratuitous  distribution  and  to  deposit  in  the  capitols  of  the  States 
and  Territories,  and  in  the  Clerk's  offices  of  the  district  courts, 
shall,  when  certified  by  him  and  authenticated  by  the  seal  of  his 
office,  be  received  in  all  courts  as  evidence  of  all  matters  therein 
contained.  —  R.  S.  494. 

Required  by  Patent  Office  —  Method  of  Taking. 

The  Commissioner  of  Patents  may  establish  rules  for  taking 
affidavits  and  depositions  required  in  cases  pending  in  the  Patent 
Office,  and  such  affidavits  and  depositions  may  be  taken  before 
any  officer  authorized  by  law  to  take  depositions  to  be  used  in  the 
courts  of  the  United  States,  or  of  the  State  where  the  officer 
resides.  —  R.  S.  4905. 


EXAMINATION 

(See  Application). 

EXAMINERS-IN-CHIEF 

Qualifications  —  Duties. 

The  examiners-in-chief  shall  be  persons  of  competent  legal 
knowledge  and  scientific  ability,  whose  duty  it  shall  be,  on  the 
written  application  of  the  appellant,  to  revise  and  determine  upon 
the  validity  of  the  adverse  decisions  of  examiners  upon  applica- 
tions for  patents,  and  for  reissue  of  patents,  and  in  interference 
cases;  and  when  required  by  the  Commissioner,  they  shall  hear 
and  report  upon  claims  for  extensions,  and  perform  such  other 
like  duties  as  he  may  assign  to  them.  —  R.  S.  482. 

EXECUTOR,  ADMINISTRATOR,  OR  GUARDIAN 

Application  by  and  Oath  of. 

When  any  person,  having  made  any  new  invention  or  discovery 
for  which  a  patent  might  have  been  granted,  dies  before  a  patent 
is  granted,  the  right  of  applying  for  and  obtaining  the  patent  shall 
devolve  on  his  executor  or  administrator,  in  trust  for  the  heirs  at 
law  of  the  deceased,  in  case  he  shall  have  died  intestate;  or  if  he 
shall  have  left  a  will  disposing  of  the  same,  then  in  trust  for 
his  devisees,  in  as  full  manner  and  on  the  same  terms  and  condi- 
tions as  the  same  might  have  been  claimed  or  enjoyed  by  him  in 
his  lifetime;  and  when  the  application  is  made  by  such  legal  repre- 
sentatives, the  oath  or  affirmation  required  to  be  made  shall  be  so 
varied  in  form  that  it  can  be  made  by  them.  The  executor  or  ad- 
ministrator duly  authorized  under  the  law  of  any  foreign  country 
to  administer  upon  the  estate  of  the  deceased  inventor  shall,  in 
case  the  said  inventor  was  not  domiciled  in  the  United  States  at 
the  time  of  his  death,  have  the  right  to  apply  for  and  obtain  the 
patent.  The  authority  of  such  foreign  executor  or  administrator 
shall  be  proved  by  certificate  of  a  diplomatic  or  consular  officer 
of  the  United  States.  —  R.  S.  4896. 


876 


THE    FIXED    LAW    OF    PATENTS 


Authority  of  attorney  after  death  of 
inventor.  —  Eagleton  v.  Mfg.  Co.,  Ill 
U.  S.,  490. 


Patent  to  deceased  inventor  goes  to  his 
heirs.  —  De  la  Vergne  v.  Featherstone, 
147  U.  S.,  209. 


The  above  as  amended  May  23,  1908. 

An  act  to  amend  section  forty-eight  hundred  and  ninety-six  of 
the  Revised  Statutes. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  section 
forty-eight  hundred  and  ninety-six  of  the  Revised  Statutes  be,  and 
the  same  is  hereby,  amended  so  that  the  section  shall  read  as 
follows: 

"  Sec.  4896.  When  any  person,  having  made  any  new  invention 
or  discovery  for  which  a  patent  might  have  been  granted,  dies 
before  a  patent  is  granted,  the  right  of  applying  for  and  obtaining 
the  patent  shall  devolve  on  his  executor  or  administrator,  in  trust 
for  the  heirs-at-law  of  the  deceased,  in  case  he  shall  have  died  intes- 
tate; or  if  he  shall  have  left  a  will  disposing  of  the  same,  then  in 
trust  for  his  devisees  in  as  full  manner  and  on  the  same  terms  and 
conditions  as  the  same  might  have  been  claimed  or  enjoyed  by  him 
in  his  lifetime;  and  when  any  person  having  made  any  new  inven- 
tion or  discovery  for  which  a  patent  might  have  been  granted  be- 
comes insane  before  a  patent  is  granted  the  right  of  applying  for 
and  obtaining  the  patent  shall  devolve  on  his  legally-appointed 
guardian,  conservator,  or  representative  in  trust  for  his  estate  in 
as  full  manner  and  on  the  same  terms  and  conditions  as  the  same 
might  have  been  claimed  or  enjoyed  by  him  while  sane;  and  when 
the  application  is  made  by  such  legal  representatives  the  oath  or 
affirmation  required  to  be  made  shall  be  so  varied  in  form  that 
it  can  be  made  by  them.  The  executor  or  administrator  duly 
authorized  under  the  law  of  any  foreign  country  to  administer 
upon  the  estate  of  the  deceased  inventor  shall,  in  case  the  said 
inventor  was  not  domiciled  in  the  United  States  at  the  time  of  his 
death,  have  the  right  to  apply  for  and  obtain  the  patent.  The 
authority  of  such  foreign  executor  or  administrator  shall  be  proved 
by  certificate  of  a  diplomatic  or  consular  officer  of  the  United 
States. 

"  The  foregoing  section,  as  to  insane  persons,  is  to  cover  all  ap- 
plications now  on  file  in  the  Patent  Office  or  which  may  be  hereafter 
made." 

Approved,  May  23,  1908. 

EXTENSIONS 
Designs  —  Issued  Prior  to  Mar.  2,  1861. 

(See  R.  S.  4932). 


FALSE  MARKING 
Action  for  and  Penalty. 

Every  person  who,  in  any  manner,  marks  upon  anything  made, 
used,  or  sold  by  him  for  which  he  has  not  obtained  a  patent,  the 
name  or  any  imitation  of  the  name  of  any  person  who  has  obtained 


THE  PATENT  STATUTE  DIGESTED         877 

a  patent  therefor,  without  the  consent  of  such  patentee,  or  his 
assigns  or  legal  representatives;   or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  such  patented 
article  the  word  "  patent  "  or  "  patentee,"  or  the  words  "  letters 
patent,"  or  any  word  of  like  import,  with  intent  to  imitate  or 
counterfeit  the  mark  or  device  of  the  patentee,  without  having 
the  license  or  consent  of  such  patentee  or  his  assigns  or  legal 
representatives;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  unpatented 
article  the  word  "  patent  "  or  any  word  importing  that  the  same 
is  patented,  for  the  purpose  of  deceiving  the  public,  shall  be  liable, 
for  every  such  offense,  to  a  penalty  of  not  less  than  one  hundred 
dollars,  with  costs;  one-half  of  said  penalty  to  the  person  who  shall 
sue  for  the  same,  and  the  other  to  the  use  of  the  United  States, 
to  be  recovered  by  suit  in  any  district  court  of  the  United  States 
within  whose  jurisdiction  such  offense  may  have  been  committed. — 
R.  S.  4901. 

FEES 
General  Patent  Office. 

The  following  shall  be  the  rates  for  patent  fees: 

On  filing  each  original  application  for  a  patent,  except  in  design 
cases,  fifteen  dollars. 

On  issuing  each  original  patent,  except  in  design  cases,  twenty 
dollars. 

In  design  cases:  For  three  years  and  six  months,  ten  dollars; 
for  seven  years,  fifteen  dollars;  for  fourteen  years,  thirty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty  dollars. 

On  filing  each  disclaimer,  ten  dollars. 


On  an  appeal  for  the  first  time  from  the  primary  examiners  to 
the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  Commis- 
sioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  including  cer- 
tified printed  copies,  ten  cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  attorney, 
or  other  paper,  of  three  hundred  words  or  under,  one  dollar;  of 
over  three  hundred  and  under  one  thousand  words,  two  dollars; 
of  over  one  thousand  words,  three  dollars. 

Certified  copies  of  such  drawings  and  specifications  may  be 
furnished  by  the  Commissioner  of  Patents  to  persons  applying 
therefor  upon  payment  of  the  present  rates  for  uncertified  copies, 
and  twenty-five  cents  additional  for  each  certification. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them.  — 
R.  S.  4934. 

Patent  fees  may  be  paid  to  the  Commissioner  of  Patents,  or  to 
the  Treasurer,  or  any  of  the  assistant  treasurers  of  the  United 
States,  or  to  any  of  the  designated  depositaries,  national  banks, 


878 


THE    FIXED    LAW    OF    PATENTS 


or  receivers  of  public  money,  designated  by  the  Secretary  of  the 
Treasury  for  that  purpose;  and  such  officer  shall  give  the  depositor 
a  receipt  or  certificate  of  deposit  therefor.  All  money  received 
at  the  Patent  Office,  for  any  purpose,  or  from  any  source  whatever, 
shall  be  paid  into  the  Treasury  as  received,  without  any  deduction 
whatever.  —  R.  S.  4935. 

The  Treasurer  of  the  United  States  is  authorized  to  pay  back 
any  sum  or  sums  of  money  to  any  person  who  has  through  mistake 
paid  the  same  into  the  Treasury,  or  to  any  receiver  or  depositary, 
to  the  credit  of  the  Treasury,  as  for  fees  accruing  at  the  Patent 
Office,  upon  a  certificate  thereof  being  made  to  the  Treasurer  by 
the  Commissioner  of  Patents.  —  R.  S.  4936. 

Amendment  to  Sec.  4934,  May  27,  1908. 

"  In  lieu  of  the  fees  fixed  by  section  forty-nine  hundred  and 
thirty-four  of  the  Revised  Statutes  for  recording  assignments, 
agreements,  powers  of  attorney,  or  other  papers  in  the  Patent 
Office  the  following  shall  hereafter  be  the  rates: 

"  For  recording  every  assignment,  power  of  attorney,  or  other 
paper,  of  three  hundred  words  or  under,  one  dollar;  of  over  three 
hundred  and  under  one  thousand  words,  two  dollars;  and  for  each 
additional  thousand  words  or  fraction  thereof,  one  dollar." 

Final  —  When  Must  be  Paid. 

*  *  *  If  the  final  fee  is  not  paid  within  that  period  (six  months 
from  the  time  at  which  it  was  passed  and  allowed  and  notice 
thereof  sent  to  the  applicant  or  his  agent)  the  patent  shall  be  with- 
held. —  R.  S.  4885. 

Required  to  be  Paid  —  As  a  Condition  to  the  Grant. 

(See  R.  S.  4886). 

Witnesses. 

(See  Witnesses,  R.  S.  4907). 


FEIGNED  ISSUES 
Questions  of  Fact  —  Special  Jury. 

(See  sec.  2,  R.  S.  4921) 

FOREIGN  PATENT 

General  Provision  —  When  Not  a  Bar. 

No  person  otherwise  entitled  thereto  shall  be  debarred  from 
receiving  a  patent  for  his  invention  or  discovery,  nor  shall  any 
patent  be  declared  invalid  by  reason  of  its  having  been  first  patented 
or  caused  to  be  patented  by  the  inventor  or  his  legal  represent- 
atives or  assigns  in  a  foreign  country,  unless  the  application  for 
said  foreign  patent  was  filed  more  than  twelve  months,  in  cases 
within  the  provisions  of  section  forty-eight  hundred  and  eighty- 
six  of  the  Revised  Statutes,  and  four  months  in  cases  of  designs, 
prior  to  the  filing  of  the  application  in  this  country,  in  which  case 
no  patent  shall  be  granted  in  this  country. 


THE  PATENT  STATUTE  DIGESTED 


879 


An  application  for  patent  for  an  invention  or  discovery  or  for 
a  design  filed  in  this  country  by  any  person  who  has  previously 
regularly  filed  an  application  for  a  patent  for  the  same  invention, 
discovery,  or  design  in  a  foreign  country  which,  by  treaty,  conven- 
tion, or  law,  affords  similar  privileges  to  citizens  of  the  United 
States  shall  have  the  same  force  and  effect  as  the  same  application 
would  have  if  filed  in  this  country  on  the  date  on  which  the  applica- 
tion for  patent  for  the  same  invention,  discovery,  or  design  was  first 
filed  in  such  foreign  country,  provided  the  application  in  this 
country  is  filed  within  twelve  months  in  cases  within  the  provisions 
of  section  forty-eight  hundred  and  eighty-six  of  the  Revised 
Statutes,  and  within  four  months  in  cases  of  designs,  from  the 
earliest  date  on  which  any  such  foreign  application  was  filed.  But 
no  patent  shall  be  granted  on  an  application  for  patent  for  an 
invention  or  discovery  or  a  design  which  had  been  patented  or 
described  in  a  printed  publication  in  this  or  any  foreign  country 
more  than  two  years  before  the  date  of  the  actual  filing  of  the 
application  in  this  country,  or  which  had  been  in  public  use  or  on 
sale  in  this  country  for  more  than  two  years  prior  to  such  filing.  — 
R.  S.  4887. 


Identity  of  the  inventions  considered. 
—  Siemens  v.  Sellers,  123  U.  S.,  276; 
Commercial  v.  Fairbank,  135  U.  S.,  176; 
Elec.  v.  Brush,  52  F.  R.,  130. 

Effect  of  prior  foreign  patent.  —  Tele- 
phone Cases,  126  U.  S.,  1-584. 

Term  of  foreign  patent.  —  Bate  v. 
Hammond,  129  U.  S.,  151;  Pohl  v. 
Anchor.  134  U.  S.,  381-387. 

A  U.  S.  patent  granted  for  an  invention 
previously   patented   abroad,  but   which 


foreign  patent  has  expired,  is  without 
validity.  —  Huber  v.  Nelson,  148  U.  S., 
270. 

Term  of  foreign  patent  —  Limitation 
on  face  of  U.  S.  patent  unnecessary  — 
Certificate  of  correction.  —  Edison  v. 
U.  S.,  52  F.  R.,  300. 

The  meaning  of  "  previously  pa- 
tented "  considered.  —  Bate  v.  Sulz- 
berger, 157  U.  S.,  1. 


When  a  Bar  to  Domestic  Patent. 

(See  Invention  —  Patentable,  R.  S.  4886). 

FOREIGN  USE 
Not  Bar  to  Patent. 

Whenever  it  appears  that  a  patentee,  at  the  time  of  making  his 
application  for  the  patent,  believed  himself  to  be  the  original  and 
first  inventor  or  discoverer  of  the  thing  patented,  the  same  shall 
not  be  held  to  be  void  on  account  of  the  invention  or  discovery, 
or  any  part  thereof,  having  been  known  or  used  in  a  foreign  country, 
before  his  invention  or  discovery  thereof,  if  it  had  not  been  patented 
or  described  in  a  printed  publication.  —  R.  S.  4923. 

FORFEITED  APPLICATION 
Renewal  of. 

(See  Application  —  Renewal,  R.  S.  4897). 

FRAUD 
Defense  of. 

(See  Defenses,  R.  S.  4920). 


880  THE    FIXED   LAW   OF    PATENTS 

GOVERNMENT 
Employees  of  Patent  Office  not  to  Hold  Patents. 

All  officers  and  employes  of  the  Patent  Office  shall  be  incapable, 
during  the  period  for  which  they  hold  their  appointments,  to  acquire 
or  take,  directly  or  indirectly,  except  by  inheritance  or  bequest, 
any  right  or  interest  in  any  patent  issued  by  the  Office.  —  R.  S.  480. 

Employees  Need  Not  Pay  Fees  for  Patenting  —  When. 

The  Secretary  of  the  Interior  and  the  Commissioner  of  Patents 
are  authorized  to  grant  any  officer  of  the  Government,  except 
officers  and  employes  of  the  Patent  Office,  a  patent  for  any  inven- 
tion of  the  classes  mentioned  in  section  forty-eight  hundred  and 
eighty-six  of  the  Revised  Statutes  when  such  invention  is  used  or 
to  be  used  in  the  public  service,  without  the  payment  of  any  fee: 
Provided,  That  the  applicant  in  his  application  shall  state  that  the 
invention  described  therein,  if  patented,  may  be  used  by  the  Govern- 
ment, or  any  of  its  officers  or  employes  in  prosecution  of  work  for 
the  Government,  or  by  any  other  person  in  the  United  States, 
without  the  payment  to  him  of  any  royalty  thereon,  which  stipu- 
lation shall  be  included  in  the  patent.  —  Amendment  of  Mar.  3, 
1883,  to  Sec.  4886. 

Royalties  Not  to  be  Paid  by. 

No  royalty  shall  be  paid  by  the  United  States  to  any  one  of  its 
officers  or  employes  for  the  use  of  any  patent  for  the  system,  or 
any  part  thereof,  mentioned  in  the  preceding  section,  nor  for  any 
such  patent  in  which  said  officers  or  employes  may  be  directly  or 
indirectly  interested.  —  R.  S.  1673. 

IMPROVEMENT 
Patentability  of. 

Any  person  who  has  invented  or  discovered  any  new  and  useful 
act,  machine,  manufacture  or  composition  of  matter,  or  any  new 
and  useful  improvement  thereof  *  *  *  —  R.  S.  4886. 

INFRINGEMENT 

General  Provision  —  Jurisdiction. 

The  circuit  courts  shall  have  original  jurisdiction  as  follows: 

*  *  *  * 

Ninth.  Of  all  suits  at  law  or  in  equity  arising  under  the  patent 
or  copyright  laws  of  the  United  States.  —  R.  S.  629. 


Supreme  Court  of  the  District  of  Co- 
lumbia in  patent  causes  has  circuit  court 
jurisdiction.  —  Cochrane  v.  Deener,  94 
U.  S.,  780. 

Jurisdiction.  —  Hartell  v.  Tilghman, 
99  U.  S.,  547.  Albright  v.  Teas,  106 
U.  S.,  613;  Oliver  v.  Chem.  Works,  109 
U.  S.,  75;  Marsh  v.  Nichols,  140  U.  S., 
344;    White  v.  Rankin,  144  U.  S.,  628. 

Court    of    Claims.  —  U.    S.    v.    Mc- 


Keever,  23  O.  G.,  1530.  U.  S.  v. 
Palmer,  128  U.  S.,  262-372.  Hollister 
v.  Benedict,  113  U.  S.,  59-73.  Schil- 
linger  v.  U.  S.,  155  U.  S.,  163;  U.  S.  v. 
Berdan  Mfg.  Co.,  156  U.  S.,  552. 

Jurisdiction  of  circuit  court.  —  St. 
Paul  v.  Starling,  127  U.  S.,  376-378. 

Jurisdiction  to  annul  patents.  —  U. 
S.  v.  Bell  Telephone,  128  U.S.,  315-373; 
Mowry  v.  Whitney,  14  Wall.,  343. 


THE  PATENT  STATUTE  DIGESTED 


881 


Actions  at  Law. 

Damages  for  the  infringement  of  any  patent  may  be  recovered 
by  action  on  the  case.   *  *  *  —  R.  S.  4919. 

Article  Made  or  Purchased  Before  Application  with  the  Consent 
of  the  Inventor. 

Every  person  who  purchases  of  the  inventor  or  discoverer,  or, 
with  his  knowledge  and  consent,  constructs  any  newly  invented  or 
discovered  machine,  or  other  patentable  article,  prior  to  the  appli- 
cation by  the  inventor  or  discoverer  for  a  patent,  or  who  sells  or 
uses  one  so  constructed,  shall  have  the  right  to  use,  and  vend  to 
others  to  be  used,  the  specific  thing  so  made  and  purchased,  with- 
out liability  therefor.  —  R.  S.  4899. 

Claims  too  Broad  —  Recovery  when  —  Costs. 

Whenever,  through  inadvertence,  accident,  or  mistake,  and 
without  any  willful  default  or  intent  to  defraud  or  mislead  the 
public,  a  patentee  has,  in  his  specification,  claimed  to  be  the 
original  and  first  inventor  or  discoverer  of  any  material  or  sub- 
stantial part  of  the  thing  patented,  of  which  he  was  not  the  original 
and  first  inventor  or  discoverer,  every  such  patentee,  his  executors, 
administrators,  and  assigns,  whether  of  the  whole  or  any  sectional 
interest  in  the  patent,  may  maintain  a  suit  at  law  or  in  equity, 
for  the  infringement  of  any  part  thereof,  which  was  bona  fide  his 
own,  if  it  is  a  material  and  substantial  part  of  the  thing  patented, 
and  definitely  distinguishable  from  the  parts  claimed  without  right, 
notwithstanding  the  specifications  may  embrace  more  than  that  of 
which  the  patentee  was  the  first  inventor  or  discoverer.  But  in 
every  such  case  in  which  a  judgment  or  decree  shall  be  rendered 
for  the  plaintiff,  no  costs  shall  be  recovered  unless  the  proper  dis- 
claimer has  been  entered  at  the  Patent  Office  before  the  commence- 
ment of  the  suit.  But  no  patentee  shall  be  entitled  to  the  benefits 
of  this  section  if  he  has  unreasonably  neglected  or  delayed  to  ^nter 
a  disclaimer.    [See  sees.  973,  4917.]  —  R.  S.  4922. 


Disclaimer  filed  before  rehearing  con- 
sidered. —  Roemer  v.  Bernheim,  132 
U.  S.,  103. 


Disclaimer  filed  after  suit  begun  will 
prevent  recovery  of  costs.  —  Sessions  v. 
Romadka,  145  U.  S.,  29. 


Costs  —  Disclaimer. 

(See  Costs,  R.  S.  973). 

Damages. 

(See  Damages,  R.  S.  4919). 

Profits. 

(See  Profits,  R.  S.  4921). 

Defenses. 

(See  Defenses,  R.  S.  4920). 


882  THE   FIXED   LAW   OF   PATENTS 

Laches. 

(See  Laches,  R.  S.  4897). 

Designs. 

*  *  *  That  thereafter,  during  the  term  of  letters  patent  for  a 
design,  it  shall  be  unlawful  for  any  person  other  than  the  owner 
of  said  letters  patent,  without  the  license  of  such  owner,  to  apply 
the  design  secured  by  such  letters  patent,  or  any  colorable  imitation 
thereof,  to  any  article  of  manufacture  for  the  purpose  of  sale,  or 
to  sell  or  expose  for  sale  any  article  of  manufacture  to  which  the 
design,  or  colorable  imitation  shall,  without  the  license  of  the  owner, 
have  been  applied,  knowing  that  the  same  has  been  so  applied. 
*  *  *  —  R.  S.  sub.  4933,  Act  Feb.  4,  1881. 

Disclaimer. 

(See  Disclaimer,  R.  S.  4917). 

Pleas  —  Statutory. 

(See  Defenses,  R.  S.  4920). 

Renewal  Applications  —  Prior  to  Issue  of  Patent. 

*  *  *  But  no  person  shall  be  held  responsible  in  damages  for 
the  manufacture  or  use  of  any  article  or  thing  for  which  a  patent 
was  ordered  to  issue  under  such  renewed  application  prior  to  the 
issue  of  the  patent.  *  *  *  —  R.  S.  4897. 

Rights  Secured  Before  Application. 

(See  Unpatented  Invention,  R.  S.  4899). 

INJUNCTIONS 

Power  of  Equity  to  Grant  —  Damages  and  Accountings. 

The  several  courts  vested  with  jurisdiction  of  cases  arising 
under  the  patent  laws  shall  have  power  to  grant  injunctions 
according  to  the  course  and  principles  of  courts  of  equity  to  prevent 
the  violation  of  any  right  secured  by  patent,  on  such  terms  as  the 
court  may  deem  reasonable;  and  upon  a  decree  being  rendered  in 
any  such  case  for  an  infringement  the  complainant  shall  be  entitled 
to  recover,  in  addition  to  the  profits  to  be  accounted  for  by  the 
defendant,  the  damages  the  complainant  has  sustained  thereby; 
and  the  court  shall  assess  the  same  or  cause  the  same  to  be  assessed 
under  its  direction.  And  the  court  shall  have  the  same  power  to 
increase  the  damages,  in  its  discretion,  as  is  given  to  increase  the 
damages  found  by  verdicts  in  actions  in  the  nature  of  actions  of 
trespass  upon  the  case. 

But  in  any  suit  or  action  brought  for  the  infringement  of  any 
patent  there  shall  be  no  recovery  of  profits  or  damages  for  any 
infringement  committed  more  than  six  years  before  the  filing  of 
the  bill  of  complaint  or  the  issuing  of  the  writ  in  such  suit  or  action, 
and  this  provision  shall  applv  to  existing  causes  of  action.  —  R.  S. 
4921. 


THE    PATENT    STATUTE    DIGESTED 


883 


INSANE  INVENTOR 
Application  by  Committee. 
(See  Executor,  R.  S.  4896). 


INTERFERENCES 
General  Provisions. 

Whenever  an  application  is  made  for  a  patent  which,  in  the 
opinion  of  the  Commissioner,  would  interfere  with  any  pending  ap- 
plication, or  with  any  unexpired  patent,  he  shall  give  notice  thereof, 
to  the  applicants,  or  applicant  and  patentee,  as  the  case  may  be, 
and  shall  direct  the  primary  examiner  to  proceed  to  determine 
the  question  of  priority  of  invention.  And  the  Commissioner  may 
issue  a  patent  to  the  party  who  is  adjudged  the  prior  inventor, 
unless  the  adverse  party  appeals  from  the  decision  of  the  primary 
examiner,  or  of  the  board  of  examiners-in-chief,  as  the  case  may 
be,  within  such  time,  not  less  than  twenty  days,  as  the  Commis- 
sioner shall  prescribe.  —  R.  S.  4904. 


Diligence  discussed.  —  Christie  v. 
Seybold,  55  F.  R.,  69;  Yates  v.  Huson, 
74  O.  G.,  1732. 

Patentee  and  applicant.  —  Burr  v. 
Ford,  70  O.  G.,  275.  Porter  v.  Louden, 
73  O.  G.,  1551. 

Conception  and  reduction  to  practice. 
—  Colhoun  v.  Hodgson,  5  App.  D.  C, 
21;    Soley  v.  Hebbard,  70  O.  G.,  921. 

Constructive  reduction  to  practice.  — 
Porter  v.  Louden,  73  O.  G.,  1551; 
Croskey  v.  Atterbury,  76  O.  G.,  163. 

Inoperative  invention,  priority.  — 
Glidden  v.  Noble,  5  App.  D.  C,  480; 
Hisey  v.    Peters,    6   App.    D.   C,    68; 


Northal  v.  Bernardin,  74  O.  G.,  655; 
Carty  v.  Kellogg,  74  O.  G.,  657;  Draw- 
baugh  v.  Seymour,  77  O.  G.,  1313. 

Abandonment.  —  La  Flare  v.  Chase, 
74  O.  G.,  1735. 

Priority.  —  Shellaberger  v.  Sommer, 
74  O.  G.,  1897. 

Foreign  patent.  —  Preliminary  state- 
ment amended. 
O.  G.,  1201. 


Partnership. 

75  O.  G.,  2193. 

Presumption 


Parker  v.  Appert,  75 
Milton    v.    Kingsley, 


as    to    inventorship.  — 


Hill  v.  Parmelee,  78  O.  G,  170 


The  Commissioner  of  Patents  may  establish  rules  for  taking 
affidavits  and  depositions  required  in  cases  pending  in  the  Patent 
Office,  and  such  affidavits  and  depositions  may  be  taken  before 
any  officer  authorized  by  law  to  take  depositions  to  be  used  in  the 
courts  of  the  United  States  or  the  State  where  the  officer  resides.  — 
R.  S.  4905. 

The  clerk  of  any  court  of  the  United  States,  for  any  district  or 
Territory  wherein  testimony  is  to  be  taken  for  use  in  any  contested 
case  pending  in  the  Patent  Office,  shall,  upon  the  application  of  any 
party  thereto,  or  of  his  agent  or  attorney,  issue  a  subpoena  for 
any  witness  residing  or  being  within  such  district  or  Territory, 
commanding  him  to  appear  and  testify  before  any  officer  in  such 
district  or  Territory  authorized  to  take  depositions  and  affidavits, 
at  any  time  and  place  in  the  subpoena  stated.  But  no  witness  shall 
be  required  to  attend  at  any  place  more  than  forty  miles  from  the 
place  where  the  subpoena  is  served  upon  him.  —  R.  S.  4906. 

Every  witness  duly  subpoenaed  and  in  attendance  shall  be 
allowed  the  same  fees  as  are  allowed  to  witnesses  attending  the 
courts  of  the  United  States.  —  R.  S.  4907. 


884  THE   FIXED   LAW   OF   PATENTS 

Whenever  any  witness,  after  being  duly  served  with  such  sub- 
poena, neglects  or  refuses  to  appear,  or  after  appearing  refuses  to 
testify,  the  judge  of  the  court  whose  clerk  issued  the  subpoena  may, 
on  proof  of  such  neglect  or  refusal,  enforce  obedience  to  the  process, 
or  punish  the  disobedience,  as  in  other  like  cases.  But  no  witness 
shall  be  deemed  guilty  of  contempt  for  disobeying  such  subpoena, 
unless  his  fees  and  traveling  expenses  in  going  to,  returning  from, 
and  one  day's  attendance  at  the  place  of  examination,  are  paid  or 
tendered  him  at  the  time  of  the  service  of  the  subpoena;  nor  for 
refusing  to  disclose  any  secret  invention  or  discovery  made  or  owned 
by  himself.  —  R.  S.  4908. 

Every  applicant  for  a  patent  or  for  the  reissue  of  a  patent,  any 
of  the  claims  of  which  have  been  twice  rejected,  and  every  party 
to  an  interference,  may  appeal  from  the  decision  of  the  primary 
examiner,  or  of  the  examiner  in  charge  of  interferences  in  such  case, 
to  the  board  of  examiners-in-chief;  having  once  paid  the  fee  for 
such  appeal.  —  R.  S.  4909. 

If  such  party  is  dissatisfied  with  the  decision  of  the  examiners- 
in-chief,  he  may,  on  payment  of  the  fee  prescribed,  appeal  to  the 
Commissioner  in  person.  —  R.  S.  4910. 

If  such  party,  except  a  party  to  an  interference,  is  dissatisfied 
with  the  decision  of  the  Commissioner,  he  may  appeal  to  the 
Supreme  Court  of  the  District  of  Columbia,  sitting  in  banc.  [See 
sec.  9,  act  of  February  9,  1893.]  —  R.  S.  4911. 

Appeal  under  this  section  discussed.  —  Butterworth  v.  Hoe,  112  U.  S.,  50-60. 

When  an  appeal  is  taken  to  the  Supreme  Court  of  the  District 
of  Columbia,  the  appellant  shall  give  notice  thereof  to  the  Commis- 
sioner, and  file  in  the  Patent  Office  within  such  time  as  the  Commis- 
sioner shall  appoint,  his  reasons  of  appeal,  specifically  set  forth 
in  writing.  —  R.  S.  4912. 

The  court  shall,  before  hearing  such  appeal,  give  notice  to  the 
Commissioner  of  the  time  and  place  of  the  hearing,  and  on  receiving 
such  notice  the  Commissioner  shall  give  notice  of  such  time  and 
place  in  such  manner  as  the  court  may  prescribe,  to  all  parties  who 
appear  to  be  interested  therein.  The  party  appealing  shall  lay 
before  the  court  certified  copies  of  all  the  original  papers  and  evi- 
dence in  the  case,  and  the  Commissioner  shall  furnish  the  court 
with  the  grounds  of  his  decision,  fully  set  forth  in  writing,  touching 
all  the  points  involved  by  the  reasons  of  appeal.  And  at  the 
request  of  any  party  interested,  or  of  the  court,  the  Commissioner 
and  the  examiners  may  be  examined  under  oath,  in  explanation 
of  the  principles  of  the  thing  for  which  a  patent  is  demanded.  — 
R.  S.  4913. 

The  court,  on  petition,  shall  hear  and  determine  such  appeal, 
and  revise  the  decision  appealed  from  in  a  summary  way,  on  the 
evidence  produced  before  the  Commissioner,  at  such  early  and 
convenient  time  as  the  court  may  appoint;  and  the  revision  shall  be 
confined  to  the  points  set  forth  in  the  reasons  of  appeal.  After 
hearing  the  case  the  court  shall  return  to  the  Commissioner  a 
certificate  of  its  proceedings  and  decision,  which  shall  be  entered 


THE    PATENT    STATUTE    DIGESTED  885 

of  record  in  the  Patent  Office,  and  shall  govern  the  further  proceed- 
ings in  the  case.  But  no  opinion  or  decision  of  the  court  in  any  such 
case  shall  preclude  any  person  interested  from  the  right  to  contest 
the  validity  of  such  patent  in  any  court  wherein  the  same  may  be 
called  in  question.  —  R.  S.  4914. 

Review  confined  to  points  raised.  — Forg,  2  App.  D.  C,  58. 

Appeals  —  Examiners-in-Chief . 

*  *  *  On  the  written  petition  of  appellant,  to  revise  and  deter- 
mine upon  the  adverse  decisions  of  the  examiners  *  *  *  in  inter- 
ference cases.  *  *  *  —  R.  S.  482. 

INTERFERING  PATENTS 

Suits  Affecting  —  Adjudication  in  Equity. 

Whenever  there  are  interfering  patents,  any  person  interested 
in  any  one  of  them,  or  in  the  working  of  the  invention  claimed 
under  either  of  them*  may  have  relief  against  the  interfering 
patentee,  and  all  parties  interested  under  him,  by  suit  in  equity 
against  the  owners  of  the  interfering  patent;  and  the  court,  on 
notice  to  adverse  parties,  and  other  due  proceedings  had  according 
to  the  course  of  equity,  may  adjudge  and  declare  either  of  the 
patents  void  in  whole  or  in  part,  or  inoperative,  or  invalid  in  any 
particular  part  of  the  United  States,  according  to  the  interest  of 
the  parties  in  the  patent  or  the  invention  patented.  But  no  such 
judgment  or  adjudication  shall  affect  the  right  of  any  person  except 
the  parties  to  the  suit  and  those  deriving  title  under  them  subsequent 
to  the  rendition  of  such  judgment.  —  R.  S.  4918. 


Relation  of  improvements  to  original 
invention.  —  Cantrell  v.  Wallick,  117 
U.  S.,  689;  Robertson  v  Blake,  94 
U.  S.,  728. 

Decision  of  Patent  Office,  effect  in  suit. 


—  Applet  on  v.  Ecaubert,  67  F.  R.,  917. 
Devices  actually  made  as  well  as  face 
of  patent  should  be  considered  in  deter- 
mining interference.  —  Thomson-Hous- 
ton v.  Western,  72  F.  R.,  530. 


INVENTION 

Patentable  —  General  Provision. 

Any  person  who  has  invented  or  discovered  any  new  and  useful 
art,  machine,  manufacture,  or  composition  of  matter,  or  any  new  and 
useful  improvements  thereof,  not  known  or  used  by  others  in  this 
country,  before  his  invention  or  discovery  thereof,  and  not  patented  or 
described  in  any  printed  publication  in  this  or  any  foreign  country, 
before  his  invention  or  discovery  thereof,  or  more  than  two  years 
'prior  to  his  application,  and  not  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  prior  to  his  application,  unless 
the  same  is  proved  to  have  been  abandoned,  may,  upon  payment  of 
the  fees  required  by  law,  and  other  due  proceeding  had,  obtain  a 
patent  therefor. 


For  investigating  the  question  of  the  public  use  or  sale  of  inven- 
tions for  two  years  or  more  prior  to  filing  applications  for  patents, 


886  THE    FIXED    LAW    OF    PATENTS 

and  for  expenses  attending  defense  of  suits  instituted  against  the 
Commissioner  of  Patents,  two  hundred  and  fifty  dollars.  —  R.  S. 
4886. 


Abandoned  experiments.  —  Seymour 
v.  Osborne,  11  Wall.,  516.  Corn  Plan- 
ter Patent,  23  Wall.,  181;  Wood  Paper 
Pat.,  23  Wall.,  566.  Deering  v.  Wi- 
nona Works,  155  U.  S.,  286;  West. 
v.  Sperry,  58  F.  R.,  186. 

Abandonment  of  invention.  —  Rifle  v. 
Whitney.  118  U.  S.,  22. 

Act  of  invention.  —  Wells  v.  Curtis, 

66  F  R.,  318. 

Aggregation.  —  Hailes  v.  Van  Wor- 
mer,  20  Wall.,  353.  Reckendorfer  v 
Faber,  92  U.  S.,  347;  Rubber  v.  Well- 
ing, 97  U.  S.,  7;  Bussey  v.  Excelsior, 
110  U.  S.,  131;  Beecher  v.  Atwater,  114 
U.  S.,  523;  Hendy  v.  Golden,  127  U.  S., 
370;  Thatcher  v.Burtis,  121  U.  S.,  286; 
Union  v.  Keith,  139  U.  S.,  530.  Cluett 
v.  Claflin,  140  U.  S.,  180;  Patent  v. 
Glover,  141  U.  S.,  560;  Derby  v. 
Thompson,  146  U.  S.,  476;  Ide  v.  Ball, 
149  U.  S.,  550;  Giles  v.  Heysinger,  150 
U.  S.,  627.  Richards  v.  Chase,  158 
U.  S.,  299;  Richards  v.  Chase,  159 
U.  S.,  477;  Palmer  v.  Corning,  156  U. 
S.,  342;  Deere  v.  Case,  56  F.  R.,  841; 
Griswold,  78  O.  G.,  482. 

Aggregation  and  combination  dis- 
tinguished. —  Stephenson  v.  Brooklyn 
Co.,  114  U.  S.,  149;  Snyder,  78  O.  G., 
485. 

Anticipation  of  combination  claim.  — 
Cantrell  v.  Wallick,  117  U.  S.,  689; 
Sutter  v.  Robinson,  119  U.  S.,  530; 
Flower  v.  City,  127  U.  S..  563;  Wollen- 
sak  v.  Sargent,  151  U.  S.,  221;  Cons. 
v.  Barnard,  156  U.  S.,  261;  American 
v.  Pennock,  17  S.  C.  Reporter,  1 ;  Coch- 
rane v.  Deener,  94  U.  S.,  780;  Roemer 
v.  Simon,  95  U.  S.,  214;  Illinois  v.  Rob- 
bins,  52  F.  R.,  215. 

Art,  machine,  manufacture  or  compo- 
sition of  matter  — Double  use  — Aggrega- 
tion. —  Fond  du  Lac  v.  May,  137  U.  S., 
395. 

Article  of  manufacture.  —  Union  v. 
Van  Dusen,  23  Wall.,  530;  Cohn  v. 
U.  S.,  93  IT.  S.,366;  Andrews  v.  Thum, 

67  F.  R.,  911. 

Article  distinguished  from  method  of 
making.  —  Cochrane  v.  Badische,  111 
U.  S.,  293. 

Change  of  material.  —  Hicks  v.  Kel- 
sev,  18  Wall.,  670.  Smith  v.  Good- 
year, 93  U.  S.,  486;  Terhune  v.  Phil- 
lips. 99  U.  S.,  592.  Brown  v.  District 
of  Columbia,  130  U.  S.,  87;  Florsheim 
v.  Schilling,  137  U.  S.,  64;   Cheneau  v. 


Comr.,  70  O.  G.,  924.  Kilbourne  v. 
Bingham,  50  F.  R.,  697;  Edison  v. 
U.  S.,  52  F.  R.,  300. 

Change  of  parts.  —  Ives  v.  Hamilton, 
92  U.  S.,  426;  Werner  v.  King,  96  U. 
S.,  218;  Mach.  v.  Murphy,. 97  U.  S.,  120; 
Thomson-Houston  v.  Western,  72  F.  R., 
530. 

Change  in  shape.  —  Butler  v.  Steckel, 
137  U.  S.,  21-30. 

Degree.  —  Planing  Mach.  v.  Keith, 
101  U.  S.,  479;  Ansonia  v.  Elec,  144 
U.  S.,  11;  Burt  v.  Evory,  133  U.  S.,349; 
Wright  v.  Yuengling,  155  U.  S.,  47. 

Double  use.  - —  Tucker  v.  Spaulding, 
13  Wall.,  453.  Brown  v.  Piper,  91  U. 
S.,  37;  Roberts  v.  Ryer,  91  U.  S.,  150; 
Vinton  v.  Hamilton,  104  U.  S.,  465; 
Blake  v.  San  Francisco,  113  U.  S.,  679; 
Railroad  v.  Safety  Truck,  110  U.  S., 
490;  Window  Cleaner  v.  Bosley,  15 
Brodix,  64.  Crescent  v.  Gottfried,  128 
U.  S.,  158;  Peters  v.  Hanson,  129  U. 
S.,  541;  St.  Germain  v.  Brunswick,  135 
U.  S.,  227;  Howe  v.  National,  134  U. 
S.,  388-398;  Marchand  v.  Emken,  132 
U.  S.,  195-200;  Day  v.  Fair  Haven, 
132  U.  S.,  98-103;  Busell  v.  Stevens, 
137  U.  S.,  423;  Lovell  v.  Gary,  147 
U.  S.,  623;  Leggett  v.  Oil  Co.,  149  U. 
S.,  287;  Market  v.  Rowley,  155  U.  S., 
621;  National  v.  Thompson,  65  F.  R., 
427;  Beach  v.  Inman,  71  F.  R.,  420; 
New  Departure  v.  Bevin,  73  F.  R.,  469; 
Steinerv.  Adrian,  59  F.  R.,  132;  Zinsser 
v.  Krueger,  48  F.  R..  296. 

Double  use  and  invention  distin- 
guished. —  Potts  v.  Creager,  155  U.  S., 
597;   Taylor  v.  Sawyer,  75  F.  R.,  301. 

Equivalents.  —  Seymour  v.  Osborne, 
11  Wall.,  516.  Smith  v.  Nichols,  21 
Wall.,  112.  Gould  v.  Rees,  15  Wall., 
187.  Hyndman  v.  Roots,  97  U.  S., 
224;  Mfg.  Co.  v.  Mfg.  Co.,  12  Brod., 
281.  Imhaeuser  v.  Buerk,  101  U.  S., 
647;  Goodyear  v.  Davis,  102  U.  S.,  222; 
Wicke  v.  Ostrum,  103  U.  S.,  461; 
Guidet  v.  Brooklyn,  105  U.  S.,  566; 
Clough  v.  Gilbert,  106  U.  S.,  178; 
King  v.  Gallun,  109  U.  S.,  99;  Consoli- 
dated v.  Walker,  138  U.  S.,  124;  West- 
ern v.  La  Rue,  139  U.  S.,  601;  McClain 
v.  Ortmayer,  141  U.  S.,  419;  Myers  v. 
Shovel,  141  U.  S.,  674;  Hoyt  v.  Home, 
145  U.  S.,  302;  Nat'l  v.  Hedden,  148 
U.  S.,  482;  Brigham  v.  Coffin,  149  U. 
S.,  557;  Erie  v.  Am.,  70  F.  R.,  58; 
Hunt  v.  Cassidy,  53  F.  R.,  257;  Briggs, 


THE    PATENT    STATUTE    DIGESTED 


887 


78  O.  G.,  169.  McKay  v.  Dizer,  16 
F.  R.,  102;  Jones  v.  Munger,  49  F.  R., 
61. 

Extensive  use.  —  Magowan  v.  N.  Y., 
141  U.  S.,  332;  McClain  v.  Ortmayer, 
141  U.  S.,  419;  McCreary  v.  Canal  Co., 
141  U.  S.,  459;  Gandy  v.  Belt  Co.,  143 
U.  S.,  587;  Grant  v.  Walter,  148  U.  S., 
547;  Krementz  v.  Cottle,  148  U.  S., 
556;  Duer  v.  Corbin,  149  U.  S.,  216; 
Keystone  v.  Adams,  151  U.  S.,  139; 
Olin  i7.  Timkin,  155  U.  S.,  141;  Sea- 
bury  v.  Am  Ende,  152  U.  S.,  561; 
Holmes  v.  Truman,  67  F.  R.,  542;  Fox 
v.  Perkins,  52  F.  R.,  205;  Dueber  v. 
Robbins,  75  F.  R.,  17;  Saunders  v. 
Allen,  60  F.  R.,  610;  Watson  v.  Ste- 
vens, 51  F.  R.,  757. 

Foreign  publication.  —  Rosewasser  v. 
Spieth,  129  U.  S.,  47. 

Idea  not  patentable.  —  Pencil  Co.  v. 
Howard,  20  Wall.,  498. 

Inoperative  structure.  —  Mitchell  v. 
Tilghman,  19  Wall.,  287. 

Patent  covers  other  analogous  uses.  — 
Stow  v.  Chicago,  104  U.  S.,  547;  Wire 
Cloth  v.  Clinton  Co.,  67  F.  R.,  790. 

Lack  of  invention  generally.  —  Le- 
high v.  Kearney,  158  U.  S.,  461.  Beld- 
ing  v.  Challenge,  151  U.  S.,  100;  Mor- 
gan v.  Albany,  152  U.  S.,  425;  Sar- 
gent v.  Covert,  152  U.  S.,  516;  Haughey 
v.  Lee,  151  U.  S.,  282;  Western  v.  An- 
sonia,  114  U.  S.,  447-453;  Estey  v. 
Burdett,  109  U.  S.,  633;  Hartshorn  v. 
Saginaw,  119  U.  S.,  664-679;  Preston 
v.  Manard,  116  U.  S.,  661-664;  Weir  v. 
Morden,  125  U.  S.,  98-108;  Hailes  v. 
Albany,  123  U.  S.,  582-589;  Holland 
v.  Shipley,  127  U.  S.,  396;  Peters  v. 
Active,  130  U.  S.,  626;  Pattee  v.  King- 
man, 129  U.  S.,  294-305;  Dreyfus  v. 
Searle,  124  U.  S.,  60;  Munson  v.  Mayor, 
124  U.  S.,  601-605;  Goebel  v.  Goldman, 
64  F.  R.,  787;  Consolidated  v. 
Holtzer,  67  F.  R.,  907;  Andrews  v. 
Thum,  67  F.  R.,  911;  Kilmer  v.  Gris- 
wold,  67  F.  R.,  117;  Thompson  v. 
Walbridge,  67  F.  R.,  1021;  Kilmer  v. 
Griswold,  74  F.  R.,  561;  Philadelphia 
v.  Weeks,  61  F.  R.,  405. 

Mechanical  skill.  —  Hollister  v.  Bene- 
dict, 113  U.  S.,  59-73.  Morris  v. 
McMillin,  112  U.  S.,  244;  Pomace  v. 
Ferguson,  119  U.  S.,  335-338;  Yale  v. 
Greenleaf,  117  U.  S.,  554-559;  Aron 
v.  Manhattan,  132  U.  S.,  84;  Shenfield 
v.  Nashawannuck,  137  U.  S.,  56;  Phil- 
lips v.  Detroit,  111  U.  S.,  604.  Royer 
v.  Roth,  132  U.  S.,  201;  French  v. 
Carter,  137  U.  S.,  239;  Giles  v.  Hey- 
singer,  150  U.  S.,  627;  Black  Diamond 
v.  Excelsior,  156  U.  S.,  611;  Smith  v. 
Macbeth,    67    F.    R.,    137;     Union    v. 


Waterbury,  70  F.  R.,  240;  Merritt  v. 
Middleton,  61  F.  R.,  680;  Westing- 
house  v.  Edison,  63  F.  R.,  588. 

Mechanical  method  and  its  relation 
to  article  produced  —  Aggregation.  — 
Two  patents  to  one  inventor  for  one 
invention.  Mosler  v.  Mosler,  127  U. 
S.,  354. 

Mechanical  processes  criticised.  — 
Risdon  v.  Medart,  158  U.  S.,  68;  Glass 
Co.  v.  Henderson,  67  F.  R.,  930. 

Must  involve  invention  as  well  as 
novelty  and  utility.  —  Thompson  v. 
Boisselier,  114  U.  S.,  1;  Gardner  v. 
Herz,  118  U.  S.,  180;  Hill  v.  Wooster, 
132  U.  S.,  693. 

New  and  useful  result.  —  Loom  Co. 
v.  Higgins,  105  U.  S.,  580. 

Operativeness  and  usefulness,  evi- 
dence of.  —  Dashiell  v.  Grosvenor,  162 
U.  S.,  425. 

Originality  of  invention,  employer  and 
employee.  —  Thompson  v.  Hall,  130 
U.  S.,  117-122;  Forgie  v.  Oil  Well, 
58F.R.,  871. 

Particular  arrangement.  —  Pope  v. 
Gormully,  144  U.  S.,  238;  Topliff  v. 
Topliff,  145  U.  S.,  156;  Dobson  v. 
Cubley,  149  U.  S.,  117;  Corbin  v. 
Eagle,  150  U.  S.,  38;  Knapp  v.  Morss, 
150  U.  S.,  221;  Howard  v.  Detroit,  150 
U.  S.,  164;  Magin  v.  Karle,  150  U.  S., 
387. 

Public  use  or  sale.  —  Consolidated  v. 
Wright,  94  U.  S.,  92.  Elizabeth  v.  Pave- 
ment, 97  U.  S.,  126.  Parks  v.  Booth, 
102  U.  S.,  96;  Egbert  v.  Lippman,  104 
U.  S.,  333;  Worley  v.  Loker,  104  U.  S., 
340;  Hall  v.  Macneale,  107  U.  S.,  90; 
Manning  v.  Glue  Co.,  108  U.  S.,  462; 
Miller  v.  Foree,  116  U.  S.,  22;  Beedle  v. 
Bennett,  122  U.  S.,  71;  Smith  v. 
Sprague,  123  U.  S.,  249;  Andrews  v. 
Hovey,  124  U.  S.,  694;  Andrews  v. 
Hovey,  123  U.  S.,  267-276;  Brush  v. 
Condit,  132  U.  S.,  39-50;  Barbed  Wire 
Patent,  143  U.  S.,  275;  (in  this  coun- 
try). Gandy  v.  Belt  Co.,  143  U.  S., 
587;  Root  v.  Third  Ave.,  146  U.  S., 
210;  Kirk  v.  United  States,  163  U.  S., 
49,  911.  Gates  v.  Frazier,  153  U.  S., 
332;  Smith  v.  Mellon,  58  F.  R.,  705; 
Gamewell  v.  Municipal,  61  F.  R.,  208; 
National  v.  Quick,  74  F.  R.,  236. 

Prior  knowledge  or  use.  —  Forncrook 
v.  Root,  127  U.  S.,  176;  Collins  v.  Coes. 
130  U.  S.,  56;  Peters  v.  Active,  129 
U.  S.,  530. 

Prior  publication.  —  Eames  v.  An- 
drews, 122  U.  S.,  40. 

Process  defined.  —  Mowry  v.  Whit- 
ney, 14  Wall.,  620;  Wood  Paper  Pat., 
23  Wall.,  566.  Cochrane  v.  Deener,  94 
U.  S.,  780;    Downtown  v.  Yeager,  108 


888 


THE    FIXED    LAW    OF    PATENTS 


TJ.  S.,  466;  Fermentation  v.  Maus,  122 
U.  S.,  413-432.  Lawther  v.  Hamil- 
ton, 124  U.  S.,  1-11;  International  v. 
Gaylord,  140  U.  S.,  55;  Royer  v.  Coupe, 
146  U.  S.,  524;  Wells  v.  Henderson,  67 
F.  R.,  930;  Schwarzwalder  v.  N.  Y.,  66 
F.  R.,  152;  Tannage  v.  Zahn,  70  F.  R., 
1003.  Wall  v.  Leek,  66  F.  R.,  552; 
Vt.  v.  Gibson,  56  F.  R.,  143;  Heroult, 
5  App.  D.  C,  90;  Am.  v.  Buckskin,  72 
F.  R.,  508. 

Process  and  apparatus  claims  treated; 
priority  and  originality  of  invention; 
operative  device.  —  Telephone  Cases, 
126  U.  S.,  1-584. 


Result  not  patentable.  —  Fuller  v. 
Yentzer,  94  U.  S.,  288,  299;  Glue  Co. 
v.  Upton,  97  U.  S.,  3.  Brush  v.  West- 
ern, 76  F.  R.,  761;  Browning  v.  Colo- 
rado, 61  F.  R.,  845. 

Two  patents  to  one  inventor  for  one 
invention.  —  Miller  v.  Eagle  Co.,  151 
U.  S.,  186;  Underwood  v.  Gerber,  149 
U.  S.,  224;  Russell  v.  Kern,  69  F.  R., 
94;  Thomson-Houston  v.  West.  Elec., 
70  F.  R.,  69;  Westinghouse  v.  N.  Y., 
67  F.  R.,  962;  Fassett  v.  Ewart,  62 
F.  R.,  404;  Elec.  v.  Brush,  52  F.  R., 
130;  (Consult  also  citations  under  sec. 
4919.) 


Importance  —  Necessary  to  Grant. 

*  *  *  And  if  *  *  *  it  shall  appear  *  *  *  that  the  same  is 
sufficiently  useful  and  important,  the  Commissioner  shall  issue  a 
patent  therefor.  —  R.  S.  4893. 


INVENTOR 

Death  of  —  Who  may  Apply  for  Patent. 

(See  Executor,  R.    S.  4896). 

Who  may  make  Application  as. 

(See  Invention,  R.  S.  4886). 

JURISDICTION 

Circuit  Courts  —  Law  and  Equity. 

The  circuit  courts  shall  have  original  jurisdiction  as  follows: 


Ninth.    Of  all  suits  at  law  or  in  equity  arising  under  the  patent 
or  copyright  laws  of  the  United  States.  —  R.  S.  629. 


Designs  —  Infringement. 

*  *  *  And  the  full  amount  of  such  liability  may  be  recovered 
by  the  owner  of  the  letters  patent,  to  his  own  use,  in  any  circuit 
court  of  the  United  States  having  jurisdiction  of  the  parties,  either 
by  action  at  law  or  upon  a  bill  in  equity  for  an  injunction  to  restrain 
such  infringement. 

Sec.  2.  That  nothing  in  this  act  contained  shall  prevent,  lessen, 
impeach  or  avoid  any  remedy  at  law  or  in  equity  which  any  owner 
of  letters  patent  for  a  design,  aggrieved  by  the  infringement  of  the 
same,  might  have  had  if  this  act  had  not  been  passed;  but  such 
owner  shall  not  twice  recover  the  profit  made  from  the  infringement. 
—  R.  S.  4933  and  Act  Feb.  4,  1887. 


THE    PATENT    STATUTE   DIGESTED 


889 


Patent  Causes. 

The  jurisdiction  vested  in  the  courts  of  the  United  States  in  the 
cases  and  proceedings  hereinafter  mentioned,  shall  be  exclusive 
of  the  courts  of  the  several  States: 


Sec.  8.  That  this  Act  shall  take  effect  January  first,  eighteen 
hundred  and  ninety-eight,  and  sections  one,  two,  three,  and  four, 
amending  sections  forty-eight  hundred  and  eighty-six,  forty-nine 
hundred  and  twenty,  forty-eight  hundred  and  eighty-seven,  and 
forty-eight  hundred  and  ninety-four  of  the  Revised  Statutes,  shall 
not  apply  to  any  patent  granted  prior  to  said  date,  nor  to  any  appli- 
cation filed  prior  to  said  date,  nor  to  any  patent  granted  on  such  an 
application. 

Fifth.  Of  all  cases  arising  under  the  patent-right  or  copyright 
laws  of  the  United    States.  —  R.  S.  711. 


No  action  in  a  United  States  court 
upon  a  contract  for  royalties  when  both 
parties   are   citizens   of   same   State.  — 


Allbright  v.  Teas,  106  U.  S.,  615;  Oliver 
Co.  v.  Chem.  Works,  109  U.  S.,  75. 


Place  and  Person. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of  the 
United  States  of  America  in  Congress  assembled,  That  in  suits 
brought  for  the  infringement  of  letters  patent  the  circuit  courts 
of  the  United  States  shall  have  jurisdiction,  in  law  or  in  equity, 
in  the  district  of  which  the  defendant  is  an  inhabitant,  or  in  any 
district  in  which  the  defendant,  whether  a  person,  partnership, 
or  corporation,  shall  have  committed  acts  of  infringement  and  have 
a  regular  and  established  place  of  business.  If  such  suit  is  brought 
in  a  district  of  which  the  defendant  is  not  an  inhabitant,  but  in 
which  such  defendant  has  a  regular  and  established  place  of  busi- 
ness, service  of  process,  summons,  or  subpoena  upon  the  defendant 
may  be  made  by  service  upon  the  agent  or  agents  engaged  in  con- 
ducting such  business  in  the  district  in  which  suit  is  brought.  — 
Act  Mar.  3,  1897. 


JURY  TRIAL 

Equity  Cases  —  Questions  of  Fact. 

Sec.  2.  The  said  courts  (U.  S.  Circuit  Courts)  when  sitting  in 
equity  for  the  trial  of  patent  causes,  may  empanel  a  jury  of  not 
less  than  five  and  not  more  than  twelve  persons,  subject  to  such 
general  rides  in  the  premises  as  may,  from  time  to  time,  be  made  by 
the  Supreme  Court,  and  submit  to  them  such  questions  of  fact 
arising  in  such  case  as  such  circuit  court  shall  deem  expedient. 

And  the  verdict  of  such  jury  shall  be  treated  and  proceeded  upon 
in  the  same  manner  and  with  the  same  effect  as  in  the  case  of  issues 
sent  from  chancery  to  a  court  of  law  and  returned  with  such  find- 
ings. —  R.  S.  492  f. 


890  THE   FIXED   LAW    OF   PATENTS 

LACHES 
Application  —  Abandonment 

(See  Invention,  R.  S.  4886). 

Application  —  Prosecution. 

(See  Application,  R.  S.  4894). 

Claims  too  Broad  —  Failure  to  File  Disclaimer. 

*  *  *  But  no  patentee  shall  be  entitled  to  the  benefits  of  this 
section  if  he  has  unreasonably  neglected  or  delayed  to  enter  a 
disclaimer.  —  R.  S.  4922. 

Reissue. 

(See  Reissue,  R.  S.  4916). 

LAW  ACTIONS 
Damages. 

(See  Damages,  R.  S.  4919). 

LETTERS  PATENT 

General  Provision  —  Contents. 

Every  patent  shall  contain  a  short  title  or  description  of  the 
invention  or  discovery,  correctly  indicating  its  nature  and  design, 
and  a  grant  to  the  patentee,  his  heirs  or  assigns,  for  the  term  of 
seventeen  years,  of  the  exclusive  right  to  make,  use,  and  vend  the 
invention  or  discovery  throughout  the  United  States  and  the  Terri- 
tories thereof,  referring  to  the  specification  for  the  particulars 
thereof.  A  copy  of  the  specification  and  drawings  shall  be  annexed 
to  the  patent  and  be  a  part  thereof.  —  R.  S.  4884. 


Patented  articles  subject  to  State  police 
laws.  —  Patterson  v.  Kentucky,  97  U. 
S.,  501.  Webber  v.  Va.,  103  U.  S., 
344. 


Patents  are  property.  —  Densmore  v. 
Scofield,  102  U.  S.,  375. 

Government  has  no  right  to  use  pat- 
ented inventions  without  compensation. 
—  James  v.  Campbell,  104  U.  S.,  356. 


General  Provision  —  Date. 

Every  patent  shall  bear  date  as  of  a  day  not  later  than  six 
months  from  the  time  at  which  it  was  passed  and  allowed  and  notice 
thereof  was  sent  to  the  applicant  or  his  agent;  and  if  the  final  fee 
is  not  paid  within  that  period  the  patent  shall  be  withheld.  — 
R.  S.  4885. 

Date  of  patent  after  correction.  —  Marsh  v.  Nichols  Co.,  128  U.  S.,  605. 

An  act  to  amend  section  forty-eight  hundred  and  eighty-five  of 
the  Revised  Statutes. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of  the 
United   States  of  America    in   Congress    assembled,     That    section 


THE  PATENT  STATUTE  DIGESTED         891 

forty-eight  hundred  and  eighty-five  of  the  Revised  Statutes  be, 
and  the  same  is  hereby,  amended  to  read  as  follows; 

"  Sec.  4885.  Every  patent  shall  issue  within  a  period  of  three 
months  from  the  date  of  the  payment  of  the  final  fee,  which  fee 
shall  be  paid  not  later  than  six  months  from  the  time  at  which  the 
application  was  passed  and  allowed  and  notice  thereof  was  sent  to 
the  applicant  or  his  agent;  and  if  the  final  fee  is  not  paid  within 
that  period  the  patent  shall  be  withheld." 

Approved  May  23,  1908. 

General  Provision  —  Grant,  Issuance,  Attestation. 

All  patents  shall  be  issued  in  the  name  of  the  United  States  of 
America,  under  the  seal  of  the  Patent  Office,  and  shall  be  signed 
by  the  Commissioner  of  Patents,  and  they  shall  be  recorded,  to- 
gether with  the  specifications,  in  the  Patent  Office  in  books  to  be 
kept  for  that  purpose.  —  R.  S.  4883. 

Omission  of  signature  of  the  Secretary.  —  Marsh  v.  Nichols  Co.,  128  U.  S.,  605. 

All  patents  for  inventions  signed  by  David  L.  Hawkins,  Second 
Assistant  Secretary  of  the  Interior,  or  any  other  Assistant  Secre- 
tary of  the  Interior,  shall  have  the  same  force,  effect,  and  validity 
as  though  the  same  had  been  signed  by  the  Secretary  of  the  Interior 
in  person  at  the  date  on  which  they  were  respectively  executed.  — 
Act  Apr.  19,  1888. 

Actions  to  Compel  Issue  —  Actions  in  Equity. 

(See  Actions  —  Equity,  R.  S.  4915). 

Assignment  Before  Issue. 

Patents  may  be  granted  and  issued  or  reissued  to  the  assignee 
of  the  inventor  or  discoverer;  but  the  assignment  must  first  be 
entered  of  record  in  the  Patent  Office.  And  in  all  cases  of  an 
application  by  an  assignee  for  the  issue  of  a  patent,  the  applica- 
tion shall  be  made  and  the  specification  sworn  to  by  the  inventor  or 
discoverer;  and  in  all  cases  of  an  application  for  a  reissue  of  any 
patent,  the  application  must  be  made  and  the  corrected  specifica- 
tion signed  by  the  inventor  or  discoverer,  if  he  is  living,  unless  the 
patent  was  issued  and  the  assignment  made  before  the  eighth  day 
of  July,  eighteen  hundred  and  seventy.  —  R.  S.  4895. 

Assignee  of  patent  before  issue.  —  Hendrie  v.  Sayles,  98  U.  S.,  546. 

Assignment  —  Execution  and  Recording. 

(See  Assignment  —  By  Instrument  in  Writing,  R.  S.  4898). 

Authentication  —  Seal  of  Patent  Office. 

The  seal  heretofore  provided  for  the  Patent  Office  shall  be  the 
seal  of  the  Office,  with  which  letters  patent  and  papers  issued  from 
the  Office  shall  be  authenticated.  —  R.  S.  478. 


892  THE   FIXED    LAW   OF   PATENTS 

Certified  Copies  —  How  Obtained. 

*  *  *  Any  person  making  application  therefor,  and  paying  the 
fee  required  by  law,  shall  have  certified  copies  thereof.  —  R.  S. 
892. 

Designs. 

(See  Designs,  R.  S.  4929). 

Drawings  —  Part  of  Specification. 

(See  Letters  Patent  —  Contents,  R.  S.  4884). 

Duration  of  Grant. 

Every  patent  shall  contain  *  *  *  a  grant  to  the  patentee,  his 
heirs  or  assigns,  for  the  term  of  seventeen  years.  *  *  *  —  R.  S. 
4884. 

Duration  —  Limitation  by  Foreign  Patent. 

(See  Foreign  Patent  —  Effect  on  U.  S.  Application,  R.  S.  4887). 

For  what  Granted. 

(See  Inventions  —  Classes  of,  R.  S.  4886). 

Foreign  Use  —  No  Bar  to  Grant  —  When. 

(See  Anticipation  —  Prior  Foreign  Invention,  R.  S.  4923). 

Grant  to  Representatives  of  Deceased  or  Insane  Inventor. 
(See  Executor,  R.  S.  4896). 

Granted  to  Assignee. 

(See  Assignment  —  Before  Issue,  R.  S.  4895). 

Interest  in  —  Patent  Office  Employees. 

(See  Employees  —  Patent  Office,  R.  S.  480). 

Issuance  —  Signature,  Seal  and  Record. 

All  patents  shall  be  issued  in  the  name  of  the  United  States  of 
America,  under  the  seal  of  the  Patent  Office,  and  shall  be  signed 
by  the  Commissioner  of  Patents,  and  they  shall  be  recorded,  to- 
gether with  the  specifications,  in  the  Patent  Office  in  books  to  be 
kept  for  that  purpose. 

All  patents  for  inventions  signed  by  David  L.  Hawkins,  Second 
Assistant  Secretary  of  the  Interior,  or  any  other  Assistant  Secretary 
of  the  Interior,  shall  have  the  same  force,  effect,  and  validity  as 
though  the  same  had  been  signed  by  the  Secretary  of  the  Interior 
in  person  at  the  date  on  which  they  were  respectively  executed.  — 
R.  S.  4883  (see  Act  Apr.  11,  1902). 

Recording  of  —  In  Patent  Office. 

(See  Letters  Patent  —  Issuance,  R.  S.  4883). 


THE   PATENT   STATUTE   DIGESTED  893 

Sealing. 

The  seal  heretofore  provided  for  the  Patent  Office  shall  be  the  seal 
of  the  Office,  with  which  letters  patent  and  papers  issued  from  the 
Office  shall  be  authenticated.  —  R.  S.  478. 

Scope  of  Grant  —  Territory  Included. 

Every  patent  shall  contain  *  *  *  a  grant  to  the  patentee,  his 
heirs  and  assigns  *  *  *  throughout  the  United  States  and  Terri- 
tories thereof.  *  *  *  —  R.  S.  4884. 

Short  Title. 

(See  Letters  Patent  —  Contents,  R.  S.  4884). 

LITHOGRAPHING  AND  ENGRAVING 

The  lithographing  and  engraving  required  by  the  two  preceding 
sections  shall  be  awarded  to  the  lowest  and  best  bidders  for  the 
interests  of  the  Government,  due  regard  being  paid  to  the  execution 
of  the  work,  after  due  advertising  by  the  Congressional  Printer 
under  the  direction  of  the  Joint  Committee  on  Printing;  but  the 
Joint  Committee  on  Printing  may  empower  the  Congressional 
Printer  to  make  immediate  contracts  for  engraving  whenever,  in 
their  opinion,  the  exigencies  of  the  public  service  will  not  justify 
waiting  for  advertisement  and  award;  or  if,  in  the  judgment  of  the 
Joint  Committee  on  Printing,  the  work  can  be  performed  under  the 
direction  of  the  Commissioner  of  Patents  more  advantageously 
than  in  the  manner  above  prescribed,  it  shall  be  so  done,  under 
such  limitations  and  conditions  as  the  Joint  Committee  on  Print- 
ing may  from  time  to  time  prescribe.  —  R.  S.  492. 

LICENSE 
Assignment. 

(See  Assignment,  R.  S.  4898). 

Implied  —  Arising  Before  Application. 

Every  person  who  purchases  of  the  inventor  or  discoverer,  or, 
with  his  knowledge  and  consent,  constructs  any  newly  invented 
or  discovered  machine,  or  other  patentable  article,  prior  to  the 
application  of  the  inventor  or  discoverer  for  a  patent,  or  who  sells 
or  uses  one  so  constructed,  shall  have  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  thing  so  made  or  purchased, 
without  liability  therefor.  —  R.  S.  4899. 

LIMITATIONS 
Statute  of. 

*  *  *  But  in  any  suit  or  action  brought  for  the  infringement  of 
any  patent  there  shall  be  no  recovery  of  profits  or  damages  for  any 
infringement  committed  more  than  six  years  before  the  filing  of  the 
bill  of  complaint  or  the  issuing  of  the  writ  in  such  suit  or  action, 


894  THE    FIXED    LAW    OF    PATENTS 

and  this  provision  shall  apply  to  existing  causes  of  action.  —  R.  S« 
4921. 

MACHINE 

Patentability  of. 

(See  Invention,  R.  S.  4886). 

MANUFACTURE 
Patentability  of. 
(See  Invention,  R.  S.  4886). 

MARINE  SERVICE 
Adoption  of  Patented  Articles  —  How  Recommended. 

No  patented  article  connected  with  marine  engines  shall  here- 
after be  purchased  or  used  in  connection  with  any  steam  vessels 
of  war  until  the  same  shall  have  been  submitted  to  a  competent 
board  of  naval  engineers,  and  recommended  by  such  board,  in 
writing,  for  purchase  and  use.  —  R.  S.  1537. 

MARKING  ARTICLES  PATENTED 
Necessity  and  Manner  —  Result  of  Not  Marking. 

It  shall  be  the  duty  of  all  patentees,  and  their  assigns  and  legal 
representatives,  and  of  all  persons  making  or  vending  any  patented 
article  for  or  under  them,  to  give  sufficient  notice  to  the  public 
that  the  same  is  patented;  either  by  fixing  thereon  the  word 
"  patented,"  together  with  the  day  and  year  the  patent  was  granted; 
or  when,  from  the  character  of  the  article,  this  can  not  be  done, 
by  fixing  to  it,  or  to  the  package  wherein  one  or  more  of  them  is 
inclosed,  a  label  containing  the  like  notice;  and  in  any  suit  for 
infringement,  by  the  party  failing  so  to  mark,  no  damages  shall  be 
recovered  by  the  plaintiff,  except  on  proof  that  the  defendant  was 
duly  notified  of  the  infringement,  and  continued,  after  such  notice, 
to  make,  use,  or  vend  the  article  so  patented.  —  R.  S.  4900. 

Sufficiency  of  notice.  —  Sessions  v.  I  Schofield,  152  U.  S.,  244;  Beach  v. 
Romadka,   145  U.  S.,  29;    Dunlap  v.  \  Inman  Co.,  71  F.  R.,  420. 

Penalty  for  False  Marking. 

Every  person  who,  in  any  manner,  marks  upon  anything  made, 
used  or  sold  by  him  for  which  he  has  not  obtained  a  patent,  the  name 
or  any  imitation  of  the  name  of  any  person  who  has  obtained  a 
patent  therefor,  without  the  consent  of  such  patentee,  or  his  assigns 
or  legal  representatives;   or, 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  such  patented 
article  the  word  "  patent  "  or  "  patentee  "  or  the  words  "  letters 
patent  "  or  any  word  of  like  import,  with  intent  to  imitate  or  coun- 
terfeit the  mark  or  device  of  the  patentee,  without  having  the  license 
or  consent  of  such  patentee  or  his  assigns  or  legal  representatives; 
or. 


THE  PATENT  STATUTE  DIGESTED         895 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  unpatented 
article  the  word  "  patent  "  or  any  word  importing  that  the  same  is 
patented,  for  the  purpose  of  deceiving  the  public,  shall  be  liable, 
for  every  such  offense,  to  a  penalty  of  not  less  than  one  hundred 
dollars,  with  costs;  one-half  of  said  penalty  to  the  person  who  shall 
sue  for  the  same,  and  the  other  to  the  use  of  the  United  States, 
to  be  recovered  by  suit  in  any  district  court  of  the  United  States 
within  whose  jurisdiction  such  offense  may  have  been  committed. 
—  R.  S.  4901. 

MODELS 

Arrangement  and  Exhibition  of  —  Public  Inspection. 

The  Commissioner  of  Patents  shall  cause  to  be  classified  and 
arranged  in  suitable  cases,  in  the  rooms  and  galleries  provided  for 
that  purpose,  the  models,  specimens  of  composition,  fabrics,  manu- 
factures, works  of  art,  and  designs,  which  have  been  or  shall  be 
deposited  in  the  Patent  Office;  and  the  rooms  and  galleries  shall 
be  kept  open  during  suitable  hours  for  public  inspection.  —  R.  S. 
484. 

Designs  —  Dispensed  with  —  When. 

The  Commissioner  may  dispense  with  models  of  designs  when 
the  design  can  be  sufficiently  represented  by  drawings  or  photo- 
graphs. —  R.  S.  4930. 

Disposition  of  —  Rejected  Applications. 

The  Commissioner  of  Patents  may  restore  to  the  respective 
applicants  such  of  the  models  belonging  to  rejected  applications 
as  he  shall  not  think  necessary  to  be  preserved,  or  he  may  sell  or 
otherwise  dispose  of  them  after  the  application  has  been  finally 
rejected  for  one  year,  paying  the  proceeds  into  the  Treasury,  as 
other  patent  monies  are  directed  to  be  paid.  —  R.  S.  485. 

Reissue  —  Amendment. 

(See  Reissue). 

When  Requisite. 

In  all  cases  which  admit  of  representation  by  model,  the  appli- 
cant, if  required  by  the  Commissioner,  shall  furnish  a  model  of 
convenient  size  to  exhibit  advantageously  the  several  parts  of  his 
invention  or  discovery.  —  R.  S.  4891. 

NOTICE  OF  ALLOWANCE 

(See  R.  S.  4885). 

NOTICE  OF  APPEAL 
Supreme  Court,  D.  C. 
(See  Appeals  —  Sup.  Ct.  D.  C,  R.  S.  4913). 


896  THE    FIXED   LAW   OF   PATENTS 

NOTICE  OF  REJECTION 

(See  Application  —  Examination  and  Rejection,  R.  S.  4913). 

NOVELTY 

Designs  —  Prior  Patent,  Publication,  or  Use. 

(See  Designs  —  Patentability  of,  R.  S.  4929). 

Prior  Foreign  Invention  —  When  Not  Anticipation. 

(See  Anticipation  —  Prior  Foreign  Invention,  R.  S.  4923). 

Prior  Use  —  Prior  Publication. 

Any  person  who  has  invented  or  discovered  any  new  and  useful 
art,  machine,  manufacture  or  composition  of  matter,  or  any  new 
and  useful  improvement  thereof,  not  known  or  used  by  others  in 
this  country  before  his  invention  or  discovery  thereof,  and  not 
patented  or  described  in  any  printed  publication  in  this  or  any 
foreign  country  before  his  invention  or  discovery  thereof,  or  more 
than  two  years  prior  to  his  application,  and  not  in  public  use  or  on 
sale  in  this  country  for  more  than  two  years  prior  to  his  applica- 
tion *  *  *  may  *  *  *  obtain  a  patent  therefor.  —  R.  S.  4886. 

Note:  Amendments  of  Mar.  3,  1897,  in  italics. 

Required  —  Novelty  and  Utility. 

Any  person  who  has  invented  or  discovered  any  new  and  use- 
ful *  *  *  _  r.  g.  4886. 

OATH 

General  Provisions. 

The  applicant  shall  make  oath  that  he  does  verily  believe 
himself  to  be  the  original  and  first  inventor  or  discoverer  of 
the  art,  machine,  manufacture,  composition  or  improvement  for 
which  he  solicits  a  patent;  that  he  does  not  know  and  does  not 
believe  that  the  same  was  ever  before  known  or  used;  and  shall 
state  of  what  country  he  is  a  citizen.  Such  oath  may  be  made  before 
any  person  within  the  United  States  authorized  by  law  to  administer 
oaths,  or,  when  the  applicant  resides  in  a  foreign  country,  before  any 
minister,  charge  d'affaires,  consul,  or  commercial  agent  holding 
commission  under  the  Government  of  the  United  States,  or  before 
any  notary  public,  judge,  or  magistrate  having  an  official  seal  and 
authorized  to  administer  oaths  in  the  foreign  country  in  which  the 
applicant  may  be,  whose  authority  shall  be  proved  by  certificate 
of  a  diplomatic  or  consular  officer  of  the  United  States.  —  R.  S. 
4892. 

Note:  The  italics  indicate  the  change  made  by  amendment  of 
Mar.  3,  1903. 


Not  necessary  to  recite  that  oath  has 
been  taken.  —  Seymour  v.  Osborne, 
11  Wall.,  516, 


Oath  must  be  made  by  the  inventor.  — 
Kennedy  v.  Hazelton,  128  U.  S.,  667- 
673. 


THE    PATENT    STATUTE    DIGESTED  897 

Executor,  Administrator  or  Committee. 

(See  Executor,  R.  S.  4896). 

Requirement  of  —  Assigned  Invention. 

Patents  may  be  granted  and  issued  or  reissued  to  the  assignee 
of  the  inventor  or  discoverer;  but  the  assignment  must  first  be 
entered  of  record  in  the  Patent  Office.  And  in  all  cases  of  an 
application  by  an  assignee  for  the  issue  of  a  patent,  the  application 
shall  be  made  and  the  specification  sworn  to  by  the  inventor  or 
discoverer;  and  in  all  cases  of  an  application  for  a  reissue  of  any 
patent,  the  application  must  be  made  and  the  corrected  specifica- 
tion signed  by  the  inventor  or  discoverer,  if  he  is  living,  unless 
the  patent  was  issued  and  the  assignment  made  before  the  eighth 
day  of  July,  1870.  —  R.  S.  4895. 

OFFICIAL  GAZETTE 

Publication  of  —  Authority  for. 

The  Commissioner  of  Patents  may  print,  or  cause  to  be  printed, 
copies  of  the  claims  of  current  issues.  *  *  *  —  R.  S.  489. 

PAPERS  AND  DOCUMENTS 
Legibility  —  Printing. 

The  Commissioner  of  Patents  may  require  all  papers  filed  in  the 
Patent  Office,  if  not  correctly,  legibly,  and  clearly  written,  to  be 
printed  at  the  cost  of  the  party  filing  them.  —  R.  S.  488. 

PATENT  OFFICE 

General  Provisions. 

The  Secretary  of  the  Interior  is  charged  with  the  supervision  of 
public  business  relating  to  the  following  subjects: 

*  *  *  * 

Fifth.    Patents  for  inventions.  —  R.  S.  441. 

Jurisdiction  of  the  Secretary  on  appeal  I  Hoe,  112  U.  S.,  50-60. 
from  Commissioner.  —  Butterworth  v.  \ 

There  shall  be  in  the  Department  of  the  Interior  an  office  known 
as  the  Patent  Office,  where  all  records,  books,  models,  drawings, 
specifications,  and  other  papers  and  things  pertaining  to  patents 
shall  be  safely  kept  and  preserved.  —  R.  S.  475. 

Classifications. 

The  Commissioner  of  Patents  shall  cause  to  be  classified  and 
arranged  in  suitable  cases,  in  the  rooms  and  galleries  provided  for 
that  purpose,  the  models,  specimens  of  composition,  fabrics,  manu- 
factures, works  of  art,  and  designs  which  have  been  or  shall  be 
deposited  in  the  Patent  Office;  and  the  rooms  and  galleries  shall  be 
kept  open  during  suitable  hours  for  public  inspection.  —  R.  S. 
484. 


898  THE   FIXED   LAW   OF   PATENTS 

Disbursements  —  Disbursing  Clerk. 

All  disbursements  for  the  Patent  Office  shall  be  made  by  the 
disbursing  clerk  of  the  Interior  Department.  —  R.  S.  496. 

Documents,  etc.  —  Preservation  of. 

There  shall  be  in  the  Department  of  the  Interior  an  office  known 
as  the  Patent  Office,  where  all  records,  books,  models,  drawings, 
specifications,  and  other  papers  and  things  pertaining  to  patents 
shall  be  safely  kept  and  preserved.  —  R.  S.  475. 

Employees  —  Number  and  Salaries. 

(For  list  of  minor  employees,  salaries,  etc.,  see  R.  S.  440  and 
amendments  thereto,  and  also  the  several  appropriation  acts  of 
Congress). 

Library  —  Purchase  of  Books. 

There  shall  be  purchased  for  the  use  of  the  Patent  Office  a  library 
of  such  scientific  works  and  periodicals,  both  foreign  and  American, 
as  may  aid  the  officers  in  the  discharge  of  their  duties,  not  exceeding 
the  amount  annually  appropriated  for  that  purpose. 

For  purchase  of  professional  and  scientific  books  and  expenses 
of  transporting  publications  of  patents  issued  by  the  Patent  Office 
to  foreign  governments,  two  thousand  five  hundred  dollars.  —  R.  S. 
486  and  Act  Feb.  3,  1905. 

Officials  —  Appointment  of. 

There  shall  be  in  the  Patent  Office  a  Commissioner  of  Patents, 
one  Assistant  Commissioner,  and  three  examiners-in-chief,  who 
shall  be  appointed  by  the  President,  by  and  with  the  advice  and 
consent  of  the  Senate.  All  other  officers,  clerks,  and  employes 
authorized  by  law  for  the  office  shall  be  appointed  by  the  Secretary 
of  the  Interior,  upon  the  nomination  of  the  Commissioner  of  Patents. 
—  R.  S.  476. 

Publications  —  Law  and  Decisions. 

The  Commissioner  of  Patents  may  print,  or  cause  to  be  printed, 
copies  of  the  claims  of  current  issues,  and  copies  of  such  laws, 
decisions,  regulations,  and  circulars  as  may  be  necessary  for  the 
information  of  the  public.  —  R.  S.  489. 

Seal  of  —  Authentication  by. 

The  seal  heretofore  provided  for  the  Patent  Office  shall  be  the 
seal  of  the  Office,  with  which  letters  patent  and  papers  issued  from 
the  Office  shall  be  authenticated.  —  R.  S.  478. 

Secretary  of  the  Interior  —  Charged  with  Supervising. 

The  Secretary  of  the  Interior  is  charged  with  the  supervision 
of  public  business  relating  to  the  following  subjects: 
*  *  *  * 

Fifth.     Patents  for  inventions.  —  R.  S.  441. 


THE    PATENT   STATUTE   DIGESTED 


899 


PRIORITY 
Between  Applicants  —  Applicant  and  Patentee. 

(See  Interferences,  R.  S.  4904). 

Interfering  Patents. 

(See  Interfering  Patents,  R.  S.  4918). 

PROCESS 
Patentability  of. 

(See  Invention,  R.  S.  4886). 


PROFITS 
General  Provision. 

The  several  courts  vested  with  jurisdiction  of  cases  arising  under 
the  patent  laws  shall  have  power  to  grant  injunctions  according  to 
the  course  and  principles  of  courts  of  equity,  to  prevent  the  viola- 
tion of  any  right  secured  by  patent,  on  such  terms  as  the  court  may 
deem  reasonable;  and  upon  a  decree  being  rendered  in  any  such 
case  for  an  infringement  the  complainant  shall  be  entitled  to  recover, 
in  addition  to  the  profits  to  be  accounted  for  by  the  defendant, 
the  damages  the  complainant  has  sustained  thereby;  and  the  court 
shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its 
direction.  And  the  court  shall  have  the  same  power  to  increase 
such  damages,  in  its  discretion,  as  is  given  to  increase  the  damages 
found  by  verdicts  in  actions  in  the  nature  of  actions  of  trespass 
upon  the  case. 

But  in  any  suit  or  action  brought  for  the  infringement  of  any 
patent  there  shall  be  no  recovery  of  profits  or  damages  for  any 
infringement  committed  more  than  six  years  before  the  filing  of 
the  bill  of  complaint  or  the  issuing  of  the  writ  in  such  suit  or  action, 
and  this  provision  shall  apply  to  existing  causes  of  action.  —  R.  S. 
4921. 


Articles  imported  from  abroad  — 
Measure  of  damages.  —  Boesch  v. 
Graff,  133  U.  S.,  697. 

Compensatory  damages.  —  Birdsall  v. 
Coolidge,  93  U.  S.,  64. 

Court  will  not  interfere  to  enjoin  a 
pending  suit  at  law,  much  less  the  bring- 
ing of  one  in  the  future.  —  Hapgood  v. 
Hewitt,  119  U.  S.,  226. 

Decree  against  all  defendants.  —  Ho- 
horst  v.  Hamburg  Am.,  148  U.  S.,  262. 

Effect  of  laches  on  right  to  preliminary 
injunction.  —  Keyes  v.  Eureka,  158 
U.  S.,  150;  Russell  v.  Kern,  69  F.  R., 
94. 

Effect  of  expiration  of  patent  before 
final  decree.  —  Beedle  v.  Bennett,  122 
U.  S.,  71;  Clark  v.  Wooster,  119  U.  S., 
322. 


Infringement  by  equivalents.  —  Sey- 
mour v.  Osborne,  11  Wall.,  516. 
Gould  v.  Rees,  15  Wall.,  187.  Cawood 
Patent,  94  U.  S.,  695. 

Infringer's  liability.  —  Mowry  v. 
Whitney,  14  Wall.,  620.  Philp  v.  Nock, 
17  Wall.,  460.  Packet  Co.  v.  Sickles,  19 
Wall.,  611.  Littlefield  v.  Perry,  21 
Wall.,  205;  Mason  v.  Graham,  23  Wall., 
261;  Tremolo  Patent,  23  Wall.,  518; 
Burdell  v.  Denig,  92  U.  S.,  716.  Mevs 
v.  Conover,  11  O.  G.,  1111.  Elizabeth 
v.  Pavement,  97  U.  S.,  126.  Marsh  v. 
Seymour,  97  U.  S.,  348;  Goulds  v. 
Cowing,  105  U.  S.,  253;  Crosby  v. 
Safety  Valve,  141  U.  S.,  441;  McCreary 
v.  Canal  Co.,  141  U.  S.,  459;  Sessions 
v.  Romadka,  145  U.  S.,  29;  Consumer 
v.  Am.  Co.,  50  F.  R.,  778. 


900 


THE    FIXED    LAW    OF    PATENTS 


Liabilities  of  parties,  maker,  user,  and 
seller.  —  Birdsell  v.  Shaliol,  112  U.  S., 
485. 

Measure  of  damages.  —  Garretson  v. 
Clark,  111  U.  S.,  120;  Black  v.  Thome, 
111  U.  S.,  122;  Rude  v.  Westcott,  130 
U.  S.,  152.  Hurlbut  v.  Schillinger,  130 
U.  S.,  456;  Comely  v.  Marckwald,  131 
U.  S.,  159;  Thomson  v.  Wooster,  114 
U.  S.,  104;  Clark  v.  Wooster,  119  U.  S., 
322;  Seabury  v.  Am  Ende,  152  U.  S., 
561;  Warren  v.  Keep,  155  U.  S.,  265; 
Belknap  v.  Schild,  16  S.  C.  Reporter, 
443;  Holmes  v.  Truman,  67  F.  R.,  542; 
Hunt  v.  Cassidy,  53  F.  R.,  257;  Sayre 
v.  Scott,  55  F.  R.,  971;  Keystone  v. 
Adams,  151  U.  S.,  139;  Coupe  v.  Royer, 
155  U.  S.,  565;  Tilghman  v.  Proctor, 
125  U.  S.,  136;    Tuttle  v.  Claflin,  76 


F.  R.,  227;  Mosher  v.  Joyce,  51  F.  R., 
441. 

Measure  of  damages,  interest  on  dam- 
ages —  Death  of  patentee  during  suit.  — 
Railroad  v.  Turrill,  110  U.  S.,  301. 

Not  necessary  to  show  recovery  at  law 
to  warrant  jurisdiction  in  equity  for  in- 
junction. —  McCoy  v.  Nelson,  121  U.  S., 
484. 

Jurisdiction.  —  Heaton  Co.  v.  Eu- 
reka Co.,  78  O.  G.,  171. 

Perpetual  injunction  granted.  — 
Safety  Valve  v.  Steam  Co.,  113  U.  S., 
157. 

Violation  of  preliminary  injunction. 
—  Warden  v.  Searles,  121  U.  S.,  14. 

Injunction.  — ■  Am.  v.  National  Co., 
51  F.  R.,  229. 


Sec.  2.  That  said  courts  [U.  S.  circuit  courts],  when  sitting  in 
equity  for  the  trial  of  patent  causes,  may  impanel  a  jury  of  not  less 
than  five  and  not  more  than  twelve  persons,  subject  to  such  general 
rules  in  the  premises  as  may,  from  time  to  time,  be  made  by  the 
Supreme  Court,  and  submit  to  them  such  questions  of  fact  arising 
in  such  cause  as  such  circuit  court  shall  deem  expedient. 

And  the  verdict  of  such  jury  shall  be  treated  and  proceeded  upon 
in  the  same  manner  and  with  the  same  effect  as  in  the  case  of  issues 
sent  from  chancery  to  a  court  of  law  and  returned  with  such 
findings.  —  Act  Feb.  16,  1875. 

PRINTING 

Papers  Filed. 

The  Commissioner  of  Patents  may  require  all  papers  filed  in 
the  Patent  Office,  if  not  correctly,  legibly,  and  clearly  written,  to  be 
printed  at  the  cost  of  the  party  filing  them.  —  R.  S.  488. 


PUBLICATION 

Claims,  Laws,  Decisions. 

The  Commissioner  of  Patents  may  print,  or  cause  to  be  printed, 
copies  of  the  claims  of  current  issues,  and  copies  of  such  laws, 
decisions,  regulations,  and  circulars  as  may  be  necessary  for  the 
information  of  the  public.  —  R.  S.  489. 

Specifications  and  Drawings. 

The  Commissioner  of  Patents  is  authorized  to  have  printed, 
from  time  to  time,  for  gratuitous  distribution,  not  to  exceed  one 
hundred  and  fifty  copies  of  the  complete  specifications  and  drawings 
of  each  patent  hereafter  issued,  together  with  suitable  indexes, 
one  copy  to  be  placed  for  free  public  inspection  in  each  capitol  of 
every  State  and  Territory,  one  for  the  like  purpose  in  the  clerk's 
office  of  the  district  court  of  each  judicial  district  of  the  United 
States,  except  when  such  offices  are  located  in  State  or  Territorial 


THE    PATENT    STATUTE    DIGESTED  901 

capitols,  and  one  in  the  Library  of  Congress,  which  copies  shall  be 
certified  under  the  hand  of  the  Commissioner  and  seal  of  the 
Patent  Office,  and  shall  not  be  taken  from  the  depositories  for  any 
other  purpose  than  to  be  used  as  evidence.  [See  §  894.]  —  R.  S. 
490. 

The  Commissioner  of  Patents  is  authorized  to  have  printed  such 
additional  numbers  of  copies  of  specifications  and  drawings,  certified 
as  provided  in  the  preceding  section,  at  a  price  not  to  exceed  the 
contract  price  for  such  drawings,  for  sale,  as  may  be  warranted  by 
the  actual  demand  for  the  same;  and  he  is  also  authorized  to 
furnish  a  complete  set  of  such  specifications  and  drawings  to  any 
public  library  which  will  pay  for  binding  the  same  into  volumes  to 
correspond  with  those  in  the  Patent  Office  and  for  the  transporta- 
tion of  the  same,  and  which  shall  also  provide  for  proper  custody 
for  the  same,  with  convenient  access  for  the  public  thereto,  under 
such  regulations  as  the  Commissioner  shall  deem  reasonable.  — 
R.  S.  491. 


PUBLIC  USE 
Prior. 

(See  Novelty  —  Prior  Use,  R.  S.  4886). 

Prior  Foreign  Use  —  When  Not  a  Bar. 

(See  Anticipation  —  Prior  Foreign  Invention,  R.  S.  4923). 

PURCHASER 
Article  Made  Before  Application  —  License. 

(See   Infringement  —  Article   made   before   Application,    R.    S. 

4899). 

QUESTION  OF  FACT 
In  Equity  —  Trial  by  Jury. 

(See  Actions  —  Equity,  R.  S.  4921). 

RECORDS  AND  DOCUMENTS 
Certified  Copies  —  How  Obtained. 

*  *  *  Any  person  making  application  therefor  and  paying  the 
fee  required  by  law,  shall  have  certified  copies  thereof.  —  R.  S.  892. 

Evidence  —  Patent  Office  Records. 

(See  Evidence,  R.  S.  892). 


REDUCTION  TO  PRACTICE 
General  Requirements. , 

(See  R.  S.  4886  and  4888). 


902 


THE   FIXED   LAW    OF   PATENTS 


REISSUE 

General  Provision. 

Whenever  any  patent  is  inoperative  or  invalid,  by  reason  of  a 
defective  or  insufficient  specification,  or  by  reason  of  the  patentee 
claiming  as  his  own  invention  or  discovery  more  than  he  had  a 
right  to  claim  as  new,  if  the  error  has  arisen  by  inadvertence,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, the  Commissioner  shall,  on  the  surrender  of  such  patent  and 
the  payment  of  the  duty  required  by  law,  cause  a  new  patent  for 
the  same  invention,  and  in  accordance  with  the  corrected  specifica- 
tion, to  be  issued  to  the  patentee,  or,  in  case  of  his  death  or  of  an 
assignment  of  the  whole  or  any  undivided  part  of  the  original 
patent,  then  to  his  executors,  administrators,  or  assigns,  for  the 
unexpired  part  of  the  term  of  the  original  patent.  Such  surrender 
shall  take  effect  upon  the  issue  of  the  amended  patent.  The  Com- 
missioner may,  in  his  discretion,  cause  several  patents  to  be  issued 
for  distinct  and  separate  parts  of  the  thing  patented,  upon  demand 
of  the  applicant,  and  upon  payment  of  the  required  fee  for  a  reissue 
for  each  of  such  reissued  letters  patent.  The  specifications  and 
claim  in  every  such  case  shall  be  subject  to  revision  and  restriction 
in  the  same  manner  as  original  applications  are.  Every  patent  so 
reissued,  together  with  the  corrected  specifications,  shall  have  the 
same  effect  and  operation  in  law,  on  the  trial  of  all  actions  for  causes 
thereafter  arising,  as  if  the  same  had  been  originally  filed  in  such 
corrected  form;  but  no  new  matter  shall  be  introduced  into  the 
specification,  nor  in  case  of  a  machine  patent  shall  the  model  or 
drawings  be  amended,  except  each  by  the  other;  but  when  there 
is  neither  model  nor  drawing,  amendments  may  be  made  upon 
proof  satisfactory  to  the  Commissioner  that  such  new  matter  or 
amendment  was  a  part  of  the  original  invention,  and  was  omitted 
from  the  specification  by  inadvertence,  accident,  or  mistake,  as 
aforesaid.  —  R.  S.  4916. 


Reissue  must  be  for  original  invention. 
—  Seymour  v.  Osborne,  11  Wall.,  516. 
Littlefield  v.  Perry,  21  Wall.,  205; 
Gill  v.  Wells,  22  Wall.,  1;  Union  v.  Van 
Dusen,  23  Wall.,  530;  Russell  v.  Dodge, 
93  U.  S.,  460;  Marsh  v.  Seymour,  97 
U.  S.,  348;  Powder  v.  Powder,  98  U. 
S.,  126;  Ball  v.  Langles,  102  U.  S.,  128; 
Garneau  v.  Dozier,  102  U.  S.,  230; 
James  v.  Campbell,  104  U.  S.,  356; 
Heald  v.  Rice,  104  U.  S.,  737;  Johnston 
v.  R.  R.,  105  U.  S.,  539;  Wing  v.  An- 
thony, 106  U.  S.,  142.  Gage  v.  Her- 
ring, 107  U.  S.,  640;  McMurray  v.  Mal- 
lory,  111  U.  S.,  97-109;  Cochrane  v. 
Badische,  111  U  S.,  203;  Eachus  v. 
Broomall,  115  U.  S.,  429;  Worden  v. 
Searls,  121  U.S.,  14;  Pattee  v.  Kingman, 
129  U.  S.,  294;  Flower  v.  Detroit,  127 
U.  S.,  563;  Farmers  v.  Challenge,  128 
U.  S.,  506;  Dunham  v.  Dennison,  154 
U.  S.,  103;    Olin  v.  Timkin,  155  U.  S., 


141;  Lehigh  v.  Kearney,  158  U.  S., 
461 ;  Pat.  Clothing  v.  Glover,  141  U.  S., 
560;  Freeman  v.  Asmus,  145  U.  S., 
226;  Huber  v.  Nelson,  148  U.  S.,  270; 
Leggett  v.  Oil  Co.,  149  U.  S.,  287;  Cor- 
bin  v.  Eagle,  150  U.  S.,  38;  American 
v.  Johnston,  52  F.  R.,  229. 

Can  not  proceed  on  original  patent  if 
reissue  is  void.  —  Eby  v.  King,  158 
U.  S.,  366. 

Defective  specification,  inoperative 
patent;  mistake,  laches,  new  matter,  re- 
instatement of  claims.  —  Yale  v.  Berk- 
shire, 135  U.  S.,  342. 

Disclaimer  to  new  matter  in  reissue 
considered.  —  Hurlbut  v.  Schillinger, 
130  U.  S.,  456. 

Enlarged  claim  must  be  sought  within 
two  years.  —  Topliff  v.  Topliff ,  145  U. 
S.,  156M  Wollensak  v.  Reiher,  115  U.  S., 
96.      * 

Intervening  rights.  —  Lumber  v.  Rod- 


THE  PATENT  STATUTE  DIGESTED 


903 


gers,  112  U.  S.,  659;  Clements  v.  Ex- 
cavating, 109  U.  S.,  641-650;  Turner  v. 
Stamping,  111  U.  S.,  319;  White  v. 
Dunbar,  110  U.  S.,  47;  Cornell  v. 
Weidner,  127  U.  S.,  261;  Brown  v. 
Davis,  116  U.  S.,  237;  Mahn  v.  Har- 
wood,  112  U.  S.,  354;  Ives  v.  Sargent, 
119  U.  S.,  652;  Newton  v.  Furst,  119 
U.  S.,  373. 

Inadvertence  or  mistake.  —  Coon  v. 
Wilson,  113  U.  S.,  268;  Yale  v.  James, 
125  U.  S.,  447. 

Insufficient  specification,  accident  or 
mistake,  enlargement  of  claims.  — Eames 
v.  Andrews,  122  U.  S.,  40;  Matthews  v. 
Iron  Clad,  124  U.  S.,  347. 

Matter  purposely  erased  in  original.  — 
Leggett   v.   Avery,    101    U.    S.,    256 
Goodyear  v.   Davis,    102   U.   S.,   222 
Cartridge  v.  Cartridge,  112  U.  S.,  624 
Beecher  v.  Atwater,   114  U.  S.,  523 


Crawford  v.  Heysinger,  123  U.  S.,  589; 
Dobson  v.  Lees,  137  U.  S.,  258. 

Question  of  fact  settled  by  Commis- 
sioner. —  Seymour  v.  Osborne,  11 
Wall.,  516;  Corn  Planter  Patent,  23 
Wall.,  181. 

Reissue  for  abandoned  invention.  — 
Mfg.  Co.  v.  Corbin,  103  U.  S.,  786. 

"  The  same  invention  "  defined.  — 
Parker  v.  Yale,  123  U.  S.,  87-104. 

Unreasonable  delay.  —  Miller  v.  Brass 
Co.,  104  U.  S.,  350;  Matthews  v.  Mach. 
Co.,  105  U.  S.,  54;  Bantz  v.  Frantz,  105 
U.  S.,  160;  Johnson  v.  R.  R.  Co.,  105 
U.  S.,  539;  Thomson  v.  Wooster,  114 
U.  S.,  104-120;  Gardner  v.  Herz,  118 
U.  S.,  180;  Hartshorn  v.  Saginaw,  119 
U.  S.,  664;  Gas  Light  v.  Boston,  139 
U.  S.,  481;  Leggett  v.  Oil  Co.,  149  U. 
S.,  287;  Wollensak  v.  Sargent,  151  U. 
S.,  221. 


Applications  for  —  By  Whom  Made. 

(Must  be  made  by  inventor  if  living,  see  R.  S.  4895). 

Assignee  —  May  be  Granted  to. 

(See  Assignment  Before  Issue,  R.  S.  4895). 

Oath  —  By  Inventor  if  Living. 
(See  Oath,  R.  S.  4895). 

REJECTION 
Application  —  Notice  to  Applicant. 

(See  Application  —  Examination,  R.  S.  4903). 

RENEWAL 

Forfeited  Application. 

(See  Application  —  Renewal  of,  R.  S.  4897). 

RULES  AND  REGULATIONS 

Patent  Office  —  Establishment  of. 

The  Commissioner  of  Patents,  subject  to  the  approval  of  the 
Secretary  of  the  Interior,  may  from  time  to  time  establish  regula- 
tions, not  inconsistent  with  law,  for  the  conduct  of  proceedings 
in  the  Patent  Office.  —  R.  S.  483. 


RULES 

Taking  Testimony  —  Commissioner  to  Establish. 

(See  Evidence  —  Required  by  Patent  Office,  R.  S.  4905). 


904  THE   FIXED   LAW   OF   PATENTS 

SALARIES 
Commissioner  of  Patents  —  Assistant  and  Examiners-in-Chief . 

(See  R.  S.  477  and  the  Appropriation  Acts). 

SECRETARY  OF  THE  INTERIOR 
Supervision  of  Patents  —  Charged  with. 

The  Secretary  of  the  Interior  is  charged  with  the  supervision  of 
public  business  relating  to  the  following  subjects: 

*  *  *  * 

Fifth.    Patents  for  inventions.  —  R.  S.  441. 

SPECIFICATIONS 

Requirements  Regarding  —  Specifications  and  Claims. 

Before  any  inventor  or  discoverer  shall  receive  a  patent  for  its 
invention  or  discovery,  he  shall  make  application  therefor,  in  writing, 
to  the  Commissioner  of  Patents,  and  shall  file  in  the  Patent  Office 
a  written  description  of  the  same,  and  of  the  manner  and  process 
of  making,  constructing,  compounding  and  using  it,  in  such  full, 
clear,  concise  and  exact  terms  as  to  enable  any  person  skilled  in 
the  art  of  science  to  which  it  appertains,  or  with  which  it  is  most 
nearly  connected,  to  make,  construct,  compound,  and  use  the  same; 
and  in  case  of  a  machine,  he  shall  explain  the  principle  thereof, 
and  the  best  mode  in  which  he  has  contemplated  applying  that 
principle,  so  as  to  distinguish  it  from  other  inventions;  and  he  shall 
particularly  point  out  and  distinctly  claim  the  part,  improvement, 
or  combination  which  he  claims  as  his  invention  or  discovery. 
The  specification  and  claim  shall  be  signed  by  the  inventor  and 
attested  by  two  witnesses.  —  R.  S.  4888. 

Signing  and  Witnessing. 

(See  Specifications,  supra). 

SPECIFICATIONS  AND  DRAWINGS 
Executive  Departments  —  Duty  to  Furnish. 

It  shall  be  the  duty  of  the  Commissioner  of  Patents  to  furnish, 
free  of  cost,  one  copy  of  the  bound  volumes  of  specifications  and 
drawings  of  patents  published  by  the  Patent  Office  to  each  of  the 
Executive  Departments  of  the  Government,  upon  request  of  the 
head  thereof.  *  *  *  —  Sec.  12,  Act  Mar.  3,  1875. 

Part  of  Patent. 

(See  Letters  Patent,  R.  S.  4884). 

Price  of  —  Determined  how  —  Limit. 

The  price  to  be  paid  for  uncertified  printed  copies  of  specifications 
and  drawings  of  patents  shall  be  determined  by  the  Commissioner 


THE    PATENT    STATUTE    DIGESTED  905 

of  Patents:    Provided,  That  the  maximum  cost  of  a  copy  shall  be 
ten  cents.  —  R.  S.  493. 

Printing  and  Lithographing  —  Contracts. 

(See  R.  S.  492  and  Special  Acts  thereunder). 

Printing  and  Publication  —  Certified  Copies  for  Capitols  and 
Clerks'  Offices. 

The  Commissioner  of  Patents  is  authorized  to  have  printed, 
from  time  to  time,  for  gratuitous  distribution,  not  to  exceed  one 
hundred  and  fifty  copies  of  the  complete  specifications  and  drawings 
of  each  patent  hereafter  issued,  together  with  suitable  indexes, 
one  copy  to  be  placed  for  free  public  inspection  in  each  capitol  of 
every  State  and  Territory,  one  for  the  like  purpose  in  the  clerk's 
office  of  the  district  court  of  each  judicial  district  of  the  United 
States,  except  when  such  offices  are  located  in  State  or  Territorial 
capitols,  and  one  in  the  Library  of  Congress,  which  copies  shall  be 
certified  under  the  hand  of  the  Commissioner  and  seal  of  the  Patent 
Office,  and  shall  not  be  taken  from  the  depositories  for  any  other 
purpose  than  to  be  used  as  evidence.  —  R.  S.  490. 

Printing  and  Publication  —  Certified  Copies. 

The  Commissioner  of  Patents  is  authorized  to  have  printed  such 
additional  numbers  of  copies  of  specifications  and  drawings,  certi- 
fied as  provided  in  the  preceding  section,  at  a  price  not  to  exceed 
the  contract  price  for  such  drawings,  for  sale,  as  may  be  warranted 
by  the  actual  demand  for  the  same;  and  he  is  also  authorized  to 
furnish  a  complete  set  of  such  specifications  and  drawings  to  any 
public  library  which  will  pay  for  binding  the  same  into  volumes  to 
correspond  with  those  of  the  Patent  Office  and  for  the  transporta- 
tion of  the  same,  and  which  shall  also  provide  for  proper  custody 
of  the  same  with  convenient  access  for  the  public  thereto,  under 
such  regulations  as  the  Commissioner  shall  deem  reasonable.  — 
R.  S.  491. 

SPECIMENS 

May  be  Required. 

(See  Compositions  of  Matter,  R.  S.  4890). 

SUBPOENAS 
Witnesses. 
(See  Witnesses,  R.  S.  4906). 

STATUTES 

Amendments  of  Mar.  3,  1897. 

That  this  act  shall  take  effect  January  1,  1898,  and  sections 
1,  2,  3  and  4,  amending  sections  4886,  4920,  4887,  and  4894  of  the 
Revised  Statutes,  shall  not  apply  to  any  patent  granted  prior  to 


906 


THE   FIXED   LAW   OF   PATENTS 


said  date,  nor  to  any  application  filed  prior  to  said  date,  nor  to  any 
patent  granted  on  such  application.  —  Act  Mar.  3,  1897. 

Repeal  Provisions. 

(See  R.  S.  5595,  5596,  5597,  5598,  5599,  5600,  5601). 

UNPATENTED  INVENTIONS 

Right  of  Purchaser  or  Maker  to  Use. 

Every  person  who  purchases  of  the  inventor  or  discoverer,  or, 
with  his  knowledge  and  consent,  constructs  any  newly  invented 
or  discovered  machine,  or  other  patentable  article,  prior  to  the 
application  by  the  inventor  or  discoverer  for  a  patent,  or  who  sells 
or  uses  one  so  constructed,  shall  have  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  thing  so  made  or  purchased, 
without  liability  therefor.  —  R.  S.  4899. 


Previously  'purchased  machine  can 
be  no  infringement  during  extension.  — 
Paper  Bag.  Mach.  Cases,  105  U.  S., 
766. 


What  persons  have  the  right  to  use.  — 
Wade  v.  Metcalf,  129  U.  S.,  202.  Dable 
v.  Flint,  137  U.  S.,  41. 


UTILITY 

Necessity  of  to  Grant. 

*  *  *  And  if  *  *  *  it  shall  appear  *  *  *  that  the  same  is  suffi- 
cientlv  useful  and  important,  the  Commissioner  shall  issue  a  patent 
therefor.  —  R.  S.  4893. 

Anv  person  who  has  invented  or  discovered  any  new  and  use- 
ful *  *  *— R.  S.  4886. 


WITNESSES 
Contempt  —  Evidence  before  Department. 

Whenever  any  witness,  after  being  duly  served  with  such  sub- 
poena, neglects  or  refuses  to  appear,  or  after  appearing  refuses  to 
testify,  the  judge  of  the  court  whose  clerk  issued  the  subpoena  may, 
on  proof  of  such  neglect  or  refusal,  enforce  obedience  to  the  process, 
or  punish  the  disobedience,  as  in  other  like  cases.  But  no  witness 
shall  be  deemed  guilty  of  contempt  for  disobeying  such  subpoena, 
unless  his  fees  and  traveling  expenses  in  going  to  and  returning 
from,  and  one  day's  attendance  at  the  place  of  examination,  are 
paid  or  tendered  him  at  the  time  of  the  service  of  the  subpoena; 
nor  for  refusing  to  disclose  any  secret  invention  or  discovery  made 
or  owned  by  himself.  —  R.  S.  4908. 

Evidence  before  Department  —  Privileged  Matter. 

*  *  *  But  no  witness  shall  be  deemed  guilty  of  contempt  *  *  * 
for  refusing  to  disclose  any  secret  invention  or  discovery  made  or 
owned  by  himself.  —  R.  S.  4908. 


THE  PATENT  STATUTE  DIGESTED         907 


Fees  —  Evidence  before  Department. 

Every  witness  duly  subpoenaed  and  in  attendance  shall  be  allowed 
the  same  fees  as  are  allowed  to  witnesses  attending  courts  of  the 
United  States.  —  R.  S.  4907. 

Subpoenas  —  Evidence  before  Department. 

The  clerk  of  any  court  of  the  United  States,  for  any  district 
or  Territory  wherein  testimony  is  to  be  taken  for  use  in  any  con- 
tested case  pending  in  the  Patent  Office,  shall,  upon  the  applica- 
tion of  any  party  thereto,  or  of  his  agent  or  attorney,  issue  a  sub- 
poena for  any  witness  residing  or  being  within  such  district  or  Ter- 
ritory, commanding  him-  to  appear  and  testify  before  any  officer 
in  such  district  or  Territory  authorized  to  take  depositions  and 
affidavits,  at  any  time  and  place  in  the  subpcena  stated.  But  no 
witness  shall  be  required  to  attend  at  any  place  more  than  forty 
miles  from  the  place  where  the  subpcena  is  served  upon  him.  — 
R.  S.  4906. 


GENERAL  INDEX 


[Note.  —  The  actual  case  law  excerpted  is  set  in  Roman  ;  other  matter  in  italics. 
References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.] 


ABANDONMENT 
Brief  Survey,   1 
Statutory  Provision,  73,  849 
General  Rules,  73 
After  Application,  74 
Amendment,  75,  (98) 
Application 

Abandonment  and  Renewal,  75 
Delay,  76 
Constructive,  76 
Decision   of   Commissioner  —  Not 

Final,  77 
Division  of  Application,  77,  (311, 

318) 
Experimental  Use,  78,   (371) 
Evidence  of,  79,  (352) 
Failure  to  Claim,  79 
Prosecution  of  Application,  80 
Of  Interference,  81 
Of  Renewal  Application,  81 
Piracy,  81 
Prior  Patent,  81 
Public  Use,  81,   (767) 
Subsequent  Patent,  82 
Miscellaneous  Rulings,  83 
See     —     Anticipation,         104-5 

Claims,    189;    Defenses,   285 

Evidence,  372;  Invention,  520 

Reissue,   783. 

ABATEMENT 
Brief  Survey,  3 
Assignment    of    Patent    Pending 

Suit,   84 
Death  of  Complainant,  84 
Dissolution  and  Merger  of  Corpo- 
ration, 84 
See  —  Pleading,  724. 

ACTIONS 
Brief  Survey,  3 
Statutory  Provision,  849 


General  Statement,   85 

To  Compel  Issue  of  Patent,  85 

Cancellation  of  Patent,  86 

Interfering  Patents,  88 

See  —  Administrator,     94;      Arbi- 
tration, 152;  Assignment,  155 
Defenses,  280;  Demurrer,  290 
Designs,    301;     Equity,    328 
Fraud,  384 ;  Government,  387 ; 
Interferences,  514;   Interfering 
Patents,  516;     Law     Actions, 
672;     Pleading   and  Practice, 
714;    Unfair  Trade,  842. 

ADJUDICATION,    (238) 
Brief  Survey,  4 
General  Statement,  88 
Effect  of,  89  ' 
Patent  Office  Decision,  8 
Prior 

Conclusiveness,  89 

Different  Parties,  92 

Estoppel   on   Complainant,   92, 

(246) 
Judicial  Notice,  92 
New  Evidence,  92 
Privity,  93 
Stare  Decisis,  93 
See  —  Arbitration,    152 ;     Comity, 
238;     Commissioner    of    Pa- 
tents, 243;  Defenses,  285;  Es- 
toppel, 346;    Injunction,  477, 
505;    Interferences,  513;    Pa- 
tent Office,  713;  Res  Judicata, 
812. 

ADMINISTRATOR    OR    EXECU- 
TOR, OR  GUARDIAN  OF  IN- 
SANE PERSON,   (276) 
Brief  Survey,  5 
Statutory  Provision,  94,  875 
Powers  of,  94 


910 


GENERAL  INDEX 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


ADMINISTRATOR    (276)  —  (Con- 
tinued) 

License,  94,  (684) 
Right  to  Sue,  94 

See —  Attorneys,    173;     Death    of 
Applicant,  276. 

AGGREGATION 
Brief  Survey,  6 
General  Statement,  95 
Arrangement  of  Parts,  95 
Combination,  95 
Duplication,  95 
Manufacture,  96,  (704) 
Old  Elements 

General  Rule,  96 

Independent  Functions,  96 

Old  Results,  97 
Old  Function,  98 
Utility  —  Patentability,  98 
See  — Invention,  523,  533,  596, 609. 

AMENDMENT 

Brief  Survey,  7 
Statutory  Provisions,  98 
General  Statement,  99 
Broadening  Scope  of  Invention,  99 
New  Matter 

Broadening,  100 
Miscellaneous,  101 
Delay,   101 

See  —  Abandonment,     75;     Attor- 
neys, 173;    Claims,  185;    Di- 
'  visional  Patenting,   311;    Re- 
issue, 782;   Specification,  822. 

ANTICIPATION 

Brief  Survey,  7 
Statute  Authority,  102,  851 
General  Rules,  103 
Abandoned     Device     or    Experi- 
ment,  (73) 

Anticipatory,  104 

Non-Anticipating,   105 

Application,   106 
Analogousness 

Art,   106 

Use,  106 
Anticipating    an    Anticipation  — 

Burden  of  Proof,  106 
Application,  107 
Combining  Old  Elements 

Different  Devices,  107 

Different  Patents,  108 

Mechanical  Skill,  109 
Double  Patenting,  109,  (311,  318) 


Evidence  of,  (352) 

Burden  of  Proof,  109 

Device  or  Exhibit,  110 

Expert,   113 

Parol,  113 

Prior  Patent,  115 

Rebuttal,  115 

Miscellaneous    Holdings,    116 
Experiment,  117,  (371) 
Foreign  Invention,  118 
Foreign    Patent    or    Publication, 
(375) 

Burden  of  Proof,  119 

Date  of,  119 

Invention,  119 

Publication  —  Date,  121 

Same  Inventor,  121 

Sufficiency,  121 
"  Infringe-if-Later  "   Test,    122 
Inoperative  Device,  123 
Knowledge,  123 
Old  Elements  or  Device 

Different  Use,  124 

Function,  125 

Requiring  Adaptation,  125 
Paper  Patent 

Insufficient,  126 

Sufficient,  126 
Prior  Art 

Insufficient,  127 

Sufficient,  127 
Prior  Patent 

Date,  128 

Insufficient,  128 

Sufficient,  129 

Reference  on  Application,   129 
Process,  (733) 

Machine,   130,   (700) 

Process  Rule,  130 

Miscellaneous,  130 
Public  Use,  (767) 

Sufficient,    130 

Miscellaneous,  131 
Publication 

Insufficient,  132 

Sufficient,    132 
Uncontemplated  Use  or  Function, 

133 
Miscellaneous  Rulings,  133 
See  —  Defenses,  286-8 ;  Demurrer, 
291;  Designs,  299;  Evidence, 
353-5;  Infringement,  434,466; 
Interfering  Patents,  516;  Ju- 
dicial Notice,  652-3;  Public 
Use,  768;  Public  Use  Pro- 
ceedings,  778. 


GENERAL  INDEX 


911 


(References  are  to  pages.     Cross-references  are  enclosed  In  parentheses.) 


APPEALS 

Brief  Survey,  1 1 
The  Statutes 

Appeals  to  the  Supreme  Court, 
134,  852-5 

Appeals  to  Circuit  Court  of  Ap- 
peals, 135,  852-5 
Assignments  of  Error 

Sufficiency,  135 
Miscellaneous  Rules,  137 
Certification,  137 

Commissioner    of    Patents  —  Ac- 
tions, 137 
Cross- Appeals,  137 
Decrees,  (277) 

Final  —  What  Constitute,  138 

Interlocutory  —  Defined,  140 

Interlocutory  —  What      Deter- 
mined on  Appeal,  140 

Interlocutory  —  When   Appeal- 
able, 142 

Interlocutory  —  Miscellaneous 
Rules,  142 

Stipulation,  142 
Demurrer — Injunction,  142,  (290) 
Dismissal 

On  Motion,  143 

Without  Prejudice,  143 
Exceptions 

Master's  Report,  144 

Sufficiency,    144 

Waiver,  144 
Finality,  144 
Findings,  144 
Jurisdiction,  145,  (654) 
Law  Actions,   (672) 

What  Considered  on,  145 

Miscellaneous,    146 
Orders,  147 
Parties,  147 
Record 

Encumbering,  147 

Stipulated,  148 

Miscellaneous,  148 
Rehearings,  149,  (781) 
Remanding,  149 
Second  Appeal,   149 
Subject-Matter,   150 
Supersedeas,  150 
Supreme  Court,  151 
Miscellaneous  Rules,  151 
See  — Comity,    238;     Costs,    248; 
Decrees,  277;  Injunction,  474- 
84;  Interferences,  514;  Juris- 
diction, 654. 


APPLICATION 

Statutory  Provision,  856 

ARBITRATION 

Brief  Survey,  12 

Decision     of    Arbitrator  —  Force 
and  Effect,  152 

ART 

Brief  Survey,  12 
Statutory  Provision,  152 
Definition,    152 
Art  and  Process,  153 
See  —  Process,   733. 

ASSIGNMENT 
Brief  Survey,  12 
Statutory  Provisions,  154 
Definition,  154 
Action  to  Compel,  155,  (85) 
Before  Patent,  156 
Conditions  and  Reservations,  157 
Construction,   158 
Copartnership,  159,  (247) 
Corporation,  159,  (247) 
Debtor  and  Creditor,  159 
Evidence,  160,  (352) 
Execution,   162 
Future  Inventions 

Legality,   162 

Recording,  163 

What  are  Not,  164 

Miscellaneous  Rules,  164 
Interests  Assignable,  165 
License,  166,  (6S4) 
Notice 

Bona  Fide  Purchaser,  167 

Constructive,   168 
Parol,  169 
Part  Interest,  169 
Pendente  Lite,  170 
Power  of  Attorney,  170 
Recording,  171,  (352) 
Reissue,  171,  (782) 
Specific  Performance,  171 
Territorial,  171 
Miscellaneous  Rulings,  172 
See  —  Attorneys,  173;  Bankruptcy, 
174;  Employer  and  Employee, 
365-6;     Evidence,    356;     In- 
fringement, 403-4,  456-8;  Li- 
cense, 684;    Licensor  and  Li- 
censee,  698;    Mortgage,    70S; 
Royalties,  817;  State  Statutes, 
835;  Title,  839. 


912 


GENERAL  INDEX 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


ATTORNEYS 
Brief  Survey,  14 
Statutory  Provision,  173,  863 
Actions  Binding,  173,  (98) 
Assignment      by  —  Notice,     173, 

(154) 
Statements    on   Argument  —  Not 

Evidence,  174 
Miscellaneous,  174 
See  —  Amendment,  98. 

BANKRUPTCY 

Statutory  Provision,  174 
Title  to  Patent,  174 

CAVEATS 

Statutory  Provision,  863 

CERTIORARI 

Statutory  Provision,  S64 

CIRCUIT  COURTS  OF  APPEAL 

(See  Appeals) 

CLAIMS  (238) 
Brief  Survey,  14 
Statutory  Provision,  175 
Purpose  of  the  Claim,  175 
Ambiguity,  176 
Combination,  176 
Construction 

Beneficial  Use,  176 
Broad  and  Narrow,  177 
Comparison,  177 
Dissecting,  178 
Drawings,  178,  (322) 
Duplication,  178 
Equivalents,  178,  (330) 
Expanding,  179 
Functional,  182,  (385) 
Generic,  182 

Improvement,  184,  (388) 
Limitation 

Broadening  by  Amendment, 

185,  (98) 
Disclaimer,  186,  (304) 
By  Applicant,  186 
Elements  of  Claim,  188 
Failure  to  Claim,  189,  (73) 
General  Rules,  189 
Improvement,  191,  (388) 
Narrow     Improvement,     191 
Patent    Office   Action  Limit- 
ing, 191 


Patent  Office  Action  Not  Lim- 
iting, 200 
Patent  Office  Action  —  Pro- 
test, 201 
Patent  Office  Action  —  Rule, 

202 
Specific  Claims,  202 
Specifications  and  Drawings, 

203,  (821) 
State  of  Art,  204 
Words    of    Limitation,    205, 

(845) 
Miscellaneous  Rules,  206 
Limitation  to  Avoid  Anticipa- 
tion, 207 
Narrow,  209 
Omitting  Element,  210 
Plain  Intent  and  Meaning,  210 
Reading  in  Elements,  212 
Reference  Characters,  212 
Rules  —  General,  213 
Specification,  218,   (821) 
State  of  Art,  222 
Unclaimed  Elements,  224 
Undue  Limitation  by  Patentee, 

224 
Unduly  Broad,  225 
Valeat  quam  Pereat  Rule,  226 
Words  and  Phrases,  226,  (845) 
Miscellaneous  Rulings,  228 
Designs,  230,  (294) 
Elements,  238 
Essential,  230 
Redundant,  230 
Reference  Characters,  231 
Terminology,  231 
Excessive 

Duplication,  231 
Effect,  231 

Foreclosing  Improvement,  232 
Expansion,  232 
Failure  to  Claim,  232 
Generic,  232 
Novelty,  233 
Process,  233,  (733) 
Purpose,  233 
Scope,  234 
Specific,  236 
Sufficiency  236 
Void,  237 

See  —  Divisional  Patenting,  311; 
Double  Patenting,  318;  Equiv- 
alents, 330 ;  Improvement,  390 ; 
Invention,  603-12,  533-42; 
Process,  734,  740;  Words  and 
Phrases,  845. 


GENERAL  INDEX  913 

(Referencer  arc   to  pages.     Cross-references  are  enclosed  in  parentheses.) 


COMBINATIONS 

General  Statement,  238 

See  —  Aggregation,  95;  Anticipa- 
tion, 107-9;  Claims,  175; 
Elements,  230;  Improvement, 
390;  Infringement,  414-21; 
Invention,    533-42. 

COMITY 

Brief  Survey,  16 

General  Statement  and  Definition, 
238 

Between  Circuit  Courts,  239 

Between  Circuit  Court  of  Appeals 
and  Circuit  Court,  239 

Between  Circuit  Courts  of  Appeal, 
240 

Prior  Adjudication,  240 

Supreme  Court  and  Circuit  Court 
of  Appeals,  241 

Weight  of,  241 

Miscellaneous,  241 

See  —  Adjudication,  88;  Defenses, 
285;  Estoppel,  346;  Injunc- 
tion, 474;  Interferences,  513; 
Res  Judicata,  812. 

COMMISSIONER    OF    PATENTS 

Brief  Survey,  17 

Statutory  Provision,  243,  864 

General  Statement,  243 

Actions,   243 

Decisions,  243 

Duties,  244 

Powers  of,  244 

See  —  Appeals,  137 ;  Defenses, 
281;  Interferences,  513;  Pa- 
tent Office,  712;  Reissue,  798; 
Res  Judicata,  816. 

COMPOSITION  Or  MATTER 
Brief  Survey,  17 
Statutory  Provision,  245,  866 
General  Statement,  245 
General  Rules,  245 
See  —  Manufacture,  704 ;   Process, 
740;    Product,  743. 

CONGRESS 

Constitutional   Powers,   246,  866 
Plenary  Powers,  246 

CONTEMPT 

General  Statement,  246 

See  —  Injunction,  474-6,  509. 


COPARTNERSHIP 

Brief  Survey,  17 
Miscellaneous  Rulings,  247 
See  —  Assignment,  159;  Joint  In- 
ventions,  650;    License,   684; 
Title,  839. 

CORPORATIONS 

Miscellaneous  Rulings,  247 
See  —  Abatement,  84;  Assignment, 
159;  Infringement,  432-4;  In- 
junction, 485. 

COSTS 

Brief  Survey,  18 

Statutory  Provisions,  248,  866 

Appeals,  248,   (134) 

Disclaimer,  249,  (304) 

Record,  250 

Taxation,  250 

Miscellaneous,  250 

COURT  OF  APPEALS  D.  C. 

General  Act,  866 

DAMAGES  (745) 
Brief  Survey,  18 
Statutory  Provisions,  252,  867 
General  Statement,  253 
Actual,  253 
Designs,  253,  (294) 
In  Equity,  254 
Increasing,  255 
Interest,  256 
Law  Actions,  257,  (672) 
Master's  Report,  259 
Measure 

Absence  of  License  or  Royalty 
Measure,   260 

Complainant's  Loss,  261 

Deductions  and  Mitigations,  261 

Defendant's  Gains,  262 

Full  Damages,  265 

License  Fee,  266 

Nominal,  268 

Royalty,  269,  (817) 

Speculative,  269 

Miscellaneous,  270 
Proof  of,  271 
Segregation,  271 
Miscellaneous  Rulings,  276 
See  —  Designs,    301 ;     Injunction, 
492,     501 ;      Marking     "  Pa- 
tented,"   706;     Profits,    745; 
Statute  of  Limitations,  837. 


914  GENERAL  INDEX 

(References  are  to  pages.     Cross-references  are  enclosei  In  parentheses.) 


DEATH  OF  APPLICANT 

Miscellaneous  Rulings,  276,  (94) 

DECREES 

General  Statement,  277 
Appellate  Power  Over,  277 
Classes,  277 
Interlocutory,  278 
Miscellaneous,  278 
See  —  Adjudication,  85;   Appeals, 
138-42;    Injunction,  473. 

DEFENSES 
Brief  Survey,  21 
Statutory  Provisions,  280,  869 
General  Statement,  280 
General 

Invalidity  —  Acts   of    Commis- 
sioner, 281 
Invalidity  —  Defective  Grant  or 

Specification,    281,    (821) 
Invalidity  —  Reissue,  281,  (782) 
License  or  Purchase,  282 
Non-Infringement,   283,    (402) 
Non-Patentability,  284 
Non-Utility,    284 
Res  Judicata,  285 
Statutory 

Abandonment,  285,  (73) 
Fraud  or  Misrepresentation   in 

Specification,  2S5,   (821) 
Fraud  or  Unfairness  as  Against 

Another  Inventor,  286 
Non-Inventorship,  286 
Prior  Patent  or  Publication,  286, 

(102) 
Prior  Public  Use  or  Sale,  288, 
(102,  768) 
Miscellaneous,  288 
See  —  Adjudication,  89,   92;    An- 
ticipation,    102;      Demurrer, 
290;    Double  Patenting,   318; 
Estoppel,    346;     Foreign   Pa- 
tent, 375;    Infringement,  434; 
Judicial  Notice,  651 ;    Juris- 
diction,   654;     Laches,    668; 
License,  684;   Marking  "  Pa- 
tented," 706;  Oath,  710~;  Plead- 
ing and  Practice,  714;   Public 
Use,  768;    Reissue,  782;    Res 
Judicata,  812;  Statute  of  Lim- 
itations, 837;    Title,  839. 

DEMURRER 

Brief  Survey,  22 
Dismissing  Bill  on,  290 


Judicial  Notice,  291,  (651) 

Patentability  and  Novelty,  291 

Validity,  292 

Miscellaneous,  293 

See  —  Appeals,  142;   Jurisdiction, 

654;     Pleading,    111;     Title, 

839. 

DESIGNS 

Brief  Survey,  22 

Statutory  Provisions,  294,  871 

Definition,  295 

Identity,  296 

Infringement,  296,  (402) 

Invention,  298,  (519) 

Mechanical,  299 

Novelty,  299 

Patentability,  300 

Penalty,  301 

Miscellaneous,  301 

See  —  Claims,  230 ;  Damages,  253. 

DESTRUCTION  OF  INFRINGING 
MACHINE 
An  Obsolete  Rule,  303 

DISCLAIMER 

Brief  Survey,  23 

Statutes,  304,  872 

Delay,  304 

Effect  of,  305 

Failure  to  File,  306 

Pending  Suit,  306 

Purpose  and  Effect,  307 

Miscellaneous,  309 

See  —  Abandonment,    73;      Costs, 

249;  Double  Patenting,   319; 

Reissue,  800. 

DISCOVERY 

Brief  Survey,  24 
Statutory  Origin,  310 
General  Statement  and  Definition, 
310. 

DIVISIONAL    PATENTING    (98) 

Brief  Survey,  24 

Statute  and  General  Rule,  31 1 

Co-Pending  Applications,  312 

Dates  of  Issue,  314 

Distinguished  from  Double  Pa- 
tenting, 315 

Extending  Monopoly,  316 

Generic  and  Specific  Inventions, 
316 

Identity,  317 

Second  Patent  Void,  317 


GENERAL  INDEX 


915 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


DIVISIONAL     PATENTING    (98) 
—  (Continued) 

See — Abandonment,  77;  Antici- 
pation, 109;   Reissue,  782. 

DOUBLE  PATENTING 

Brief  Survey,  25 

General  Rules,  318 

Disclaimer  in  Later  Patent,  319, 
(304) 

Extending  the  Monopoly,  319 

Seniority  and  Priority,  320,  (730) 

Unitary  Device,  321 

Miscellaneous  Rules,  321 

See  —  Abandonment,  77;  Antici- 
pation, 109;  Defenses,  286; 
Improvement,  395;  Invention, 
552. 

DRAWINGS 

Brief  Survey,  26 

Statutory  Provisions,  322,  873 

General     Statement     and     General 

Rules,  323 
See  —  Claims,  178. 

EMPLOYER    AND    EMPLOYEE 

Brief  Survey,  26 

General  Statement,  323 

Government,  873 

Contract  —  Future  Inventions, 
324,  (388) 

License  —  Implied,  324,  (684) 

Rights  of 

Employee,  325 
Employer,  326 

Miscellaneous  Rulings,  327 

See  —  Assignment,  154;  Govern- 
ment, 387;  License,  684;  Li- 
censor and  Licensee,  698. 

EQUITY 

The  Statutes,  328 

Jurisdiction,  329 

Miscellaneous,  330 

See  —  Actions,  85;  Damages,  254; 
Decrees,  277;  Defenses,  280; 
Injunction,  473;  Interferences, 
514;  Interfering  Patents,  516; 
Jurisdiction,  658-62 ;  Plead- 
ing and  Practice,  714;  Profits, 
745. 

EQUIVALENTS 

Brief  Survey,  27 

General  Statement  and  Definitions, 
330 


Combinations,  332 

Generic  Inventions,  334 

Improvements,  337,  (388) 

Known  Elements,  338 

Range,  339 

Identity,  342 

Miscellaneous  Rulings,  342 

See  —  Claims,  178;    Infringement, 

415,  446,  468;    Process,  735; 

Specification,   829. 

ESTOPPEL 

Brief  Survey,  28 

Corporations,  346 

Evidence,  347 

Interference  Adjudication,  347, 
(513) 

Licensor  or  Former  Owner,  347 

Owner  of  Patent  or  Licensee,  348 

Privity,  350 

Miscellaneous,  351 

See  —  Abandonment,  84;  Adjudi- 
cation, 92;  Amendment,  98; 
A  ssignment,  1 54 ;  A  ttorneys, 
173;  Defenses,  285;  Dis- 
claimer, 304;  Employer  and 
Employee,  324;  Infringement, 
456-58;  Laches,  668;  Li- 
cense, 687;  Licensor  and  Li- 
censee, 698;  Pleading  and 
Practice,  714;  Res  Judicata, 
812. 

EVIDENCE 

Brief  Survey,  28 

Statutory  Provisions,  352,  874 

Anticipation,  (102) 

Prior  Art,  353 

Prior  Patent  or  Publication,  354 

Prior  Use,  354 

Rebuttal,   355 

Miscellaneous,   355 
Assignment,  356,  (154) 
Depositions,  356 
Documentary,  356 
Exhibits,  358 
Expert,  358 

Infringement,  361,  (402) 
Invention  —  Fact  of,  362,  (519) 
Law  Actions,  (672) 

Depositions,  362 

Directions  and  Instructions,  363 

Facts  —  For  Court,  363 

Facts  —  For  Jury,  364 

Rules,  365 

Miscellaneous,  365 


916 


GENERAL  INDEX 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


EVIDENCE  —  (Continued) 

Objections    and    Exceptions,    365 

Parol,  366 

Prima  Facie,  367 

Records  and  Documents,  367 

Miscellaneous,  368 

See —  Abandonment,  79;  Antici- 
pation, 109-16;  Assignment, 
160,  170;  Infringement,  437- 
41 ;  Invention,  553-84,  636 ; 
Judicial  Notice,  651 ;  Priority, 
730;  Public  Use,  769;  Re- 
opening Case,  810. 

EXAMINERS  -  IN  -  CHIEF 

Statutory  Provision,  875 

EXECUTOR 

(See  Administrator) 

EXPERIMENT 

General  Statement,  371 

Abandonment,  372,  (73) 

Experimental  Use,  373 

Public  Use,  373,  (768) 

Reduction  to  Practice,  373 

Secret  Use,  374 

See  —  Abandonment,  78;  Antici- 
pation, 117;  Priority,  731; 
Public  Use,  769;  Reduction  to 
Practice,  780;  Secret  Process 
or  Machine,  819;  Unpatented 
Invention,  843. 

EXTENSIONS 

General  Statement  and  Holdings, 
374 

FALSE  MARKING 

Statutory  Penalty,  876 

FEES 

Statutory  —  Patent  Office,  877 

FEIGNED  ISSUES 
(See  Equity) 

FOREIGN  PATENT 

Brief  Survey,  29 

Statutory  Provision,  375,  878 

General  Rulings,  377 

Expiration,  380 

Lapse,   382 

Prior,  383 

Miscellaneous  Holdings,  383 


See  —  Anticipation,  119-21;  De- 
fenses, 286;  Evidence,  354; 
Public  Use,  771. 

FOREIGN  USE 

Statutory  Provision,  879 

FRAUD 
Statute  and  General  Statement,  384 
See  —  Defenses,  285-6. 

FUNCTION 

Brief  Survey,  30 

Patentability,  385 

Miscellaneous  Rules,  386 

See  —  Claims,  182;  Infringement, 
403,  438,  468;  Invention,  523, 
530,  533;  Machine  and  Prod- 
uct, 703;  Process,  740;  Prod- 
uct, 743;   Specification,  829. 

GOVERNMENT 

Statutory  Provisions,  387,  880 

General  Rulings,  387 

See  —  Employer  and  Employee, 
323;  Infringement,  445;  In- 
junction, 490 ;  Jurisdiction, 
658;   License,  684. 

IMPROVEMENT 

Brief  Survey,  30 

Statute  Authority  and  General  State- 
ment, 388,  880 

Carrying  Forward,  389 

Claims,  390,  (175) 

Combinations,  390,  (238) 

General  Rules,  390 

Generic,  391 

Infringement  of,  393,  (402) 

Mechanical  Skill,  393 

Old  Device,  New  Use,  394 

On  Prior  Patent  to  Same  Inventor, 
395 

Patentability,  395 

Scope  —  Limitations,  397 

Specific,  398 

Utility,  400 

Miscellaneous,  400 

See  —  Assignment,  162-4;  Claims, 
184, 191 ;  Divisional  Patenting, 
311;  Double  Patenting,  318; 
Employer  and  Employee,  324; 
Equivalents,  337;  Infringe- 
ment, 420,  452-4;  Invention, 
591-2,  602. 


GENERAL  INDEX 


917 


(References  are  to  pages.     Cross-references  are  enclosed  in  parcnlheses.) 


INFRINGEMENT 

Brief  Survey,  31 
The  Statute,  402,  880 
General  Statement,  402 
Additions 

Elements,  402 

Functions,  403 
Assignor  and  Assignee 

By  Assignee,  403 

By  Assignor,  403 

By  Inventor-Assignor,  404 
Avoidance 

Adding  Elements  or  Functions, 
405 

Concealment  or  Subterfuge,  405 

Impairing  Efficiency,  406,  (420) 

Improving  Efficiency,  407 

Omitting  Element,  407 

Transposition  of  Parts,  408 

Miscellaneous  Conditions,  409 
Change  of  Form 

Colorable,  409 

Location,    412 

Modification,  413 

Number  of  Parts,  413 
Change  of  Material,  413 
Combinations,   (238) 

Adding  Elements,  414 

Concealment    and    Subterfuge, 
414 

Construction  of,  414 

Different    Combination,    Same 
Result,  415 

Equivalents,  415,  (330) 

Identity,  419 

Impairing  Efficiency,  420,  (406) 

Improvements,   420,    (388) 

Old   Elements,   New   Function, 
420 

Omitting  Element,  421 
Contributory 

Furnishing  Material,  425 

Intent,  426 

Making  Elements,  426 

Rules,   429 

Miscellaneous  Rules,  431 
Corporations,    (247) 

Common  Carriers,  432 

Joint  Stock,  432 

Officers  of,  432 

Miscellaneous  Holdings,  434 
Defenses,     (280) 

Anticipation.  434,  (102) 

Miscellaneous,  434 
Division    or    Union    of    Parts    or 
Elements,  436 


Duplication,  436 
Evidence  of,  (352) 

Acts  of  Defendant,  437 

Burden,  438 

Expert,  438 

Function,  438,  (385) 

Identity,  439 

Law  Actions,  439,  (672) 

Parol,  439 

Sufficiency,  439 

Utility  —  Use    by    Defendant, 
440 

Miscellaneous    Holdings,  441 
Generic  Patent,  443 
Government,  445,  (387) 
Identity 

Equivalents,  446,  (330) 

Means  Employed,  446 

Non-Essentials,  447 

Result  or  Function,  447 

Tests,   448 

Miscellaneous  Rules,  450 
Importation  and  Exportation,  450 
Improvement,    (388) 

By  an  Improvement,  452 

Of  an  Improvement,  454 
Intent,  456 
License,  (684) 

Implied,  456 

By  Licensee,  456 

Patentee,  457 

Territorial,   458 

•Miscellaneous,  458 
Machine,  458,  (700) 
Machine  and  Manufacture,  459 
Notice,  459,  (706) 
Prior  Patent,  459 
Process,  (733) 

Additions,  460 

Tests,  460 

Miscellaneous,  461 
Product,  462,  (743) 
Reissue,  462,  (782) 
Repairs 

Rebuilding,  463 

What  Constitute,  464 
Tests 

Anticipation  Test,  466,  (102) 

Device  and  Claims,  467 

Function,  468,  (385) 

Interchangeability,  468 

Means  and  Result,  469 

Utility  and  Use,  469 

Miscellaneous,  469 
Miscellaneous  Infringement  Rules, 
470 


918  GENERAL  INDEX 

(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


INFRINGEMENT—  (Continued) 
See —  Abandonment,  81;  Antici- 
pation, 102;  Damages,  252; 
Defenses,  283;  Designs,  296; 
Evidence,  361;  Government, 
387;  Improvement,  393;  Ju- 
risdiction, 664;  License,  684; 
Pleading  and  Practice,  717; 
C7n/aw-  Trade,  842. 

INJUNCTION 

Brief  Survey,  37 

Statutory  Provision,  473,  882 

General  Statement,  474 

Appeals,  (134) 
Comity,  474 

Contempt,  General,  474,  (246) 
Contempt,  Rule  in  Debs  Case, 

475 
Contempt,  Reverse  of  Rule  in 

Debs  Case,  476 
Decision  on  Merits,  476 
Dismissing  Bill,  477 
Prior  Adjudication,  477 
Refusal  to  Grant,  479 
Sound  Discretion,  479 
What  Considered  on,  480 
Miscellaneous  Rulings,  484 

Bond,  485 

Corporations  and  Corporation  Offi- 
cers, 485, (247) 

Discontinuance  or  Non-Use,  486 

Discretion  of  Court,  487 

Expiration  of  Patent,  487 

General  Rules  for  Granting,  488 

General  Rules  for  Refusing,  489 

Government,  490,  (387) 

Grounds  for  Granting 
Acquiescence,  490 
Conduct  of  Defendant,  491 
Damages   Insufficient   Remedy, 

492 
Infringement,  492 
Laches  Excusable,  493,  (668) 
Nature  of  Act,  493 
Prima  Facie  Right,  493 
Prior  Adjudication,  493 
Sufficiency,  497 

Grounds  for  Refusing 

Acquiescence   Not  Established, 

499 
Conflicting  Proofs,  500 
Damages  Adequate  Relief,  501 
Infringement  Not  Clear,  501 
Insufficiency  —  General,  501 
Laches,  504,  (668) 


License,  504,  (684) 

Prior  Adjudication  Insufficient, 

505 
Title  in  Doubt,  505,  (839) 
Validity  Contested,  506 
Modification,  506 
Non-User,  507 
Patent  Office  Decisions,  508 
Power  and  Scope,  508 
Violation  of 
Contempt,  509 
Miscellaneous  Rules,  510 
Miscellaneous    Injunction    Decis- 
ions, 511 
See  —  Adjudication,  88;   Appeals, 
134;    Comity,    238;    Decrees, 
277;    Equity,  328;    Jurisdic- 
tion, 654 ;  Laches,  671 ;  Plead- 
ing, 714;    Res  Judicata,  812; 
Title,  839. 

INTERFERENCES 

Brief  Survey,  39 

The  Statute,  513,  883 

General  Statement,  514 

Actions  to  Compel  Issue  of  Patent, 
514 

Appeals,  514,  (134) 

Conclusiveness,  514 

Miscellaneous,  515 

See  —  Actions,  85;  Adjudication, 
89;  Appeals,  137;  Commis- 
sioner of  Patents,  243;  Es- 
toppel, 347;  Injunction,  508; 
Interfering  Patents,  516;  Pa- 
tent Office,  712;  Priority,  730; 
Protests,  767;  Public  Use 
Proceedings,  778 ;  Reduction  to 
Practice,  778;  Res  Judicata, 
816. 

INTERFERING  PATENTS 
Brief  Survey,  39 
Statutory  Provision,  516,  885 
Rulings,   516 

See  —  Priority,  730;  Protests,  767; 
Public  Use  Proceedings,  778; 
Reduction  to  Practice,  778. 

INVENTION 

Brief  Survey,  39 
Statutory  Provisions,  519,  885 
General  Statement,  519 
Abandonment,  520,  (73) 

Brief  Survey,  40 
Adaptation 

Brief  Survey,  40 


GENERAL  INDEX 


919 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


INVENTION  —  {Continued) 

Arrangement  or  Grouping,  520 

Strengthening     or      Increasing 
Weight,  521 

Miscellaneous  Cases,  522 
Aggregation,   (95) 

Co-Action  Wanting,  523 

Distinguished    from    Combina- 
tion, 524 

Not  Invention,  525 

Old  Elements,  Old  Result,  527 
Beneficial  Use  and  Scope,  527 

Brief  Survey,  40 
Carrying  Forward,  529 

Brief  Survey,  41 
Change  of  Form 

Brief  Survey,  41 

Same  Function,  530 

Mere  Change,  531 

When  Patentable,  532 
Combinations,  (238) 

Brief  Survey,  41 

Co-Action  of  Elements,  533,  (95) 

Entirety,  535 

Limitation,  535 

Necessary  Elements,  536 

New  Results,  537 

Old  Elements,  New  Results,  538 

Old  Elements,  Old  Result,  540 

Presumptions,  541 

Sub-Combinations,  542 

Miscellaneous  Rulings,  542 
Date  of  Completion,  544 

Brief  Survey,  41 
Definitions  of,  547 

Brief  Survey,  42 
Dividing  or  Uniting  Parts,  549 
Double  or  Analogous  Use 

Brief  Survey,  42 

Analogous  Use  Non-Patentable, 
550 

Double  Use  Non-Patentable,  552 

Double  Use  Patentable,  553 
Duplication,  553 
Evidence  of,  (352) 

Brief  Survey,  42 

Acquiescence,  553 

Attempted  Evasion,  554 

Commercial  Success,  554 

Commercial       Success  —  When 
Not,  556 

Efficiency,  556 

Extensive  Litigation,   558 

Extensive  Use,  558 

Extensive  Use  — When  Not,  562 

Obvious  Demand,  563 


Patent  Prima  Facie,  563 

Patent  Office  Action,  566 

Prior  Failures,  567 

Simplicity,  571 

Turning   Failure   Into   Success, 
571 

Use  by  Defendant,  572 

Utility  —  When  Evidence,  574 

Utility  —  When  Not,  580 

Want  of  Invention,  583 

Miscellaneous  Holdings,  584 
Force  of  Nature,  585 

Brief  Survey,  44 
Generic 

Brief  Survey,  44 

Construction,  586 

Definition,  587 

Improvement,  588 

Scope,  588 

What  is,  589 
Immoral  Object,  590 

Brief  Survey,  45 
Improvement,  (388) 

Brief  Survey,  45 

Non-Patentable,  591 

Patentability,  592 

Miscellaneous,  592 
Manufacture,  593 

Brief  Survey,  46 
Mathematical  Formula,  594 

Brief  Survey,  46 
Means,  594 

Brief  Survey,  46 
Mechanical  Skill 

Brief  Survey,  47 

Adaptation,  596 

Aggregation,  596,  (95) 

Carrying  Forward,  596 

Change  of  Form,  597 

Definition  and  Distinction  from 
Invention,  599 

Degree  of  Knowledge  and  Skill, 
601 

Dividing  or  Uniting  Parts,  602 

Improvement,  602,   (388) 

Increased  Efficiency,  603 

Old  Device,  Analogous  Use,  603 

Old  Device,  New  Use,  604 

Old  Elements,  Old  Result,  604 

Portability,  605 

Strengthening  or  Increasing,  605 

Miscellaneous  Decisions,  605 
Novelty 

Brief  Survey,  48 

Definitions  and  Distinctions,  606 

Evidence,  608,  (352) 


920  GENERAL  INDEX 

(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


INVENTION  —  (Continued) 

Miscellaneous,  609 
Old  Device,  New  Use 

Brief  Survey,  49 

Aggregation,  609,  (95) 

General  Rules,  610 

Non-Patentable,  614 

Patentable,  619 
Old  Elements,  New  Result,  621 

Brief  Survey,  49 
Old  Elements,  Old  Result,  625 
Old  Process,  New  Use 

Brief  Survey,  49 

Non-Patentable,  626 

Patentable,  627 
Omitting  Element,  627 

Brief  Survey,  49 
Patentability 

Brief  Survey,  49 

Definition,  627 

Patentable  Difference,  629 

Duty  of  Court,  630 

Mental  Conception,  631 

Scientific  Principles  and  Ideas, 
632 

Miscellaneous  Rules,  633 
Process,  (733) 

Brief  Survey,  50 

Definition,  633 

Mechanical,  634 

N<fci-Patentable,  636 

Process  and  Machine,  636 
Property  of  Matter,  637 
Result  or  Function,  637 

Brief  Survey,  51 
Scientific  Principles  or  Laws,  639 
Simplicity 

Brief  Survey,  51 

Does  Not    Negative  Invention, 
640 

Ex  Post  Facto  Judgment,  641 
Simplification,  642 
Substitution 

Brief  Survey,  51 

Elements,  642 

New      Material  —  Non-Patent- 
able, 642 

New  Material  —  Patentable,  644 
Systems  and  Arrangements,  645 

Brief  Survey,  51 
Tests  of 

Last  Step  Rule,  646 

Miscellaneous,  647 
Transposition  of  Parts,  648 
Utility,  648 

Brief  Survey,  52 


See  —  Anticipation,  102;  Art,  152 
Composition  of  Matter,     245 
Designs,  294;    Evidence,  362 
Experiment,     371;     Function, 
385;  Improvement,  388;  Ma- 
chine, 700;  Machine  and  Pro- 
cess, 702;  Machine  and  Prod- 
uct, 703;    Manufacture,   704 
Process,    733;     Product,   743 
Reduction    to    Practice,    778 
Unpatented  Invention,  843. 

INVENTOR 

Statute  and  General  Statement,  649 
See  —  Administrator,  94;  Assign- 
ment, 154;  Copartnership,  247; 
Death  of  Applicant,  276 ;  Em- 
ployer and  Employee,  323; 
Joint  Inventions,  650;  Li- 
cense, 684. 

JOINT  INVENTIONS 
Brief  Survey,  52 

General  Statement  and  Rules,  650 
See  —  Letters  Patent,  675. 

JUDICIAL  NOTICE 
Brief  Survey,  52 
General  Statement,  651 
Common  Knowledge,  651 
Novelty,  652 
Patentability,  652 
Prior  Art,  653 
Public  Use,  653 
Records,   654 
Miscellaneous,  654 
See  —  Demurrer,  291. 


JURISDICTION 
Brief  Survey,  53 
The  Statute,  654,  888 
Contracts,  655 
Court  of  Claims,  658,  (387) 
District  Judge,  658 
Equity,  (328) 

Expiration  of  Patent  Pendente 
Lite,  658 

Rule,  660 

For    Determining    Profits    and 
Assessing  Damages  Only,  661 

Miscellaneous,  662 
Infringement,  664,  (402) 
Licensor  and  Licensee,  665,  (698) 
Residence,  666 
State  Court,  666,  (835) 


GENERAL  INDEX 


921 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


JURISDICTION  —  (Continued) 
Supreme  Court,  667 
See —  Appeals,  145;  Decrees,  277; 
Equity,  328;   Pleading,  714. 

JURY  TRIAL 

Equity  Cases  —  Question  of  Fact 
—  Statute,  889 

LACHES 

Brief  Survey,  54 

General  Statement,  668,  890 

Application,  668 

Bringing  Suit,  669 

Excuses,  670 

Injunction,  671,  (473) 

Reissue,  671,  (782) 

Miscellaneous  Rulings,  671 

See  —  Abandonment,  73;  Defenses, 
286;  Disclaimer,  304;  In- 
junction, 493,  504. 

LAW  ACTIONS 

Brief  Survey,  54 

General  Statement,  672 

Directing  Verdict,  672 

Findings,  673 

Instructions,   674 

Miscellaneous  Rules,  674 

See  —  Appeals,  145-6;  Damages, 
257;  Defenses,  280;  Evidence, 
362-5 ;  Infringement,  439 ;  Ju- 
risdiction, 654;  Pleading  and 
Practice,  714. 

LETTERS  PATENT 

Brief  Survey,  55 

Statutory  Requirements,  675,  890 

General  Statement,  676 

Construction,  676 

Contract  Theory,  676 

Defective,  676 

Definition,  677 

Monopoly,  677 

Nature  of  Grant,  680 

Property  Rights  in,  681 

Scope,  683 

Miscellaneous  Decisions,  683 

See  —  Assignment,  154;  Copart- 
nership, 247;  Joint  Invention, 
650;  License,  684;  Licensor 
and  Licensee,  698;  Reissue, 
782;  Royalties,  817;  Title, 
839 ;  Unpatented  Inventions, 
843. 


LICENSE 

Brief  Survey,  55 

Statutory  Provision,  684,  893 

General  Distinction  from  Assign- 
ment, 684 

Assignment,  684,  (154) 

Construction,  685 

Contract,  688 

Estoppel,  687,  (346) 

Forfeiture,  688 

Implied,  688 

Machine,  691,  (700) 

Non-Assignable,  692 

ParofT692 

Royalties,  692,   (817) 

Scope,  693 

Termination,  694 

Territorial,  695 

Miscellaneous,  696 

See  —  Administrator,  94;  Assign- 
ment, 166;  Copartnership,  247; 
Corporations,  247 ;  Damages, 
266;  Defenses,  282;  Employer 
and  Employee,  324;  Estoppel, 
347 ;  Infringement,  456-8 ;  In- 
junction, 504 ;  Jurisdiction, 
665;  Licensor  and  Licensee, 
698;  Royalties,  817;  Sale  of 
Patented  Article,  819. 

LICENSOR  AND  LICENSEE 

Right  to  Sue,  698 

Title,  699,  (839) 

Miscellaneous,  700 

See  —  Assignment,  166;  Copartner- 
ship, 247;  Defenses,  282;  Em- 
ployer and  Employee,  325-6; 
Estoppel,  347 ;  Infringement, 
456-8;  Injunction,  504;  Ju- 
risdiction, 665. 

LITHOGRAPHING      AND      EN- 
GRAVING 

Statutory  Provision,  893 

MACHINE 

Statute  and  Definition,  700 

Right  to  Use,  702 

See  —  Anticipation,  130;  Designs, 
299;  Destruction  of,  303;  In- 
fringement, 458-9;  Invention, 
634;  License,  674;  Machine 
and  Process,  702;  Machine 
and  Product,  703;  Process, 
736;  Secret  Process  or  Ma- 
chine, 819. 


922  GENERAL  INDEX 

(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 
MACHINE  AND  PROCESS 


Brief  Survey,  57 
General  Rules,  702 
See — Machine,  700. 

MACHINE  AND  PRODUCT 
Brief  Survey,  57 
General  Rules,  703 


MANUFACTURE,    (245) 

Brief  Survey,  58 

Statute  and  General  Statement,  704 

Manufacture  and  Product,  704, 
(703) 

Novelty,  704 

Patentability,  705 

See  —  Aggregation,  96 ;  Art,  152 
Composition  of  Matter,  245 
Machine  and  Product,  703 
Process,  740;   Product,  743. 

MARINE  SERVICE 

Adoption  of  Patented  Article  — 
Statute,  894 

MARKING    "PATENTED" 

Brief  Survey,  59 

The  Statute,  706,  894 

Rulings  Under  the  Statute,  707 

MODELS 

Statutory  Provision,  895 

MORTGAGE 

General   Statement   and   Rulings, 

708 
See  —  Assignment,  154. 

NOVELTY 

Statutory  Provision,  896 

OATH 

Brief  Survey,  59 

Statutory  Requirements  and  General 

Rule,  710,  896 
Supplemental  Oath,  710 
See  —  Amendment,   98;    Defenses, 

280. 

OFFICIAL  GAZETTE 

Statutory  Provision,  897 

OPERATIVENESS 
Brief  Survey,  59 
General  Statement,  711 


Decisions,  711 

See  —  Anticipation,  123;  Defenses, 

284;     Reduction    to    Practice, 

778;   Reissue,  802. 

PAPERS  AND  DOCUMENTS 

Statute  Providing  for  Printing,  897 

PATENT  OFFICE 

Brief  Survey,  60 

The  Statutes,  712,  897 

Arbitrary  Conduct,  712 

Decisions  of,  713 

Rules,   713 

Miscellaneous,  713 

See  —  Adjudication,  89;  Claims, 
191-202;  Commissioner  of 
Patents,  243;  Injunction.  508; 
Interferences,  513;  Invention, 
566;  Res  Judicata,  816. 

PLEADING  AND  PRACTICE 

Brief  Survey,  60 

General  Statement,  714 

Amendment,  714 

Bill  of  Review,  715 

Demurrer,  717 

Infringement,  717,  (402) 

Laches,  718 

Multifariousness,  718,  (725) 

Notice,  718 

Parties 

Complainant,  720 
Defendant,  722 
Joinder,  722 

Patentability,  724 

Pleas,  724,  (84) 

Profert,  724 

Replication,  725 

Sufficiency,  725 

Suit  on  Plurality  of  Patents,  725, 
(718) 

Supplemental  Bills,  726 

Title,  727,  (839) 

Miscellaneous  Rules,  727 

See  —  Abatement,  84;  Actions,  85; 
Adjudication,  88;  Appeals, 
134  ;  Arbitration,  152;  Com- 
ity, 238 ;  Costs,  248 ;  Damages, 
252:  Decrees,  277;  Defenses, 
280;  Demurrer,  290;  Equity, 
328;  Estoppel,  346;  Fraud, 
384;  Infringement,  434,  459; 
Injunction,  473  ;  Interfer- 
ences, 514;  Interfering  Pa- 
tents, 516;    Jurisdiction,  654; 


GENERAL  INDEX 


923 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


PLEADING   AND     PRACTICE  — 

{Continued) 

Laches,    668;     Law    Actions, 


672 
706 

781 


Marking     "  Patented," 
Profits,  745;  Rehearings, 
Reopening    Case,    810; 


Res  Judicata,  812. 

PRIORITY 

Brief  Survey,  60 

General  Statement,  730 

Evidence,  730,  (261) 

Interference,  730,  (513) 

Reduction  to  Practice,  731,  (77S) 

Miscellaneous  Holdings,  732 

See  —  Anticipation,  102;  Divis- 
ional Patenting,  311;  Double 
Patenting,  318  ;  Evidence, 
353-5;  Experiment,  371;  For- 
eign Patent,  383 ;  Improvement, 
395  ;  Interferences,  513  ;  In- 
terfering Patents,  516;  Inven- 
tion, 544;  Reduction  to  Prac- 
tice, 778. 

PROCESS 

Brief  Survey,  60 

General  Statement,  733 

Claims,  734,  (175) 

Definitions,  734 

Equivalents,  735,  (330) 

Mechanical,  736 

Old  Elements,  New  Result,  738 

Patentability,  738 

Process  and  Product 
Claims  for,  740,  (175) 
Patentability,  740 

Miscellaneous  Rulings,  741 

See  —  Anticipation,  130;  Art,  152; 
Claims,  233;  Composition  of 
Matter,  245;  Equivalents,  330; 
Infringement,  460-1 ;  Inven- 
tion, 626-7,  633-6;  Machine 
and  Process,  702;  Manufac- 
ture, 704;  Secret  Process  or 
Machine,  817;  Specification, 
830. 

PRODUCT 

Brief  Survey,  61 

Patentability,  743 

Miscellaneous  Rules,  744 

See  —  Composition  of  Matter,  245 ; 
Infringement,  462,  637;  Ma- 
chine and  Product,  703 ;  Man- 
ufacture, 704;  Sale  of  Pa- 
tented Article,  819. 


PROFITS 
Brief  Survey,  61 
Statutory  Provisions,  745,  899 
General  Statement,  745 
Accountings,  746 
Deductions 

General  Expenses  — Not  Proper, 
747 

Losses,  748 

Manufacturer's  Profits,  748 

Rules,   749 

Salaries,  749 

Miscellaneous,  749 
Definition,   750 
Interest,   750 
Master  in  Chancery,  751 
Measure  of 

Actual  Gains,  752 

Entire  Profits,  755 

Rules,  756 

Savings  by  Use,  756 

Trustee  Ex  Maleficio  Rule,  757 

Miscellaneous  Rules,  758 
Segregation 

Burden  of  Proof,  759 

Failure  to  Make,  761 

General  Rules,  761 

Miscellaneous  Rules,  765 
Miscellaneous    Rules    Concerning 

Profits,  766 
See  —  Damages,  252-76 ;  Designs, 
294;  Jurisdiction,  661 ;  Mark- 
ing "  Patented,"  706;  Reissue, 
804;  Royalties,  817;  Statute 
of  Limitations,  837. 

PROTESTS 

General  Statement,  767 
See  —  Interferences,  513. 

PUBLICATIONS 

Provided  for  by  Statute,  900 

PUBLIC   USE 
Brief  Survey,  63 
The  Statute  and  General  Statement, 

768 
Evidence,   769,   (352) 
Experiment,  769,  (371) 
Foreign  Use,  771 
General  Rules,  771 
Publicity,  774 
Secret  Use,  775 
Single  Use,  775 
Two  Years  Use,  776 
Miscellaneous  Rules,   777 


924 


GENERAL  INDEX 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


PUBLIC  USE  —  (Continued) 

See  —  Abandonment,  81 ;  Antic- 
ipation, 127,  130-1;  De- 
fenses, 288;  Experiment,  373; 
Judicial  Notice,  653 ;  Priority, 
730;  Public  Use  Proceedings, 
778;  Reissues,  782;  Secret 
Process  or  Machine,  819;  Un- 
patented Invention,  843. 

PUBLIC  USE  PROCEEDINGS 
General   Statement,    778 
See  —  Interference,     513;      Public 
Use,  768. 

REDUCTION  TO  PRACTICE 

Brief  Survey,  64 

General  Statement,  778 

Diligence,  779 

Essential  to  Patentability,  779 

Experiment,  780,  (371) 

Last  Step  Rule,  780 

Operativeness,  780 

Priority,  780 

What  Constitutes,  781 

See  —  Experiment,  371 ;  Opera- 
tiveness, 711;  Priority,  731; 
Public  Use,  768. 

REHEARINGS 

General  Statement,  781 

See  —  Adjudication,  92;  Appeals, 
149;  Pleading  and  Practice, 
714;    Reopening  Case,  810. 

REISSUES 

Brief  Survey,  65 

The  Statute,  782,  902 

Abandoned  Claim,  783,   (73) 

Broadening 

Not   Permissible  —  In  General, 

783 
Not     Permissible  —  Omitting 

Elements,  790 
When  Permissible,  791 
Miscellaneous  Rules,  793 

Delay 

Excusable,   794 
Fatal,  794 
General  Rules,  796 
Intervening  Rights,  798 
Miscellaneous  Rules,  798 

Decisions  of  Commissioner,   800 

Different    Invention,    800 

Disclaimer,  800,   (304) 

General  Rules,  800 

Grounds  for,  802 


Inadvertence,    Accident,    or   Mis- 
take, 802 
Scope  of,  804 
Surrender  —  Effect  of,  804 
Tests  of  Validity,  806 
Miscellaneous  Rules,  807 
See  —  Assigmnent,  171;    Commis- 
sioner  of  Patents,   243 ;    De- 
fenses, 281;    Disclaimer,  304; 
Divisional      Patenting,      311; 
Double  Patenting,  318;  Fraud, 
384 ;        Infringement,       462 ; 
Laches,  671. 

REOPENING  CASE 

Brief  Survey,  66 

After  Decree  on  Appeal,  810 

Newly  Discovered  Evidence,  810 

Miscellaneous  Rules,  812 

See  —  Adjudication,  92;  Appeals, 
134;  Decrees,  277;  Pleading 
and  Practice,  714;  Rehearings, 
781. 

RES  JUDICATA 

Brief  Survey,  66 

Conclusiveness,   812 

Former  Suit,  814 

Patent  Office  Decisions,  816 

Miscellaneous  Rules,  817 

See  —  Adjudication,  88;  Comity, 
238;  Estoppel,  346;  Injunc- 
tion, 493,  505,  508;  Interfer- 
ences, 513;  Pleading  and 
Practice,   714. 

ROYALTIES 

Brief  Survey,  66 

General  Statement  and  Decisions, 

817 
See  —  Assignment,  154;  Damages, 
269;     License,    692;     Profits, 
745. 

RULES  AND   REGULATIONS 

Patent  Office  —  Statutory  Provis- 
ion, 903. 

SECRET     PROCESS      OR      MA- 
CHINE 

General  Rule,  819 
See  —  Abandonment,      73;       Un- 
patented Invention,  843. 

SALE  OF  PATENTED  ARTICLE 
General  Statement  and  Holdings, 

819 
See  —  Assignment,    154;    License, 

684. 


GENERAL  INDEX 


925 


(References  are  to  pages.     Cross-references  are  enclosed  in  parentheses.) 


SPECIFICATION 

Brief  Survey,  67 

Statutory   Requirements,   821,    904 

General  Statement,  821 

Amendment,  822,  (98) 

Construction,  822 

Defective,  824 

Sufficiency 

Accuracy,  826 

Alternative   Constructions,    828 

Ambiguity,  828 

Distinguishing  New  from   Old, 
828 

Equivalents,  829,  (330) 

Excessive,  829 

Function,  829,  (385) 

Immaterial  Error,  830 

Old  Parts,  830 

Process,  830,  (733) 

Rules  for  Determining,  831 

Scientific  Knowledge,  838 

Unambiguousness,    833 
Two  Inventions,  One  Patent,  834 
Miscellaneous  Rules,  834 
See  —  Amendment,  98;   Attorneys, 
173;    Claims,  203,  218;    De- 
fenses,  281,    285;    Drawings, 
322;  Oath,  710. 

STATE  STATUTES  AND  REGU- 
LATIONS AFFECTING  PA- 
TENT  RIGHTS 

Brief  Survey,  68 

General  Statement  and  Decisions, 

835 
See  —  Jurisdiction,    666 ;     Letters 

Patent,  681 ;   Sale  of  Patented 

Article,  819. 

STATUTE  OF  LIMITATIONS 

General  Statement  and  Decisions, 

837 
See  —  Damages,  252;  Profits,  745. 

STATUTES  RELATING  TO  PA- 
TENTS —  THE  PATENT  STAT- 
UTE 

The  Patent  Statute  Digested  with 
Patent  Office  Annotations,  849- 
907 

Brief  Survey,  69 

General  Statement,  838 

Amendments  and  Repeal  Provis- 
ions, 905 

Decisions  Relating  to  the  Stat- 
utes, 838. 


SURVEY  OF  THE  FIXED  LAW 
OF  PATENTS 

General  Survey  Chapter,  pages  1- 
71 

THREATS 

General  Statement,  838 

TITLE 

Brief  Survey,  69 

General  Statement,  839 

Actionable,  839 

Miscellaneous  Rules,  840 

See  —  Abatement,  84;  Assignment, 
154;  Bankruptcy,  174;  Cor- 
porations, 247;  Defenses,  280; 
Injunction,  505 ;  Letters  Patent, 
681;  License,  684;  Licensor 
and  Licensee,  699;  Mortgage, 
708;  Pleading  and  Practice, 
724,  727;  Sale  of  Patented 
Article,  819. 

TRADEMARKS 

General  Statement  and  Cases  Re- 
lating to  Patents,  841 

UNFAIR    TRADE 

General  Statement  and  Cases,  842 
See  —  Pleading,   718. 

UNPATENTED    INVENTIONS 

Brief  Survey,  70 

Statutory  Provision,  843,  906 

Assignment,   844 

Construction  or  Sale  Before  Pa- 
tent, 844 

Employee,  844 

Non-Assignable,  844 

Miscellaneous,  845 

See  —  Abandonment,  73;  License, 
688;  Secret  Process  or  Ma- 
chine,   819. 

UTILITY 

Statutory  Provision,  906 

WITNESSES 

Statutory   Provision,   906 

WORDS   AND    PHRASES 

Brief  Survey,  70 
"  Means,"  845 
"  Substantially,"  etc.,  845 
"Whereby"  Clause,   847 
See  — Claims,  205,  226;    Equiva- 
lents, 330;    Specification,  821. 


. 


AA    001102  596 


